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, 31 July 2009

Friday factualities

Please, please, please take a look at the Forthcoming Events feature in the side bar of the IPKat's home page. You may not be able to afford to attend these events, but at least you can be jolly envious of those who can ...

The IPKat has been asked various questions about intellectual property law on the Isle of Man. If you're interested, you can follow the link to the Manx Treasury, which is responsible for it.

Right: The IPKat looks for an extension, but that's another tail ...

Is it really possible to litigate a patent dispute in England and Wales for no more than £50,000? "Yes" is the belief of a group of experts whose experience and integrity demands that their conclusions be taken seriously, even though one's intuitive feeling is that they must have lost a zero in the typing-up. For information take a quick peep at PatLit here.

Congratulations to Lord Neuberger, chime the Kats in unison. This distinguished judge, formerly of the House of Lords, has now been appointed Master of the Rolls, which means that he gets to run the civil side of the Court of Appeal for England and Wales. Sir David (for that is he) is believed to be the first former judge of the Patents Court to be appointed Master of the Rolls since the post was established in 1286. The IPKat is a great admirer of Lord Neuberger, whose dissenting judgment in Coflexip v Stolt Offshore he rates as one of the finest patent judgments he has ever read.

Thanks are due from the IPKat to Laurens Kamp (Simmons & Simmons), for this entertaining article about whether cats are left- or right-pawed. It's good to see original research into subjects like this.

EU identifies IPRs as trade barrier with US

The IPKat learns from IPWatch that the European Commission has issued a report highlighting trade barriers between the US and the EU. After stressing the closeness of the EU/US trade relationship, the report explains its purpose thus:

This annual report on U.S. trade barriers from the European Commission highlights some of the impediments that the European Union encounters when doing business with the U.S. The barriers described range from the small and relatively easily addressed to larger, more complicated problems, including challenging regulatory questions and some issues that have been or are being litigated at the World Trade Organisation. No matter the size or economic impact, all barriers need to be addressed, as far as possible, to help maintain and strengthen both transatlantic confidence and broader faith in the multilateral trading system.
Included are a number of IP-related trade barriers, namely:
  • The US exemption for small businesses from paying copyright royalties (even though the US has lost a WTO case on the issue
  • The lack of broadcast rights for producers and performers under US law (even though such rights are afforded to their US counterparts under EU law)
  • Difficulties regarding GIs, particularly various European wine names classed as 'semi-generics' in the US
  • Failure to inform patentees when the US authorities are going to use a patent
  • s.337 of the Tariff Act 1930, which allows the owners of US IP rights to keep infringing articles out of the US
  • The Havana Club case, whereby trade marks identical or similar to those owned by confiscated Cuban entities cannot be registered or renewed
  • The US's first-to-invent patent system (though the report notes that the US is becoming more accepting of the first-to-file system)
  • The Hilmer doctrine (excluding certain European prior art)
  • Differences in patentability of business methods and computer software
  • Differences concerning encryption products
  • Strictures involving US plant variety rights
The IPKat reckons that these barriers are common knowledge. The impact comes from gathering them all together and placing them in the wider context of trade relations.

The MoU, the merrier ...

The IPKat was very excited when he read earlier this week about the Memorandum of Understanding concluded between the European Patent Office (EPO) and the Institute of Electrical and Electronic Engineers, Inc Standards Association (IEEE-SA). According to the EPO's website:

"Signed by EPO's ad interim Vice-President for Legal and International Affairs, Wim Van der Eijk, and IEEE-SA Managing Director Judith Gorman, the memorandum aims to increase co-operation between the two institutions on standards and intellectual property.

In the MoU, the two organisations agree to share knowledge, information and documentation on technology and standards, and to collaborate on education related to standards and IP issues. The IEEE will also facilitate the involvement of EPO representatives in all relevant IEEE-SA working groups and investigate whether the Office can participate in beta testing of its document management system.

"Clearly defined interfaces and information exchange must be established between formal standards setting organisations and patent offices in order to increase transparency in this critical field, where two types of regulatory systems are interfering " says Wim Van der Eijk. "This is the first agreement of its kind, but it is part of a wider strategy."

"We are also in talks with the International Telecommunication Union (ITU) and the European Telecommunications Standards Institute (ETSI) and hope to conclude similar agreements with them," he said.

"This landmark collaborative agreement with the EPO will help educate, promote and strengthen positions surrounding intellectual property polices in standardization," says Judith Gorman, IEEE-SA Managing Director. "It opens the door for a wide-range of activities related to IP in efforts to support the IP needs of industry not only in the EC, but around the globe."

Closer involvement with standards organisations is supporting EPO's efforts to make sure that the patent system contributes to the promotion of innovation and a healthy, competitive environment for business.

The IEEE, a not-for-profit corporation based in New Jersey, is a leading developer of international standards that underpin many of today's products and services, particularly in the fields of telecommunications, information technology and power generation".
The IPKat is a cooperative Kat, and he likes to see bodies like the EPO being seen to be caring and sharing. But what he wants to know is this:
* There are a lot of long and quite grand words in this MoU -- but what in practical terms do they mean for the examiner or the Boards of Appeal when they are carrying out their current functions?
* How will the effectiveness of any tangible outcome from the MoU be measured? By whom, and at what intervals of time?
* If standardisation in this context means what the IPKat thinks it does, are there any plans to bring the EU or national competition authorities into the circle? This may be important if standards bring about a need for cross-licensing or pooling of patents, with subsequent and vital significance for issues such as the ability of new entrants to gain access to the standards at an affordable cost and the feasibility of developing and patenting technologies that compete with those subject to the standards.
Merpel says, I just can't look at the letters "MoU" without adding "SE" ...

Thursday, 30 July 2009

Zeno, dead cats, veiled threats ...

Dead cats had an airing in the Patents Court today, in Zeno Corp (Formerly Known As Tyrell Inc) & Another v BSM-Bionic Solutions Management GmbH & Another [2009] EWHC 1829 (Pat), a patent infringement ruling by Mr Justice Lewison.

The invention in this case was a hand-held unit for the treatment of insect stings and insect bites. Zeno didn't use it for that purpose, but for the treatment of acne, accompanied by an instruction leaflet that says it should not be used for insect or spider bites or stings. Following receipt of a letter from the patent owner's attorneys the Boots chain of chemist stores stopped ordering Zeno, although they were later persuaded to reorder. This action, predictably, had a counterclaim for invalidity and a claim relating to unwarranted threats to bring infringement proceedings.

