From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 22 March 2017

Welcome clarification on the Malaysian law of well-known marks; but there is still judicial work to be done


The law of well-known marks continues to develop apace in various countries in Asia. Kat friend NG Kim Poh has offered a summary of an important decision in Malaysia on this dynamic topic.

The Court of Appeal of Malaysia had recently provided its grounds of judgment for an important decision in Y-Teq Auto Parts (M) Sdn Bhd v X1R Global Holdings & Anor (CACA NO. W-02(IPCV)(A)-511 -03/2016). The case dealt with the well-known mark provision under the Trade Marks Act 1976, prohibiting registration of a mark even where the goods or services of the parties are not the same.

The two respondents (the claimants in the action filed in the High Court) were the registered proprietor and registered user, respectively, of a mark in Class 4. A representation of the respondents’ mark is shown below:
The appellant (the defendant in the action filed in the High Court) was the registered proprietor of a mark in Class 7, Class 9, Class 12, and Class 35. The appellant also had a pending application for the same mark in Class 25. A representation of the appellant’s mark is shown below:
The respondents’ action in the High Court sought to expunge the appellant’s registrations and application, alleging that their use is likely to deceive or cause confusion to the public or would be contrary to law. The respondents further relied on Section 14(1)(e), which provides protection for a well-known mark.

The respondents prevailed at the High Court. In a relatively detailed judgment, the High Court delved into the applicability and scope of various provisions under the Trade Marks Act on protection of well-known marks in Malaysia. At the outset, the High Court ruled that the respondents had the necessary locus standi, notwithstanding that the parties’ respective goods fell under different classes.

There was evidence showing that the respondents were adversely financially affected because a third party declined to distribute their goods due to the mistaken belief that the goods originated from the appellant, which was a competitor of the third party. Further, there was likelihood of confusion and deception between the use of the respondents’ mark and the appellant’s mark.

The High Court ruled that the respondents’ mark was a well-known mark, inter alia, because:
(a) the public and people involved in the trade had identified the respondents’ mark with the respondents’ goods distributed by them. This assertion by the respondents was not denied by the appellant;

(b) the respondents’ mark had been used in more than 30 countries around the world, including in Malaysia;

(c) the respondents’ mark had been registered in various countries throughout Asia;

(d) the respondents had extensively promoted, advertised, publicized and presented goods to which the respondents’ mark had been applied; and

(e) there was clearly value associated with the respondents’ mark.
With respect to question of the connection between the mark and goods of the appellant and those of the respondents, the High Court ruled that this had been made out, based on showing either there was a “connection” as to the origin of the goods or in respect of the quality of the goods, or there was a business “connection” that might be perceived by the public.

Regarding likelihood of damages, the High Court held that this would be satisfied when:
(a) the claimant suffered a dilution to its goodwill in this country (i.e. Malaysia);

(b) there was a loss in the sales of the claimant’s goods;

(c) the claimant was restricted from expanding the use of its mark to goods in other classes; or

(d) the claimant was exposed to the risk of incurring legal liability from traders and consumers who had purchased the inferior goods of the defendant in the mistaken belief that they had acquired the claimant’s goods.
Consequently, the High Court ordered the appellant’s registrations and application be expunged from the Register.

The appeal was dismissed by the Court of Appeal.The Court of Appeal did not address the applicable legal principles in any detail, which is perhaps a bit unfortunate. Still, it is important to note that, in affirming the decision, the Court of Appeal in no uncertain terms held that the High Court had identified the correct legal principles and applied them to the facts of the case based on the evidence adduced by the parties.

Comment

These decisions are an important development in the law on protection of well-known marks in Malaysia, particularly because they have provided much welcome (indeed needed) guidance on the applicable principles and interpretation of important provisions of the TMA with respect to the protection to the protection of a well-known mark.

That said, the decisions appear to have missed an opportunity to discuss and provide guidance on the scope of the words “mark or part of a mark” in the context of Section 14(1)(e), TMA. For instance, would the provision apply to an impugned mark that is not identical with and is not part of the well-known mark in question? The decisions appear to have left this question unanswered.

Perhaps the answer to that question lies in Regulation 13A(b). The provision states:
"13A. The Registrar shall not register a mark or part of a mark where –

(b) the mark or part of the mark is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known under
regulation 13B, which is registered in Malaysia with respect to goods or services whether or not similar to those with respect to which registration is applied for, provided that use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the proprietor of the registered mark, provided further, that the interests of the proprietor of the registered mark are likely to be damaged by such use”(emphasis added).
Time will tell whether reliance on this provision will be made in a relevant future case.

BREAKING: US Supreme Court holds cheerleading uniforms eligible for copyright protection

Disclaimer:
not one of the uniforms
at the centre of the case
The US copyright decision everybody was waiting for is finally out.

In Star Athletica v Varsity Brands the US Supreme Court has just ruled that cheerleading uniforms are eligible for copyright protection ['copyrightable', to use the US copyright jargon].

