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).

Tuesday, 30 September 2014

That IPEC book: a review

This review of Intellectual Property Enterprise Court: Practice and Procedure is brought to you by Katfriend, fellow blogger and IP enthusiast Kingsley Egbuonu, who tweets at @KingsleyEgbuonu.

Kngsley first became fascinated by this court's predecessor, the Patents County Court (PCC), in 2011 when he assisted a private individual facing a copyright claim (the book reviewed here would have been useful to him back then: you can read his cry for help here).  Then, in 2013, he spent half a year researching into the effects of the Jackson Review of Civil Litigation Costs on litigation on the PCC, seeking to ascertain whether the reforms achieved the key objectives. This research also included the gathering of empirical evidence (via a survey) from IP practitioners who had conducted litigation before the court. The survey (which gathered 30 responses) was supported by the IPKat here.

This is what Kingsley writes:
To know how to conduct effective litigation in the Intellectual Property Enterprise Court (IPEC) for England and Wales, parties and/or their legal representatives need to consult a number of primary and secondary sources including various parts of the Civil Procedure Rules (CPR) and case law, particularly that of IPEC's predecessor, the Patents County Court (PCC). For a busy IP practitioner, this arduous task has now been made more comfortable with the publication of Angela Fox's Intellectual Property Enterprise Court: Practice and Procedure.
First, the book’s delightful and luxurious colour would brighten up your bookshelf, and it has a somewhat feel-good vibe to it. A busy practitioner would be very pleased to see that the Table of Contents and Index are both functional. The book is divided into ten seamless chapters, each of which comes with headings, subheadings and numbered paragraphs for added ease of navigation and reference. The spacing between paragraphs makes the each page readable and the footnotes are concise. There are 14 appendices at the back of the book.


There is no better way to start a book on the IPEC than to feature forewords by Mr Justice Birss and Judge Hacon, both of whom were also present at the book launch.

Left to right (above): Judge Hacon and Mr Justice Birss;
(below): Angela Fox and Judge Fysh, both of whom are standing
Moving beyond the forewords, the main content of the book is packed in 392 pages, or less, if one wants to strictly focus on the practitioner. Each chapter, save for chapter 1 which deals with IPEC’s history, begins with a brief introduction of its subject matter before dealing with common issues addressed within it. Chapters 2 and 3 guide the reader on how to plan a case, leaving chapters 4 to 9 to focus on covering all the common procedures and issues in a multi-track case in the IPEC. Chapter 10 is dedicated to the special procedures of the small claims track (SCT).

Restricted costs recovery and tighter judicial case management are the two most important features of the IPEC which are of the greatest concern to parties and/or their legal representatives. This book deals generously with them, particularly in chapters 5 (case management); 7 (evidence, experiment and disclosure); and 9 (costs).

There are many things that I admire in this book, but I will just state two. The first is that it makes use of examples such as draft Orders and statements of case. It also tells the reader which forms to use for applications (chapter 6), how to assist the court in managing the case, and how to minimise the risks of costs consequences; it also notes in various places the similarities and differences between the IPEC and other units within the High Court: the Patents Court and, generally, the Chancery Division.

The second, and more important, is that it explains the court’s approach on all the issues covered. For example, under the chapters for case management and applications, the reader will understand the importance of the case management conference; under the costs chapter, the reader will learn that the court will closely scrutinise costs incurred in case under each stage at summary assessment. Generally, the book offers clear practical guidance and commentary rather than merely regurgitating case law and/or rules. Where there is little or no guidance, the book cautiously offers a practical solution to the problem or issue. In some ways, the book can be described as expanding on or filling the void left by the IPEC Guides. The section on Norwich Pharmacal orders (see paragraphs 3 – 051 to 3 - 052) reminded me of Wilko Retail Ltd v Buyology Ltd [2014] EWHC 2221 (IPEC), 7 July 2014 [noted by the IPKat here].
The book is up-to-date as there have not been any significant changes or developments in law or rules since 22 April 2014. 
 Perhaps, the only real criticism, if one is to be pedantic, is that there are a few overlaps in various parts of the book, though this could be due to the interlocking nature of the IPEC regime. 

