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

Wednesday, 31 March 2010

No Half Measures, except for retiring staff members

The IPKat thanks his friend David Stone (Simmons & Simmons) for drawing his attention to Coca-Cola Company's Appeal, Case O-079-10 before another of the IPKat's friends, Appointed Person Professor Ruth Annand, on 28 February 2010.

As David observes, this was an appeal from the decision of the United Kingdom's Intellectual Property Office (IPO) to reject an application by The Coca-Cola Company to register the word mark NO HALF MEASURES in relation to entertainment and other services in Class 41. The ground of rejection was that the applied-for mark was devoid of distinctive character under Section 3(1)(b) of the Trade Marks Act 1994. He explains:

"The decision is particularly interesting in relation to two main points. The initial IPO hearing was before hearing officer Mr RA Jones, who retired before the unsuccessful applicant made its request for reasons (which enable it to lodge an appeal). The written reasons were therefore given by another hearing officer, Mr AJ Pike, without the trade mark applicant being afforded an opportunity to be heard by Mr Pike. Professor Annand held that this was a breach of Rule 63 of the Trade Mark Rules -- the right to be heard -- saying "the situation is analogous to the death of a judge in the period between trial and judgment reserved. A fresh hearing should be appointed before a hearing officer with no involvement in the case".

This will require a change to UK-IPO practice.

The second aspect of the decision is good news to any trade mark applicant who has struggled to obtain a UK trade mark registration for a slogan without the benefit of proof of distinctiveness acquired through use. Prof Annand helpfully explains the reasoning of the Court of Justice in Case C-398/08 Vorspring durch Technik and the "Catch 22" created by the "misunderstanding and over-enthusistic application of OHIM v Mobelwerk". Rather than remitting the application to yet another hearing officer, she allowed the appeal and found the mark unobjectionable under Section 3(1)(b) for all the services for which it was applied. Several of her comments will be helpful to those trying to convince the IPO to register slogans as trade marks".
Merpel is in two minds about the retirement point: while she fully agrees that the parties have a right to be heard, she can't decide if that's truly applicable here. The IPKat gowever is wholly in agreement with the good Professor regarding the registrability of slogans. An admirer of the Vorspring durch Technik decision, he is delighted that it has already been put to good use.

Coca-Cola formula here
Recipes using Coca-Cola here
Crazy things to do with Coca-Cola here

It's Time to Teach about Branding; Or Is It?

One of the things that this insomniac Cat does between 2:00 am and 6:00 am is plot out his next MBA class. Twenty years of teaching law students did little to prepare me for the challenge of translating IP into a framework that resonates with the totally different orientation of an MBA student. Facing a classroom filled largely with upwardly mobile high tech and start-up types, the most challenging part of IP is how to present trade marks in an meaningful way to MBA students, and that means dealing with the issue of branding. It's that time of the course to address this issue, so here we go ....

The challenge in addressing trade marks and branding is threefold. First, the trade mark paradigm is so very different than it is for patents and copyright. Second, the notion of "brands' can be, how should we say it, fuzzy at best. Third, it is unlikely that the branding function is handled in a centralized manner within the company. Let's look briefly at each of these elements.

I. As for the difference in the nature of the trade mark paradigm, if you don't believe me, try to
characterize each of the principal basic IP rights. For patents, copyright, and even for trade secrets (if you want to venture further out), the following three-part framework will do just nicely, (i) the creator of the right; (ii) the entity commercializing the right; and (iii) and the public interest. Just about the time that students have figured out this paradigm (or any other comparable paradigm that you might propose for patents, copyright and trade secrets), you then have to disclose the dirty little secret, namely, it does not work for trade marks.

Challenge number one, therefore, is to come up with a working paradigm for trade marks.

II. Second, what do mean by "branding"? I like to bring the following definitions for consideration:

(i) "Information about a particular product or service, the core trademark behind the brand, other trademark supporting the brand, any family of marks, domain names, sub-brands, product packaging, the manufacturer and the trade name, advertising of the product, distribution of the product, celebrity endorsements and even shelf displays ... Essentially, the brand comprises all publicly available knowledge with a particular product, service or company. The trademark is just the legally protectable portion" (Freno, "Trademark Valuation: Preserving Brand Equity", The Trademark Reporter, vol. 97, no. 5, 2007).

(ii) "The interest in the economic value of brands as corporate assets that create wealth for the stakeholders in a corporation. Brand equity embraces brand-name awareness, brand loyalty, perceived brand equity and positive subjective associations. This leads to the proposition that brands are a form of intangible property which may be protected by the trade mark, copyright and patent laws, and by common law principles of passing off" (Belson, "Brand Protection in the Age of the Internet" [1999] European Intellectual Property Review 481).

Observing that a brand "comprises all publicly available knowledge associated with a particular product, service or company", or that brand equity is "the economic value of brands as corporate assets that create wealth for the stakeholders in a corporation", is illuminating, but the scope of each of these descriptions is extremely broad. From the point of view of useful information, the question arises: What one is meant to make of these characterizations? There is no ready answer, either singularly or in the aggregate, to the question.

How to keep this uncertainty within meaningful bounds for the students is challenge number two.

III. Third is the question: Who within the organization is charged with dealing with the issue of brands and brand equity? The potential disconnect between trade marks and branding was brought home me last summer before an audience in Mumbai. The topic there was "trade mark valuation", and in the back-and-forth with a member of the trade mark department of a world leader in the entertainment industry, I asked the question: "At what point are you called in to take part in the process." Her answer was straight to the point--"Never. Issues of branding and valuation are for another department." End of discussion.

So who takes care of branding? Presumably, for companies, such as those in the luxury goods business, where branding is their raison d'etre, such the organizational chart will attempt to provide an answer. There are other companies that have sought to place branding somewhere within the organizational chart, if not quite front-and-centre as in the luxury goods business. But for many companies, my sense is that the issue is scattered and diffuse within the organization. In such a case, while one can inculcate a sharpened awareness within students about branding, how it will play out will differ radically between companies.