The law

The US Copyright Act, §101 states that “pictorial, graphic, or sculptural features” of the “design of a useful article” can be protected by copyright as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 

Background

Varsity Brands holds more than 200 copyright registrations for two-dimensional designs - consisting of various lines, chevrons, and colourful shapes - appearing on the surface of the cheerleading uniforms that they design, make, and sell. 

It sued Star Athletica (also in the market for cheerleading uniforms) for copyright infringement, but the District Court held that Varsity Brands' designs could not be conceptually or physically separated from the uniforms and were therefore ineligible for copyright protection. 

In reversing, the Sixth Circuit concluded that the graphics could be “identified separately” and were “capable of existing independently” of the uniforms under §101.

Today's decision

In today's decision the US Supreme Court decided - 6 to 2 (Justice Breyer filing a dissenting opinion, in which Justice Kennedy joined) - that cheerleading uniforms are indeed eligible for copyright protection if certain conditions are met.

Writing for the majority, Justice Thomas held that a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature: (1) can be perceived as a two- or three-dimensional work of art separate from the useful article; and (2) would qualify as a protectable pictorial, graphic, or sculptural work - either on its own or fixed in some other tangible medium of expression - if it were imagined separately from the useful article into which it is incorporated. 

A detailed analysis of the decision will be provided in due course: stay tuned!

Italian Supreme Court rules that mere reproduction of Vespa image may amount to counterfeiting

Roman Holiday Vespa
Italian online IP resource Marchi & Brevetti has just reported a very interesting and recent decision of the Criminal Section of the Italian Supreme Court (Corte di Cassazione) regarding the crime of counterfeiting within Article 474 of the Italian Criminal Code.

More specifically, it its judgment on 17 March 2017 (sentenza No 13078/2017) the Fifth Section of the Supreme Court addressed the question whether the mere reproduction of the image of a Vespa [a well-known and iconic symbol of 'italianità', ie 'Italian-ness' and - more generally - Italian life-style] on gadgets (eg key rings) and T-shirts without also the reproduction of the word 'Vespa' [a registered trade mark] would amount to counterfeiting. 

Under Italian law counterfeiting is not just a matter of trade mark infringement [in this case, it would be trade marks held by Piaggio, which also produces quite a lot of Vespa-related merchandise] but also a conduct that is subject to criminal sanctions.

Background

The Rome Court of First Instance (Tribunale) had already found against the defendant, who appealed the decision before the Supreme Court and argued that his conduct would not fall within the scope of Article 474 of the Italian Criminal Code. This provisions states [translation by myself]:

"1. Except in cases of joint liability covered by Article 473 [ie counterfeiting, alteration or use of distinctive signs of creative works or industrial products], anyone who introduces into the territory of the State, in order to make a profit, industrial products bearing trade marks or other distinctive signs, whether national or foreign, that are counterfeited or altered, is punished with imprisonment between 1 and 4 years, and a fine between EUR 3,500 and 35,000.
2. Except in cases of joint liability in the counterfeiting, alteration, introduction into the territory of the State, anyone who is in possession for the sale, starts selling or otherwise circulates, in order to make a profit, the products mentioned above sub paragraph 1 is punished with imprisonment up to 2 years and a fine up to EUR 20,000.
3. The delicts sub paragraphs 1 and 2 are punishable upon condition that internal laws, EU regulations and international conventions on the protection of intellectual and industrial property are observed."

Kat Holiday Vespa
The core of the defendant's argument was that the crime within Article 474 of the Italian Criminal Code distinguishes between the concepts of, on the one hand, trade marks and distinctive signs and, on the other hand, products or objects. There would be no crime when one merely reproduces images of industrial products (like a Vespa) without also reproducing any trade marks or distinctive signs. In such case, there could be confusion among products, but not also trade marks or distinctive signs.

The decision

The Supreme Court rejected the defendant's argument.

Recalling an earlier Supreme Court decision (sentenza No 9362/2015), the court noted that even the mere reproduction of an image can fall within the scope of Article 474 as long as: (1) such image is a trade mark or a distinctive sign of the product; and (2) the reproduction has the potential to create in some way confusion among consumers as regards the origin of the good in question.

It follows that the material reproduction of a trade mark as such is not required for Article 474 to apply.

Comment

This decision is consistent with earlier Italian case law on this point. 

Even if the Supreme Court did not refer to decisions other than Italian ones, the ruling also appear consistent with relevant trade mark case law, including the seminal decision of the Court of Justice of the European Union (CJEU) in Adidas-Salomon, C-408/01. In the case the CJEU considered use of a sign as embellishment [this appears to have been to some extent the defensive line used in the case decided by the Supreme Court], and held that the fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to trade mark protection where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. 

Never Too Late: If you missed the IPKat last week!


This Kitten is delighted to bring you the 140th edition of Never Too Late covering the posts from 13 until 19 March! 

Friday Fantasies
InternKat Tian Lu recaps IP news and events including a training program for judges in Strasbourg.

It’s Never Too Late for playing around the IPKat posts!
Kat konfusion regarding passing off: likelihood of confusion and the Starbucks (HK) case
IPKat Neil Wilkof muses about the complexity of the three requirements of passing off and the issue of likelihood of confusion as they played out in the UKSC’s Starbucks (HK) decision.