The book is written in a clear, concise and functional style which gives it a wide appeal. Aside from the obvious readership of IP practitioners, litigants in person -- especially those in the SCT -- should find this book incredibly helpful in handling very low value matters themselves. Law schools and legal advice clinics should also get a copy. Finally, this book would also serve as a blueprint for foreign Ministry of Justice officials or policy makers interested in adopting the IPEC model.

The bottom line

Angela Fox’s main mission was to explain the practice and procedures of the IPEC; she accomplished this task brilliantly using, among others, her experience as a practitioner, case law authorities and relevant parts of the CPR. Reasonable care was taken to remain within scope and, where necessary, reference is made to other texts for guidance. As she rightly points out on the first page, the book is designed to be used in combination with the current version of other sources including the IPEC Guides.

For a busy IP practitioner conducting litigation before the IPEC or one intending to do so for the first time, this book is the ideal reference handbook. At the moment, ‘Fox on IPEC’ is undoubtedly the seminal work on how the IPEC works.

Warning for Amazon purchasers: the best piece of advice I took away from the book launch is to search for “intellectual property enterprise court” instead of “Angela Fox”. Fail to heed this warning and you will encounter some titles with a less rigorous legal content (e.g. here and here) ....
Publisher: Sweet & Maxwell, ISBN: 9780414028685, Hardcover, 545 pages, Price: £175). No serious rupture risk.  Web page here.

Trademark Infringement Plaintiff Sees Red (Gold), Defendants Claim Genericness

Compatriot, fellow member of the New York Bar, and, last but not least, former Kat, Laetitia Lagarde kindly pointed out to me this very interesting case. Thank you very much Laetitia, as, thanks to you, I keep building my case to be exclusively known as the “Bling Kat”!

Indeed, we are back in the glamorous world of jewelry and trade marks. In this case, Plaintiff Solid 21 owns the registered trade mark RED GOLD® for, inter alia, fine jewelry and watches “made out of a special alloying of gold with a distinct color.” Plaintiff has used this trade mark in commerce in connection with the design, manufacture, marketing and advertising of fine jewelry since 1996. The RED GOLD® trade mark is incontestable since August 2009.

Plaintiff first filed suit against Louis Vuitton and several of its subsidiaries in 2011, claiming that they knowingly, or alternatively, negligently, used “red gold” in their marketing, advertising and sales of their product line of fine jewelry.

Plaintiff filed an amended complaint on January 13 of this year, alleging trademark Infringement, unfair competition and false description in violation of both the Lanham Act and California law. Defendants moved for summary judgment, but Judge Dolly Gee from the Central District of California denied it on September 29. The case is Solid 21 Inc. v. Hublot of America, et al., cv 11-00468.

Defendants argued that “red gold” is generic and thus cannot be a trade mark. The Ninth Circuit defines generic terms as “names which describe the genus of goods being sold.” Some trade marks become generic when the public no longer recognize them as an origin of goods, such as “aspirin,” which used to be a Bayer Co.’s trade mark, while others should not have been registered as a trade mark in the first place, as Defendants claim in our case. Plaintiff argued that the genus of the goods in this case was “watches” but Defendants argued it was “jewelry” and the Court agreed with Defendants.
This Red and Gold Cat Does
Not Like to be Called "Generic"

Defendants bear the burden of proving that a registered trade mark is generic, and the Ninth Circuit applies the “who-are-you/what-are-you” test to find out whether a particular mark is generic or not. Under that test, a mark answers the consumers’ questions “Who are you” “Where do you come from?” “Who vouches for you?” whereas the generic name of a product answers the question “What are you?”

Judge Gee noted in a foot note that in cases such as this one “where there is undisputed evidence of generic use of the term for decades before it was trademarked and no evidence of a non-generic meaning before the trademark holder entered the market,” the date when the trade mark holder entered the market is the date which must be considered to determine whether the mark is indeed generic. Therefore, the Court looked for evidence of use for “red gold” for jewelry in dictionaries, media, and industry.