Challenge number three, therefore, is to bridge between the need to translate the broadly-cast definition of brands into terms that are at once general for all the understand, on the one hand, with providing sufficient nuanced meaning to enable students to adapt these concepts to the needs of their particular circumstances.

It's 6:00 am and the alarm clock has gone off. The time for rumination is over. Now I need how to figure out how to face those students later in the day.

The "new" DPMA website - some helpful links

Like so many "expats", this Kat sometimes has a feeling of homesickness and homesickness can make you do funny things, such as looking at your hometown's web cam so you know what kind of weather you are missing out on, reading tabloids in your native tongue (not always a good idea) or surfing on the website of your national Intellectual Property Office, in my case the German Patent and Trademark Office (DPMA).

Given the amount of questions this Kat has received about how to use of the recently updated DPMA website, in particular its search functions, this Kat has now decided to share her observations with our readers. The "new DPMA website is very sleek and modern but it sometimes a trifle difficult to navigate, a bit like searching Easter eggs (see below, right).
The goods news is that the DPMA has not only completely revamped its search functions but it has also created a proper (and may I add, rather appealing) English language version of its website including helpful Q&A sections about German trade marks (here), German patents (here) and German utility models (here). Very useful are also the concise booklets 'Information for Trade Mark Applicants'; 'Information for Patent Applicants' and the DPMA's explanation of Utility Models (here).

Since 22 February 2010 the DPMA website also allows you to perform searches on designs in DPMAregister, in addition to searching trade marks and indications of geographical origin. As some of the IPKat's readers may have noticed, the very modern search search platform on the DPMA's website is not always intuitive but gives you many options (Quick Search, Beginners' Search, truncations, you name it, the DPMA seems to offer it). Thankfully, the DPMA has also published useful guides on how to perform searches for trade marks and designs. These guides can be retrieved by clicking on the following links: trade mark search and design search. Please note that the new DPMAregister search is being implemented in stages and patents, utility models, topographies will follow in the second half of this year.

As our readers may know, German law allows you to apply for protection of three-dimensional structures of microelectronic semiconductors at the German Patent and Trade Mark Office. This type of IP right is referred to as "topography." Topography applications are processed by the utility model unit of the DPMA and the DPMA very helpfully provides more information on topographies.

For ease of reference:

  • Trade Mark searches can be conducted via the new system (see to the right) and this screen.
  • Designs can be found via the new system and this screen.
  • Patents and Utility Models can still be found via the old system here (see screenshot in the top left corner of this post).

And, should you still be stuck, then the DPMA offers an "Assisted search" service "in strictest confidence" via this link. Please note that while assisted search is initially free ("If a request cannot be processed within the scope of initial support, billable services are available.") and "Info-Lotse" charges a fee:
"If you are unsure how to formulate your search request in the Beginner's or Expert mode or how to design your search strategy, you can use two different support options, provided by the DPMA in cooperation with the patent information centres (PIZ): the assisted search and the interactive remote support service "Info-Lotse"."
Enjoy, says this Kat!

Monday, 29 March 2010

Google AdWord Rapid Response seminar: the video!

Following the IPKat's Rapid Response seminar on the ruling last week of the Court of Justice of the European Communities in Google France v Louis Vuitton etc (reported here), the Kats are pleased to inform readers that the video of the event is now available. You can click through to it here, courtesy of the seminar's hosts Ashurst.

A fable for modern times: the Fox and the Newzbin

Hot off the press this morning is a seminal judgment of Mr Justice Kitchin, of the Chancery Division of the High Court for England and Wales, in Twentieth Century Fox Film Corporation and others v Newzbin Ltd [2010] EWHC 608 (Ch).

Fox and other film makers and distributors sued Newzbin, which ran an internet discussion system called Usenet, for copyright infringement, alleging that Newzbin is focused on piracy in that it locates and categorises unlawful copies of films and then (i) displays the titles of these copies in its indices, (ii) provides a facility for its users to search for particular unlawful copies, (iii) displays their search results and (iv) provides a simple one-click mechanism for users to acquire the unlawful copies of their choice. The defendant company, which owned and ran Newzbin, says its website is simply a search engine like Google -- but that it was directed to Usenet rather than to the worldwide web. It also said it is "content agnostic", being designed to index the entire content of Usenet. Where possible, it provided hyperlinks so that any supply of unlawful material is an act occurring exclusively between the hyperlink user and the relevant Usenet server operators -- but that it played no part in any such activity.

In a long and carefully-expressed judgment in which he explains how Usenet and Newzbin work and what Newzbin actually does, Kitchin J concluded from the evidence that Newzbin clearly knew that its facility was used mainly by its members for the unauthorised downloading of infringing copies of the claimants' films. He then turned to Fox's action, which was based on the following:

(i) authorising acts of infringement by Newzbin's members;
(ii) procuring, encouraging and entering into a common design with its members to infringe;
(iii) communicating the claimants' copyright works to the public, namely the defendant's members;
(iv) categorisation of Newzbin as a service provider with actual knowledge of other persons using its service to infringe copyright, in respect of which the claimants seek an injunction under section 97A of the Copyright, Designs and Patents Act 1988.
As to "authorisation", Kitchin J reviewed and analysed the law relating to that word as it affected copyright infringement, with particular regard to the narrow, literal interpretation placed upon it by the House of Lords in C.B.S. Songs Ltd and others v Amstrad Consumer Electronics Plc [1988] 1 A.C. 1013, when the sale of tape-to-tape recording machines was not regarded as "authorising" infringement of the music copied by them since the company that made and sold the machines had not acted as though it had an entitlement to permit infringing acts by those machines' users. At paragraph 90 he summarises the position:
"... "authorise" means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances".
Applying this to the facts, he held Newzbin liable:
" ... I am entirely satisfied that a reasonable member would deduce from the defendant's activities that it purports to possess the authority to grant any required permission to copy any film that a member may choose from the Movies category on Newzbin and that the defendant has sanctioned, approved and countenanced the copying of the claimants' films ...".
As for "procuring, encouraging and entering into a common design" to infringe, the judge drew again on C.B.S. v Amstrad and the stiff test which had to be satisfied if liability were to be found:
"... mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. This will be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act" (para.108).
Even so, there was ample evidence from which to conclude that Newzbin had so involved itself.