Thursday Thingies
This Kitten reports forthcoming events in Bournemouth (3D Printing), Budapest, Minnesota, Basel and Geneva.

Wednesday Whimsies
InternKat Hayleigh Bosher summarizes IP news and events including an IP Ball.

First live blocking order granted in the UK
IPKat Eleonora Rosati discusses the first injunction granted in the UK for blocking streaming servers, which give access to unauthorized live streaming content.

The scope of a well-known mark: not always as broad as some might wish
Kat friend Latha Nair discusses the case of Cipla Limited v. Cipla Industries Pvt Ltd in India, which involved the use of a well-known mark as trade name in respect to dissimilar goods.

Monday miscellany
InternKat Tian Lu recaps IP news and events including the UKIPO call for views regarding illicit IPTV streaming devices.

Around the IP Blogs
InternKat Tian Lu covers the latest posts from some IP blogs.

UK's IP Enforcement Framework-IPO Research Bid Opportunity (Update)
IPkat Neil Wilkof announces the deadline for submitting applications to UKIPO research bid.



PREVIOUSLY ON NEVER TOO LATE

Never Too Late 139 [week ending on Sunday 12 March] | Shall we dance? Regulatory approval, trade secrets and the transatlantic biosimilars patent wars | Biosimilars and generics as "rip-offs": when the facts may not matter | UK's IP Enforcement Framework - IPO Research Bid Opportunity | Curtain - Merpel's final EPO post | Amgen, Pfizer, Alphabet and Uber face up to trade secrets in biosimilars, self driving cars and product launch plans | BREAKING: Politico publishes (part of) draft copyright report by MEP Comodini Cachia | Parallel imports are permitted--unless they are not: the case of SAMSONITE in Singapore | UPC to open in December - a triumph of hope over experience? | The KitKat shape mark – no merging of territories for proof of acquired distinctiveness

Never Too Late 138 [week ending on Sunday 5 March] | BREAKING: High Court grants declaration that products obvious/anticipated at claimed priority dates | TVCatchup 2 and the harmonising vision of the CJEU | Will the Arrow hit the Humira target? Find out tomorrow! | Corks popping following account of profits decision | "Kit Kat" finger shape marks: this time in Singapore | Two events in March | MIP International Patent Forum 2017 | More Than Just a Game - 2017 edition | INTA comes to Barcelona in May for its Annual Meeting (early bird registration, but not for long)

Never Too Late 137 [week ending on Sunday 26 February] | Patents and the Silicon Valley of clothespins | Interested in EU copyright and wish to discuss it in Florence? Here's the event for you | ARGOS - trade marks, domains, and google advertising | Swedish Patent and Market Court of Appeal orders block of The Pirate Bay and Swefilmer | The Enforcement Directive permits punitive damages - or does it? | Trader keeps the [good] faith in a spare part in trademark doublebill | Book Review: The Informal Economy in Developing Nations - Hidden Edge of Innovation? | Copyright law in the UAE: it's not what you might think | Monday Miscellany | Major changes to trademark law in Turkey: read all about it

Never Too Late 136 [week ending on Sunday 19 February] | Tartan Army scores own goal? | Book review: "Brandfather: John Murphy, The Man Who Invented Branding" | IP Summit 2016 (Second Part) | Around the IP Blogs! | Monday miscellany

Tuesday, 21 March 2017

The Delhi University photocopy case comes to an abrupt end after publishers withdraw lawsuit

The IPKat is delighted to receive this guest post from long time Katfriend Prashant Reddy (details at the end of the post).

In a rather bizarre end to the long running copyright infringement lawsuit filed against Delhi University (DU) and a photocopy shop, the three publishers: Oxford University Press, Cambridge University Press and Francis & Taylor who filed the lawsuit have announced that they are withdrawing the lawsuit. The lawsuit was filed by the publishers in 2012 to restrain DU and the photocopy shop from reproducing portions of copyright protected books for the purpose of creating course packs for students of DU. This had been the practice in DU and most Indian universities for several decades and was never challenged till the filing of this lawsuit. As a result, the lawsuit provoked protests and rallies by students and also rallies and a legal intervention by a society of academics and students who supported the university’s position that the educational use was covered by an exception in the Copyright Act, 1957.

A single judge of the Delhi High Court denied an interim injunction in September 2016 and dismissed the lawsuit after having reserved the case for judgment for several years. In December 2016 a Division Bench of the Delhi High Court also denied an interim injunction in a judgment that was very damaging to the publishers. Given the importance of the case, it was widely expected that the publishers would appeal the case to the Supreme Court, an almost routine affair for such cases. But last week, my co-blogger at SpicyIP, Shamnad Basheer who was at the forefront of the legal battle against the publishers reported that the publishers had put out a statement announcing that they were withdrawing the lawsuit. The publisher also claimed that they would continue working with academics and students to contribute and improve India’s education system.

