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).

Saturday, 31 May 2014

A matter of intended or actual laugh? The parody exception under EU and UK laws

Gigi is invariably
great fun to watch ...
A few days have passed since Advocate General (AG) Cruz Villalon issued his Opinion [not yet available in English: will it ever be?] in Case C-201/13 Deckmyn [here], and even more time since UK IP Minister Lord Younger announced that adoption of proposed parody, caricature and parody exception had been [indefinitely?] delayed.

While waiting for further developments in this engaging UK copyright policy saga, a question that has probably arisen in the minds and hearts of parody-loving folks is whether the scope of proposed UK exception is the same as that of the relevant exception under Article 5(3)(k) of the InfoSoc Directive, at least as the AG understood it.

Well, it would seem that the answer may not be a resonant 'Yes!' after all.

This conclusion may follow consideration of whether it suffices that a parody has a burlesque/humourous intention or it is also necessary that it produces a burlesque/humourous effect.
... But does this produce
a humourous effect?
Does it have to?

Starting with the proposed UK parody, caricature and pastiche exception, although the Intellectual Property Office's Guidance for those using copyright works to create new content defines parody as imitating a work for humorous or satirical effect, proposed Section 30A(1) of the UK Copyright, Designs and Patents Act does not mention any such effect. This provision would in fact simply state that: "Fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work".

When formulating his conclusions, AG Cruz Villalon merely referred to "burlesque intention" as a requirement of parody. 

However, when considering the effect of a parody, he held that it is a common understanding that a parody must have a somehow humorous effect, and that it is left to Member States [national courts?] to define what is humorous, also depending on different national sensitivities. 

At paras 67 to 69 of his Opinion the AG stated  [WARNING: Kat-translation] that: "parody pursues a specific effect, which somehow follows as a necessary consequence of the ri-elaboration of an earlier work. It is this selective reception, so to say, that must produce a certain effect on the recipients, lacking which the parody is a total failure ... Provided that one can refer to «burlesque» as a common term to describe the intentional dimension of a parody, I believe that Member States enjoy a great degree of discretion to determine if the work in question displays this feature of parody." 

While it seems clear that a parody must pursue a burlesque intention, from the Opinion itself it is not really clear whether it also necessary that it produces a burlesque effect. 

If the latter was the case, do you think that the work at stake in Deckmyn - which clearly pursued a [questionable?] burlesque intention - would be recognised as a parody ? In other words: does that calendar cover produce a burlesque effect?
Is that enough?

Furthermore, if a humourous effect was required, how easy would it be to find it when there are parodies that are deeply linked [as it is the case in Deckmyn] to specific national realities? 

Should the humorourous effect be assessed: (a) only in relation to the particular Member State in which the case is litigated; (b) the broader "European society" to which the AG referred when conducting his fundamental rights analysis; or (c) even the notion of an 'average EU consumer' of copyright-protected content [this trademark-specific notion does not (yet) exist in the EU copyright world, but may well be developed if one starts importing - see Deckmyn questions and AG Opinion - trademark-specific concepts such as that of confusion].

Hopefully the CJEU will clarify whether parody is just about burlesque/humorous intent [as it should be, says Merpel] or also something else, say a burlesque/humourous effect. 

Certainly, if the latter was the case, then UK proposed exception - despite reference to "fair dealing" - might be considered broader than the corresponding exception in Article 5(3)(k) of the InfoSoc Directive [by the way, if you are interested in discussing all this further, here's an event for you] ...

What do readers think?

Friday, 30 May 2014

Three coins in the fountain; three coffee shops in a block?

After a post-INTA, do-it-ourselves visit to China with Mrs Kat, this Kat is pleased to be back on domestic terra firma. Oddly, perhaps, this Kat’s most lasting trade mark memory of the INTA meeting in Hong Kong was not directly connected to the meeting itself, but rather to a recurring image of three coffee shops, one more or less next to the other, located on a main road in the Wan Chai neighbourhood, here, not too far from the Convention Center. One was a Starbucks outlet, the second was a Pacific Coffee outlet, while the identity of the third shop has since escaped my feline memory. Walking along the road and observing the three coffee shops, this Kat got to wondering—why would three branded companies, each seeking custom from pass-by coffee drinkers, all invest in a shop location within the immediate shadow of not just one, but two competitors? Wasn’t one of the reasons that Starbucks itself brought back its visionary leader, Howard Schultz, here, to once again run the operation was the over-presence of Starbucks outlets on seemingly every corner in various downtowns? It led this Kat to think more about the nature of retail clustering and branding.

There is of course nothing wrong with the fact that certain industries tend to cluster in a given area. From the medieval guilds to the eye-wear manufactures in Northern Italy to the hi-tech component manufacturers in Taiwan to the hi-tech sprawl of Silicon Valley, industry after industry has enjoyed the advantages —manpower, know-how and support services — of clustering. But this tendency to form industrial clusters does not have any direct connection with the brands that may ultimately be associated with the products that are made by the various entities within the cluster. Such clusters are several distribution levels removed from the end customer who ultimately decides to purchase the product based on its brand and trade mark.

For instance, it is this Kat’s understanding that various designer labels for eyewear originate from the same manufacturing location (or a small number) in northern Italy. The overall quality of the eyewear products in the aggregate may well benefit from the manufacturing advantages that are offered by the clustering of manufacture in Italy (though Chinese competition is eroding this state of affairs). But the purchaser ultimately makes his purchase based on the interaction between price and the cachet of the designer label. From this vantage, such clustering actually may have the effect of smoothing out differences between the products, elevating even more in importance the strength of the brands competing for the consumer’s attention.