Finding the patent valid but not infringed, and agreeing that the letter to Boots was an unjustified threat, the learned judge had this to say:

"... if the manufacturer of a product does not design or intend it to be used for the specified purpose, how does one judge whether it is "suitable" for use for that purpose? Is it simply a question of whether something is capable of being used for a specified purpose? After all, Terrell [a leading UK practitioners' work on patent law] is capable of being used as a doorstop or a paperweight; and a popular cartoon book of a few years ago was entitled "101 Uses for a Dead Cat". Was it "suitable" for all those uses? Closer to home, some of the feedback relating to Riemser's own product extolled the efficacy of a hot mug of tea or a lit cigarette end in applying heat to the site of insect bites. But are these "suitable" things to use?".
The IPKat's long-standing friend and national treasure Trevor Cook (Bird & Bird) wrote to draw the Kat's attention to this decision and to offer the kind hope that he would not be offended by reference to dead felines. The Kat was able to reassure him that it was not uses for dead cats that concerned him; rather it was people who had no uses for live cats ...

Merpel adds, the bit about "threats" is quite interesting since the letter was a funny sort of threat really. As the judge says:
"i) The letter did not mention proceedings or explicitly threaten them;

ii) The letter asserted that "up to this point" the writer could see no difference in the technical solution; but contained a request for the reason why the recipient thought that it need not "take into consideration" the patent;

iii) The writer of the letter was not an English lawyer to whom the conduct of proceedings about patent infringement in England would usually be entrusted.

iv) On the other hand, the letter was not addressed to the manufacturer of Zeno, nor even to Boots head office. It was sent to the stores that were actually stocking the product".
The letter was however written to retailers rather than to Boots' head office. The judge concluded:
"It is not a question of how Boots understood the letter; but how a reasonable person in the position of Boots would have understood it. Read in context, through the eyes of a retailer, the letter amounted, in my judgment, to a veiled threat of infringement proceedings".
101 Uses for a Dead Cat here

House of Lords' IP swan song: a Whiter Shade of Pale

Having been accused of "excessive delay" in bringing his action to be recognised as co-writer of Procol Harum's 1960s classic Whiter Shade of Pale, Matthew Fisher must have been impressed at the speed with which his legal action travelled through the Chancery Division of the High Court (remember Jarndyce v Jarndyce?), the Court of Appeal and now the House of Lords. You can read the decision in Fisher v Brooker [2009] UKHL 41, in full and hot off the internet here and here.

The Lord Law Lords (including one Legal Lady: Baroness Hale, who does remember the 1960s) have ruled that Fisher, who claimed he wrote the haunting pseudo-Bach organ melody which opened the song, is entitled to a share of future royalties.

In 2006 Mr Justice Blackburne concluded that he was entitled to 40% of the copyright. The Court of Appeal overturned the ruling last year on the basis that Fisher had waited too long (if 38 years can be said to be too long ...) to bring the case; accordingly the copyright nestled securely within the portfolio of rights owned by the group's frontman Gary Brooker and lyricist Keith Reid. Today the House of Lords, on its last day of judicial activity before metamorphosing into just another boring old Supreme Court, reinstated the decision of Blackburne J. In its view the delay in bringing the case had caused no harm to the other writers, who had indeed benefited financially from it.

The main speech was delivered by Lord Neuberger (still a teenager in 1967), who said Fisher had repeatedly asked if he could have a share in the rights to the record but was "rebuffed or ignored" by Messrs Brooker and Reid. Lord Hope added that there were no time limits under English law in copyright claims.

Lord Neuberger dealt with the Court of Appeal's decision as follows (at paras 72 onwards:
"... , the Court of Appeal upheld the judge’s conclusion that the judge was entitled to reject the respondents’ case on estoppel, but the majority went on to conclude that Mr Fisher was nonetheless not entitled to determine the licence which the judge found that he had impliedly granted. Mummery LJ’s careful analysis, ... reaching this conclusion and for setting aside the second and third declarations made by Blackburne J, seems to me to be encapsulated in the following two propositions. First, since May 1967, ... Brooker had, to Mr Fisher’s knowledge, continued “exploitation of the work on the basis that they owned all the copyright in it", and “it would be unconscionable for him [now], with a view to enforcing his property right by final injunction, to assert a joint share in the copyright and to terminate the implied licence under which he accepts the [respondents] have acted for very many years”... Secondly, Mr Fisher’s delay in bringing his claim means that “he could dictate his terms and put the [respondents] in a weaker bargaining position than they would have been in, had he made his claim in, say, 1967 or 1969” ...
As to the first of those reasons, it seems to me that, save in a very unusual case, it would be inconsistent to conclude that a claimant was not estopped from asserting his copyright interest, but then to refuse, on equitable grounds, to declare that the right existed. It is possible that there may be cases where such a course could be appropriate, but it would require wholly exceptional facts. ... if, as the Court of Appeal accepted, Mr Fisher originally had 40% of the musical copyright in the work and is not estopped from asserting it, then it is hard to see how he could be prevented from bringing proceedings simply for financial compensation or injunctive relief on the ground of copyright infringement. The refusal to grant him declaratory relief because he might seek an injunction on the back of it therefore seems to be questionable as a matter of principle.
In the present case, the majority of the Court of Appeal thought it appropriate to take such a course primarily because of the apparent inequity of Mr Fisher being able to seek an injunction to enforce his rights as the holder of an interest in the musical copyright in the work. .. this point ... involves the tail wagging the dog. If the declarations set aside by the Court of Appeal are reinstated, then, were Mr Fisher subsequently to apply for injunctive relief to prevent unauthorised use of the work, such an application would be dealt with on its merits. If the court was satisfied that it would be oppressive to grant an injunction in the particular circumstances, for instance because of prejudicial delay, it would refuse an injunction to restrain the infringement, and leave Mr Fisher to his remedy in damages ...
... if and when Mr Fisher seeks an injunction to restrain an alleged infringement of his copyright, it should be dealt with on its merits.
Further, the decision of the majority of the Court of Appeal deprived Mr Fisher of the ability not only to seek injunctive relief, but also to claim any royalties in respect of the exploitation of the work, of which he owned 40% of the musical copyright. (That must follow from the conclusion that he could not determine the implied licence). It is hard to see how that could be right, simply on the basis that it would be inappropriate to grant him injunctive relief, given that Mr Fisher was not estopped from asserting his 40% interest in the musical copyright in the work.
As for the change in the bargaining position of the parties between 1967 and 2005, that was neither pleaded nor argued before the Judge. In any event, there was no evidence that Essex or the respondents would have acted any differently from the way in which they did if Mr Fisher had pressed his claim in 1967 or in the ensuing few years. Further, there is also the judge’s finding ... that Mr Fisher’s very long delay in asserting his claim has been of considerable financial benefit to the respondents, effectively outweighing any disadvantage to them resulting from the delay.
The passage of time

... the basic problem for the respondents is that there is no English law statutory equivalent in the field of intellectual property to the doctrine of adverse possession in relation to real property .... the position in this jurisdiction is that the mere passage of time cannot of itself undermine claims such as those raised by Mr Fisher in the current proceedings. The respondents therefore rely on laches.
The argument based on laches faces two problems. The first is that ... laches only can bar equitable relief, and a declaration as to the existence of a long term property right, recognised as such by statute, is not equitable relief. It is arguable that a declaration should be refused on the ground of laches if it was sought solely for the purpose of seeking an injunction or other purely equitable relief. However, as already mentioned, that argument does not apply in this case. Secondly, in order to defeat Mr Fisher’s claims on the ground of laches, the respondents must demonstrate some “acts” during the course of the delay period which result in “a balance of justice” justifying the refusal of the relief to which Mr Fisher would otherwise be entitled. For reasons already discussed, the respondents are unable to do that. They cannot show any prejudice resulting from the delay, and, even if they could have done so, they have no answer to the judge’s finding ... that the benefit they obtained from the delay would outweigh any such prejudice".
The IPKat has ever since 2006 wondered why Fisher's share was put at 40%: Whiter Shade of Pale is a decently long track and he's sure the organ solo doesn't add up to 40% of its length.