The failure to communicate during a PR disaster

When the lawsuit was originally filed, the lethargy of the publishers in communicating with the students led to a widespread belief that publishers wanted each student to purchase entire books for the use of one chapter. The story that spread amongst the students however was that they would have to buy individual books for the use of a single chapter and that the final bill for a course could go up to Rs. 80,000. Later when the damage had already been caused, the publishers clarified that it was their intention to require universities or photocopy shops to buy licenses to photocopy books and charged half a rupee per page that was photocopied for a course pack. A course pack which earlier cost Rs. 250 towards photocopying charges would now cost Rs. 500 towards both photocopying and copyright fees. The publishers did too little to set the record straight and the flame of discontent spread through the student body like wild fire.

An incomplete legal strategy?

Then comes the issue of the legal strategy. I’ve written about it over here and here on the IPKat. For reasons best known only to the publishers, they characterized the volume of copying as ranging from 8% to 33% of a copyrighted book. As I’ve explained in an earlier post, these figures are inaccurate. The books in question were mostly compilations of essay or chapters by different authors and most of the course-packs consisted of entire chapters from these compilations – so while the portion copied may have been 10% of a book, the chapter in itself was an entire copyrighted work. Thus, effectively, entire copyrighted works were being photocopied. This was an important point that the publishers should have paid more attention to from the very beginning because it appears to have weighed on the minds of the judges. These small facts make a big difference when public perception is loaded against the copyright owners from the very beginning.

Regarding the interpretation of Section 52(1)(h) of the Copyright Act, the publishers dug their teeth into the black letter of the provision without paying enough attention to the substantial history of Indian Copyright law. I’ve explained the history of Indian law in more detail in the previous post. In specific, Indian law has a provision – Section 32A, which was introduced post the 1971 Paris Revision of the Berne Convention – the provision provides Indian users with a broad compulsory licensing provision for educational uses provided the copyright owner was compensated with reasonable royalty. The existence of this provision should have been reconciled with the broadly worded Section 52(1)(h) which allows for the reproduction of any work by a teacher or a pupil in the “course of instruction”. Read either provision too broadly and one will end up being redundant - which is not a permissible result in law.

This argument is not dealt with in either of the judgments rendered by the High Court, presumably because it was not raised before the Single Judge who first heard the lawsuit. The compulsory licensing provision in Section 32A has been rendered redundant because Section 52(1)(h) has been interpreted by the Delhi High Court to allow for any kind of photocopying without any quantitative or qualitative restrictions as long as it can be established that the photocopying was towards an educational purpose. For example, in the case of a course-pack as long as the teacher has prescribed the reading for the course it can be photocopied in its entirety. It should be noted that the judgment doesn’t define the phrase “educational institution” or limit it to non-profit institutions. India has a thriving for-profit education industry, which can also fall back on this judgment.

Indian students can’t pay for books and legit photocopies?

The most powerful argument put forth by the students and academics was one of economics. They painted a picture of penniless students and a financially broken public education system that could not pay for copyrighted material. Very often these tales are true and cannot be denied. It’s a simple, emotive argument that resonates well in India where everybody including the Supreme Court is on a populist roll. This argument however does little to address the task and costs of production of new scholarship and the challenges of pricing them right for India. This is a complicated issue as reflected in the cost structure of education in India.

As I pointed out in a piece written in the early days of the lawsuit, the annual fees at a high school like the Delhi Public School (notwithstanding the name, DPS is actually a chain of private schools) was Rs. 40,050. Now, 5 years later, it has increased to Rs. 90,000 a year. It is students from schools like DPS who then enter DU because admission to universities like DU are based on the XII standard scores and the best private schools produce the students with the best scores. A small percentage of seats (22.5%) in these universities are reserved per the Constitution for students from marginalized sections but a vast majority of students entering public universities in India are likely privileged.

What are the fees per student? In 2012, the Delhi School of Economics (the lawsuit was filed against the photocopy shop affiliated to DSE) which is a post-graduate college under DU charged an annual tuition fees of Rs. 216 (2.67 GBP) per annum and an annual library fee of Rs. 6 (0.074 GBP), and an annual library development fee of Rs. 200 (2.47 GBP). As per the latest available brochure for DSE none of these charges have increased since 2012 (despite record inflation level in the last 5 years). According to the same brochure these students then go on to work for companies like Goldman Sachs, Citibank etc.

The affordability of educational material needs to be viewed in the context of the cost of education but if higher education is so irrationally subsidized, how are publishers supposed to price their material to fit the definition of ‘affordability’?

Will contract triumph where copyright has failed?

The last question that needs to be addressed is why did the publishers withdraw the lawsuit? Their public statement doesn’t provide any reason. One likely answer is that they intend to shift their business models to the digital world, making available their works to universities through databases like the Oxford Scholar Online. Licensing agreements for these databases are likely to be governed by foreign law, most likely English law and publishers will be able to curb fair dealing limitations and exception with the help of arbitration clauses that locate litigation before foreign arbitral tribunals. Do Indian universities have the resources to deal with this changing paradigm and does the law help provide users with remedies against abusive conduct by owners of such databases? That is a debate worth everybody’s time. In the meanwhile, it is the smaller Indian publishers who are going to feel the brunt of the decision to not appeal this judgment. Some of them have already expressed their unhappiness with this decision of OUP etc. to withdraw the lawsuit. They deserve a better explanation that the bland public statement put out by OUP.