But the role of brands in an eyeglass store seems quite different from that of coffee shop outlets. There is a clear benefit to the consumer to have a choice of eye-wear brands under a single roof. Moreover, given the fact of inevitable competition, the proprietor of the eyeglass store will likely be interested in promoting its own service mark brand as the place to go when purchasing designer eye-wear (in the pre-brand ages of past, there was a view under Jewish law that the presence of a second competitor in proximity to the first entity might actually constitute a form of trespass on the livelihood of the first entity. The rise of the consumer and the centrality of brands have made that approach inapplicable to some extent. But it can be said that it still survives in concept in the form of the right to exclusive distribution for a defined territory at the level of intra-brand competition, i.e., where only a single brand is at issue.)

That may be well and good for designer eye-wear. But what about branded coffee shops? After all, the clustering is taking place at the consumer level.  At first glance, this retail outlet clustering seems an advantage to the consumer since there is greater choice from his end (sort of like the food court at a shopping mall). The position of the coffee shop purveyors is less clear. Presumably, the brand owners must believe that there is a benefit to the location, even at the risk that you are sharing the location with your branded competitors. Moreover, the brand owners must be convinced that the presence of the three competitors, each being proximate to the other, increases the potential size of the overall pass-by, coffee-drinking market. This is especially so if each of the competitors attracts a somewhat different type of customer, with the result that the presence of the three coffee shops actually provides greater consumer choice in the aggregate.

Still, there seems to be another risk for the coffee shop brands. If your coffee shop is attracting less custom that one or both of its competitors on the Wan Chai road, this will be in clear view of all. To the extent that one places a value on the social dimension of the coffee-drinking experience, then the sight of a (relatively) empty coffee shop cannot be very helpful to your brand image. Unless, perhaps, as suggested above, each of the three coffee shops attracts a somewhat different clientele, such that they are not necessarily viewed as mere substitutes for each other.

In the end, this Kat passed by all three coffee shops and simply continued on for a hundred meters or so to enter the nearest subway station. Presumably, however, a critical mass of passers-by on the road acted otherwise, choosing to enter one of the three proximate shops for a preferred coffee-drinking experience. Still, that Kat wonders—does inter-brand competition of this kind in the coffee shop world make commercial sense?

More on Pacific Coffee, here.

More on Suzy Wong and the Wan Chai neighborhood, here.

More on "three coins in the fountain", here.

Seeking Oblivion? Click here and fill in this form, says Google

Following this Kat’s piece To Oblivion, and Beyond! Google and the Right to be Forgotten, an update on Google’s reaction to the Court of Justice of European Union’s (CJEU) decision in Google Spain effectively granting EU citizens the right to be forgotten, aka the “right to oblivion”, and the removal from the Google search engine of links to outdated or irrelevant information returned in search results for an individual’s name.
The start of one night Merpel would like to be forgotten
The BBC has reported that the beneficiaries of this decision thus far have been, amongst others, paedophiles, stating that “more than half of the requests sent to Google from UK individuals involved convicted criminals”, although they did not provide any information on whether those convictions were spent or otherwise historical (and if so, why should they be kept online forever, ponders Merpel, no doubt having in mind an embarrassing driving incident from her youth on an evening she’d overdone it on the catnip).
In a step which is either a sign of Google embracing the CJEU’s decision or just cutting down on the admin burden by automating some of the take down process, Google has set up an online take down form, here. This now sits alongside all of Google’s other take down forms.
The form, which is stated to be a work in progress, is prefaced with this message:
“A recent ruling by the Court of Justice of the European Union found that certain users can ask search engines to remove results for queries that include their name where those results are “inadequate, irrelevant or no longer relevant, or excessive in relation to the purposes for which they were processed.
In implementing this decision, we will assess each individual request and attempt to balance the privacy rights of the individual with the public’s right to know and distribute information. When evaluating your request, we will look at whether the results include outdated information about you, as well as whether there’s a public interest in the information—for example, information about financial scams, professional malpractice, criminal convictions, or public conduct of government officials.
If you have a removal request, please fill out the form below. Please note that this form is an initial effort. We look forward to working closely with data protection authorities and others over the coming months as we refine our approach.”
Anyone looking to submit a take down will need to explain why their request fits the CJEU’s test and provide a “valid driver's license, national ID card, or other photo ID” to prove they are who they say they are.
Don't forget your cat, or us Kats, readers
An applicant also has to select “the country whose law applies to your request” from a list which features the 28 members states of the EU along with Iceland, Liechtenstein and Norway.
Over on The Guardian, some have commented on the irony of the search giant requesting photo ID before taking down links: meaning that the process requires you to identify potentially embarrassing content on the Internet, provide confirmation that such content does concern you and then give Google a copy of an official document to prove it. Thereby creating a database within Google of certified embarrassing facts…

Friday fantasies

Nagoya in the news again.  "We need to talk about Nagoya", by fellow Kat Darren Smyth, has just been published in the Royal Society of Chemistry's Chemistry World; you can read it here.  If you are puzzled about the Nagoya Protocol, research, intellectual property, biodiversity and natural resources and are not a lawyer, this is a good place to start reading. As Darren explains: "It is the most high level yet due to a determined editor who would not let me put any legal detail in at all".

Around the weblogs.  A figurative mark consisting of the words "Yoghurt-Gums" was always going to be hard to register as a Community trade mark for confectionery and sweets other than chewing gum (Class 30), and Laetitia Lagarde's note on Class 46 shows exactly why. Over on the 1709 Blog, Ben Challis explains what happened in the US when a copyright-owning porn film company appeared to be doing the dirty work of copyright, er, collection society Prenda Law.  Here on IP Draughts Mark Anderson conjures up another curious topic for the delectation of his readers: how to manage ambiguity in IP transactions.