Remembering the 60s here
BBC report here

Wednesday, 29 July 2009

When anticompetition spices up competition, greyhounds lose their appeal

Although it was really a competition law decision, the ruling of Mr Justice Morgan in Bookmakers' Afternoon Greyhound Services Ltd and others v Amalgamated Racing Ltd and others [2008] EWHC 1978 (Ch), a decision from the Chancery Division, England and Wales last August (noted here by the IPKat) was deemed to be of note to IP lawyers and owners too. Yesterday, at [2009] EWCA Civ 750, the Court of Appeal (Lords Justices Mummery, Lloyd and Moore-Bick) dismissed the appeal against the trial judge's decision. Here's what it's all about.

Bookmakers' Afternoon Greyhound Services (BAGS), a not-for-profit company, was comprised of 22 of the UK's 680 off-course bookmakers. Its memorandum of association included the duty to promote the interests of all bookmakers operating Licensed Betting Offices (LBOs). The other claimants in this action were some of the largest bookmakers in the UK. In 1986 it became lawful to show live pictures of horse-racing in LBOs and, in 1987, LBO operators began to pay a distributor, Satellite Information Services Limited (SIS), for the right to show those pictures; in turn, SIS made payments to the racecourses for those rights.

Eventually just over half the 60 British racecourses decided to participate in a joint venture company, the first defendant Amalgamated Racing (AR), which would serve as their new distributor, setting up the Turf TV channel. Around January 2007 those racecourses licensed their own LBO media rights to AR. The second defendant, Racing UK (RUK), was incorporated in 2004 to exploit the media rights of some 30 racecourses, which accounted between them for about 54% of total off-course LBO betting turnover. The seventh to twenty-third defendants were operators of 17 separate racecourses. The other 29 racecourses licensed their LBO media rights so that they were available to SIS. Both AR's and SIS's services were essential services so far as the LBOs were concerned.

As a result of those new arrangements, the 31 racecourses that participated in the joint venture received more revenue for their LBO media rights, since the LBOs were required to pay more in order to show the races in their premises. BAGS argued that the emergence of AR and its entry into the market was anticompetitive, being the result of an agreement which had as its object or effect the prevention, restriction or distortion of competition under Article 81 of the EC Treaty and the corresponding provision of the Competition Act 1998. On this basis they maintained that the agreements in question, including the agreements by racecourses to grant LBO rights to AR, were void under Article 81(2).

The defendants disagreed. In their view, before the arrangements in question were entered into, the market for LBO rights from racecourses was controlled by a monopsony composed of BAGS and SIS. As a result of its position of control of the upstream market, this monopsony paid racecourses a price that was less than that which their rights were worth. The whole point of making the new arrangements with AR was to allow it to be a new entrant into the upstream market -- this not have the object of restricting competition or of fixing prices but, on the contrary, had the object of enhancing competition. Although the result was that prices paid by LBOs went up, that was the result of enhancing competition in the upstream market, was not a restriction on competition.

In a mammoth judgment of 523 paragraphs Morgan J dismissed the action of BAGS and the other bookmakers. In his view

* There was no legal principle that a vertical supply contract was void when the supplier under that contract was a party to a horizontal price-fixing agreement that was itself void. Thus if a consumer under the vertical agreement wanted to complain that the price charged by the price-fixer was excessive, that consumer had a claim for damages for breach of Article 81. There was no need for the law to enable the consumer to have that contract ruled to be void.

* Here the pre-existing market was one of a monopoly purchaser from racecourses and the objects of the challenged agreement did not have the potential of restricting competition. As the defendants contended, the new arrangements actually had the potential to increase competition in the upstream market.

* The increased prices paid by LBOs did not result from the anticompetitive behaviour of sellers fixing prices but rather from the procompetitive entry of a second purchaser into a market formerly occupied by a monopsonist.

* On the evidence, the objective aim of the cooperation between the defendants was to sponsor the entry of AR into the market. The racecourses wanted it to exist and to have LBO media rights which would differentiate it from SIS.

The Court of Appeal agreed. In its view

* Article 81 only applied if the arrangements made here were intended to restrict competition or had that effect. If they were so intended, it was unnecessary to consider their effect. If the object of an agreement was to promote competition, for example by strengthening competition in a market, opening up a market or allowing a new competitor access to a market, some consequent elements of restriction could, taking a broad view of things, be seen as aiming to promote competition.

* In this case the object of the joint venture was to establish a second broadcaster which could compete both in the upstream and in the downstream markets. To be effective, such a broadcaster needed (i) to acquire media rights for a minimum number of racecourses on an exclusive basis, (ii) to have been promoted by or in association with a number of racecourses, and (iii) to be sufficiently protected at the birth of the venture to enable it to off the ground. This being so, Morgan J was right to reject the argument that the agreement had as an object the restriction of competition.

* Where an agreement did not have as its object a restriction of competition, its effects then fell to be considered. To be caught by the Article 81 prohibition the agreement had to be shown in fact to prevent, restrict or distort competition to an appreciable extent. However, cooperation between competitors in markets closely related to the market directly concerned by the cooperation could not be defined as restricting competition, if that cooperation was the only commercially justifiable possible way to enter a new market, to launch a new product or service or to carry out a specific project, Accordingly there was no reason to interfere with the conclusion of Morgan J that the overall effect of the joint venture was procompetitive.

The IPKat thinks this is right; he likes the idea that a little bit of anticompetition can actually promote competition -- after all, isn't that what the concept of the limited monopoly for inventions, copyright and designs is all about? Merpel says, the balance betweeen the subjective state of the alleged anticompetitors' minds and the objective consequences of their actions is an interesting one: lawyers are probably more comfortable than economists in dealing with the former, while the measurable nature of the latter must surely appeal to the skills of economists more than those of to lawyers. Tufty adds, I just love the word "anticompetitor" -- it's much more funky than grey and malevolent terms like "monopolist".

Afternoon Greyhound here
Dog Day Afternoon here
Cat races here and here

Tuesday, 28 July 2009

Is it safe?

As all UK patent attorneys will know, getting an order under section 22 is a complete pain. Not quite as bad as dentistry without anaesthetics, but not far off and, for the applicant, somewhat more expensive. Unfortunately it is not always easy to know what qualifies as "being information the publication of which might be prejudicial to national security" (according to s22(1)), so the general rule is either to wait six weeks after filing a UK patent application to find out if a order has been made or, if a first filing outside the UK is required and there is no time to do anything else, to send a copy of your application to the mysterious Room GR70 and ask if it is safe to file it abroad without risking being put in prison for up to two years (s22(9)).