The writer is co-author of Create, Copy, Disrupt: India’s Intellectual Property Dilemmas (with Sumathi Chandrashekaran) published by OUP, India and is a Research Associate at ARCIALA, School of Law, Singapore Management University

Traditional Knowledge: beware of patent protection


Few intellectual assets give rise to as much passion as Traditional Knowledge. India has become a center for this conversation. Kat friend R.S Praveen Raj, a scientist and a former patent examiner in India, shares his views on the protection of Traditional Knowledge and against what he sees as misuse of IPR legislation.

Protection of Traditional Knowledge (TK) is a complex legal issue, owing to its dynamic nature, lack of definition and the difficulty in establishing ownership and the geographical origin of TK, as well as the absence of an appropriate scheme for its protection. Indigenous communities and traditional knowledge practitioners all over the world are greatly concerned about the increased biopiracy and usurpation by commercial entities. It is in this context that the Council of Scientific and Industrial Research (CSIR) in India formulated the Traditional Knowledge Digital Library (TKDL), which is an endeavor to preempt the grant of patents on India’s TK. TKDL contains approximately 2,08,000 formulations based on the traditional healing systems, such as Ayurveda, Unani, Siddha and Yoga.

TK Digital Libraries are the best defensive mechanism to prevent the patenting of TK already written down in ancient texts and manuscripts, although it still leaves scope for private appropriation of TK by making cosmetic improvements on it. India has signed access agreements with the European Patent Office and US Patents and Trademark Office, on the condition that secrecy be maintained and the database may be used as prior art for search and examination only. 'Prior art' is meant to encompass everything that has been published, presented or otherwise disclosed to the public as of the date of the patent and it includes documents in foreign languages disclosed in any format in any country. However, it is common sense that secrecy cannot be maintained on something that is classified as ‘prior art’.

When a patent office denies a patent to someone citing that the claimed invention is TK, it is obliged to disclose the entire gamut of TK associated with the invention as a prior art citation to the applicant, since the burden lies on the patent examiner to prove that the claimed invention is already in the prior art. This leaves open a channel for a fishing expedition by commercial outfits seeking to obtain complete details of a TK practice or product available in TKDL, by filing patent applications in the guise of inventing same and craftily drafting claims using the information available to them. Therefore, the closed access policy of TKDL actually enhances bio-piracy, as it is impossible for patent offices to maintain the secrecy of TK.

Of late, there are also attempts to create digital libraries of community-held TK that are not yet written down anywhere. Any attempt to codify community-held TK in the form of Traditional Knowledge Digital Libraries, using “Prior Informed Consent” and “Access and Benefit Sharing” concepts, would be a gross injustice for those communities, if the knowledge was shared with patent offices, as it would affect the livelihoods of Traditional Knowledge practitioners. This blogger reckons that TK Digital Libraries are to be created only on TK already known to a larger cross-section of people and the same should be made accessible to researchers. For example, Curcumin Resource Database (CRDB), an open source TK database from India, is a good example of a strategy to prevent patenting of TK. CRDB has documented all the traditional knowledge about curcumin already in public domain and the database is made accessible to researchers.

In the case of community-held TK, a Traditional Knowledge Docketing System (TKDS) should be made instead of TKDL. TKDS should indicate the location in which the knowledge is available, the community that possesses the traditional knowledge, a short description of the nature of TK and the community protocol, if any. Indigenous communities should be educated and empowered to protect their TK through existing legal mechanisms or to take patents on the innovations made by them on the TK (if they so choose), as well as to negotiate with potential customers by forming societies or trusts of their own. There is no bar for patenting inventions, though it may be based on TK. The Patent Acts only prevent patenting of traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. But there is no bar on patenting inventions based on Traditional Knowledge

Suggested legislation for 'In Situ’ perpetual protection of TK through a non-IPR mechanism

TK should not be allowed to be patented, since it is existing knowledge and not inventions. We should also be careful in creating registrable rights on the Traditional Knowledge (TK), including Traditional Medicine Practices, and classifying TK under Intellectual Property Rights, which are private exclusive rights operating like a monopoly in practice. Patents create private spaces in the knowledge arena (though for a limited, fixed duration), and therefore no private appropriation should be allowed in the realm of TK.

Protection for community-held TK is called for. But trade secret protection for TK is not appropriate, since knowledge/practices would remain in the custody of a selected few. It is like allowing monopoly over knowledge and a democratic nation shall not allow it. At the same time, Traditional Knowledge protection shall be holistic and ‘in situ’, hence allowing its sustainable development. Therefore, we may commit all traditional knowledge, including traditional medicines, to the realm of a “knowledge commons” and not to the public domain. Knowledge commons refers to the knowledge that is the collectively produced sphere of ideas, left unencumbered for the greater benefit of all. Since TK is not definitive in terms of its geographical origin and custodians, ownership should be held by the State only, given the fact that TK is accumulated traditional wealth and the long-kept preserve of its practitioners, tribal communities and families, wherein all of them have acted as deemed “trustees” of the State.

