For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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

Monday, 20 October 2014

After patent litigation, is trade mark litigation the next big topic?

Patent: a big,
shiny obsession
with IP litigators
So many major conferences, seminars, lectures and other events have recently been organised in the field of patent litigation that one might be tempted to think that it is the only species of IP that ever gets litigate.  Understandably there is much interest in the European Union, where practitioners and their clients [or should that be patent owners and their professional representatives?] have to juggle with their own domestic patent litigation system, the often complex and arcane proceedings before the European Patent Office, and a whole set of new ifs, whens and maybes that characterise the Unified Patent Court and what is now the 16th draft of its Rules. Likewise there is an almost obsessive interest in patent litigation in the United States, where the subject lies somewhere between a cottage industry and an art form, with ever-shifting guidance concerning injunctions, damages, patent eligibility and the interrelationship of patent suits with the sale price of patents singly or in bundles.   On 4 and 5 December no fewer than three international two-day events are addressing the subject. One wonders if there will be anyone left back in the patent attorneys' offices to answer the phone ...

Trade mark litigation
can take some licking!
In contrast, there has not been any correspondingly focused attention on trade mark litigation, or indeed on other forms of trade mark dispute resolution.  Readers of this weblog will know that this Kat has frequently commented on cases that should never have been litigated at all, either since they are no-hopers or because, even if they can be won, the successful litigant derives no obvious benefit from winning or can derive a swifter and more effective advantage by not litigating [a very recent example of a trade mark dispute which this Kat truly thinks was futile is Galileo v OHIM and others, noted here].  Most of these cases have involved trade marks, trade dress and passing off.  In many cases, where the litigation consists of trade mark opposition proceedings concerning a Community trade mark, a decade or more can pass between the initial filing of a trade mark and a final resolution -- a delay which, if acceptable to the parties, suggests that the matter should surely have been dealt with more sensibly by other means.

Coexistence is easy here,
since lions and lambs are
not confusingly similar
Wearing his MARQUES hat, this Kat has championed negotiation and coexistence agreements as a valuable and constructive alternative to traditional trade mark litigation, and has had the privilege of being able to pioneer that organisation's Coexistence Agreement Workshops -- which began in Amsterdam two years ago and which have now been organised in commercial centres such as Brussels, Bucharest, Madrid, Munich and Rome, and even as far afield as Lima, Asuncion and Mexico City.  These workshops encourage participants to explore voluntarily agreed coexistence, which can only be achieved if the parties have a clear understanding of the trade mark litigation options to which they can resort if consensus is not established. On this basis they can reach settlements that define the scope of use of similar marks, ensuring that their mode of use and the goods and services for which each side to the agreement will use them, will avoid litigation -- and will not give rise to any suspicion of uncompetitive market-sharing or deceit practised on shared consumers.

Team of all the talents ...
This Kat's friends at C5 have put together a big conference on Trade Mark Litigation, on 29 and 30 January 2015 at the Royal Windsor Hotel, Brussels. This is C5's first sortie into this field and the Kat wishes it well. This weblog is one of C5's media partners for this event, which features some notable Katfriends in the extensive cast of experts [A team of all the talents? Well, says Merpel, they are certainly on the ball]. One is the thoughtful and articulate John Noble (Director of the British Brands Group); another is recent guest Kat Darren Meale (Simmons & Simmons), who is currently also a Deputy District Judge. With experience spanning both the Court of Justice of the European Union and the Irish Supreme Court, Judge Fidelma Macken -- who taught with this Kat at Trinity College Dublin several lifetimes ago -- has much to offer, and there's more fire-power from Antwerp Commercial Court judge Sam Granada. Further dispute resolution know-how comes from Crowell & Moring dispute resolution specialist Flip Petillion, an arbitrator and WIPO panellist, and another Katfriend of long standing, Judge Michael Fysh QC, who has jumped ship as it were and shifted, following his retirement from the bench, from traditional litigation to mediation.

The link to this event's web page can be found here.

Sunday, 19 October 2014

Fill in the form, keep your hair: UPC IT Prototype needs your feedback

The AmeriKat's Sunday evening screen
For the AmeriKat, Sunday afternoons are all about scrubbing away the week's frustrations, been and to come, around her flat to the westward drum of Led Zeppelin.  Afterwards, if the siren call of her day job doesn't beckon her, she often curls up with her laptop and paws through the week's IP news.  On a slight variation on the theme today, she has curled up with a hot mug of jasmine moonlight tea to play with the updated version of the UPC's IT prototype.  "Oh, how dull!" you may think to cry.  But, you would be wrong.  After years of posts and commentary, there is finally something concrete you can play with - a UPC prop that makes the system come alive.

Last week, the Kat posted a little section encouraging readers to test out the system.  If you missed it the AmeriKat is here to remind you once more.  With no limit on the number of users testing the system, the UK Intellectual Property Office's UPC Taskforce and those responsible for bringing the IT workstream to life want as many people as possible to test it.  All feedback is welcome - the good, the bad and the ugly. 