On the question of whether Newzbin had communicated the claimants' Films to the public, Kitchin J found guidance in a European Court of Justice ruling in rather a different context, Case C-306/05 Sociedad General de Autores v Editores de España (SGAE) v Rafael Hoteles SA. In that preliminary ruling on a reference from Spain, the Court had said:
"46 While the mere provision of physical facilities, usually involving, besides the hotel, companies specialising in the sale or hire of television sets, does not constitute, as such, a communication within the meaning of Directive 2001/29, the installation of such facilities may nevertheless make public access to broadcast works technically possible. Therefore, if, by means of television sets thus installed, the hotel distributes the signal to customers staying in its rooms, then communication to the public takes place, irrespective of the technique used to transmit the signal".
On this basis, since Newzbin's premium members indeed downloaded the claimants' films from a place and at a time individually chosen by them, and since its members consider Newzbin to be making the films available to them, liability was established. An enquiry into damages, including additional damages for flagrant infringement was ordered. Injunctive relief would however be less dramatic:
"In my judgment the scope of any injunction under section 97A(2) should extend no further than that to which I have already concluded the claimants are entitled, namely an injunction to restrain the defendant from infringing the claimants' copyrights in relation to their repertoire of films" (para. 135).
The IPKat thinks that this is a good example of a copyright owner taking its time, getting its evidence together, marshalling its legal arguments in order to get maximum benefit from the litigation process.

Fox movies here
Cat movies here

"Advantage Becker ..., er, Barbara, that is ..."

Having been quite puzzled both by the reasoning and the result of the Court of First Instance's decision in Case C‑51/09 P Barbara Becker, the IPKat is heartened by the Advocate General's Opinion in her appeal against the Court's decision that her full name is confusingly similar to her husband's surname.

Right: "Barbara Becker appeals to the Court of Justice" -- in more ways than one?

So what's the story? Barbara Becker, formerly married to tennis champion Boris Becker, applied to register her name as a Community word mark for a variety of goods in Class 9 (including, notes the amused Kat, automatic vending machines and mechanisms for coin operated apparatus; cash registers and calculating machines). Harman Int. Industries opposed, citing its earlier Community word mark BECKER ONLINE PRO and an application for the Community word mark BECKER, both for identical and similar goods in Class 9. The Opposition Division, taking the view that there was a likelihood of confusion between the signs at issue, upheld the opposition. Barbara Becker appealed successfully to the First Board of Appeal. Considering, for reasons of procedural economy, only the earlier word mark BECKER and the mark Barbara Becker for which registration was sought, the Board of Appeal merely found that visually and phonetically there was some degree of similarity between the signs at issue, given that another component, the first name Barbara, was placed at the start of the trade mark applied for. Conceptually the signs at issue were clearly distinct since the surname Becker was not the dominant and distinctive element of the trade mark applied for, on account of the fact that the relevant public would perceive the mark in its entirety, that is to say Barbara Becker, rather than as a combination of the first name and surname. It also noted that Barbara Becker had ‘acquired celebrity status’ in Germany, while the name Becker was generally recognised as an ordinary and widespread surname. Dilution under Article 8(5) of Regulation 40/94 was a non-starter too, since it requires such a degree of similarity between the marks at issue that the relevant public establishes a link between them, but this had not been satisfied.

Harman Int. Industries brought an action before the Court of First Instance, which held that the Board of Appeal had wrongly stated that the marks at issue were clearly distinct. Regardless of the greater or lesser differences between the two marks visually and phonetically, the Court rejected the Board of Appeal’s assessment of the relative importance of the component ‘Becker’ compared to the component ‘Barbara’ in the mark Barbara Becker based on the following reasoning.

First, the Court considered that, even if the perception of marks consisting of personal names can vary in the different countries in the Community, at least in Italy, consumers generally attribute greater distinctiveness to the surname than to the forename contained in trade marks: it followed that the surname Becker is likely to have attributed to it a stronger distinctive character than the first name Barbara in the mark Barbara Becker. Secondly the Court rejected the argument that the fact that Barbara Becker enjoys celebrity status in Germany as the former wife of Boris Becker does not mean that, conceptually, the marks at issue are not similar, as both marks refer to the same surname Becker. Indeed, such similarity was reinforced by the fact that, in part of the Community, the component ‘becker’ is likely to be attributed a stronger distinctive character than the component ‘barbara’, which is simply a first name. Thirdly the Court cited the judgment in Case C-120/04 Medion, where a composite mark, created by the juxtaposition of a component and the sign of another earlier registered mark, may be regarded as similar to that other mark where the latter has an independent distinctive role in the composite mark, although it is not the dominant component. Applying that criterion, the component ‘becker’ was a surname which is commonly used to describe a person, retaining an independent distinctive role in the mark Barbara Becker, which was sufficient for a finding of a likelihood of confusion. Finally, given that the parties did not deny that the goods at issue were identical or similar, and also taking account of the visual and phonetic similarities of the marks Barbara Becker and BECKER, there was a likelihood of confusion between the marks, even though the goods were directed at a public with a relatively high level of attention.