The Ninth Circuit gives “significant but not controlling weight “to dictionaries when analyzing genericness of a trade mark and both parties argued over the admission of several particular British and American dictionaries as evidence that “red gold” is generic or not, as some provided a definition for “red gold” while others did not. The Court concluded that such evidence did not weigh in favor of Defendants.

Defendants also provided numerous examples of the use of “red gold“ by other jewelry companies, jewelry trade journalists, and jewelry trade associations, to describe reddish-colored gold, even as early as the late 19th Century. They also argued that at least ten patents which have been filed in the U.S from 1919 to 2003 use the term “red gold” to refer to a type of gold used in jewelry or watches.

A Plaintiff’s industry expert testified that she had never bought or sold a watch or a piece of jewelry described by the customer as “red gold” and the Court concluded that this testimony gave some support “albeit weak” to Plaintiff’s argument that consumers do not use “red gold” as a generic term.

Judge Gee concluded that there is a triable issue of fact regarding genericness based on the testimony of Plaintiffs’ experts and evidence of media usage of the term red gold in a non-generic manner, even though such evidence amounts “to slightly more than a “scintilla.””

The case will now likely go to trial.

A new website for UK IPO, and an event to explain everything

With autumn already among us, it is time for a general season makeover. While embracing the new beauty trends, you may also want to embrace the idea that, starting 6 October, the UK Intellectual Property Office (IPO) will have a new website.

First launched in the same year when Blur released Song 2 and Tony Blair became the youngest Prime Minister since Lord Liverpool in 1812, the IPO website has seen many changes over the years and has become an invaluable resource for all those working in or just interested in UK IP.
To help its customers with the move, the IPO has produced a short video to outline the main changes.
In addition, on 2 October [that is on Thursday] the IPO will hold 30 minute awareness sessions to demonstrate the new website and its key features, with Transition Team being on hand to answer any questions you have. The event will be held at 88 Kingsway, London WC2B 6AA, and will have 4 sessions at 10am, 11:30am, 1.30pm and 3pm.
To register your interest in attending, please email  stating your preferred session time. Ideally, please include the number of people you expect to attend from your organisation.

Monday, 29 September 2014

Never too late: if you missed the IPKat last week

Last week was a little quieter than usual in terms of quantities of Katposts, as can be seen from the relatively short list compiled by the unceasingly diligent Alberto Bellan.  So here's the thirteenth in our series of weekly round-ups, designed to help you spot the most important posts for you if you were away from your computer last week but want to know which items are still worth your while to pursue:

Statistics from the UK Intellectual Property Office reveal a downward trend in the number of patent applications filed by UK applicants, while corresponding numbers of European and PCT applications remain relatively stable. Jeremy gives the floor to Katfriend Peter Arrowsmith (a partner in London-based patent attorneys Cleveland), who investigates the reasons for this diminished appetite, while readers enthusiastically participate with their comments.

* Towards an Electronic Devices Flea Market in the Cloud? YODA says…YES!

U.S. Representative Blake Farenthold has introduced a bill in Congress, the Your Own Devices Act (YODA), which would amend Section 109 of the Copyright Act by providing that the first sale doctrine applies to any computer program enabling a machine or another product to operate. Marie-Andreé explains what the possible enactment of YODA would entail for the US digital market and consumers, also in light of relevant US case law upon digital goods exhaustion. 

* Would you believe? A view of what innovation will look like in 2025

On the basis of scientific literature and published patents, drafted a report called “The World in 2025—10 Predictions of Innovation”, listing 10 innovative tendencies that could characterize our future. Neil seizes the chance to reflect upon the role of patents and trade secrets in providing information about cutting-edge developments -- are they more teleporting than scientific literature?

* 5 seconds of contact time is sufficient, says Arnold J

David reports on Compactgtl Ltd v Velocys Plc & Others [2014] EWHC 2951 (Pat), an Arnoldian decision of the Patents Court, England and Wales. This case concerns patent infringement and validity in the field of catalysts for hydrocarbon conversion and contains couple of interesting points on correction and amendment.