We all know that there are differences between European legal traditions and substantive patent law, but there may be possibly even more differences in how we fill out our respective court forms.  How a French patent litigator interprets a direction on a court form to complete certain details will invariably differ from that of a Dutch or Hungarian patent litigator.  These differences came to light during the London workshop on the prototype held two weeks ago.  For example, there was considerable debate about how and when the confidentiality of documents (i.e., evidence) would be dealt with and by whom.  Do the boxes on the form provide enough options for how litigants want to classify the confidentiality levels of their documents?  How are you supposed to assess the value of the claim?  What is the easiest way to upload exhibits so that the court clerks and the judges don't get confused?

What will happen to the AmeriKat if the UPC IT
system doesn't work....
These issues may seem trivial to us now, but the AmeriKat promises that when the system is up and running if there is something not quite right with the IT system and forms, she knows you and your colleagues will be pulling your hair out and throwing your computers off buildings.  Such frustration is likely to surpass even key substantive issues, like no one quite knowing what Article 83 of the Unified Patent Court Agreement really means (and in this respect the AmeriKat is looking to you, European patent judges, to put your heads together at the upcoming Venice conference).  

The UK IPO's UPC Taskforce therefore encourages users to test the system:  
  • in different countries, across Europe and beyond;
  • using different internet browsers and devices (i.e., that means you, iPad and android users); and
  • who are part of teams/firms and will have a single account with multiple users.  This option has been included as a result of direct feedback but the tech wizards need multiple users to test it.
Testers can provide feedback using the feedback application at the bottom-right of the prototype screen.  The current court form is the Statement of Claim form, but there will be others and further iterations so testers are encouraged to check back again whenever they can.  Changes are set out on the front page of the prototype.  The prototype will be open until the end of November 2014.  The next workshop will be in Paris at the end of the month.  

Having played around with the updated version she can see that the IT team have already incorporated many of the comments from the London workshop.  Your feedback will not go into an empty IT abyss.  So be like the AmeriKat  - fill in the form and feedback now, save your hair later.   

Galileo sees stars as ESA logo marches on

Galileo back in court.  The original Galileo Galilei was no stranger to dispute, and it seems that one of the many businesses that has borrowed his name has been following in his footsteps -- with nothing much to show for it in the courts of Europe [you can get a feel for Galileo's recent track record in IP litigation by reviewing earlier Katposts here].  So let's take a look at Case T-450/11 Galileo International Technology LLC v OHIM, the European Commission and the European Space Agency (ESA). This is a decision from the General Court of the European Union (Ninth Chamber) last month which reflects the opinions long held by this Kat that (i) some appeals to the General Court are marked with a message in big red capitals that state "THIS APPEAL IS A COMPLETE WASTE OF TIME", in a magical letters that can be read by everyone except the appellant and that (ii) pretty well all appeals to the General Court in intellectual property disputes against the European Commission and its organs are destined to fail in any event.

What happened in this case to cause those big red letters to spring up? The facts are like this. Back in June 2002 the European Commission filed, on behalf of the European Union, an application to register as a Community trade mark the rather attractive figurative sign represented on the right.  The service for which registration was sought was unusually narrow: “research and development in the field of satellite radio navigation” (Class 42).  

In February 2003, following publication of the application, the Commission transferred half of the rights in the mark applied for to the European Space Agency. A month later Galileo opposed this application, citing  two earlier Community word mark registrations for the word GALILEO, for a large number of goods and services in Classes 9, 16, 35, 38, 39, 41 and 42. Most of the goods and services were quite dissimilar to “research and development in the field of satellite radio navigation”, while others -- while not being close -- were not so totally distant, for example 
Class 35: ‘Providing office and business management services and information compilation, storage and retrieval services in the travel field for others; electronic collection, processing and distribution services for data, images and electronic messages; electronic on-line information services, namely the provision of advertisements and business information in respect of travel, tourism and entertainment through a computer database by telephone link; advertising and promotion by data communications for hotels, hoteliers and the travel industry; on-line direct electronic marketing services and advertising services for hotels and the travel industry, for others’; 
 Class 38: ‘Telecommunication services in the nature of transmission of data, electronic data transfer services, network services, all relating to computerised information retrieval systems; communication services relating to the provision of on-line electronic data transmission facilities for the communication and distribution of information, images and electronic messages by computerised databases; data communications and bulletin board services’.
Said Galileo, on account of the similarity of the respective marks and the similar nature of the goods and services for which registration was sought or had been granted, there was a likelihood of confusion of the relevant consumers under Article 8(1)(b) of Regulation 40/94 (now Regulation 207/2009).