Barbara Becker then appealed to the Court of Justice and on Thursday, while the rest of us were sifting the entrails of its decision last Tuesday in Google France v Louis Vuitton, Advocate General Cruz Villalón quietly delivered an Opinion strongly critical of the Court of First Instance decision.
"56. It is abundantly clear from all of the foregoing that, if the Court in the judgment under appeal wished to base its reasoning definitively on the doctrine in Medion in order to assess the likelihood of confusion between the marks at issue,... it had to explain why exceptionally in that case it was necessary to dispense with the general requirement with respect to an application for a composite trade mark to examine the overall impression, bearing in mind, in particular, its distinctive and dominant components. In other words, it should have dealt with, in that context, the possible conceptual similarity between ‘barbara becker’ and ‘becker’, because in this case it is not necessary for the component ‘becker’ to have a dominant position in the mark as a whole.

57. However, none of that is to be found in the reasoning in the judgment under appeal. Instead, there is scarcely any consideration to be found other than that ... that ‘becker’ is a surname, which is not in dispute, and which would be hard to refute. It is on that basis that the Court directly concludes that ‘becker’ and ‘barbara becker’ are similar ... and, therefore that the Board of Appeal had erred in law...

58. ... the judgment now under appeal makes no observations or assessment of the surname Becker in order to determine whether it retains an independent distinctive role, without necessarily constituting the dominant element in the mark as a whole, to which the judgment in Medion refers, whereas, in the circumstances of the case, it was essential to carry out an assessment of the distinctive character of the earlier mark BECKER. Since the latter had enjoyed a high level of notoriety with the public, any other mark which sought to designate identical goods would have more difficulties in appropriating that surname.

59. To sum up, based on a generalised understanding, in part incorrect, of the combined effects of the judgments in Fusco and Medion, the judgment under appeal may give rise to the belief, wrong in itself, that, in principle, any surname which coincides with an earlier mark may effectively prevent registration of a composite mark including a first name and the surname in question on the basis of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

60. In other words, the result of adding a purported rule of principle derived from a previous judgment of the Court of First Instance to another from a judgment of the Court of Justice, appears to lead to a result which is almost inevitable, which is that the issue of conceptual similarity is practically superseded in as much as the Court failed to take account of all the facts of the case, as it was required to do in accordance with the case-law. Most particularly, it failed to examine the influence of the first name from a conceptual point of view of the mark Barbara Becker and the greater or lesser degree of distinctiveness of a mark composed of a single surname.

61. In the light of the foregoing, I consider that the judgment under appeal is vitiated by an error of law, and that the single ground of appeal should be upheld and the judgment set aside.

62. As the error detected may be remedied only by undertaking the assessments of fact referred to in the preceding paragraph, ... I propose that the case should be referred back to the General Court in order for the latter to undertake those assessments and to give another ruling consistent with them".
Bravo, says the IPKat -- now here's an Advocate General who speaks his mind and knows how to give the Court of First Instance -- now the General Court -- a sharp cuff around the ear when necessary. He will be a worthy successor to the sadly mourned Advocate General Ruiz-Jarabo Colomer whom he so speedily replaced.

More on Barbara Becker here
Another person with whom to confuse Barbara Becker here

Monday miscellany

Just over a month ago (in a coda to "'Hungarians' and Hungarians attack the CTM"), the IPKat mentioned a Hungarian Patent Office decision, CITY INN v C CITY HOTEL, which preferred the approach taken by the Benelux Office for Intellectual Property (BOIP) in ONEL v OMEL to the conventional wisdom of most of the rest of Europe and concluded that a Community trade mark is not genuinely used if it is not used in more than one country within the European Union. The IPKat now understands from a well-informed but discreetly anonymous source that the Hungarian Patent Office decision has become final and will not therefore be appealed. In other words, the best bet for a swift and authoritative resolution of this issue is for ONEL v OMEL to go all the way to the European Union's Court of Justice.

The invention of Dr Nakamats. The IPKats are grateful to their talented friend Grégoire Marino for this link to a trailer for a film -- not yet released -- entitled "The Invention of Dr Nakamats". Dr Yoshiro Nakamatsu, it may be recalled, is dubbed "the most prolific inventor in history", reaching a lifelong total of 3,500 patents this month. Readers are entitled to form their own opinions ...

Another talented friend of the IPKat is Chantal Morel (the eponymous Morel of Amsterdam IP practice Klos Morel Vos & Schaap). Chantal writes to inform him as follows:

"The almost endless series of olanzapine cases (inter alia Eli Lilly patent EP 0 454 436) has now produced an interesting sequel in the Netherlands. The decision of the Dutch District Court, The Hague, handed down this Thursday, nullified the Dutch part of the European patent and the Dutch supplementary protection certicate (SPC) on grounds of lack of novelty. Eli Lilly's patent and SPC regarding olanzapine were found to be invalid since the substance olanzapine was already directly and unambiguously disclosed in the earlier Schauzu publication. An error in the structural formula depicted in Schauzu would, according to the Court in The Hague, immediately be recognized by the skilled person -- who would also directly and unambiguously know how to correct that mistake, based on the Schauzu publication. There is no need for the skilled person to seek confirmation in an external document since he will not have reason to doubt the technical reality of the Schauzu publication (and the external document at issue does not immediately show that the Schauzu publication in fact contains a second mistake, which would deprive it of its novelty destroying character). On this basis the Court concluded that the Schauzu publication discloses olanzapine as one of its compounds.

In its assessment, the Court took into account the EPO case law on flaws and mistakes in disclosures (T 89/87, T 412/91, T77/87, T 591/90).

The Court also admitted that its decision deviated from earlier decisions in the United States, China, the Czech Republic, Slovakia, Romania, Ukraine, Russia, Germany, United Kingdom, Austria and Spain, giving a brief explanation of decisions in four of these jurisdictions. It referred among other things to the decisions of the German Bundesgerichtshof and the Court of Appeal for England and Wales, upholding the corresponding German and UK patents, as well as to the Canadian decision that nullified the patent as a non-valid selection invention (a ground that was raised in the Dutch proceedings as well but is not addressed in this decision)".
Thanks, Chantal, says the IPKat, who expects a comment or two on the deviant Dutch from some of his more conventional readers.