No room for lawyers? The last presentation yesterday at OHIM's IP Mediation Conference, by Fabienne van der Vleugel (Attorney-at-law Meaux, Brussels, New York Bars and Mediator, Vice President UIA World Forum Mediation Centres), escaped detailed coverage only because of lack of laptop power.  It was a stunning, dramatically delivered oration on the topic "Leave the Law outside the Door … Commercial Interests come first".  Fabienne graphically described the responses of lawyers to her request that, in the course of mediations, she speak to their clients without any lawyer being present. Responsible and experienced mediations recognised the need for this, while some others were shocked at the prospect of their client being exposed to a real live mediator without them being present; this latter category required intensive education from her, which could easily take an hour or two on the phone. Lawyers could be the biggest enemies of mediation -- but, when properly trained and with the right attitude, they could also be mediation's biggest friend: they still had a role to play, since it's not the job of the mediator to give the disputing parties legal advice, or indeed to sit down and draft any agreement the opposing factions reach.  As for the proposition that the law and its practitioners could be dispensed with, Fabienne's conclusion was that, while mediations must be driven by commercial rather than legal considerations, the law cannot be eliminated entirely. Her last words: "leave the law outside the door -- but don't close it" [if you missed yesterday's Katposts on the first day of the conference, you can read them here, here, here and here].

Would this have infringed a
Trunki line drawing?
Save our Trunki! A rallying cry from British designers.  A katpat goes to long-time reader Lee Curtis (Harrison Goddard Foote) for sending us this link to an article in The Telegraph which reports the launch of a Protect Your Design campaign in response to the recent Court of Appeal for England and Wales decision to allow the appeal of Hong Kong based PMS International against a ruling that PMS had infringed the Trunki children's case registered Community design. This article ties in nicely with the recent Katpost on David Stone's paper on line drawings, in which, citing Trunki, he argued that registered Community designs that were based on line drawings enjoyed a wider degree of protection than designs based on shaded or textured illustrations.

Thursday, 29 May 2014

OHIM IP Mediation Conference 4: Mediation -- making the most of it

Thinking outside the box
can lead to surprises ...
Following a brief break, Isabelle Leroux (Partner, Dentons) took the baton of moderator from James Nurton. There then came a presentation by Richard A. Mac Bride (Mediator/Attorney, Executive Director of the UAIPIT Project at the University of Alicante), "Roles of lawyers and corporate representatives".  Both  lawyers and corporate representatives have to think outside the box. Many lawyers tend to be conflict-oriented and to be conscious of the fact that this is how they are perceived. Corporate lawyers have the added burden that they are always acting under orders, and there may be the pressure of how things are done in the particular sector in which their corporation operates (ie is there a culture of "take no prisoners" or of "live and let live"?)  Lawyers may have to learn to lower the adrenalin level ahead of a mediation and to reduce general levels of tension for mediation to be able to work; this is not something that most lawyers are trained to do. On the corporate side, in-house representatives may have fairly low levels of authority, whether in terms of what they can commit their company to in terms of deciding how to address a dispute and at what cost.

How can I ever think
outside this blessed box ...?
Lawyers have to teach both their clients and themselves what mediation actually means in practice. This takes time that someone has to pay for. They also have to learn how to explain what the cost of not entering into a negotiated settlement is, and how to step back from the mediation process where others have a role to play and not monopolise a "starring role". The best way to make sure that lawyers don't come unprepared is to instruct them to write a mediation brief.  They may also have to nudge clients whose mental processes stall at the point at which they cannot think outside the box.

Richard was followed by Aurélia Marie (Partner, Cabinet Beau de Loménie), whose paper was entitled "Practical experiences of mediation from an IP lawyer's perspective". Aurélia, an IP practitioner, related her experiences of an OHIM mediation on the part of a French company in a trade mark conflict with a Spanish competitor.  Before proceedings started, the parties had met several times. The Spanish company was concerned that its own trade mark was in danger of dilution, while the French company felt it had nothing to concede.  With hearings pending both in Spain and before OHIM, OHIM offered mediation proceedings which both parties accepted -- the French with alacrity, the Spanish with some reluctance.  Since neither party would have sought mediation on the basis that it would be seen as a sign of weakness,  OHIM's offer was crucial.

The French company was sceptical both with regarding the procedure and the possible outcome, and both parties had a problem selecting an appropriate mediator.  Looking extensively at the online CVs of the mediators on offer, expertise and language were the two principal criteria: ultimately two mediators were appointed, one a French-speaker, the other speaking Spanish.  Then a mediation contract had to be concluded and a suitable representative of the French company designated (the Spanish company being represented by its manager).  What about dates? Looking for a speedy resolution, the parties chose a single day -- though in hindsight two days would have been better (the single day ran from 9 am till nearly midnight).

Mediation Day -- time to celebrate!
The day itself was a success. The mediators spoke separately to each party, the French party having worked out what was the least it could agree to in respect of each part of the dispute and as to who would take responsibility for each part.  At the end of the day, heads of agreement were agreed and signed, though details had to be ratified by the French company subsequently, given its cumbersome decision-making processes. In conclusion, said Aurélia, choice of mediator(s) is crucial since trust in the mediator is so important. Also, information given to the mediator must be objective and clear. Finally, the end of the mediation is not necessarily the end of the case, since new problems can be dealt with -- but after the two have been mediated they have the right frame of mind to address them.