* Cigarette Trade Marks and Logos May Go Up in Smoke in France

The shameful and illiberal crusade against those who freely decide to smoke and lawfully sell smoking products continues. In this episode of the series [which Alberto suggests rebranding “The Smoky Decline of Western Liberties”] Marie-Andreé reports that the French Health Minister intends to order that all the cigarette packages must have the same shape, size, colour and typography. Steps toward neutral packages have been made in the UK and EU, and IP is as involved in this issue as constitutional freedom of choice. 

* (Red Nose) Day In Court

In some countries, Red Nose Day is an annual telethon to raise money for charity. Some people wear the red nose as a sign of their support of the charity. Similar initiatives take place in other parts of the world. In Australia, the “Red Nose” trade mark is being litigated in proceedings concerning, among other things, non-use. Rebecca tells us how it is going.

* Private copying levies in Spain and that new CJEU reference

As reported by this blog, last week the Spanish Supreme Court referred two questions to the Court of Justice of the European Union, asking whether fair compensation for private copying secured through annual public grants via the State budget complies with Article 5(2)(b) of the InfoSoc Directive. Eleonora leaves the floor to Katfriend Javier Ramirez, who explains the preliminary views expressed by the Spanish Supreme Court at the time of making this reference.

* Scientology controversy

In Australia and New Zealand, the word ‘ANZAC’ refers to the Australian New Zealand Army Corps, and specifically to the soldiers who served in World War I. That term is also protected under an Australian law, which is something that Scientology most likely did not know when its devotees decided to use the very same term ‘ANZAC’ for one of its fundraising campaigns to build a Scientology centre in Auckland. Rebecca gives us the details. 

Monday miscellany

New team at the top for WIPO. The member states of the World Intellectual Property Organization (WIPO) have given their blessing to the new senior management team proposed by Katfriend and Director General Francis Gurry. According to a WIPO media release, they take up their three-year tenures on 1 December, three calendar months after Francis begins his own second six-year term this Wednesday.  The new appointees and their roles are as follows:
  • Anne Leer (Norway), Deputy Director General, Culture and Creative Industries Sector.
  • Mario Matus (Chile), Deputy Director General, Development Sector.
  • John Sandage (United States of America), Deputy Director General, Patents and Technology Sector.
  • Wang Binying (China), Deputy Director General, Brands and Designs Sector.
  • Minelik Getahun (Ethiopia), Assistant Director General, Global Issues Sector.
  • Naresh Prasad (India), Assistant Director General, Chief of Staff.
  • Ramanathan Ambi Sundaram (Sri Lanka), Assistant Director General, Administration and Management Sector.
  • Yoshiyuki Takagi (Japan), Assistant Director General, Global Infrastructure Sector.
This Kat wishes the new team the best of luck and hopes, for all our sakes, that they do a good job.  He also wonders if this team has been picked with a view to pressing the case for IP reform at truly international level in preference to the plethora of bilateral and plurilateral agreements that nations have struck (or been pressed to strike) outside the framework of global deals. Merpel notes that, if it wasn't for the Arctic fringe region of Norway, Europe would be entirely unrepresented at the top of the WIPO tree ...

New man at the top for GRUR. It is with a mixture of pleasure and excitement that this Kat welcomes the news that his friend Gert Würtenberger, founding parter of the law firm WürtenbergerKunze, Munich, has been elected as the new President of the Deutsche Vereinigung für gewerblichen Rechtsschutz und Urheberrecht e.V. -- the German Association for the protection of Intellectual Property (better known by its acronym GRUR).  In recent years GRUR has become a much more outgoing organisation, in particular supporting the shared seminars in which its GRUR Int publication and Oxford University Press's Journal of Intellectual Property Law & Practice (of which Gert is a founder member of the Editorial Board and a valued contributor) have provided a platform for airing different legal and cultural perspectives. Gert takes over from another friend, the delightful and scholarly Hans Peter Kunz-Hallstein, and this weblog wishes them both the very best for the future.

Media in the Courtroom.  There's a new publication from the European Audiovisual Observatory, Media in the Courtroom, the details of which you can obtain from the Council of Europe's website here.   While the focus of this short (44 page) report is not on the intellectual property aspects of the subject, it nonetheless remains a relevant issue as the need to provide a neutral forum for the administration of justice must be balanced with the individual litigant's right to privacy or, at his option, publicity and the public's interest in being kept informed on matters of public interest. Given its brevity, this work can only skim the surface of this subject -- but it spans both East and West by looking at specific problems that have arisen in Russia, Serbia, Hungary, France and the United Kingdom.