The current (April 2010) issue of Oxford University Press's monthly publication, the Journal of Intellectual Property Law and Practice, are now available to subscribers online (you can view the contents here). The Editorial, "The Enemy Within?", takes a look at some possible threats to the integrity of Fortress Europe which have sprung up from the Union's intellectual property system itself. You can read it in full here.

Sunday, 28 March 2010

Letter from AmeriKat II - Viacom v YouTube (YouTube/Google)


YouTube and Google's motion starts off by explaining the meritorious and important public function of YouTube's activities - specifically that it is "prominent source of political information". So much so that failed Presidential Republican candidate, John McCain's campaign "congratulated YouTube for its "ground-breaking contributions" to the democratic process "by providing a platform for political candidates". The introductory pages also expand on "YouTube's extensive efforts to help copyright owners" including providing "Copyright Tips", "reminding users that they are prohibited from uploading copyrighted content, and terminating accounts of repeat infringers. A quote from the Motion Picture Association of America (MPAA)was also cited in support of their contention:

"YouTube has been a good corporate citizen and taken off copyrighted material."

The filing states that YouTube benefits from the Safe Harbour defence because they have adopted and implemented an appropriate repeat infringer policy including the termination of repeat infringing accounts and they also inform their users of the content policy. They also state that the infringing activity alleged by Viacom is as a result of YouTube's mere storage of the content "at the direction of the user" - which is one of the specified functions of a service provider that will warrant protection under the Safe Harbor. On the specific knowledge point, Google argue that courts applying section 512(c)

"have consistently found that to disqualify an other-wise eligible service provider from safe-harbor protection, the plaintiff must come forward with evidence that the service provider had knowledge of particular infringing material on its service."

Google maintains that therefore without specific knowledge of an infringing activity that would, in the words of section 512(c) enable them to remove "the material", the presence of general knowledge of infringing material somewhere on the site is not enough to fall foul of the Safe Harbour defence (Universal Music Group Recordings v Veoh (2009)). The defendants additionally argue that there were no "red flags" that would have made it aware that there was infringing activity occurring on the site especially given that there are more than 500 million videos on the site.

From pages 39 -48 of the motion, just as where Viacom was pointing fingers at the defendants, the defendants are pointing fingers at Viacom. They state that Viacom itself "uploaded video clips from their movies and television shows to YouTube for promotional purposes" which itself complicates whether or not the defendants could reasonably know which uploaded clips were authorized and which were not. They argue that "much of its marketing activity [in placing materials on YouTube] takes place covertly." Such stealth marketing by Viacom further blurs the lines between authorized and unauthorized content making it impossible for the defendants to possess any legal standard of knowledge of infringing content on the site for the purposes of falling foul of the DMCA. Further arguments were raised regarding Viacom's marketing policies including their "leave up" practices (see p. 45 of filing). The defendants also interestingly countered that the availability of the fair use defence meant that the defendants could not have knowledge that content was infringing as it may satisfy such a defence. Expectedly, this argument was kept to a minimum.

The above arguments were a build up to the main point - that even Viacom lacked the ability to distinguish infringing from authorized material on YouTube which demonstrated that if the claimant's, whose material material it was, could not deduce this, how on earth could YouTube? In fact, countered the defendants, it was the claimant's own marketing activities which contributed to this difficulty. So why should YouTube be charged with policing content that the rightsholder cannot even recognize to be infringing? They also argued that Viacom had failed to deliver evidence on the scale of the Grokster case that could infer that they intended to, either by themselves or by their third-party users, to infringe copyright. They stated that in Grokster the undisputed evidence showed that close of 90-97% of files were infringing. Viacom, they contended, could not show anything as high as that on YouTube because it is "filled with non-infringing materials."

Both parties' filings are filled with juicy gossip of internal e-mails, marketing plans, and general business practices that will stir debate. However, the legal issue that must be determined by the 2nd Circuit is what makes this case so important: How much knowledge and of what type is required for a service provider to fall foul of the Safe Harbor? This may not be the scale of knowledge as was clearly present in the Grokster case, but there appears to be evidence that YouTube knew of at least some infringements and turned a wilful blind eye. Will the 2nd Circuit therefore follow the 7th Circuit in arguing that wilful blindness to infringement will not negate a finding of a lack of general knowledge? And what is 'specific' knowledge? So the question may well be that general knowledge of infringement may be enough, unless it is coupled with a wilful intent to be blind to that infringement. In any event, although Viacom's evidence appears strong, such an issue may be too important to allow either parties' motions for summary judgment to succeed.

There are also those that are heralding a finding in Viacom's favor could place an undue burden on service providers and potentially destroy the value and purpose of the Safe Harbour defence under the DMCA. But in the face of internal evidence of a service provider ignoring infringing material, should the Safe Harbor defence protect such activities? We will await Judge Stanton's decision...

For more information see these articles from the Financial Times, Bloomberg, and BBC.

Letter from AmeriKat I - Viacom v YouTube (Viacom)

Last week the AmeriKat experienced one of those weeks that could only be described as chaotic. Presentations to prepare for, client work deadlines to meet and a flurry of unexpected issues raining down on her like cats, and unfortunately, dogs. When suffering through a week that buries you in a stack of to-do lists and deadlines, it can become easy to lose perspective - especially in a city where one can never see the horizon. (left - the AmeriKat's face after being caught in last week's rain of deadlines and weather) So when Friday evening finally managed to appear the AmeriKat prowled to the Thames, climbed the Golden Jubilee Bridges, and gazed at the horizon featuring a glowing St.Pauls and the flashing towers of Canary Wharf. Seeing the horizon for the first time in weeks put the AmeriKat's worrisome "to-do" list in perspective.