Next up was Torsten Frey (European Commission, Policy Officer Competition and Industrial Policy, DG Enterprise and Industry), on "Mediation, arbitration and standard essential patents". Torsten explained the background to FRAND licensing and what a standard essential patent is, before embarking on the dispute resolution side of things.  The rules that govern obligations as between different IP owners who share a standard, and also as between the IP owners and licensees, tend to be highly complex: this effects the manner in which disputes arising from them are tackled.  It's not just the cost of resolving disputes that attracts the interest of DG Enterprise and Industry, but the outcome once the dispute is resolved. In the telecoms sector, the parties' patent portfolios are generally global in extent and vast in scale.

Where do mediation and arbitration come in? Being cheaper, quicker and not bound by the geographical scope of IP rights, they are preferable to litigation, though they are not that extensively use. So what can be done to improve the degree of use? One way would be to require mediation and arbitration as mandatory steps before litigation is commenced.

Philip Harris (Partner, Wright Hassall) then took over the role of moderator and Michèle Weil-Guthmann (Mediator, Honorary Judge and Secretary General of the European Association of Judges for Mediation, GEMME) spoke to the subject of"Dealing with confidentiality, neutrality and other sensitive issues". Michèle emphasised the importance of confidentiality, noting also the draft Directive on Trade Secrecy [on which see Alberto's Katpost here] and the exceptions to it. To whom does the confidentiality apply in a mediation, Michèle asked, listing the various possible answers. Likewise, how far does the scope of confidentiality go? And does it apply in respect of documents that could be obtained outside the mediation too?

"Leave the Law outside the Door … Commercial Interests come first" was the last talk of the day, delivered by Fabienne van der Vleugel (Attorney-at-law Meaux, Brussels, New York Bars and Mediator, Vice President UIA World Forum Mediation Centres). This Kat's laptop battery died at this point, which is a pity since this is a hugely important topic which he looks forward to addressing separately in the not-too-distant future.

OHIM IP Mediation Conference 3: mediation and its alternatives

First to speak after lunch, in a session moderated by Managing Intellectual Property Editor James Nurton, was vintage Katfriend and one-time Patents County Court judge Michael Fysh QC, on "Advantages of mediation over court proceedings". This paper was principally focused on costs. "What is perceived to be the value of the litigation?" Asked Michael. "How much is a case worth? In an IP case this is almost impossible", at least at the outset, since the IP owner is unlikely to know how much infringement has taken place and how much it will cost to deal with it. It may also not be apparent how strong (or weak) a patent is, since killer prior art can appear from any source and in any language.  Other unknowns include the effect that litigation will have on the time and energy of those people who are personally involved in it, but who will also be expected to do their day jobs.

Other major issues in patent litigation, particularly within Europe, include appointing experts and trying to get them to do what they're supposed to do, the assessment of costs and engagement of forensic accountants, different rules regarding interim relief and disclosure of information, divergent time-scales [like "mediation", the word "urgent" does not appear to have a single shared meaning, this Kat notes].

Design cases are also increasingly complex in Europe today, given the overlay of different IP rights and their respective remedies and defences.  Trade mark cases, which are in theory simple, are tough to resolve given the difficulty of applying Court of Justice rules to the facts of ordinary cases.  Market survey evidence (if admitted), as well as statistical evidence, can be costly.  In all these instances, someone has to pay for this.

Mediations can avoid all of this. A good mediator can be a psychologist as well as a head-banger when it comes to costs, all of which helps both to bring the parties together and to keep them focused. His parting shot -- the one piece of advice Michael offered before closing -- was that, whatever else a mediator does, before he leaves the room he should make sure that whatever the parties have a written and signed version of what they've actually agreed.  If not, he said, it's dollars to donuts that one or other of them will come up with something that's been left out of it.

 Michael Fysh's presentation was followed by a paper, "Negotiation, Mediation and Arbitration: Comparisons and Synergies", by Mark Appel (Senior Vice President International Centre for Dispute Resolution / American Arbitration Association). Negotiation, mediation and arbitration were not mutually exclusive alternatives, Mark said: they were complementary tools that could be used in conjunction with one another.  Points initially made by Mark included the need for familiarity with the industrial sector and with corporate structures, flexibility and other positive indicators for managing dispute regulation. "Fitting the Forum to the Fuss" was a good maxim to follow.

Joined-up: ever
the best policy ...
Mark then described a 2009 study in which 79 businesses in France were examined as to their ADR experiences, coming up with five sets of best practices; much, it seems, depends on the industrial sector.  Considerably less use was made of ADR in France than in the US, possibly because the French had a sense of their commercial courts working well.  In 2013, a further study revisited 13 of these companies. It was clear that they were taking a strategic approach to conflict management. These companies also tended to be involved in many cross-border contracts and tailored their strategic policy to match this. They are also quite joined-up: by cross-checking between divisions of the same company, a third party villain vis-a-vis one division may be trading well with other divisions: delivery of such a person's head on a plate may not there be advantageous. In answer to a question from James Nurton, Mark indicated that the form of dispute resolution management he was discussing was mainly to be found in larger companies, but could be expected to trickle down to smaller businesses in time.

OHIM IP Mediation Conference 2: Institutional ADR and responses to it

The second session of today's OHIM IP Mediation Conference, moderated by this Kat, featured a stellar list of representatives of institutional IP mediation. Ignacio de Castro (Deputy Director, WIPO Arbitration and Mediation Center) opened the session, pointing out that more than half of the disputes before the Center go to mediation.  33% of WIPO mediations lead to arbitrations, which can be quite effective. WIPO's newly updated rules come into force in a few days; they provide for a large list of mediators -- more than 1,500 worldwide, covering all areas of IP -- but this is still not enough and WIPO often has to go beyond this. WIPO provides online docketing facilities.