There shall be ‘deemed rights’ for the Traditional Knowledge holders and they should be made aware of their rights. It shall be a kind of “deemed license”, which immediately applies to the user of TK, the moment that the user decides to employ it for any purpose. The provisions for governing the deemed license/community protocols will need to be laid down in the legislation. But these licensees are not empowered to sub-license this right for commercial use to any third party, and the right for transferring licenses will be enjoyed solely by the State. In principle, the purpose of the proposed legislation is to assign some (not all) of the rights owned by the State to those deemed trustees, in lieu of their willingness to put the TK into the realm of a “knowledge commons”. The ultimate aim of the legislation is not to protect the financial interests of the TK holders, but to benefit society at large, just as with patents.

While envisaging ‘deemed rights’ in traditional knowledge, all the rights holders shall be deemed to be holding their rights under a Commons License, wherein the rights holders shall permit others the use of the knowledge in their possession for non-commercial purposes. Specific provisions for such Traditional Knowledge Commons License will need to be worked out to ensure free, non-commercial reproduction and codification of the Traditional Knowledge.

It shall be further provided that any development made using this knowledge and licensed under the above obligation, should be put back to the realm of a Traditional Knowledge Commons, thereby denying any scope for patenting thereof. Although license holders are obliged to contribute their developments made in TK back to the realm of the Traditional Knowledge Commons, path-breaking inventions, such as the development of a new drug molecule or process thereof, which involves substantial developmental costs, need not form a part, even if TK may constitute the basis of its origin.

Wish to discuss GS Media and linking?

Well, who could possibly reply 'no' to such a question?!?

If you are in London in the evening of Tuesday, 28 March, then you may want to attend the new event organised by TIPLO (The Intellectual Property Lawyers Organisation), to which I have also been kindly invited to speak.

Entitled 'Linking after GS Media: clear (and happy) at last?', this meeting consists of a convivial dinner in the beautiful premises of Middle Temple (The Princes' Room to be more precise), followed by a discussion of the issues addressed (and raised) by everybody's favourite court, ie the Court of Justice of the European Union (CJEU), in its seminal decision in GS Media, C-160/15.

In that case the CJEU tackled the issue of linking to unlicensed copyright content, and determined what the relevant legal treatment should be.

Yet, the ruling raises several questions:
  • How did the CJEU reach that decision?
  • Where are we after GS Media: is the relevant legal framework on linking any clearer now?
  • Profit-making intention: what is it all about?
  • Who is likely to be most at risk in the post-GS Media world?

Click on this (GS Media-approved) link for further information and to register your place.

Monday, 20 March 2017

Around the IP Blogs!


Exploring IP cyberspace!
This kitten is delighted to bring you the highlights from some recently published IP blogs!

Marie-Andree Weiss of The 1709 Blog reports on Pena v. Celebrities Unlimited, Inc., 1:17-cv-01853-PGG. The case involved the unauthorized reproduction and sale of framed copies of a photograph taken during a Texas Rangers baseball game.

Michael Geist blogs about the digitization of books and fair dealing in Canada within the context of Concordia University case, which involved the unauthorized scanning and uploading of poetry books for five students. 

CREATe announces that the resource page of the first Copyright Education Symposium, held in 2016, is now online. The event was sponsored by CREATe, ALCS, CLA, ERA, PRS for Music, and the Industry Trust for IP Awareness and was supported by UKIPO. The commissioned working paper prepared by InternKat Hayleigh Bosher can be reviewed here.

Moving to trademarks, Friso Onderdelinden discusses on the Kluwer Trademark Blog three cases brought before Dutch courts, which involve the unauthorized use of trademarks in clothing (as a decorative artwork) and pet accessories.

Finally, over at The TTABlog, John L. Welch analyzes Christian Lacroix v. Christian Lacroix, Snc, in which the Trademark Trial and Appeal Board (USPTO) dismissed an opposition based on fraud, which had alleged a lack of consent for the trademark registration.

Never Too Late: If you missed the IPKat last week!

Spring has sprung!
Too busy getting excited about Spring to keep up with IPKat this week? No problem, here is the 139th edition of Never Too Late.

Mark updates us on the latest disputes of the saga between Nestlé and Cadbury around the shape of the KitKat chocolate bar.

Alan Johnson (Bristows) explains why, despite everything that has happened, he is still optimistic that the UPC will happen.

Kat friends Lau Kok Keng and Nicholas Lauw, partners, and Jiamin Leow, associate, of Rajah & Tann, share their thoughts on a recent trademark decision in Singapore regarding the thorny matter of when parallel importation may not be allowed.

Politico Europe (PRO version) published part of the text of the draft report that MEP Comodini Cachia is preparing on the European Commission's copyright package - including the proposal for a directive on copyright in the Digital Single Market.

Three recent trade secret matters involving biosimilars, autonomous cars and marketing strategies.

Merpel gives her last update on the happenings in the EPO.