Heated summary judgment motions enliven Viacom v YouTube battle

Two parties that seem not to have gained in perspective during the course of their three year litigation are Viacom and YouTube (and parent company Google - both defendants in this action so terms have been used interchangeably) (previously reported here and here). The AmeriKat spent her weekend lovingly reading the almost 200 pages of their motions to glean idea of whether this battle is looking likely to be determined prior to a full hearing - although not a betting Kat, it seems highly unlikely given the fervour of finger-pointing raised in these filings. YouTube's summary judgment motion also covered the sister action fo the Premier League v YouTube (reported here).

Arguing a summary judgment motion in the US is somewhat similar to that in England. A summary judgment should be granted where "there is no genuine issue as to any material fact [such] that the moving party is entitled to a judgment as a matter of law" (Federal Rule of Civil Procedure 56(c)). The moving party (applicant) must demonstrate an "'absence of a genuine issue of material fact. . . The burden is then on the non-moving party (respondent) to set forth specific facts raising a genuine issue of fact for trial.'" (US ex Rel. Romano v NY Presbyterian (2006)).

In brief, this dispute arose in 2007 when Viacom (owner of Paramount movies and the MTV music networks) brought copyright infringement proceedings against YouTube (a subsidiary of Google) for the copying, display, broadcast and performance of their copyright videos and sound recordings on YouTube. Once notified of the infringing content on their site, YouTube allegedly did not do enough to remove the content or prevent future infringements. YouTube argued that they were protected by the Safe Harbor provisions of the DMCA, stating that they did not know of the infringement and that they had done enough to protect the claimants' copyright. At the end of December, Viacom informed the New York district judge, Judge Stanton, of their intention to file a motion for summary judgment. Google followed suit a couple of days later. For a breakdown of the parties' letters and DMCA Safe Harbor provisions see this AmeriKat article (which the AmeriKat recommends as prerequisite reading for this article). This post is split into two each dedicated to parties' arguments respectively.


Viacom's summary judgment argument focused primarily on the knowledge and knowing intent of YouTube and Google in uploading knowingly infringing content. Citing Grokster (2005), Viacom argued that YouTube operated with a specific and "unlawful objective of profiting from (to use their phrase) "truckloads" of infringing videos." The filing states that the defendants had "actual knowledge" of the infringing activity, but failed to do anything. Such Grokster intent, they argue, fails any DMCA Safe Harbor defence which is and should only be available to innocent service providers. In support of this contention Viacom referenced several internal e-mails and memos that allegedly show that the defendant's founders and employees intended to increase site traffic by the intentional inclusion of infringing videos. One such email allegedly from one of YouTube's founders Steve Chen

"urged his associates to "concentrate all of our efforts in building up our numbers as aggressively as we can through whatever tactics, however evil."

Another e-mail referenced in the filing stated that the defendants were groping for ways "to avoid the copyright ba****ds" - a term Viacom alleges referred to copyright owners whose works were being infringed. Another email allegedly from Chen stated showed "he opposed removing infringing videos on the ground that 'if you remove the potential copyright traffic and virality will drop to maybe 20% of what it is." Viacom claim that the defendants would "benefit form a policy of wilful blindness and toleration of infringement" - basically operating a "take down and notice" policy under the DMCA, despite potentially having the knowledge not to afford them the Safe Harbor protection.

Viacom's filing also argued that Google had shared the requisite knowledge with that of YouTube. In May 2006, Google held a Google Product Strategy (GPS) meeting attended by top executives including CEO Schmidt. At the meeting a final internal memo allegedly recognized that "YouTube is "a 'rogue enabler' of content theft" and its "business model is completely sustained by pirated content." Viacom allege that despite Google's "keen awareness that infringement was the linchpin in YouTube's success" they purchased the company in October 2006 for $1.8 billion. As part of that purchase Credit Suisee prepared a due diligence report for Google that estimated that, according to Viacom's filing, "54% of the video views in the due diligence sample were of premium copyrighted content that was admittedly unauthorized by the content owner." From pages 21-23 Viacom speak briefly about the importance of these internal documents which were never

"produced by Google or YouTube, which claims they were all lost... Fortunately, [Jawed] Karem (one of YouTube's founders) who left YouTube in 2006 and preserved these materials on his own personal computer, discharged his duties to this Court..."

Viacom argue that, as under Grokster at paragraph 938, these internal communications show "unequivocal indications of an unlawful purpose" and it is therefore established that the defendants "are liable for the infringement they intentionally made possible" beyond a question.

Viacom's motion also argued that the defendants are unable to benefit from the DMCA defence because they directly financially benefited from the infringement and that Congress did not intend to "immunize the kind of extremely culpable conduct at issue" in this case which is evidenced by the clear language of section 512(c)(1)(A). The defendants allege that they benefit from the DMCA provisions because they take down specific infringing videos identified to them. Viacom states that if that position was correct, "then the DMCA would just be a takedown notice statute, and all else meaningless surplusage." (Yes..surplusage....) Viacom argues that to benefit from the DMCA defence a service provider has to satisfy one of several preconditions - only one of those is responding to takedown notices. In particular they again reiterate that the defendants benefited directly from the infringements and had knowledge of the infringements. Viacom argues that the defendants' defence that they did not have 'specific' knowledge that a 'particular' clip was infringing takes them nowhere because such an argument of the absence of 'specific knowledge' does not negate wilful blindness on their part - there is not even a requirement of "specific knowledge" in the DMCA. Indeed, Viacom argues and as Judge Posner explained in the 7th Circuit, it intensifies it. (In re Aimster Copyright Litigation (2003)). Viacom also states that the defendants fall outside the DMCA because their activities, specifically their infringement of their copyright, are not those specified as core Internet activities of service providers meriting protection because "the infringement results not from web hosting, but from operating YouTube as a "consumer media company"".

Friday, 26 March 2010

Friday fantasies

As World Intellectual Property Day looms ever closer, the imperative to keep checking the IPKat's Forthcoming Events side bar grows more powerful too. Don't let the world celebrate this momentous occasion without you. And do check for the selection of conferences, seminars and other events that might, might change your life forever ...