The UK-IPO have now issued some guidance on what might constitute information that could risk a section 22 order being made. Along with the obvious ones like nuclear bombs and chemical weapons, however, there are quite a few categories in which apparently innocuous technology could conceivably fall foul of a secrecy order. The IPKat wonders whether an application directed to encryption, electronics or aerials (to take just a few examples from the list, all of which this Kat has drafted applications to without any thought to a secrecy order being relevant) would fall foul if no mention were to be made of a military application. If encryption is useful, it it not also useful militarily? As a result, in the IPKat's view, this list does not really provide any help at all, and seems likely to result in more confusion for patent attorneys and more work for those in Room GR70. If anyone has any properly useful guidance about what to look out for, could they please let the IPKat and his readers know?

Patent person pursues path of practical experience

Following the sudden and gratifying expression of interest in the most recent "work wanted" post on this weblog, here's another. This, also from a charming and dynamic young lady, goes as follows:

"I am currently searching for work experience in the field of intellectual property. My interest lies primarily in patent work as I have a background in the life sciences, both at degree- and PhD-level. However, I am keen to gain experience in other areas of IP and will voluntarily assist readers of IPKat with any IP-related work.

This year I qualified with the MSc in the Management of Intellectual Property at Queen Mary University of London, passing with distinction the additional papers providing exemptions from the CIPA and ITMA foundation level exams.

My previous work experience involved working as an intern writing articles on the latest patent, trade mark and copyright cases for a monthly publication that provides the basis for IP training sessions at various London law firms. I have also been involved in various science communication activities, presenting biology workshops at
science festivals and writing science articles for newspapers.

I am a fast-learner, hard-working and enthusiastic. If you would value an extra pair of hands and someone with my experience, please contact me".

Monday, 27 July 2009

Use of "" domain names for criticism sites

The IPKat's Greek friend Nikos Prentoulis wrote a guest article last week, "Free speech prevails over common law rights in WIPO panel decision", Though it attracted only a couple of posted comments, the Kat received some very thoughtful emails on the subject. One of these is from Matthew Harris (a partner in Waterfront Solicitors), who has written to the IPKat as follows:

"I thought you might be interested to learn that for quite a few years there has been a debate ongoing among UDRP panelists as to the extent to which <[trade mark].com> domain names can be legitimately used for criticism sites.

WIPO chose this as one of the subjects of discussion during the meeting of panelists in Geneva last October under the heading “Criticism sites and other free speech - bridging the divide?”. The “divide” is recorded in paragraph 2.4 of the WIPO Overview of Panel Views. It is broadly between a US approach that has been prepared (at least in cases that involve only US parties) to be influenced by US case law on the issue, and non-Americans that have tended to be less impressed by such arguments and more often than not have concluded that <[trade mark].[tld]> domain names, even when used for criticism sites, are abusive.

In the last couple of years the question has arisen as to whether this divide is logically defensible. This in turn raises fundamental questions as to what extent the UDRP can or should be seen as providing a sui generis system of law (albeit one created by contract) or should be influenced by provisions in national law (including free speech rights under the US constitution as well as national law concepts of “fair use”).

For those who are interested in the subject, decisions in which this debate has been conducted include:

1066 Housing Association Ltd. v Mr D. Morgan, WIPO Case D2007-1461 [declaration of interest: Matthew drafted this ...]

Fundación Calvin Ayre Foundation v Erik Deutsch, WIPO Case No. D2007- 1947

Sermo, Inc. v CatalystMD, LLC, WIPO Case No. D2008-0647 and

Grupo Costamex, SA de C.V. v Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc. WIPO Case No. D2009-0062

The decision in D2009-0693 mentioned by your correspondent is of some interest in that the US panelist reached different conclusions on the issues of “right or legitimate interest” and “bad faith”. However, ultimately it is a decision that appears to be consistent with the traditional “US view”. It does not appear to address the more fundamental debate taking place on these issues.

It is also perhaps worth recalling that the English courts recently strayed into this discussion (perhaps unknowingly) in Patel v Allos [2008]. The decision was picked up by the IPKat at the time but was not as extensively reported as it perhaps deserves. It has not found its way on to the BAILII site. However, a full copy is accessible on Nominet’s website here".
Thanks, Matthew, says the IPKat, for taking the trouble to write in and to elucidate the current state of play in this obvious area of IP v free speech so neatly.

Free speech here
Words are cheap here
Words are cheep here [for those who sincerely believe that all music in 1971 was cool]
Expensive speech here

But will they remove their rings?

Olympic Removals is the unfortunate name of a removal business that has been told it must remove the Olympic symbol from its livery or face some pretty rough litigation. According to the Hertfordshire Mercury, spotted by the eagle-eyed Claire Argent, Olympic Removals -- which happens to be located directly opposite the world-class white water course currently under construction -- has received a warning email from LOCOG, the London Organising Committee of the Olympic Games, to stop using their long-established logo or face being sued. The firm maintains that it has used the five-ring symbol for 22 years and says it will not budge.

LOCOG says the removal firm, which specialises in library moves, should take down or paint over the Olympic rings logo which adorns its fleets of lorries, vans and other signs, and withdraw it from its marketing materials. The deadline for action (17 July) has now passed. The company says it would cost a small fortune to change the firm’s logo, but if they were offered proper compensation they would consider it.

A London 2012 Organising Committee spokesman said:
“The Olympic symbol is the most valuable asset of the Olympic movement and is integral to us privately raising the £2bn needed to stage and host the Games. We are obliged to prevent its use by third parties who do not have an official association with the Olympic movement while respecting the rights of those who are able to do so under the law. We cannot comment on individual cases. However, LOCOG deals with every matter on a case-by-case basis and will always”.
The IPKat hopes that some compromise can be found. Perhaps, for a small consideration, Olympic Removals can become a sponsor: Official Library Removals Supplier or something along those lines.

Cats in danger of being Olympically crushed here
Olympic Delivery Authority delivers ... CATS!

Phones not on hold

Just out this morning and freshly available on BAILII is Mr Justice Kitchin's judgment n Nokia Corporation v Her Majesty's Commissioners of Revenue & Customs [2009] EWHC 1903 (Ch), in which he dismissed Nokia's application for judicial review of HMRC's refusal to detain a consignment of counterfeit 400 Nokia phones and accessories under the Counterfeit Goods Regulation (Regulation 1383/2003), which has been incorporated into UK law by The Goods Infringing Intellectual Property Rights (Customs) Regulations 2004 (SI 2004/1473).

Right: phoning from Colombia, Geraldine was baffled to discover that her brand new Nokia wasn't living up to her expectations ...