Around the weblogs. Katfriend Alberto Bellan, making his blogging debut for the 1709 Blog team, investigates the constitutionality of blocking injunctions to stop online copyright infringement in Italy, while veteran commentator Ben Challis touches on a surprising subject for rampant copyright infringement: insect photography [Merpel wishes to clarify, after all the fuss about portrait photographs taken by black-crested macaques, that "insect photography" refers to photography of insects, not by them].  On PatLit, Stefano Barazza's thoughtful post on the invalidation of a patent for lip and facial synchronisation of animated characters gives us an insight into life in the United States after Alice v CLS Bank revived the old-fashioned notion that patents are for inventive concepts and not for abstract ideas. On SOLO IP, Barbara Cookson reflects on another fun notion -- the contrast (or is it contradiction?) between ideas being protected and their light inspiring others.  On Class 46, Edith Van den Eede reports on an Italian decision in which the now ubiquitous HAVAIANAS flip-flops give the boot to a figuarative mark bearing the legend HAV@NA CUBA for the same products.

Cometh the patent conference, cometh the discount ...  Back at the beginning of September this Kat spotted that there were two big patent conferences coming up on the same dates: 4 and 5 December.   One is a heavily practice-oriented and truly international event, the 6th International Patent Litigation Conference which was the subject of this Katpost last week. While naturally showcasing the latest European developments, his event takes in patent litigation issues in the United States, China, India, Brazil and the geographically strategic jurisdiction of Turkey.  The other, “Preparing for the Unitary Patent Package”, is a different kettle of fish. Run by the Academy of European Law (ERA) in cooperation with Queen Mary, University of London, it has a focus that is narrower in geographical scope than the IBC eventm being specifically directed to the new patent regime in Europe, but which is not limited to patent litigation since it also addresses the mechanisms for operating the unitary patent system within the European Patent Office, the legal position of supplementary protection certificates and the Spanish challenge to the validity of the system itself.  Like the IBC event, ERA's also offers reductions on the cost of registration: in addition to the 10% early booking discount (for bookings before 4 November) ERA is also offering a special discount of 25% to readers who quote the VIP KatCode 214R06 IPkat. For details of the programme, click here.

Latest WIPO Magazine. Even though it is still September, the October issue of the WIPO Magazine is now available online: you can view it here.  It also comes in French and Spanish [Merpel thinks that this is because the English, the French and the Spanish are the three languages whose speakers are most reluctant to master any other languages, but that's another matter]. Of particular interest to this Kat is the piece by Randy Michels (co-founder of his firm's Trademarkology weblog) on branded hashtags.  This Kat speculates that, once it ceases to be a novelty, the prefix "#" will end up being treated by trade mark granting authorities much the same way as the prefix "www". However, he is happy to hear readers' thoughts on this topic.  There's also a feature of the prospects of a single trade mark law to cover the Gulf Cooperation Council States. The authors, Saba Al Sultani and Rob Deans (both of Clyde & Co LLP) state that this legislation was initially scheduled for enactment in 2006 but was delayed by a spot of  renegotiation. This Kat vaguely recalls it first being mooted back in the late 1980s. Who can come up with the earliest date that this law was proposed?

Saturday, 27 September 2014

Scientology controversy

I would like to thank Kat friend Chris Torrero for sending the link to this article. The Scientology community in New Zealand is being criticised for having used the term ANZAC for one of its fundraising campaigns to build a Scientology centre in Auckland. Every person donating $10,000 towards the project received the title ANZAC.  

The RSL and the Department of Veterans Affairs (DVA) are outraged at the use of ANZAC in such a context and have described it as abuse. In Australia and New Zealand, ANZAC refers to the Australian New Zealand Army Corps, specifically to the soldiers who helped in World War I. 