The IPKat's friend Professor Ruth Soetendorp has uncovered something interesting. She reports that she purchased a pair of trousers recently in TKMaxx. The manufacturer was 'Lana' and the garment's swingtag bore the legend "copyright@designright". Comments Ruth:
"Obviously, there is some mystical quality attaching to those terms. The manufacturer appears to employ them in the expectation that their mere presence attached to his garments will put a protective shield around them".
If advice to Lana that the deployment of "copyright@designright" came from any lawyer who reads this weblog, will he or she please contact the IPKat urgently for a crash course in IP protection.

At the beginning of the month, the IPKat asked why the application of the German Bundesgerichtshof in Case C-34/10 Prof. Dr. Oliver Brüstle v Greenpeace e.V. -- the "what is an embryo?" case -- had not been posted on the Curia website. No answer was forthcoming, but the reference has finally been posted on that site today. The IPKat has just had another thought about the difficulties faced in tracking cases like Brüstle, and that is this: very properly Prof. Dr. Brüstle is accorded the dignity of his umlaut, since that is part and parcel of his name. It may even be an integral part of his identity as a German. However, as a concession to users of the Court of Justice's Curia website, would it not be possible for names that carry extra baggage in the form of umlauts, accents, cedillas and tildes to be searchable both with and without them? This would make it easier for people who are inexpert in the use of diacritical signs and for those, travelling abroad, who are confronted with an alien keyboard configuration, to access the information they need. There's a little poll in the IPKat's side bar, so you can tell the IPKat what you think.

If you're struggling to keep up with the torrent of intellectual property decisions and rulings from the European Union's Court of Justice and the General Court, good news from the Curia Diary is that the courts are on their spring holidays and won't be back in action till the week beginning Monday 12 April. Doubtless some of the judges will be giving serious thought during that period of quiet reflection to the plethora of unanswered questions that await them, and on which the value of our pension funds depends. For us lesser mortals [even those of us fortunate enough to have nine lives], that leaves plenty of time for us to catch up on our reading ...

Some naughty lawyers are so preoccupied with the question whether the hosting of AdWords and the advertisements which they summon up is a trade mark issue that they forget how important the availability of the E-Commerce hosting defence is in other areas of IP, in particular copyright. "How to be a good host -- lessons from AdWords" is the title of a neat little post on the 1709 Copyright Blog which takes a timely look at copyright/hosting.

Call for IP Golden Oldies

Think of "Golden Oldies", and Elvis or Petula Clark come to mind. Something quite different was suggested while listening to a podcast interview with the august U.S. law academic and judge, Richard A. Posner, of the 7th Circuit Court of Appeals and the University of Chicago Law School. Judge Posner is, if I recall correctly, the most-cited law academic in modern times, noted for his contribution to law and economics and his prodigious output, even while serving on the bench.

All of this is by way of background to interview that Judge Posner gave this week to Bloomberg radio in connection with his new book, The Crisis of Capitalist Democracy. What caught my attention in the interview was Judge Posner's lament that modern economists have largely ignored the observations made by both John Maynard Keynes and Frank Knight (a founder of University of Chicago economics) in the 1920s, which Judge Posner believed are highly instructive to explain events today. Judge Posner noted, more or less, a certain modern arrogance that two long-gone academics could have been so right nearly a century ago.

His comment got me to thinking. How much do we know about the "golden oldies"of the IP literature? Even more importantly, how much can we learn today from these former masters? And so--my offer. If any readers want to share with me an article or the like from the past that he or she believes should be brought to the attention of this IP community, this KAT will be delighted to peruse the text and report on it in an appropriate fashion. You can decide how far back in time is "far"--1980, 1950, 1920, 1492, 1066, or other. I am at your service.

More on Petula Clark here.
More on Golden Oldies here.

Google AdWord Rapid Response seminar report

Yesterday's Rapid Response seminar on the Court of Justice ruling in Joined Cases C-266 to 238/08 Google AdWords was an amazing experience. Exactly 56 hours after the European Union's leading court gave its ruling on the legality under Europe's trade mark law of (i) the selection, sale and deployment of keywords for internet search by a paid referencing system and (ii) the entitlement of a system such as AdWords to protection under the E-Commerce Directive as an information society service, self-confessed dog-lover and seminar chairman Ian Starr (Ashurst) stood up to welcome a standing-room audience of over 150 participants, drawn from over 10 countries and a variety of professional, commercial and institutional backgrounds.

Following a large number of requests, the IPKat is pleased to inform readers that the entire seminar has been recorded. Details of the link will be published on this weblog as soon as they are available. Meanwhile, the indefatiguable Venya Wijegoonewardene (Gallant Macmillan) toiled all night to produce this 4,400 word report on the seminar, which will give you a flavour of the issues raised and the subsequent discussions.

The IPKat just wants to thank everyone involved for the huge amount of effort that went into organising this event: in particular, Ashurst for its lovely venue and much-appreciated refreshments, Olswang LLP for its logistical support -- and of course Google, without which there would never have been a reference for a preliminary ruling in the first place.

Thursday, 25 March 2010

The Pirate Party Responds

Following his post about the UK Pirate Party's recently announced manifesto, at which a few of the IPKat's readers threw some well-aimed comments, the PPUK's prospective parliamentary candidate for Worcester, Andrew Robinson, has written to the IPKat with the following reply:
"Thanks for taking the time to look at what the Pirate Party UK are saying. I'm not at all surprised to see that people much better informed than us are picking holes in our manifesto. If the message that "It would be safer to start correcting some excesses in IP law than to wait that the crowds take over the lead." is acted on in parliament, then we've made a big, big step towards our objectives.

It is, as I'm sure practitioners in this field know better than anyone, fiendishly difficult to talk about copyright and patents in a language that the general public can relate to, and therefore the broad statements in our manifesto will have loopholes and gray areas.