Patents are the most popular topics for WIPO ADR, followed by IT; trade mark disputes are relatively uncommon. Within this, there has been a shift from pharma to telecom-related patents, even covering FRAND and standard-essential patents. Settlement rates are high (70% in mediation, high in arbitration too). March 2013, WIPO published a survey on patent and copyright dispute resolution covering some 400 respondents. 91% concluded agreements with parties from other jurisdictions; 80% for technology patented in multiple jurisdictions. It has been difficult to attract users to the services

Next to speak was Steve Probert (Senior Mediator, UK IPO), who introduced the audience to the team of five trained in-house IP mediators, who are supplemented where necessary by a panel of selected outsiders. Steve pointed out that the IPO's fee structure was negotiable, so people are free to haggle.  The IPO's services covers all and any aspects of a mediation, and will address disputes at any stage, even post-judgment if necessary. Mediation gets a boost in England and Wales from judges who push parties towards it before trial and want to know why they haven't opted for it when the time for judgment comes. What can go wrong, Steve asked? Sometimes when the parties have reached an agreement on the substantive issues, there can be a residual problem as to whether one party contributes to the other party's costs. Another problem arises when a party has to keep stopping in order to take third party advice.

Joana Borralho de Gouveia (Chairman of ARBITRARE, Portugal) then took the audience through the services of her organisation, which is competent to resolve disputes ranging from domain names through to industrial property and reference medicines.  ARBITRARE offers information, mediation and arbitration services; arbitral awards have the same legal status under Portuguese law as court orders.

Parties are initially invited to participate in mediation in person and while accompanied by their legal representatives. However, participation through Skype is also permitted and, on the two occasions on which it has been invoked so far, it has worked well.  The mediation stage is not normally allowed to extend beyond 30 days, though in exceptional cases a further 15 days may be allowed.  Mediators are trained and are appointed by ARBITRARE, though the parties are free to appoint a mediator of their choice if they so desire. Proceedings are offered both in Portugal and in English.  In terms of statistics, from 2009 to date some 165 proceedings have been filed, of which only 4 have accepted mediation and just one mediation has been concluded.

An agreeable location for mediation?
Sam Granata (Unified Patent Court Mediation and Arbitration Center) then introduced us to a body of which none of us has yet had experience.  As a Belgian judge and a former mediator in private practice, Sam gave a multifaceted picture of the legal theory underpinning the UPC, its current structure with local, central and regional divisions, as well as the practical possibilities. The UPC's Mediation and Arbitration Center is to be based in Lisbon and Ljubjlana (left).   Only one Article in the UPC Agreement covers the Center, which won't come into force till the requisite number of 13 ratifications (including France, Germany and the UK) have been received. It is hoped that, by the end of the summer, the Center's rules will be approved.
As for its operation, the Center is only competent for mediation and arbitrations of patents falling within the scope of the UPC Agreement: does this include opted-out patents, for which that Agreement provides?

Coming from an International Trademark Association (INTA) perspective, Carsten Albrecht (Attorney-at-law and Mediator, FPS Fritze Wicke Seelig) explained the organisation's role, and that of its ADR Committee -- which has 58 members and three subcommittees covering outreach, programming and "neutrals" (which creates documents and materials for mediators and exercises a degree of quality control). Of the 136 mediators on the group's panel, over 80 are from the United States but the number of non-US mediators, and those with capabilities in languages other than English, is increasing.  INTA does not provide a physical location and does not lay down the specific rules.

Last year around 450-470 mediations came through INTA with a 70-80% success rate -- which is impressively high.  But why are there not more? Is it that mediation is only chosen when litigation is too expensive or where the courts are not trusted? Does it depend on whether it is judicially encouraged or not? Or is it just a matter of cultural tradition?  How can we improve the degree of use, Carsten asked: will it involve changing the attitude of the legal profession? Some people appear to equate a willingness to mediate with a concession of weakness, which should not be so.

Fabio Angelini (Counsel, De Simone & Partners) then spoke from the perspective of the European Communities Trade Mark Association (ECTA), an organisation that is by no means as big as INTA but which still has a sizeable membership -- and an active one.  ECTA has a strong institutional commitment to mediation. Fabio decided to look at IP mediation via what he described as a "totally unscientific survey" of around 150 ECTA members. The survey was basically divided into three sections: "mediation yes", "mediation no" and "mediation why".

More or less 50% of respondents had done an IP mediation, though only around 10% had ever considered the mediation service offered by OHIM. While there is a strong aversion to trying something that is brand new, there is also a pull in the opposite direction from people who want to try something because it's new and it's worth giving it a go.  Fabio then took the audience through a fascinating array of reasons given and attitudes adopted by those surveys.

Closing the session was Théophile Margellos (President of the Boards of Appeal and Coordinator of OHIM`s Mediation Service), who reminded the audience that it was for them that this event was organised and for them that the OHIM mediation service has been offered.  OHIM's mediation service is part of a bigger plan to build a creative organisation. His presentation reminded us of how long it can take a disputed Community trade mark or design matter to pass through the formal administrative and litigation processes of the European Union in the absence of mediation, and he emphasised the organisation's objective of enabling users to benefit from a service which is transparent, which is strictly confidential and from which they cannot lose out. This in turn requires mediators who are strictly impartial and who have easy and direct access to the disputing parties.

OHIM IP Mediation Conference 1: the EU Mediation Directive

Note to readers: there won't be more than four posts on this topic today -- and there will be none tomorrow unless this Kat can persuade anyone to guest a piece for him.  If IP dispute resolution is not for you, please bear with us!