The UK Intellectual Property Office has opened a research bid into the effectiveness of the UK's IP enforcement framework.

Neil ponders the meaning of “rip-offs” in patents.

Annsley walks us through the dance of the patent, looking at the a joint position paper from the European Federation of Pharmaceutical Industries and Associations (EFPI), the International Federation of Pharmaceutical Manufacturers & Associations (IFPMA) and European Biopharmaceutical Enterprises on
interchangeability.


PREVIOUSLY ON NEVER TOO LATE

Never Too Late 138 [week ending on Sunday 5 March] |Will the Arrow hit the Humira target? Find out tomorrow! I BREAKING: High Court grants declaration that products obvious/anticipated at claimed priority dates I "Kit Kat" finger shape marks: this time in Singapore I TVCatchup 2 and the harmonising vision of the CJEU I Corks popping following account of profits decision I Two events in March I  MIP International Patent Forum 2017 I More Than Just a Game - 2017 edition I INTA comes to Barcelona in May for its Annual Meeting (early bird registration, but not for long) I Appeal practice in Spain: long is out, footnotes are in

Never Too Late 137 [week ending on Sunday 26 February] | Patents and the Silicon Valley of clothespins | Interested in EU copyright and wish to discuss it in Florence? Here's the event for you | ARGOS - trade marks, domains, and google advertising | Swedish Patent and Market Court of Appeal orders block of The Pirate Bay and Swefilmer | The Enforcement Directive permits punitive damages - or does it? | Trader keeps the [good] faith in a spare part in trademark doublebill| Book Review: The Informal Economy in Developing Nations - Hidden Edge of Innovation? | Copyright law in the UAE: it's not what you might think | Monday Miscellany | Major changes to trademark law in Turkey: read all about it | 

Never Too Late 136 [week ending on Sunday 19 February] | Tartan Army scores own goal? | Book review: "Brandfather: John Murphy, The Man Who Invented Branding" | IP Summit 2016 (Second Part) | Around the IP Blogs! | Monday miscellany

Never Too Late 135 [week ending on Sunday 12 February] Playing Polo with potential defendants | KYLIE trade mark battle spinning around | When the IP community reaches out to the broader public: the story of IDIA in India | Too big to pay? Employee-inventor compensation in the Court of Appeal | Willow Tea Rooms: A tale of tea and trade marks (Part 2) | BREAKING: AG Szpunar advises CJEU to rule that The Pirate Bay makes acts of communication to the public | No more counterfeiters! Chanel, Apple, Bayer, LVMH (and more) write to President Juncker on revision to IP Enforcement Directive | Is German SEP litigation set to increase with the "confidentiality club decision" of the Higher Regional Court of Düsseldorf? | Trying to find balance? Come to UCL IBIL's copyright panel on Wednesday | After Sweden and Germany, GS Media finds its application in the Czech Republic

Photo credit: Matt Buck

Friday, 17 March 2017

Friday Fantasies

* IP Key and CEIPI Deliver Training to Chinese Judges in Europe

The European Commission and the Supreme People’s Court, with the technical support of IP Key, will partner in the organisation of a two-week advanced judicial training program in France (Strasbourg) between the 18th and 31st March. 

The training is part of a commitment between the EU and China that was emphasised in the memorandum of understanding that was signed during the 10 year anniversary of the EU-China IP dialogue in 2015. It brings together 20 Chinese judges from IP specialised courts and aims at strengthening Chinese judge’s knowledge and skills on intellectual property rights adjudication through peer-to-peer exchanges with experienced European IP judges. 

The training is organised by IP Key with the Centre for International Intellectual Property Studies (CEIPI) of the University of Strasbourg and will host contributions from specialised judges of national EU IP courts as well as senior academics and practitioners, addressing cross-subject procedural issues in the adjudication of IP disputes. For the full programme please visit the IP Key website.

Past activity with the LAC includes judges forum in Shanghai in 2016 and study visit to Europe in 2015.

IP Key is co-financed by the European Union and the European Intellectual Property Office (EUIPO) under the framework of the new EU- China cooperation. It is implemented by the European Intellectual Property Office (EUIPO) in partnership with the European Patent Office (EPO). For more information, contact info@ipkey.org.

* CopyrightUser.org: Going for a Song – Copyright Guidance for Music Writers and Composers

A new copyright education resource is available on CopyrightUser.org: Going for a Song. It offers authoritative and accessible sector-specific copyright guidance for music writers and composers. It is based around the video, Going for a Song, which tells the story of Tina and Ben, a (fictional) music composer and a lyricist who create an original song and discuss how to market it. 

"Going for a song 🎵"
The video was produced by Worth Knowing and directed by Bartolomeo Meletti (CREATe, University of Glasgow and BFI) and Prof. Ruth Towse (CIPPM, Bournemouth University and CREATe). It comes accompanied by seven ‘Tracks’: supplementary texts drafted by Dr. Kenny Barr (University of Glasgow) that provide guidance on how UK copyright law regulates different aspects of the journey of a song, from its creation to its distribution. Topics addressed by the texts include what constitutes a song, how to protect a song with copyright, sound recording rights, publishing and record deals, among others. The content of the resource was developed from an interactive workshop for music writers and composers, conducted by the Copyright User team on 19th March 2015. The workshop was part of the series Understanding UK Copyright Law, carried out in collaboration with the Digital Catapult and the Copyright Hub. 