The items in question were on their way from Hong Kong to Colombia -- neither of which are countries within the European Union -- and it was during a brief transitory stop at London's Heathrow Airport that they were inspected and found to be fakes. "Detain these goods!", said Nokia. "Can't", said HMRC, which "had difficulty in understanding how goods could be counterfeit within the meaning of the Counterfeit Goods Regulation unless there was evidence that they might be diverted onto the EU market".

After an extensive recitation and review of the law, Kitchin J got straight to the heart of the issue:
"Clearly any power of arrest or detention of goods by HMRC must be exercised in accordance with law. It must have a clear basis for interfering with the property of a third party".
The judge then reviewed the not insubstantial ECJ case law and summarised it as follows:
"49. ... First, infringement of registered trade mark requires goods to be placed on the market and that goods in transit and subject to suspensive customs procedures do not, without more, satisfy this requirement. ...
50. Second, the position is different if the goods in the transit procedure are subject to the act of a third party which necessarily entails their being put on the market (“the Montex exception”). But the burden of establishing this rests on the trade mark proprietor.
51. Third, a mere risk that the goods may be diverted is not sufficient to justify a conclusion that the goods have been or will be put on the market.
52. Fourth, the Counterfeit Goods Regulation has not introduced a new criterion for the purposes of ascertaining the existence of an infringement of a registered trade mark or to determine whether there is a use of the mark which is liable to be prohibited".
Applying these four principles, Kitchin J could only refuse the application for judicial review and express his regret:
"80. ... I recognise that this result is not satisfactory. I can only hope it provokes a review of the adequacy of the measures available to combat the international trade in fake goods by preventing their transhipment through Member States".
The IPKat shares the judge's sentiments. Merpel adds, the same ruling presumably applies equally to situations in which the goods in question are fake brake pads, counterfeit medicines or, which is just as serious, tainted cat food. A review of both the policy and the mechanics of implementation of the detention of goods is certainly in order.

Copyright snippets

Yodelling copyright victory

The IPKat learns from the Daily Telegraph that a Munich court has decided that the heirs of Karl Ganzer, who wrote Kufstien Song, a German yodelling song containing the yodel "Holla-räe-di-ri, di-ri, di-ri" and once voted the best German song of all time, are entitled to the royalties, and not the song's publisher. The publisher argued that he 'jazzed up' the song, and therefore was entitled to a cut. What clinched it was a 1980s document where the publisher admitted that Ganzer was the author of the song.

The IPKat wishes he'd been a fly on the wall at the trial. All that yodelling... He notes though that even though this may be a highly popular song, the royalties only seem to amount to £3,000 per annum.

Author's own music taken down by YouTube

Proof that the silly season is upon us - the Mirror reports that the music producer Calvin Harris is not a happy bunny after the BPI arranged for YouTube to remove his own music from his YouTube account , citing copyright infringement. He has not kept his feelings to himself, but the IPKat won't report precisely what he said.

Oh dear..says the IPKat

Sunday, 26 July 2009

Letter from AmeriKat

The AmeriKat has returned to London this week after a relaxing four days of fresh air and sea breezes on the island of Guernsey, only to find she has come down with a mammoth case of flu (not of the Swine variety, she hastens to add). Apparently, the London pollution keeps viruses at bay ...

Viral lobbyists

Like the viruses currently in the AmeriKat's bloodstream, the lobbyists in the hallways of Washington D.C had a busy second quarter infecting the various governmental branches with their agendas. A group of lobbyists that were particularly busy this year was comprised of Alan Davison, Pablo Chavez, Johanna Shelton, Harry Wingo and Robert Tai. These names are undoubtedly unfamiliar to many of the IPKat’s readers, but the corporation to whom they were lobbying for will be – Google Inc. Google spent $950,000 on lobbying this quarter, a figure which is up $200,000 over the second quarter of 2008. The increase is not surprising. In the past year, Google has faced several issues ranging from the hotly-disputed Google Book Search settlement to AdWords lawsuits to various YouTube infringement suits.

Can evidence of confusion be found in the Rosetta Stone?

A change in Google’s AdWords policy last month prompted Rosetta Stone, a provider of foreign language educational materials, to file a trade mark infringement suit in the Eastern District of Virginia contending that Google is free-riding off its Rosetta Stone mark by selling to third parties the right to use the mark for online advertising. Previously companies bid on keywords, including trade marks, which would trigger their advertisements to appear to the right of the Google Search. These key words and trade marks, however, would not appear in the advertisement’s body of text. On 15 June 2009, however, Google widened its policy so that keywords and trade marks would now appear in the advertisement’s text. At paragraph 67 of the claim Rosetta Stone alleges that, due to Google’s dominant position,

“Google effectively forces Rosetta Stone to purchase the ‘rights’ to have official Rosetta Stone advertisements appear when Internet users search the web for Rosetta Stone Marks. In other words, Google has set up a system wherein Rosetta Stone and others are, de facto, forced to pay Google to reduce the likelihood that consumers will be confused by Google’s own practices”
which costs Rosetta Stone “millions of dollars.” Rosetta Stone’s general counsel Michael Wu stated that
“Google and its advertisers benefit financially from and trade off the good will and reputation of Rosetta Stone without incurring the substantial expense that Rosetta Stone has incurred in building up its popularity, name recognition, and brand loyalty.”
Rosetta Stone will have to produce evidence, empirical or otherwise, that Google’s display and use of their mark in the ad text confuses consumers.

The US Circuit Court of Appeals had previously ruled in favour of Google in an earlier AdWords dispute brought by computer repair firm Rescuecom. But this past April the Court vacated this earlier ruling due to a misapplication of the ratio in 1-800 Contacts v WhenU and has now reinstated the case. The only issue to be decided at this trial is identical to the issue in Rosetta Stone’s claim: whether there exists confusion on the part of consumers by Google’s use of the complainant’s marks.

The AmeriKat believes that showing confusion, especially in relation to the behaviour of online consumers, will be incredibly difficult for the complainants in these AdWords suits. As reported in Business Week, Andrew Pederson (Google’s spokesman) said that Google’s AdWords policy was akin to a grocery store’s display of different brands on a shelf:
“Just as it’s reasonable to expect a range of brands on any shelf in a grocery store, providing users on Google with more than one option when they search for a brand name or other trademark helps them to find the best product at the lowest price.”
Except, the AmeriKat argues, grocery stores don’t put Kellogg’s stickers on generic cornflakes in order to assist the consumers in identifying that they are breakfast cereals, albeit at a lower price.

Google Search Settlement

A significant proportion of the lobbying budget will have been devoted to the issue of the Google Book Search settlement. As previously reported by the AmeriKat, the Google Book Search settlement has generated such a degree of concern in various creative industries that the Justice Department has begun an inquiry into the antitrust implications of the settlement and its possible violations of the Sherman Act. The DoJ is not the only governmental organization that will be investigating the settlement. After an initial complaint from Germany (supported by Britain and France) the European Commission will be holding a hearing where interested parties will be given the opportunity to comment on the settlement on 7 September 2009. With rumours that the House Judiciary Committee are contacting interested parties to arrange a hearing into the settlement, the AmeriKat expects that legislative and media coverage of the settlement to escalate in the run-up to the European Commission hearing and the expected 7 October judgment of Judge Denny Chin.