Never mind SatNav: with
CatNav, Pushkin is never lost
In September 2005 the Opposition Division rejected the opposition: the service covered by the mark applied for was not similar to the goods or services covered by the earlier marks, regardless of any similarity of the signs at issue.  In April 2011 the First Board of Appeal of OHIM dismissed Galileo's appeal, reiterating that none of the goods and services covered by those marks were similar to “research and development in the field of satellite radio navigation”.  Galileo then applied to the General Court to annul the decision of the Board of Appeal on the sole ground that the Board of Appeal did not take account of the fact that there was a high degree of similarity between the goods and services covered by the earlier marks and the service covered by the mark for which registration was sought, whether on the basis of actual similarity or on the basis that they were complementary.

The General Court dismissed Galileo’s appeal. In its view:

* It was not disputed that research and development in the field of satellite radio navigation covered by the mark applied for was aimed at a specialist public of undertakings engaged in research and development in the field of satellites and highly sophisticated localisation software [this must be one of the most specialised categories of consumers ever, thinks Merpel]; those services were not aimed at the general public even though the product resulting from that research could, in the long run, be used by the general public. Why? Because what was involved was not an industrial activity or a service aimed at the production of goods but an activity focused on scientific innovation. 

* Given the specialist nature of consumers of satellite radio navigation R&D services, Galileo had to argue that its earlier marks might also be aimed at a specialist public.  However, there was no definition of research and development that ran wide enough to include the conception and manufacture of goods. Thus
The OECD's definition of ‘research and development', on which the parties relied, referred to the ‘creative work undertaken on a systematic basis in order to increase the stock of knowledge, including knowledge of man, culture and society, and the use of this stock of knowledge to devise new applications’. That definition did not refer to the production of goods or to their marketing. 
A further definition of that term submitted by Galileo, which appears in Article 1(c) of Commission Regulation 1217/2010 on the application of Article 101(3) [TFEU] to certain categories of research and development agreements, provided that research and development means ‘the acquisition of know-how relating to products, technologies or processes and the carrying out of theoretical analysis, systematic study or experimentation, including experimental production, technical testing of products or processes, the establishment of the necessary facilities and the obtaining of intellectual property rights for the results’. However, recital 6 in the preamble to Regulation 1217/2010 expressly excluded the stage of industrial application from the concept of research and development.
* The General Court had in earlier proceedings already held that the Commission’s Galileo project was limited to the launching of a satellite radio navigation project, this being the European response to the American GPS and Russian Glonass systems, to providing financial support for the project’s research, development and deployment phases, as well as to establishing the appropriate framework for the subsequent economic operational phase. In doing so, the Commission was not undertaking an economic activity since it was not offering goods or services on the market. Consequently the Board of Appeal did not make any error of assessment in finding that the activity of research and development in the field of satellite radio navigation was not an industrial activity or a service aimed at the production of goods, but was focused on scientific innovation. [This raises an interesting question, says Merpel: if the Commission was not undertaking an economic activity or an industrial activity, what does it need a Community trade mark for? And what criteria will be invoked for establishing whether genuine use has been made of it?]

* Goods and services are only complementary if they are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods or services intended for different publics cannot therefore be complementary. Here there could be no complementary connection between the goods and services which are necessary for the running of a commercial undertaking and those which are produced or supplied by that undertaking: those two categories of goods or services are not used together since those in the first category are used by the relevant undertaking itself while those in the second are used by customers of that undertaking.

This ruling, available so far only in English and French, looks right in law and will, in this Kat's view, be upheld in the event that Galileo appeals further to the Court of Justice.  He still wonders why so much time, effort and money is spent by both sides in seeking to carve out a niche entitlement to use the word Galileo, in literal or pictorial format, when there are so many good folk already using the name for various purposes and it's not as if they are going to encounter the sort of obstacles to brand extension that face owners of brands for popular consumer goods.  

Galileo Global Branding Group here
Galileo Research & Strategy Consultancy here
Galileo Open Air Cinema here
Galileo Telescope Makers here
Galileo BioScience here
How to pick the perfect brand name here

The UPC and Investor – State Arbitration

Henning Grosse Ruse-Khan
What are the international investment law implications of the Unified Patent Court (UPC)? 

No, (thankfully) this is not an exam question for undergraduates taking the IP course (although you never know…), but rather the issue that Katfriend Henning Grosse Ruse-Khan (University of Cambridge, King’s College and Max Planck Institute for Innovation and Competition) investigates in his guest post below.

Here’s what Henning writes:

“The development (for better or worse) of European Patent Law, in particular the creation of a unitary patent title and a common court to litigate patent infringement in Europe raises, among other things, questions of international (IP) law. One addressed in this brief post concerns the potential for Investor-State dispute settlement over decisions handed down by the UPC. It essentially deals with the application of international investment law standards to UPC judgments affecting European patents.