Going for a Song was funded by CREATe and produced in collaboration with the global production music library Audio Network. The resource was publicly launched in Glasgow on 8th March 2017 at the CREATe Public Lecture ‘Stop Me If You Think That You’ve Heard This One Before: plagiarism in music copyright’ by Dr Simon Anderson. You can find the resource and its full credits here

* WIPO press release:

Record Year for International Patent Applications in 2016; Strong Demand Also for Trademark and Industrial Design Protection

GENEVA – China’s ZTE Corporation overtook its crosstown rival Huawei Technologies as the biggest filer of international patent applications via WIPO in 2016 and U.S.-based Qualcomm Inc. claimed third position amid another year of strong demand for WIPO’s intellectual property filing services for patents, trademarks and industrial designs. Read full press release here.

WIPO Cybersquatting Cases Hit Record in 2016, Driven by New Top-Level Domain Names

GENEVA – Trademark owners filed an all-time record 3,036 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO in 2016, an increase of 10% over the previous year, with over 1,200 new generic Top-Level Domains (gTLDs) now operational. Read full press release here.

* EPO express:

The EPO is very pleased to announce its results for 2016, including a record number of patent grants thanks to increases in productivity.

The EPO published 96 000 granted patents in 2016, which is 40% more than in 2015 – and a new record. Find out more here.

* Conference call:

11 May, 2017 
“From Lab to Life – Regulations for New Developments in Stem Cell Research” 
Faculty of Law of the University of Basel, Switzerland
Further information can be found here.

* Summer school call:

University of Geneva is organizing the 4th edition of the Geneva Internet L@w Summer School from June 19 to June 30, 2017.

It offers a unique opportunity to gain hands-on experience in the framework of an Internet law clinic and to discuss cutting edge Internet law and policy issues with academics (including researchers participating in the Geneva Internet L@w Research Colloquium, see below), practitioners, representatives of global policy makers, international organizations and leading institutions, including (for this year again) the Berkman Klein Center, the International Telecommunication Union (ITU), WIPO, and the Geneva Internet Platform (GIP), as well as from other prestigious academic or governmental institutions and global internet companies (Google and eBay).

Additionally, the 2nd edition of the Geneva Internet L@w Research Colloquium which will take place on 23 June 2017. Please note that the deadline for applications is May 1st, 2017 for the summer school, and April 14, 2017 for the research colloquium. 

Visit here to apply for the summer school and for further information on how to apply for the research colloquium. Feel free to contact the organizer at internetlaw@unige.ch if you need any additional information regarding the above.

* IP Inclusive wins inaugural Corporate Social Responsibility award 

IP Inclusive -- a pan-professional diversity movement committed to helping make the IP professions more inclusive – was last night awarded the inaugural Corporate Social Responsibility Award at the prestigious Managing IP Awards. 

The annual event, which took place at The Savoy in central London, saw over 250 IP professionals celebrate successes and achievements within the international IP world. Among the accolades this year was Managing IP’s first ever Corporate Social Responsibility Award, presented to IP Inclusive for its work in uniting professionals throughout the IP world in the pursuit of greater diversity and inclusivity. 

Andrea Brewster, ‎Immediate Past President of The Chartered Institute of Patent Attorneys (CIPA) and founder of the IP Inclusive movement, collected the award, commending Managing IP for making corporate social responsibility “one of the benchmarks by which we can both measure and celebrate progress in the IP professions.” Andrea commented: “I am thrilled to accept this year’s award on behalf of everyone who has worked so hard to establish and grow the IP Inclusive community over the last couple of years. IP Inclusive has been a catalyst for change but we have also had incredible support from our founding organisations CIPA, CITMA, FICPI-UK, IP Federation and the UKIPO, and from a huge array of volunteers across the country. We are proud to have launched so many inclusivity initiatives, such as support and networking groups, events, learning resources, careers information and a community of signatories to our Equality, Diversity and Inclusion (EDI) Charter. My thanks to every single person who has chosen to become involved and thanks to Managing IP for recognising everyone’s efforts. I know that this award will spur us on to still greater things.” 

Lesley Evans, Chief Executive of European IP firm, Haseltine Lake and leader of the IP Inclusive Charter initiatives also spoke at the presentation, urging the audience of international IP practitioners to spread the word about IP Inclusive in their own jurisdictions. Lesley commented, “This has been an extraordinary week for IP Inclusive. Not only have we celebrated our 100th signatory to our EDI Charter, but now we have received this amazing and unexpected award, which recognises the importance of increasing diversity across the IP professions. The IP professions are generally very open and welcoming, but they can be stronger and better still if they reach out and make themselves known to the widest possible workplace demographic. IP inclusive is giving us the tools and the impetus to do just that.” 

For more information, please visit: http://www.ipinclusive.org.uk/

Photo courtesy of Guo si-te.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':