I'd like to answer a few of the points raised, not in a political argumentative sense, but in an honest attempt to work with skilled people in the field to start a debate that helps us uncover the "few nuggets of wisdom buried in a huge dungpile of nonsense." and polish them up. Yes, we openly admit that our position "fails to recognise basic commitments under international treaties.", because international treaties can be unhelpful and outdated. The US survived very well outside the Berne convention for a very long time, and several far eastern countries have proved the economic benefits of lax application of international law. Yes, s.70 CDPA does provide something near identical to our explanation of the impact of turning copyright into a commercial exploitation right, our dissatisfaction with the narrowness of the word 'broadcast' in that statute was lost in the process of boiling down our thinking on it into a user-friendly manifesto pledge. I'll make sure we don't make this mistake again. Yes, we do realise that biotech patents would have a problem with our approach, but that's intentional, we are against biotech patents. Yes, we realise that covering all claims of a patent in a physical model is difficult, that's entirely intentional, it's our proposed solution to overbroad and vague submarine patents.
I'm actually very excited to read Simon Bradshaw's comment that "heaven help us, for if this represents the state of discourse on fundamental IP policy we are hardly likely to see any intelligent engagement on the subject soon." because it gives me a chance to say I'm not happy with it either, but we are a very open party, and we are aware that what is most needed is "intelligent engagement on the subject". I want you to talk to us, and help us have that intelligent engagement.

As some of you might be aware, yesterday there was a march on parliament protesting about the digital economy bill
. It might surprise you to know that as Pirate Party leader, I wasn't there. At the time of the demo, I was at the Counter 2010 conference on counterfeiting and Piracy Research in Manchester, listening to Annette Kur from the Max Planck Institute lecture on best practice in challenging counterfeiting.

If our manifesto worries you, I quite understand, but I would say that perhaps this should worry you more: I spoke to the organisers of Counter 2010 and asked them why the Pirate Party movement had 5 delegates (including one MEP elect) at the conference, but the other parties were not invited. I was told that all the other parties were invited, but had not replied.

As an anonymous commenter suggested, I do believe that "we are witnessing the start of a political platform, as the ecological movement was years ago", if fact I would go a step further and point out that this platform already has representation at the European Parliament, and was able to generate 10,000 letters to MPs expressing concern over the prospect of the Digital Economy Bill going into 'wash up'.

Time to end on a soundbite (I am a politician after all)... I consider my job as leader of the fledgling PPUK to be to build a party that people like the readers of this blog could feel comfortable joining. I know some of you will be laughing when you read that, but I hope a few of you will consider helping us get a little bit closer to that goal, for everyone's benefit.
The IPKat, who strongly believes that this blog should be an open forum for intelligent informed discussion about IP, regardless of the points of view expressed, very much welcomes Andrew Robinson's comments and looks forward to seeing more discussions about the substance of what the PPUK stand for.  Who knows, they might even get some of the IPKat's regular audience to take them seriously.

Keywords again -- but this time Google's not a party

The IPKat has just taken a look at Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and Reisen GmbH, a reference for a preliminary ruling from the Oberster Gerichtshof (Austria) dating back to June 2008 but sadly unobserved by most European trade mark-watchers. This reference wasn't even given the dignity of an Advocate General's Opinion -- a sure sign that the Court of Justice doesn't think it's a very hard one to resolve.

So what happened here? It's another AdWords case, involving Google's "paid referencing service" which enables any economic operator, by means of the reservation of a keyword, to place a link to its own advertisement which is flagged as a "sponsored link", when the user of its search engine employs that keywords as a search term, in addition to the "natural results" of the search which the user gets irrespective of whether the keyword is an AdWord.

BergSpechte owns the figurative mark featured top-right in this post, which is registered in Classes 25 (clothing), 39 (travel services) and 41 (various teaching, entertainment and sporting services). Another company, Reisen, competed with BergSpechte in providing ‘outdoor’ tours. That company purchased ‘Edi Koblmüller’ and ‘Bergspechte’ as AdWords that generated the appearance of its own advertisements as sponsored links. BergSpechte sought and obtained an interim injunction from the Landesgericht Wels and protective measures were imposed on Reisen, prohibiting it from directing users to its own home page by a link on the pages containing lists of hits obtained using internet search engines by entering the search terms ‘Edi Koblmüller’ and/or ‘Bergspechte’. The action eventually reached the Austrian Oberster Gerichtshof (Supreme Court) which referred the following questions for a preliminary ruling:

"1. Must Article 5(1) of the ... Council Directive 89/104 ... be interpreted as meaning that a trade mark is used in a manner reserved for the proprietor of the trade mark if the trade mark or a sign similar to it (such as the word component of a word and figurative trade mark) is reserved as a keyword with a search engine operator and advertising for identical or similar goods or services therefore appears on the screen when the trade mark or the sign similar to it is entered as a search term?
2. If the answer to Question 1 is yes:
(A) Is the trade mark proprietor's exclusive right infringed by the utilisation of a search term identical with the trade mark for an advertisement for identical goods or services, regardless of whether the accessed advertisement appears in the list of hits or in a separate advertising block and whether it is marked as a 'sponsored link'?
(B) In respect of the utilisation of a sign identical with the trade mark for similar goods or services, or the utilisation of a sign similar to the trade mark for identical or similar goods or services, is the fact that the advertisement is marked as a 'sponsored link' and/or appears not in the list of hits but in a separate advertising block sufficient to exclude any likelihood of confusion?"
This morning the Court of Justice ruled as follows:
"Article 5(1) ... must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with or similar to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party".
This ruling relates only to the first referred question since the Court concluded that an answer the second would not be useful for resolving the underlying dispute. The Court's position here is unsurprising in light of Tuesday's ruling in Google (see here and here), which it cites as authority. Indeed, if you think you might be suffering from déjà vu, you might note the similarity between the paragraph above and the first paragraph of the Court's Google ruling.

Subscribe to the IPKat's posts by email here

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