International investment law – although a distinct body of rules than IP treaties – is becoming increasingly relevant for the protection of IP rights, including patents, abroad [this Kat notes that this is also true for copyright, with particular regard to the role of ISPs. For instance, in its recent Discussion Paper on Online Copyright Infringement, the Australian Government wrote that "Australia is obliged under its free trade agreements with the United States, Singapore and Korea (not yet ratified) to provide a legal incentive to ISPs to cooperate with rights holders to prevent infringement on their systems and networks."]. In a nutshell, these rules, usually embedded in bilateral investment treaties (BITs) or Investment Chapters in free trade agreements (FTAs) such as NAFTA Ch.11, protect assets, including IP rights, of foreign investors against state interference. Investment rules in BITs or FTAs often allow foreign investors to challenge host state measures directly in international dispute settlement in front of an arbitration tribunal. Increasingly, the measures under scrutiny involve IP rights: Philip Morris currently challenges tobacco packaging rules in Australia and Uruguay as a form of indirect expropriation; while the US pharmaceutical company Ely Lilly is suing Canada under NAFTA’s investment protection rules for the revocation of two crucial patents (for its drugs Zyprexa and Strattera) by Canadian courts.

A confident Gustav pictured moments after
being asked to explain the international
investment law implications of the UPC
In Eli Lilly v Canada, Lilly challenges what it calls a ‘promise doctrine’ (further discussed here) whereby Canadian courts take for granted what the patent application describes as useful effect of the invention and hold the applicant responsible for fulfilling this ‘promise’ of utility: If the patented invention later is found not to meet a promise the court has constructed from the patent application, the patent can be revoked. Lilly complains that the strict patentability requirements resulting from this doctrine, as applied by the Canadian Courts since 2005, are violating Canada’s international IP obligations under NAFTA, TRIPS and the Patent Cooperation Treaty (PCT). This in turn, Lilly argues, breaches the fair and equitable treatment (FET) and expropriation standard under NAFTA’s investment chapter by interfering with reasonable investment-backed expectations (see a brief description here and further discussion here).

In light of these arguments invoking investment standards against decisions by patent courts, there are several scenarios for investor-state arbitration challenges of UPC judgments: Decisions revoking a patent under Artt.32:1 d), 65 UPCA for example could be challenged as a form of indirect expropriation or breach of the fair and equitable treatment (FET) standard that is often held to protect legitimate expectations of the patent holder. Here, an important question concerns whether a foreign patent holder can claim any legitimate expectations based on the grant of a patent that a revocation might interfere with (for a detailed discussion, see again here). In addition, declaratory judgments of non-infringement based on Art.32:1 b) UPCA could be viewed as in breach of the duty to provide ‘full protection and security’ – if this standard is understood as encompassing a duty to protect patents against third party infringements. Although there are good arguments against such an expansive reading of the investment protection standards, the Eli Lilly dispute against Canada shows that such challenges are not just a theoretical option.

Yes: treaty shopping
is this cute
The nature of UPC decisions makes such challenges all the more likely:  As “court common to the Contracting Member States” and “part of their judicial system”, the UPC is – by virtue of the UPCA preamble – a “national court” of all the Contracting Member States. As a national court of all these countries, its decisions could be challenged by investors who enjoy protection under any of the BITs or FTAs agreed by participating EU Member States, as well as under future EU investment agreements. Essentially, patent holders may ‘treaty shop’ for the most favourable international investment agreement available: It may well be quite a number of such treaties that are binding upon UPCA Contracting Member States and that offer investor-state dispute settlement.

This highlights the potential for international investment law and in particular its system of dispute settlement to interfere with national court decisions and other state measures affecting patents and other IP rights. It remains to be seen whether IP holders as foreign investors attempt to use this as a forum where they get another option for challenging otherwise final decisions of national courts. If one of the underlying reasons for creating the UPC is to keep the European Court of Justice out of substantive patent law, then this gives even more reason to worry: It certainly can be doubted that investment tribunals have any (more) expertise and experience in ruling on patent law matters. States are beginning to respond to this problem: The EU and Canada have introduced language in their FTA aiming to prevent a re-interpretation of IP law via investment tribunals. However, this is not sufficient to prevent future investor-state arbitration challenges – as it will not affect the huge amount of BITs already in force between UPCA Members and third states.”

Another competition -- this time for the literary minded

Another competitition!  Fellow Kat Eleonora's friend and colleague Sophie Stalla-Bourdillon is already running this design-a-logo competition for The University of Southampton's iCLIC centre.  However, if your talents are more literary, there's a compose-a-limerick competition to go with it.  The challenge is to write a limerick that (i) begins with the line "A talented kitten called Kate" and (ii) is on the theme of intellectual property protection other than via the patent system.  The prize is complimentary registration, complete with a free lunch, at CLT's forthcoming conference -- "Intellectual Property: the 'no patents' round-up for non-techie people", organised by CLT and held in Central London on 29 October (for which further details are available here).  As usual the best entries will be posted on this weblog [a perpetual non-exclusive licence for this purpose would be appreciated].  Closing date for entries: close of play, Sunday 26 October.  Please send your entries to the IPKat at with the subject line "Limerick".  Multiple entries are permitted. If you are anxious not to be named as the author of a published limerick, do please let the Kats know in advance.