Today the IPKat is participating in the first conference on intellectual property mediation to be organised by the Office for Harmonisation in the Internal Market (OHIM), in the beautiful ADDA conference centre. OHIM President António Campinos, sporting a smart new beard, opened the proceedings by welcoming everyone with a succinct summary of IP mediation in the EU and at OHIM over the six years since the little-known EU Mediation Directive came into being.  Independence and confidentiality were the cornerstones of a good mediation service, he emphasised, these being goals to which OHIM's own mediation service -- still little used -- subscribed.  He also mentioned the very positive experience of IP mediation in the Philippines, where over 600 mediations have come to the local IP office, of which some 40% have reached negotiated settlements.  So far as infrastructures for mediation are concerned, he added, citing Field of Dreams, "if you build it, they will come".

Next to speak was Beate Schmidt (President of the German Federal Patent Court), who mentioned that some German judges were trained mediators but regretted that there have not been so many cases of late which require their talents: "there is room for improvement", she noted, adding that we have to get the message of IP mediation across more effectively. Beate was followed by Mihály Ficsor (Chairperson, Administrative Board of OHIM and Vice-President of the Hungarian Intellectual Property Office), who assured us that the advantages of IP mediation speak for themselves. He reminded the audience of the part to be played by mediation in the resolution of international and cross-border disputes and closed by saying that OHIM's policy was geared towards a wider EU objective of improving standards of dispute resolution in all commercial matters, not just IP.

Patricia García-Escudero (President of the Spanish Patent and Trade Mark Office) closed this opening session by explaining Spain's policy of promoting both mediation and arbitration of disputes, so long as these forms of alternative dispute resolution (ADR) are not excluded by the express will of the disputants.


Is Latin about to
make a comeback?
Following these formalities, the first substantive session opened with a review of the role of the EU Mediation Directive. Francisco Fonseca Morillo (European Commission, Head of Representation) moderated this session, which was opened by a paper, "Mediation quo vadis?" by Diana Wallis (former Vice President of the European Parliament, qualified mediator, Director of the International Mediation Institute, Member of the Civil Mediation Council's Government Affairs Committee and President of the European Law Institute). Diana spoke about mediation in general, rather than IP mediation in particular, and asked if we really know what we're talking about. It's more than "the thing you do before you go to court" -- and there seem to be so many different definitions of mediation for official purposes. It's difficult for a "user", i.e. a would-be litigant, to know which course to pursue when there are so many options. Perhaps this is why mediation hasn't gained the degree of traction that we would have liked.

Where do the problems lie? One relates to information about mediation, Diana suggested. The Directive charges Member States with "encouraging" users, but doesn't explain what that means and it doesn't appear to embrace better information about choices available to prospective users.  She then gave, by way of an example, her own experience of trying to get a rogue website which was using her name, in which she was sent to one authority after another and found herself going round in circles.  "We need to increase the professional capability and the professional standing of mediators", she concluded.

European Parliament: "We're here to serve",
Cecilia reminds us
Next to speak was Cecilia Wikström (Member of the European Parliament since 2009) on "Implementation of the Directive on Mediation in cross border disputes".  Cecilia observed that 18% of cross-border disputes involved IP (the second-largest area of dispute) and that SMEs, which lacked the financial and other resources of larger companies, were ideal customers for the EU Mediation Directive.  The four-tier system of resolving Community trade mark disputes, leading to the Court of Justice of the European Union, can take years and years and, from the business perspective, can be crippling.  Large businesses tend to develop their own dispute resolution mechanisms and veer towards ADR, while SMEs, lacking these resources, tend to opt for litigation -- which is all the wrong way round.

JAMS: a sweetener for dispute resolution?
"Tackling the challenges to mediation, specially in IP" was the title of the presentation by Giuseppe De Palo (President of ADR Center – Member of JAMS International; Professor of Alternative Dispute Resolution Law & Practice at Hamline University School of Law). Giuseppe recognised the limited impact of the EU Mediation Directive, asking whether there should indeed be more mediations.  However, CEDR research has shown if only 19% of disputes went to mediation, there would still be overall savings.  Surveys have shown that most lawyers estimate that the scale of mediations is very low, which is a bit depressing [the fact that the outcome of most ADR doesn't hit the headlines or get reported is bound to have an impact on these impressions].  Assessing the cost savings made per successful ADR, even a small proportional increase in the volume of mediations could leave billions of euro in the pockets of businesses.

Giuseppe then considered the pros and cons of requiring businesses to opt in or opt out, in terms of possible outcomes.  "You can lead a horse to water but you can't make it drink", he reminded us.  Opt-out is a way of leading IP disputants to the 'water' of mediation even if they choose not to drink.  It's also worth experimenting with mandatory partial mediation, as is now the case in Italy. Turning to Article 1 of the EU Mediation Directive, he speculated that EU Member States that don't generate mediations may be in breach of its provisions.  He contrasted the failure of EU Member States to boost mediations with the success of the courts in Manhattan in sending every fifth case for mandatory opt-out mediation (this appears to be an arbitrary figure that just "feels right").

Wednesday, 28 May 2014

Wednesday whimsies

New body for patent litigators. From Katfriend, scholar and eminent practitioner Micaela Modiano comes news of a new association -- EPLIT (the European Patent Litigators Association). According to Micaela, the goal of the association is to promote fair patent litigation in Europe. Good news for anyone who enjoys joining new societies is that all European patent attorneys who have an "appropriate qualification in patent litigation" [and this might be a bit of an issue, as this SOLO IP post may indicate] are eligible for membership. All other patent practitioners who are qualified according to Article 48(1) or (4) of the Unified Patent Court Agreement (UPCA) are also welcome to join as associate members.