The DVA said that they had not received any application from the Scientology community to use the word, but that even if they had, such a request would never have been accepted. The DVA launched an investigation into Scientology and demanded that they end their campaign. The Scientology community was at risk of a $50,000 fine in Australia and New Zealand for using the ANZAC mark without permission. 

Australia has passed laws to protect the word ANZAC. Protection of Word ANZAC can be found in the Statutory Rules 1921 No.2, which was passed in accordance to the War Precautions Act Repeal Act 1920. Amongst other things, they limit the use of the word for use in trade or as a street name.

The Church of Scientology explained that the word was only used for internal purposes, not to do trade. They said that they did not mean to disrespect anyone and apologised for offending anyone. They have now withdrawn the campaign. 

Friday, 26 September 2014

Friday Fantasies

Jeremy entrusted me with the Friday Fantasies for this week, so here are a few items of interest.

Forthcoming IP Events:

Let’s go first to Paris; I hope you do not mind!
Légipresse, which is a monthly French magazine dedicated to communication and intellectual property law, is organizing a conference on October 2 titled “Are there lawful abuse to freedom of expression?” One of the panels will discuss parody and IP law, and lunch (déjeuner) will be served. The conference is in French.
IP Conferences in Paris
Are Very Exciting! 

Let’s stay in Paris to attend another conference, on October 14, this time organized by the Institut de Recherche en Propriété Intellectuelle (IRPI), about recent developments in French and European copyright law. One of the speakers will be André Lucas, Professor Emeritus of the University of Nantes, who is one of the authors of the seminal French treaty on copyright. My dog-eared copy is never far away from my desk.

In the U.K., The Law Society is offering a webinar on Digital currencies - what do you need to know? The webinar will take place on October 15, and will cover topics such as the nature of digital currencies (property or currency?), the common law position and the statutory position, the legal basis of a claim for stolen digital currency, and the tax treatment for such currencies in the UK.

In the U.S. A., the U.S. Patent and Trademark Office(USPTO) is organizing a “National TrademarkExpo” on October 17-18.
I Should Not Have
Accepted That Gig...

The USPTO promises that the event will be “a free, family-friendly event [I shall hope so!] designed to educate the public about trademarks” and will include workshops and educational activities for children, including games and quizzes, exhibits featuring trade marks, displays comparing counterfeit goods with authentic goods, costumed characters and inflatables featuring trade marks, small giveaways featuring trade marks. Can you think of a better way to spend your weekend than mingling with characters disguised as trade marks? That should provide plenty of inspiration for your Halloween costume…
Around the Web:

Who owns jokes? is the topic of this week’s podcast on Life of the Law. Professor Christopher Sprigman, who teaches IP law at New York University is interviewed for this program. He explains that copyright is not used to protect jokes in the stand-up comedy community, rather, there are informal rules enforced by community actions. A very interesting podcast, where we learn there are virtually no copyright lawsuits over jokes.

Best dressed: as many of our readers are interested in fashion and its relationship with IP law, I will end  this post with a site I recently discovered, Europeana Fashion.  It features hundreds of thousands of pictures of fashion items from European museums.

As explained on the site: 
Europeana Fashion is a best practice network co-funded under the CIP ICT-PSP program and composed of 22 partners from 12 European countries, which represent the leading European institutions and collections in the fashion domain. The consortium will aggregate and provide Europeana with outstanding and rich material about the history of European fashion, including more than 700.000 fashion-related digital objects, ranging from historical dresses to accessories, photographs, posters, drawings, sketches, videos, and fashion catalogues.”
The Europeana Fashion project started in March 2012 and will end in February 2015, so enjoy it while it lasts!

Thank you for reading this post, have a good weekend ya’all! 