Merpel thinks this competition doesn't give people much time to enter, but the IPKat points out that most competition entries are received immediately before, or shortly after, the closing date, regardless of how much time is given for composing entries. That's humans for you!

Saturday, 18 October 2014

The innovation champs for 2014; the best of times or the worst of times?

First, a Dickensian moment, from "A Tale of Two Cities":
"It was the best of times, it was the worst of times, it was the age of wisdom, it was the age of foolishness, it was the epoch of belief, it was the epoch of incredulity, it was the season of Light, it was the season of Darkness, it was the spring of hope, it was the winter of despair, we had everything before us, we had nothing before us, we were all going direct to heaven, we were all going direct the other way - in short, the period was so far like the present period, that some of its noisiest authorities insisted on its being received, for good or for evil, in the superlative degree of comparison only".
As so it may be said about innovation. The word is seemingly ubiquitous. Almost everyone agrees that we need more of it, but views differ on whether we are in a boom or bust innovation era and, indeed, views even differ as to how to define it. Against this backdrop, this Kat was fascinated by the full-page announcement that appeared in the October 4th issue of The Economist, in which the magazine announced the 2014 winners of its Innovation Awards (the ceremony took place in Hong Kong on 9 October). More precisely, winners of two categories were displayed on the page—Kickstarter for the "Process and Service Innovation" category (Perry Chen, Yancey Strickler and Charles Adler) and Twitter (Jack Dorsey, Chairman, Evan Williams), for the "No Boundaries" category.

For Kat readers who may not be familiar with Kickstarter, it is a crowdsourcing model of funding for, as the announcement describes, "art, comics, crafts, dance design, fashion, film and video, food, games, journalism, music, photography, publishing, technology and theatre." Pledges are collected via the website; if the creator achieves its goal within the time allotted, it receives these funds, subject to credit-card processing charges and a 5% fee for Kickstarter. The announcement states that, since 2009, more than seven million persons have contributed more than $1.3 billion dollars, three million having contributed $480 million dollars in the year 2013 alone. Indeed, more than 10% of the movies screened at the latest Sundance Film Festival were funded through Kickstarter.

Twitter needs no introduction, enabling short messages of up to 140 characters (including links to other sites) to be sent. Currently the site claims 271 million active users who send more than 500 million Tweets daily in 35 different languages. As stated in the announcement, Twitter "has become a popular way to disseminate news and information in real time about everything from political protests to reality-TV shows."

Just for the record, the other winners (which the reader can only discover by going to a link) are as follows:
* Consumer Products: Renaud Laplanche, Founder and CEO, Lending Club, for pioneering peer-to-peer consumer lending.

* Energy and the Environment: Urs Hölzle, Senior Vice President, Technical Infrastructure, Google, for techniques used to create energy-efficient data centres.

*Bioscience: Jay Keasling--Professor of Chemical Engineering, University of California, Berkeley and Senior Faculty Scientist, Lawrence Berkeley National Laboratory, for synthetic artemisinin used to treat malaria.

* Computing and Telecommunications: Andrew Rubin, Senior Vice President, Google, for producing the world's most widely used smartphone operating system, Android.

* Corporate: Pixar Animation Studios, for its groundbreaking computer animation tools, technology and feature films.

* Social and Economic: Nandan Nilekaniformer, head, the Unique Identification Authority of India (UIDAI), for his leadership of the country’s national identity scheme.
The innovation trough: have
we nearly reached the bottom?
While one cannot gainsay that the list is impressive, still something gnaws at this Kat: is this really the best of the innovation lot? The national identify scheme for India is noteworthy and this Kat assumes that Professor Keasling's laboratory is doing world-class research. But can it really be that Google is the innovation leader in two categories (or maybe it is?), that innovative success is so concentrated that five winners are located in California alone (or maybe it is?), that the most significant innovation in finance is peer-to-peer consumer lending (or maybe it is?), that computer animation is the most significant innovation to come from "Corporate" (or maybe it is?) and that the percentage of films funded at the Sundance Festival is demonstrable evidence of Kickstarter's innovative success (or maybe it is)?

Lurking behind this Kat's reflections is the question of whether this list reflects the idiosyncrasies of The Economist as much as the objective indicia considered, or whether we are, as some have claimed, in an innovation trough. Kat readers are encouraged to opine.

Feeling a bit artistic? Here's a contest for you

Charles has already started creating:
what are YOU waiting for?
Today the IPKat is delighted to host a guest contest organised by Kafriend Sophie Stalla-Bourdillon (University of Southampton), who is looking for a logo for the new interdisciplinary Centre for Law, Internet and Culture (iCLIC) at the University of Southampton.