Summer time refreshment ...
(What's the Story) Copyright Glory? Following the success of her recent Post-Fordham Copyright Catch-Up session, fellow Kat Eleonora has announced a further copyright briefing, to be held on Thursday, 12 June 2014 from 14:00 to 18:00 British so-called Summer Time.  Rejoicing in the title "(What's the Story) Copyright Glory?", this time round you can enjoy the chance to discuss such topics as
* Recent copyright decisions of the Court of Justice of the European Union, including Case C-360/13 Meltwater (does internet browsing fall within the scope of copyright? We will know on 5 June 2014); 
* Copyright revision around the world, including the EU Commission's Public Consultation and leaked Impact Assessment; 
* The parody, caricature and pastiche exception under UK and EU laws; 
* Orphan works in the EU, UK and US;  
* The Collective Rights Management Directive and the new landscape for collective rights management in the EU. 
 This event will be limited to 20 participants, to provide everybody with the opportunity to discuss fully the present and future of copyright law and policy.  Click here to reserve your place.

Beware! High-flying Kats
are in the air ...
Rise of the AmeriKat? Another Kat is in the news right now. Our very own, dear colleague Annsley Merelle Ward, alias the AmeriKat, has been shortlisted for an honour in the Euromoney Legal Media Group Europe's Women in Business Awards 2014. According to the sponsors, the individual practice area awards recognise the best lawyer in each practice area and the awards ceremony will take place on Wednesday, 18 June at the London Hilton on Park Lane. Annsley's not the only familiar name on the list (you can check out the full list here). Many of our friends and colleagues past, present and, we hope, future are to be found within the IP nominations. For example:
Best in life sciences
Laëtitia Bénard, Allen & Overy
Cécile Derycke, Hogan Lovells
Penny Gilbert, Powell Gilbert
Morag Macdonald, Bird & Bird
Laura Orlando, Simmons & Simmons
Lucinda Osborne, Covington & Burling
Justyna Wilczynska-Baraniak, DLA Piper Wiater

Best in patent
Nicola Dagg, Allen & Overy
Sally Field, Bristows
Penny Gilbert, Powell Gilbert
Isabelle Leroux, Dentons
Morag MacDonald, Bird & Bird
Morag Peberdy, Covington & Burling
Sophie Rich, Herbert Smith Freehills

Best in trade mark
Antonella Barbieri,
Portolano Cavallo Studio Legale
Laëtitia Bénard, Allen & Overy
Anna Carboni, Redd
Marie-Aimée de Dampierre, Hogan Lovells
Isabelle Leroux, Dentons
Helen Newman, Olswang
Laura Orlando, Simmons & Simmons

Rising star: IP
Margarita Divina, Baker&McKenzie
Rebecca Lawrence, Powell Gilbert
Susan McLean, Morrison & Foerster
Maria Sedykh, Hogan Lovells
Sarah Turner, Hogan Lovells
Annsley Ward, Allen & Overy
What a distinguished list -- well done, murmurs Merpel with unfeigned envy deep and sincere respect.

EU Council's opinion on the Trade Secret Directive -- minimal harmonisation, greatest results?

As the IPKat reported, on 28 November 2013, the EU Commission submitted to the Council and to the Parliament a Draft Directive on the protection of trade secrets (the ‘Commission Draft’). While the European Parliament has not started discussing it, yesterday the Council rendered its opinion on the draft directive (the ‘Council Draft’) [press release here; opinion here].

Although the main aims of the draft directive remain the same, the Council’s approach appears to be somewhat different from the EU Commission on a number of crucial points. Indeed, the Council pushed for a “minimal harmonisation”, suggesting that a wider degree of freedom should be left to Member States in the transposition of the Directive. Further, it took the position that Member States should be allowed to provide for a higher level of protection than that requested by the Directive, provided that the basic principles contained in it are safeguarded. As the brand new Art. 1(2) establishes:

“Member States may provide, in compliance with the provisions of the Treaty, for more far-reaching protection against the unlawful acquisition, use or disclosure of trade secrets than that required in this Directive, provided that compliance with Articles 4, 5, Article 6(1), Article 7, the second subpragraph of Article 8(1), Articles 8(3), 8(4), 9(2), Articles 10, 12 and Article 14(3) is ensured”.

The main amendments to the Commission Draft are a follows:

Trade secret violation objectivised -- an open door for CJEU’s further harmonisation of national unfair competition law?

While the definition of “trade secret” of Article 2 remains the same as the Commission’s proposal (which in turn reflects Art. 39 of TRIPs), one of the most sensible Council amendments concerns the scope of violation of a trade secret.  In principle, both the Commission and the Council agree that trade secret holder should be able to prevent or obtain redress for “the unlawful acquisition, use or disclosure of their trade secret” (Art. 3). The two Drafts, however, do not share the same idea of what “unlawful” means.

In the Commission’s proposal, “intention” or at least “gross negligence” are necessary if the acquisition, use or disclosure of a trade secret is to be considered “unlawful” (Arts 3(2), 3(3), 3(4) and 3(5) of the Commission Draft). The Council, eliminating those subjective elements, simply proposed that “unlawful” meant any acquisition, use or disclosure “which, under the circumstances, is considered contrary to honest commercial practices” (Arts 3(2)(f), 3(3)(a) of the Council Draft).

Substituting intention to infringe and gross negligence with a general reference to commercial “honesty” could result in wider protection for trade secrets and an easier life for trade secret holders, who would no longer have to demonstrate an infringer’s subjective status in order to secure protection.