The AmeriKat will be interested to assess whether after these upcoming trials and hearings Google’s lobbying investment will have paid off. The AmeriKat also suggests that readers read this article in the Wall Street Journal about an ex-Google lobbyist who is reported to be working for Obama’s administration.

Other News

The BlackBerry that may be nestling in your briefcase or pocket right now was made by Research in Motion (RIM). Last Thursday, Research in Motion agreed to pay $267.5 million to settle a 2006 patent lawsuit brought by California-based wireless email company Visto Corporation. The settlement also provides that RIM receives a perpetual, fully-paid licence on Visto’s patents. RIM had previously counterclaimed that Visto’s patents did not involve any new inventions which resulted in various global lawsuits being brought, including in the UK. If this case rings a bell now, it is probably because of Mr Justice Floyd’s refusal to grant RIM its full costs, stating that for its lawyers' (Allen & Overy) $10.32 million fees “one would be entitled to expect each of them to be able to recite all the documents in the case by heart.” Nevertheless, last week’s settlement may signal the end of a run of lengthy patent battles against RIM, whichwill now be able to focus its attention on its core market objectives.

 The Associated Press (AP) settled a lawsuit last week over AP stories that were rewritten and posted without credit on All Headline News. The claim was based on the “hot news” doctrine which originated in International News Services v Associated Press, a 1918 Supreme Court case which stated that, although there is no copyright in facts, breaking news is to be considered as a ‘quasi property’ right. Justice Pitney, in giving the majority decision, developed the doctrine of misappropriation in the news. According to his judgment a news organization has gathered news “at the cost of enterprise, organization, skill, labor and money” and therefore has a limited proprietary interest in it against a competitor. The AmeriKat is all for a settlement, but would have loved to seen the “hot news” doctrine reappear in court with one of its original parties almost 100 years later.

 Last week the AmeriKat reported on a Marvel Comic character, but this week it is DC Comics that make an appearance in her letter. DC Comics has filed a lawsuit against John Stacks, a Florida man who is allegedly committing copyright and trade mark infringements by selling resin composite figurines of Batman, Robin, Catwoman and other characters. Stacks told reporters that he has contracts with all the actors including Adam West, Burt Ward, and Frank Gorshin to use their likeness on his figurines. Stacks contends he has only earned about $3,000 from the kits in the past 10 years. DC Comics are suing him for $7.5 million. The AmeriKat believes that this suit will resolve itself amicably, if only for DC Comics to avoid a RIAA-style PR disaster.

 Speaking of recent RIAA PR disasters, AmeriKat readers may remember the case of Jammie Thomas-Rasset, the Minnesotan mother who has a $1.92 million judgment against her for illegally downloading 24 songs. Two weeks ago Thomas-Rasset’s legal team asked a federal judge to grant a retrial or at least lower the damages to $18,000. The Hollywood Reporter reported that Tomas-Rassett’s attorney, Kiwi Camara, told the court that the $1.92 million judgment was “grossly excessive and, therefore, subject to remittitur as a matter of federal common law.” One of the artists Thomas-Rasset downloaded, Richard Marx, said that he was “ashamed to have [his name] associated with this issue.” The RIAA is apparently open to negotiation.

Friday, 24 July 2009

Friday favourites

As ever, the IPKat reminds readers to check the Forthcoming Events side bar, which is positively encrusted with gems: conferences, courses, seminars, lectures -- all for your edification.

Doing well! The IPKat has heard from the organisers of this year's Handbags at Dawn event, the Annual Intellectual Property and Fashion Conference, in London on 22 September, that early bookings have been strong and a good crowd is expected. IPKat team blogger Jeremy is in the chair and this year, for the first time, the conference is sponsored by Fashionista at Law. Although the event is affectionately nicknamed 'Handbags at Dawn', it covers more than just handbags -- though the handbag has been a much-coveted and much-litigated accessory in recent times (see eg the Birkin bag here and here, Freitag bag, Spongebob Vadobag ...)

Around the blogosphere. The SPC Blog, that quirky little niche blog devoted to the extension of pharma and agrochemical patents, has now brought out its own sequel, SPC 2, or Son of SPC. Well, actually it's not quite like that, but the SPC Blog now has a separate Resources Blog, which is proving popular with, among others, students writing dissertations and who like to have their legal materials accessible in a single location. Take a look, and if you find (or rather, don't find) something which should be there but is missing, please email Jeremy here and let him know.

This is a bit of a quiet time for IP blogs, so there's not much else to report. The European trade mark blog Class 46 has decided to flag its posts via Twitter: you can find Class 46 on Twitter here. Oh, and don't confuse Class 46 with Class 99 -- a blog for design law in Europe which is masterminded by the IPKat's friend David Musker. Good luck, David and your team!

Thanks are due to ...

* Matt Garner (Boult Wade Tennant) for this link to an explanation as to why apes ape and don't invent;

* Iain Stansfield (Olswang) for drawing the Kats' attention to a curious experiment in de-branding by Starbucks;

Right: 'Thank You' Bagpuss, available from Collectables Ltd

* Miri Frankel (Beanstalk), for picking up on how George Orwell suddenly became a non-person, or at any rate a non-author, on Kindle (another of the IPKat's old friends, Hector MacQueen, supplied information on this topic leading to this piece on the 1709 Blog). Miri also sent the Kats a link to an article with one of the year's most unexpected headlines: "Music Industry Lures 'Casual Pirates' to Legal Sites";

* Reg Rea and the lads/lasses in Alicante, for sending the Kats the latest issue of Alicante News, with its special focus on Community trade mark and design practice in Hungary.

When is it better not to have a trade mark?

Yesterday the Court of Appeal for England and Wales (Lords Justices Rix, Lloyd and Wilson) gave its ruling in Whirlpool Corporation v Kenwood Ltd, [2009] EWCA Civ 753.

At issue in this dispute was the shape of Whirlpool’s retro-looking KitchenAid Artisan mixer and its rival, Kenwood’s kMix. The shape of the Artisan mixer was registered as a Community trade mark. Kenwood launched its kMix to be a rival product, intending to attract design-conscious consumers.

KitchenAid (left)

According to the trial judge, Geoffrey Hobbs QC, the average consumer for the purpose of establishing infringement could be taken to be the design-conscious consumer. The goods in question were premium-priced products, targeted at that niche group of consumers. The question of who the average consumer was should be approached with an eye to the ‘real world’ and empirical evidence, said the judge, rather than in the normative/regulatory way adopted by some EU Member States.

kMix (right)

Rejecting the claim that Kenwood's product infringed Whirlpool's Community trade mark, the judge held first that there was no likelihood of confusion and so no infringement under Art.9(1)(b) of Council Regulation 40/94 on the Community trade mark. While the kMix would be recognised as ‘KitchenAid-ish’, it would not be mistaken for a KitchenAid. There wasn’t even confusion of the ‘bait and switch kind’ (though Mr Hobbs QC expressed his belief that this would be actionable), whereby consumers would only realise that the kMix was not a KitchenAid after close examination. Moreover, a consumer who was about to spend upwards of £300 on a mixer would be unlikely to be under a misapprehension as to trade origin. This lack of confusion also meant that there was no misrepresentation for the purposes of passing off.