Here's what she writes:

"iCLIC (the interdisciplinary core on Law, Internet, and Culture) is a new research group based at the Southampton Law School, bringing together enthusiastic, eclectic and talented researchers in the field of information technology and intellectual property law. To pierce the veil, it comprises Eleonora Rosati, Micheal O’Floinn, Marta Iljadica and Sophie Stalla-Bourdillon acting as iCLIC’s director. 

A seminar series [details here] will start soon (still open to all speakers curious to discover the beauty of the English south and/or the miscellany of Southampton’s architecture … so don’t hesitate to give us a shout), research days on topical themes are now being included in the agenda, and a conference is in the air (keep your diary free for mid-September … 2015). 

Future IT/IP law students should also keep an eye on the website: we are brainstorming on a new LLM stream with a true interdisciplinary dimension!

As iCLIC is still in the making though, it needs your help. To speak the legalese, we are looking for a distinctive logo. 

Hence this contest: we invite all IPKat readers with artistic skills and some spare time to send us [at] their creations by 2 November 2014

The winner will have his/her work reproduced on the IPKat, get a free ticket for the first iCLIC conference and will be most welcome to visit us any time before that! What are you waiting for? IPKat artists, don’t miss this opportunity!"

Friday, 17 October 2014

French Designer Sonia Rykiel Did Not Copy Shoes, Says Paris Court

Readers of this blog already know that U.S. shoe maker Converse has filed a trademark infringement and trade mark dilution suit against K Mart in the Eastern District of New York and also requested the U.S. International Trade Commission to institute an investigation under Section 337 of the Tariff Act of 1930 based on the unlawful importation to the U.S. of such allegedly infringing shoes.

U.S. shoe designers have to rely on trade mark, trade dress, or design patent to protect their creations, as shoes cannot be protected by copyright in the U.S., because copyright does not protect “useful articles.” Only elements which can be separated from the design can be protected, such as, say, the buckle of the shoe.

A Work Must Be Original to be Protected by French IP Law
The law is different in France, and shoes can be protected by French “copyright,” le droit de la propriété littéraire et artistique, if they are original. However, French law does not define what is original, and so courts have decided that a particular work is original if it is the imprint or the reflection of the personality of its author. Similarly, the European Court of Justice held in 2009 in Infopaq that “the various parts of a work… enjoy protection under Article 2(a) of Directive 2001/29, provided that they contain elements which are the expression of the intellectual creation of the author of the work.”

One may wonder how a mundane shoe can reflect the personality of its author, but under the theory of the unité de l’art (art unity), as stated by article L. 112-1 of the French Intellectual Property (IP) Code, the French IP Code “protects the rights of authors in all works of the mind, whatever their kind, form of expression, merit or purpose.” As such, the French IP Code protects sculptures, symphonies, or shoes, as long as they are original.

The Paris court of first instance, the Tribunal de Grande Instance de Paris, recently had to decide whether a shoe indeed reflected the personality of its author as French fashion house Sonia Rykiel was recently sued in this court by French shoe manufacturer Apple Shoes for copyright infringement. Plaintiff alleged that some shoes sold by Sonia Rykiel were copies of its own “Rock Perfecto” and other similar models.

Plaintiff’s Shoe is Original

This particular ROCK PERFECTO model, was first sold by Plaintiff in 2004, which described it as “combining an opening system with a zip on a boot with a pointed toe and a one centimeter height heel, thus closing the front portion of the interior of the shoe and finishing on the outside of the ankle through the top of the shoe.”
Plaintiff's ROCK PERFECTO 

Plaintiff claimed that, as such, “the imprint of the personality of its author derives from the combination of elements that make up this boot, and even more so as these items are not in themselves necessary to the composition of a boot.”

Plaintiff argued that the combination of these different elements, “which are not necessary for the creation of a boot, denoted a aesthetic choice, in particular as they reveal the arbitrary choice of associating the inside curve of the boot to the curved side of its outer sides, the heel in the shape of a horseshoe, with the effect of triangle sides and the very sharp tip,” and argued that the combination of these different elements were done by choice, and, as such, is original.

Plaintiff also argued that the patent leather used for the shoe, along with the thinness of the its heel, were original elements and explained further that it had wanted “to transfer by association of these components the shape of the “Perfecto” jacket in boots,” thus revealing further a creative input.
Defendant Sonia Rykiel argued that this particular way to close a boot was not original and that Plaintiff had not produced any evidence about the creative process leading to this particular model of shoes. Sonia Rykiel argued further that “the mere combination of previously known elements cannot establish the originality of a work, as it fails to reveal the existence of a creative process” and that the arbitrary choice made by Plaintiffs are not enough to characterize the originality “which could not derive from a simple variation, adaptation to fashion trends or a transposition from one genre to another.”