Moreover, national courts could benefit (and harmonisation could suffer) from a wider degree of freedom in defining what is “honest” and “lawful”.  Although Articles 3 and 4 provide guidelines for this purposes, the Council stressed the importance of national law in this regard by including a new Article 4(1a):

“The acquisition, use and disclosure of trade secrets shall be considered lawful to the extent  that such acquisition, use or disclosure is required or allowed by Union or national law”.

In the same perspective, national law could also be considered when assessing the “purpose of protecting a legitimate interest” according to which one could lawfully acquire, use or disclose trade secrets (Art. 2(e) of the Council Draft, which added the wording “legitimate interest … recognised by Union or national law” to the Commission’s draft).

If the Parliament approves the Council’s proposal, the concurrent contribution of Union and national law to the definition of what is commercially “honest” (and therefore “lawful”) could result in an increased influence of the Court of Justice of the European Union even beyond the field of trade secrets -- take, eg, a provision of national unfair competition law that is solely based on concept of commercial fairness, which the CJEU could have the chance to shape via national courts’ references on trade secret-related issues.

Enforcement and injunctions conditions -- a more flexible open list

No worries, just keep it secret
Finding it “necessary to provide the competent judicial authorities with more flexibility when assessing the need for the adoption of injunctions (whether definitive or provisional) and corrective measures”, the Council rephrased Articles 10(2) and 12(1) of the Commission Draft, which imposed a mandatory examination of some elements when “deciding on the granting or rejecting of the application and assessing its proportionality” or “considering a request for the adoption of the injunctions and corrective measures” (Art. 12(1)). These elements concerned the value of the trade secret, the impact of the unlawful use or disclosure of the trade secret, the legitimate interests of the parties, the legitimate interests of third parties, the public interest and the safeguard of fundamental rights, etc.

The Council Draft more generally requires the competent national judicial authorities “to take into account the specific circumstances of the case” (Art. 10(2)), while national Courts are free to consider the mandatory elements listed above only “where appropriate”.

No intention to harmonise criminal protection

The Council took care to specify that the Draft Directive will not in any way interfere with national prerogatives regarding criminal law. In this perspective, amended Recital 8 as follows:

“It is appropriate to provide for rules at Union level to approximate the national legislative systems so as to ensure a sufficient and consistent level of civil redress across the internal  market…”

A “civil” was also added to Article 5, which now reads

“Member States shall provide for the measures, procedures and remedies necessary to ensure the availability of civil redress against unlawful acquisition, use and disclosure of trade secrets”.

Criminal sounding expressions like “theft” and “bribery”, used in the Commission draft to define circumstances in which the acquisition of trade secret is unlawful, disappeared in the Council Draft (Art. 3(2)(b) and (c) of the Commission Draft). Although not criminal-related,  “deception” and “breach or inducement to breach a confidentiality agreement or any other duty to maintain secrecy” were also deleted from the same list (see Art. 3(2)(d) and (e) of the Commission Draft).

Special regime for employees’ liability for damages

Macao's secret beauty
is not trade
Another amendment of relevance is the one of Article 13(1) and concerns the dramatic relation between trade secrets and employees [which have occupied this Kat’s mind for the last weeks -- before, during, and after the IGIR/IEEM conferences in Macao and Hong Kong on the very same topic; a book addressing the issue of trade secret and employees in the jurisdictions represented at those conferences is being contemplated in order to de-classify that messy issue and bring clarity and happiness for all].

Seeing as employees’ pockets are not the deepest and that the boundaries of lawfulness when it comes to information that employees (or former employees) may acquire and use are  not the most closely defined, the Council included a new paragraph to Article 13, aimed to allow Member States

“[i]n accordance with their national law and practice … to restrict the liability for damages of employees towards their employers for the unlawful acquisition, use or disclosure of a trade secret of the employer when they act without intent”.

Confidentiality of trade secrets in the course of proceedings 

Article 8 of the Commission Draft provided a general obligation not to use or disclose trade secrets or alleged trade secrets disclosed in legal proceedings upon all those who obtained access or became aware of them as a result of participation to the same proceedings. In this regard, the Council struck a balance between legitimate secrecy expectations of the trade secret holder and the right of defence of other parties involved in possible proceedings, providing that a secrecy regime might only be established towards information that the competent authorities have “identified as confidential” further to “a duly reasoned application by the interested party” (Art. 8(1) of the Council Draft).

In the Council’s proposal it is for the trade secret holder to submit a reasoned claim for confidentiality regime upon specific information and to provide reasons supporting such request. The Courts would then examine such claim and provide accordingly, if reasons for establishing a secrecy regime exist.

Who is Merpel?  The
IPKat's special secret
Once the secrecy regime is established, the Council specified, “the obligation [thereof] shall remain in force after the legal proceedings have ended”, unless such information becomes generally known within relevant professional circles or a final decision acknowledges that it does not meet the trade secret requirements provided by Article 2.

Extended limitation period for bringing infringement proceedings

Finally, Art. 7 of the Commission Draft provided that actions related to trade secret violation might have been brought “at least one year but not more than two years after the date on which the applicant became aware, or had reason to become aware, of the last fact giving rise to the action”. “That is too short!”, Council must have thought, so it chose to let Member States opt for a limitation period up to six years, leaving them free to define the moment from which such period starts running and possible reasons for its suspension (Art. 7 of the Council Draft).

The Council will now start negotiations with the EU Parliament [provided that an EU Parliament still exists after the last elections, sniffs Merpel], whose response should be available in a few months. 

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