The kMix made a ‘non-verbal statement to the effect that the kMix is a mixer’. This being so, it was a sign, and Kenwood couldn’t argue that it wasn’t being used as a sign for the purposes of Arts 9(1)(b) and (c).

As for Art.9(1)(c), which addressed Whirlpool's claim that Kenwood's use if its shape took unfair advantage of, or was detrimental to the distinctive character or repute of the mark, the ‘mnemonic’ effect of the two marks meant that there was a ‘link’ between them. However, although it might affect its market share, the kMix would not affect the distinctive character or repute of the KitchenAid mark. In the words of Mr Hobbs QC, the KitchenAid was

‘distinctive with relatively little scope for deviation from the paradigm form. I do not think that the bodywork of the kMix is relevantly similar to a degree which impinges upon the distinctiveness of the trade mark so as to satisfy the 'specific condition' for liability. I think it would be excessive, in the realm of product shapes, to apply the concepts of 'free riding', 'blurring', 'tarnishment' or 'dilution' more generally so as to hold that the bodywork of the kMix was too close to the bodywork of the Artisan for
the purposes of Article 9(1)(c).’

In giving judgment Goeffrey Hobbs QC indicated that Article 7(1)(e) of the Regulation had a role to play in the determination of the question of similarity. This might seem a somewhat surprising thing to say, since that provision deals with absolute bars to registration for

"signs which consist exclusively of

(i) the shape which results from the nature of the goods themselves; or

(ii) the shape of goods which is necessary to obtain a technical result; or

(iii) the shape which gives substantial value to the goods".

Whirlpool submitted that the judge had misdirected himself in referring to Article 7(1)(e) and that he had applied too narrow a test than he ought on the basis that the mark was a shape.

Above: two views of the Whirlpool Community trade mark

Dismissing the appeal, the Court of Appeal held as follows:

* Article 7(1)(e) of Regulation 40/94 did not apply to the registration of Whirlpool's mark because the mark included the brand name and did not consist exclusively of a shape. However, the judge did not err in applying Article 7(1)(e); what he had actually done was to state that the policy underlying that article was relevant to the assessment of whether there was a sufficient similarity for the purposes of Article 9(1)(c), both the mark and the sign being shapes.

* An assessment of similarity had to be carried out on a global basis by reference to the degree of similarity between the mark and the sign (here the Court cited Case C-252/07 Intel Corp Inc v CPM United Kingdom Ltd, noted here and here by the IPKat). This being so, the nature of the mark, the sign and their similarity had also to be relevant. It was, therefore, not a misdirection in itself for the judge to observe that the mark and the sign respectively consisted of the shape of the product itself and that, while Whirlpool's mixer had a somewhat distinctive shape, it did not involve any fanciful or capricious element as a distinguishing feature.

* Other than as sounding a warning note, it was not clear what effect the judge's observation on Article 7(1)(e) had on his actual decision.

* The judge did not apply a narrower test than he should have. Starting by recognising that the two product shapes had enough in common for the one to remind relevant average consumers of the other, while not causing confusion as to trade origin, he accepted that that was sufficient to amount to the necessary link. He then asked whether that link caused detriment or led to unfair advantage being taken of the mark's distinctive character or repute, finding that it did not. No loss of Whirlpool's market share was attributable to any damage to its trade mark and the similarity between the respective articles was insufficient to affect the distinctiveness of the mark. No 'blurring', 'dilution', 'tarnishing' or 'free-riding' had been made out. By saying those concepts were not to be applied "more generally", he only meant that they could not properly be applied so generally as to find that the shape of Kenwood's mixer was so close to that of the mark as to infringe under Article 9(1)(c) -- not that they were to be applied less generally where the mark and the sign were both product shapes.

* the facts here were a long way away from those considered by the Court of Appeal in L'Oreal SA v Bellure (see the IPKat note here), where the alleged infringers clearly intended to take advantage of the distinctive character and repute of the claimants' marks. Kenwood had its own established goodwill in kitchen appliances and did not need to ride on Whirlpool's coat-tails. Being a newcomer in a specialist market in which Whirlpool had a monopoly, and having the same basic shape as Whirlpool's mixer, Kenwood's mixer would remind average, design-aware customers of the claimants' product.

The IPKat is reserving judgment on the Court of Appeal's decision till he has had more time to reflect on it.

[Danger: IPKat rant alert] Turning from the logic of the Court's reasoning to wider issues, he does however have this to say: while conceding that he is not the relevant consumer of the litigated products, he really feels that this episode is a difficult one to comprehend. Here are two household items which, even after reading two sets of judgments and looking at the illustrations, he would be hard-pressed to tell apart and which he is certain he would not be able to distinguish from each other if they weren't both in front of him at the same time; here is a case in which it has been apparently proved that there is no likelihood of confusion between the product shapes and here is a Community trade mark for something that looks like the shape of an ordinary household appliance rather than a message that guarantees the identity of the origin of goods bearing that shape. In addition, this dispute has occupied eight days of court time at first instance plus a further three days before the Court of Appeal, not to mention the time spent writing up two extremely long judgments. The result is that Whirlpool is unable to stop a competitor coming into the market with a product that closely resembles its own. This same result could have been achieved far more cheaply and sensibly, for the benefit of both manufacturers, by doing the right thing in the first place and refusing Whirlpool's useless Community trade mark application.

Right: when search engines look for 'cat' and 'mixer' ...

Dangerous Whirlpools here and here
Kenwood heritage here

Thursday, 23 July 2009

Enthusiastic IP graddie seeks adventure

A young, vivacious and charming friend of the IPKat is looking for adventure. She writes:

"I am a recent Masters of Law graduate, with a specialism in Intellectual Property from the University of London, Queen Mary, looking for a Legal Internship in London, Europe, or South America. I am available immediately and I am very keen to assist with any projects in the area.
Having studied IP both at undergraduate and Masters level, I am very keen to gain an internship in this area. I really enjoy writing and the policy issues that arise from IP and its relationship to public policy, health, education, access to information and so forth. I have written two IP-related dissertations, one in the area of health, “New Era Genetics, Ownership, and Commodification, Ethical considerations in Biotechnology” and another in the area of education. “Sub-Saharan Africa, Education and The Knowledge divide: Copyright Law a Barrier to Information.” Although what I am looking doesn't have to be limited to the above, this is just to give you an indication of who I am, the direction I am moving in, and what interests me".
If you'd like to contact the young lady concerned, please email the IPKat here and he will forward your expression of interest to her.