As an aside, this shows that designers, whether they are famous or not, would be well inspired to keep some records of the creative process which led to a particular idea. When I was a fashion intern in Paris, the design team kept a mood board and a tableau de collection it used to record every change and source of inspiration. I was in charge of cutting and gluing the new silhouettes. [Am I THAT old?]. Now, this is, of course, done digitally.
Ah Non, Zeez Shoes Are Not Ze Same! 

But for the Tribunal de Grande Instance, the boots were original, as “that the combination of the elements constituting the shoe ROCK PERFECTO results from an arbitrary choice of collecting specific items, none of which appear to be dictated by the function of a shoe, which gives it, in an overall assessment, a particular shape which reflects an aesthetic bias bearing the imprint of the personality of its author” (p. 8). The Court concluded, therefore,  that the ROCK PERFECTO boot model is protectable by copyright.

No Counterfeiting

The Court examined Plaintiff’s and Defendant’s shoes side by side and noted that there were enough differences to decide that Defendant had not copied Plaintiff’s shoes. For instance, the heel of the shoe sold by Defendant was higher, the closing by zip was somewhat different, and “if these two shoes have common features, [Defendant’s] shoe does not include the original combination claimed by Plaintiff.

The Court concluded that the defendants had not infringed the plaintiff’s shoes. 

BREAKING NEWS: Cartier and friends score over ISPs: Open Rights Group intervenes

The judgment is not yet posted on BAILII, but today Mr Justice Arnold, sitting in the Chancery Division of the High Court of Justice, England and Wales, gave his decision in Cartier, Montblanc and Richemont v BSkyB, BT, TalkTalk, EE and Virgin (Open Rights Group intervening) [2014] EWHC 3354 (Ch). In true Arnoldian style, the judgment has been delivered with a minimum of delay (following a two-day hearing in late September), extends to a regally impressive and firmly-structured 266 paragraphs (even the contents list runs for two full A4 sides), and contains a good deal of legal analysis and restatement of basic principles.

This blog will carry a full note in the near future. Meanwhile, by way of a plot-spoiler, the case is about this:
1. The Claimants ( collectively, “Richemont”) are the owners of a large number of United Kingdom Registered Trade Marks for CARTIER, MONTBLANC, IWC and other brands (“the Trade Marks”). The Defendants (“Sky”, “BT”, “EE”, “TalkTalk” and “Virgin”, collectively “the ISPs”) are the five main retail internet service providers in the United Kingdom. Between them, they have a market share of some 95% of UK broadband users. By this application Richemont seek orders requiring the ISPs to block, or at least impede, access by their respective subscribers to six websites which advertise and sell counterfeit goods (“the Target Websites”). Richemont contend that the operators of the Target Websites thereby infringe the Trade Marks. For the avoidance of doubt, there is no suggestion that the ISPs have infringed the Trade Marks or are liable for infringements by the operators of the Target Websites.

2. The application raises five main questions. First, does this Court have jurisdiction to make an order of the kind sought? Secondly, if the Court has jurisdiction, what are the threshold conditions, if any, which must be satisfied if the Court is to make an order? Thirdly, are those conditions satisfied in the present case? Fourthly, if those conditions are satisfied, what are the principles to be applied in deciding whether or not to make such an order? Fifthly, applying those principles, should such orders be made in the present case?
Arnold J has decided to make orders substantially in the form sought by the claimants, subject to some modifications and after hearing counsel on both sides with regard to the precise form of the wording of the order.

There's some great stuff here about EU legislation, but that's for another blog post ...

You can read the judgment in full here or download it here.

Katnote: this blog post was originally published under a headline that misleadingly suggested that the Open Rights Group was on the wrong end of this decision. As some of our readers have helpfully and speedily pointed out, this was not the case. Apologies all round. This is one of the hazards of getting a "breaking news" post out before having had the chance to read the judgment in full.

Friday fantasies

Forthcoming events.  Just a quick reminder: readers, please -- especially if you are seeking continuing legal education points, looking for inspiration or desperate for some decent networking -- check out the IPKat's Forthcoming Events page.  Not all of the events on the list are based in London, England or indeed in Europe.  For example, on 6 and 7 November an impressive band of experts from both sides of the Atlantic and beyond (including Australia) assemble in Washington DC for a two-day symposium on Patents and Telecoms, co-organised by the George Washington University and IBIL. You can find this event [which offers IPKat readers a 10% registration discount, on quoting the VIP KatCode] on the Forthcoming Events list, and there's a short description of some of its highlights on the IP Finance weblog here.

Niue News.  This Kat is ashamed to say that, until he became an avid reader of World Intellectual Property Organization media releases, he had never heard of Niue -- and certainly didn't know how to pronounce it (you can find out how to do this via this handy YouTube clip). Anyway, thanks to WIPO Notification No. 218 he has learned that Niue has deposited its instrument of accession to the Convention establishing the World Intellectual Property Organization which will enter into force with respect to Niue on 8 January 2015.  Merpel is delighted to learn about Niue too: it's yet another country that drives on the left. More about Niue here.

Can you help? A student reader, Stephen Green at Southampton Solent University, has asked if readers can point him to any useful information on character rights. Stephen explains:

"I am a final-year undergraduate currently researching (or attempting to research) the area(s) of character rights, personality rights, trade marks, and copyright. 
I am exploring the contrasts between US and UK IP law with regard to how celebrities and/or fictional characters' rights are protected, who owns them and what limitations are placed upon others who hope to use these rights. Some further reading has lead me to the article about the Steve Jobs 'doll' on your website which seems to be right along the lines I am hoping to explore".
Stephen makes it clear he's not looking for answers on a silver platter.  However, any relevant articles, blog posts, journals or cases would be very welcome, if readers can point him to such material, either in the comments below or by email to

The Kat on the platter: does
he have all the answers *
This Kat adds: from time to time, requests for assistance are posted on this blog and, while most readers are happy to assist or at least to tolerate them, some have taken exception to what they see as lazy students who can't be bothered to do their own research.  This is unfair.  In this Kat's day it was difficult to find relevant information at all. The internet had not been invented, many journals were inadequately indexed and comparative materials published in other countries were frequently unavailable since no local institutions subscribed to them.  Nowadays the position is quite the reverse. Any student -- even a truly lazy one -- can compile an impressive bibliography of articles, books, cases, conference papers and the like, without stepping away from his or her laptop, and the resulting list may be take longer to read than the deadline for submission of the finished work permits.  What Stephen -- and others -- need is an indication from someone who has read and thought about a source, to the effect that it constitutes a useful contribution to the debate and is not just a "me-too" piece that becomes one small and never-to-be-read brick in the vast wall of a bibliographical footnote.

Nice one, Cyrillic! Bulgaria triumph over Brazil. Via vintage Katfriend Ventsi Stoilov from Sofia comes news of Bulgaria's very own national ".бг" domain, which has now received the blessing of the Internet Corporation for Assigned Names and  Numbers (ICANN). An earlier report, drafted in the course of consideration of the registration of domains in alphabets other than our own dear Latin one, concluded that the combination of letters that symbolizes Bulgaria ("бг") does not resemble visually already existing domains [which comes as news to Merpel, who has no doubt that she can tell .бг from .br when she has them both in front of her and is looking carefully, but doubts that she would spot the difference when she has only one in front of her, particularly if they are written in italic or some other non-conventional style]Minister of Transport, Information Technologies and  Communications Nikolina Angelkova said: "The use of the Cyrillic alphabet on the Internet is a serious step  towards affirming our cultural identity", adding that the decision would help local people who do not know the Latin alphabet well, navigate easily through the web [The title of this snippet is an allusion to the song, "Nice one, Cyril", which you can enjoy here].

Readers' comments.  The Kats have been scrupulously examining readers' comments for signs of personal abuse and other no-nos. We don't always get it right, since in any team of lawyers there will always be those who interpret the rules differently, but we like to think we are doing more good than harm.  Sometimes we have a chuckle at the indignation expressed by readers towards one another. One example of such a comment is is quoted here.  The context, in a thread of comments following this blog post on the new European Patent Office guidelines for examiners, is a discussion of whether patent attorneys overcharge for their patent drafting services.  The sum of £10,000 (roughly US$ 16,000 or 12,500 euro) for such services attracts the following response:
"For £10K, at £300 per hour, I would spend 33.33 hours on a draft. Roughly a week of work with no distractions. In a week, I would draft applications that are not only gold-plated, but solid gold with seams of platinum forming a glorious design. It would be delivered with orchids, bred especially for the application and delivered to the patent office on a virgin unicorn". 
Bravo, adds Merpel, who is however tempted to speculate that perhaps the reason why unicorns died out was that virginity turned out to be the rule, not the exception ...

Around the weblogs. "Smartphone app developers: maybe it is not only the birds who should be angry" says fellow Kat Neil, in this recent post on IP Finance on the challenges facing app-based businesses.  Over on Class 46, Christian Tenkhoff explains the German Federal Patent Court ruling over registrability of the Lust auf Farbe! trade mark.  The Seychelles may be better known than Niue, and easier to pronounce, but the provisions of its not-quite-operative IP law remain a mystery to most of us: Aurelia J. Schultz reports for Afro-IP. Finally, on the PatLit patent litigation weblog, Ingve Stjerna articulates his further thoughts on the legality and indeed the constitutionality of Europe's new patent package, while Kingsley Egbuonu lets us have sight of his survey of 30 users of the now revamped Patents County Court for England and Wales.

* Cat served on a silver platter. by Kent Wang (Creative Commons)

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