Scents and sense -- or perfumes for peanuts?

Having just read "Estée Lauder defends brands", a Financial Times article published today and composed by Jonathan Birchall and Francesco Guerrera in New York, the IPKat has been pondering over the purchasing patterns of the market for scents, cosmetics and so on. This is because it is a long while since he has read anything particularly positive about selective distribution agreements. The article reads, in relevant part,

"Europe's small city-centre perfumeries and luxury boutiques have gained an ally from across the Atlantic in their continuing efforts to prevent the top brands they sell being available at cut-price rates on the internet.

William Lauder, chairman of Estée Lauder, ... warned ... that changing European competition laws could turn the business of buying beauty and skin care brands into an experience akin to flying on EasyJet, the low-cost UK airline.

Estée Lauder, whose brands include Clinique, MAC and Aveda, currently benefits from a "selective distribution" exemption to European competition law that allows the company to sell exclusively to authorised retailers, including the small city centre shops that are part of the traditional fabric of retailing across western Europe.

But the European Commission is reviewing the selective exemption rights that it grants to leading luxury companies that allows them to restrict distribution to favoured retailers and to their own branded e-commerce websites.

Mr Lauder described small local retailers as having "a real familiarity about the local clientele" that is "one of the key, core fundamental social principles of so many cultures and societies in Europe".

Mr Lauder compared the potential impact of taking away the selective distribution exemption to the experience of flying on EasyJet. "You got on the plane, they throw you a bag of peanuts . . . that's a commoditised experience," he said.

... the Commission is not expected to contest the "selective distribution" principle when it puts new draft guidelines out for consultation next week.

However, there has been heavy lobbying over some of the details and Brussels-based advocates for the brand manufacturers say there is still concern that, if a luxury manufacturer does not have an authorised distribution channel in one of the European Union's member states, unauthorised distributors could move in.

They are also concerned that imprecise language in the proposals could encourage litigation - although they say the unpublished draft has improved".
The IPKat notes that, when faced with the opportunity to purchase expensive perfumes and cosmetics, a very large number of consumers excitedly jump at it. If nothing else, this suggests that there exists a market for expensive products sold cheaply and without the hassle or the embarrassment that some feel when purchasing the equivalent product following a face-to-face encounter with an upmarket assistant in a fancy shop. It's equally plain that there are some people who value the experience, the intimate personal touch, the advice and the ambience that a sweet-smelling retail outlet can provide.

The Kat wonders what his readership, comprised of rich lawyers, poor students (not to mention poor lawyers and rich students), scholars, cynics, brand owners, policy makers and other bloggers, makes of this issue. Accordingly he is organising a little sidebar survey (see the top left hand corner of the IPKat's home page) in the hope that he can learn about prevalent attitudes. The survey closes at one minute to midnight, British Rainy Summer Time. on Sunday 2 August.

Adds Merpel, I've flown on easyJet a few times and never got any peanuts thrown at me. Perhaps Mr Lauder got mine as well ...

Free speech prevails over common law rights in WIPO panel decision

The IPKat's friend, Greek practitioner and scholar Nikos Prentoulis, has been getting very excited about a recept WIPO Panel decision over a domain name in which the respondent's freedom of expression prevailed over the complainant's common law service mark rights. Nikos writes:

"In deciding case D2009-0693, WIPO’s administrative panel rejected a domain name complaint filed by Sutherland Institute against Continuative LLC (both of Salt Lake, Utah, USA), after balancing conflicting interests in free speech and trade mark rights. Sutherland Institute, a non-profit organization/think tank, was incorporated in 1994. The institute contested the registration by Continuative of the domain name, supporting its claim only on the basis that it enjoyed common law service mark rights.
Continuative LLC had used the contested website, which was essentially the same in layout and features, host political criticism against the Sutherland Institute because of its allegedly anti-gay political agenda. Continuative's site also included two small disclaimers, describing the site as “a parody site, an opposing political platform”. Continuative LLC filed no response to Sutherland's complaint.
Under WIPO rules, a domain name complaint will fail unless the following cumulative requirements are met: (a) the respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights, (b) the respondent has no rights or legitimate interests in respect of the domain name, and (c) the respondent’s domain name has been registered and is being used in bad faith.

In this case, confusing similarity was evidently not hard to demonstrate. Additionally, the panel correctly held that Continuative LLC had no legitimate right or interest in the domain name (this is essentially the “parody site” argument, deriving from the “fair use” doctrine). The key point of its lengthy reasoning was that there was “no transformation into a potential parody object.

However, the complaint failed the criterion of bad faith. The panel held that the disputed domain name was being used for purposes of political speech, which is protected under US Constitution (nb both entities are US based) and, for this reason, the panel would not be willing to interpret “bad faith” in a broad manner. Thus it rejected the complainant’s argument that the domain name was registered for the purpose of disrupting the business of a competitor. According to the decision,

“... only by the exercise of mental gymnastics may a group of gay rights activists be defined as a “competitor” of a conservative public policy think tank. A person seeking the services of a lobbyist or advocacy group who is unable to secure the services of a conservative think tank is unlikely to decide to take its business instead to a group of gay-rights activists. Perhaps in some very attenuated sense these two entities are “competitors in the marketplace for ideas”, but the Panel does not think this is what the Policy means when it refers to “competitors”.

In the core of its reasoning on bad faith, the panel did not contend the fact that Continuative LLC registered and used the disputed domain name to confuse Internet users into thinking that the Sutherland Institute was a source, sponsor, affiliate or endorser of its website. However, it ruled that there was no evidence that it did so for “commercial gain”. The reference to “commercial gain” in paragraph 4(b)(iv) of the Policy, the panel held, was not designed to inhibit “pure political speech.” “In these proceedings the evidence before the Panel indicated that Respondent is engaged in “pure political speech”. There were no advertising links on Respondent’s website. There are no requests for financial support on Respondent’s website. Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of “bad faith”.

The pure/impure political speech dichotomy proved effective in this case. It is unclear however whether it can always do the trick. To begin with, as the panel hinted, when sponsorship or fund-raising or even commercial affiliation is involved, “purity” will be highly debatable. Moreover, the limits of pure criticism when it comes to attacking famous trade marks (because such limits do exist) are hard to draw.
The IPKat says thanks, Nikos, for taking the trouble to write. Merpel says, I'm not sure I understand the parody point. Continuative's site does parody that of the Institute. For example, the "real" site reads
"The Sutherland Institute’s philosophy is simple: We believe that parents are responsible for their children’s education and that the state role in education is primarily as a support to parents. We also believe that educational freedom is a necessary ingredient in providing the best education possible for each individual student".
and the respondent's echoes it:
"The Sutherland Institute's philosophy is simple: Unfortunately it's nothing more than a bunch of hate speech wrapped up in this feel good, community knows best garbage that doesn't hold water".
But what precisely is the nexus between the parody of the content and the right to retain and use the name? Perhaps a kindly reader can put the logic in feline-friendly format.

Sutherland here
Sutherland's Law here

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