Private copying levies in Spain and that new CJEU reference

Javier Ramirez
As reported by this blog, last week the Spanish Supreme Court referred two questions to the Court of Justice of the European Union (CJEU) asking whether fair compensation for private copying secured through annual public grants via the State budget is compliant with Article 5(2)(b) of the InfoSoc Directive

Invariably helpful Katfriend and private copying guru Javier Ramirez explains the preliminary views expressed by the Spanish Supreme Court at the time of making this reference. Here's what he writes:

“The Order of the Supreme Court dated on Sept 10 2014 was adopted in the context of an appeal filed by collecting societies EGEDA, DAMA and VEGAP against Royal Decree 1657/2012, of 7 December. This further developed the system of fair compensation that was enacted in Spain by virtue of the Additional Disposition 10ª of Royal Decree-Law 20/2011, of 30 December.
This alternative (publicly funded) system of fair compensation, which has been in effect since January 1st 2012 in Spain is based on 2 key definitional factors:

o    First, compensation is no longer secured through copyright levies, which are phased out, but rather by means of direct payments to the representative collecting societies made by the State from its public budget;
o    Second, the annual amount of such compensation can be only determined based on the estimation of the harm caused by the private copying exception.

This alternative system has been challenged by some collecting societies based on a number of arguments relating to national and EU laws. As a result the Supreme Court has decided to seek guidance from the CJEU.

Some Spanish media outlets have reported that the Supreme Court considers that the Spanish system of fair compensation does not conform to EU law and that the legislative process to reform the Copyright Act has been suspended. However such reports are misguided, as can be clearly read in the press release (in Spanish) published by the General Council of the Judiciary, which suggests that the Spanish Supreme Court seems in principle more inclined towards  the legality of this alternative system of compensation.

Really? What did the Supreme Court say?

Yes, thinks the Spanish Supreme Court.
But, still, why not asking the CJEU?
The first issue was to determine the admissibility of any preliminary questions from a procedural perspective. The Supreme Court started by analysing the compatibility of the relevant Royal Decree with national laws (including claims of unconstitutionality), and concluded that there was no finding of incompatibility with the Spanish Constitution or other national laws.

Then, the Supreme Court assessed the different arguments raised by the parties to support the compatibility or incompatibility of new Spanish alternative system of fair compensation with article 5(2(b) of the InfoSoc Directive.

In this respect, first, the Supreme Court agreed with the public prosecutor that the bone of contention is whether the requirement provided by the CJEU that the financial burden of the fair compensation has to rely on the end-users making private copies (see Padawan, paragraphs 45 and ff.; Stichting de Thuiskopie, paragraphs 26 and ff; Amazon, paragraphs 23 and ff.; ACI Adam, paragraphs 51-52) is specific to compensation schemes based on levies or if, otherwise, such requirement would apply whatever the alternative system of compensation chosen by a Member State is.

Secondly, the Supreme Court found that a close reading of the judgments of the CJEU which have dealt with this requirement do not make it apparently clear or evident that such a requirement is only applicable to levy-based systems. This would result from the reasoning order followed by the CJEU in those decisions, when stating that requirement and assessing whether copyright levy systems established around device based levies meet the standard of the burden of fair compensation falling upon the end-users who make private copies.

Notwithstanding the foregoing and as a third point, the Supreme Court stated that none of the prior decisions of the CJEU dealt with a system of fair compensation other than levies. Therefore, the CJEU has not had the opportunity to declare whether a Member State may pay such compensation from its public budget. The Supreme Court also noted that the Directive does not prescribe levies to be the form or mechanism to determine and provide the fair compensation. Actually, levies are not even mentioned in the Directive. In the Supreme Court’s view, according with the Directive and case law of the CJEU, the compensation has to be fair, and consequently must be based on the harm suffered. Furthermore it must reflect a “fair balance” between the interest of the right-holders and the users.

A truly shocked Bruno has just found out that
the word 'levies' is not
mentioned once in the InfoSoc Directive
The Supreme Court acknowledged that paying the fair compensation through the State Budget may achieve those objectives, because the economic interest of the right-holders is satisfied and users also benefit.

Fourthly, the Supreme Court does not find that payment of the fair compensation through public budget has a negative impact on the internal market because (i) it cannot be deemed to be a public aid in favour of businesses and (ii) it is not evident that having levies in some Member States and a system of compensation through public budget in Spain will result in any market distortion, because after all other Member States may opt for not authorising private copying at all.

Consequently and because the issue of whether users of private copies must necessarily take the financial burden of the compensation is not “acte clair” and there is no judicial remedy under national law against its decision, the Supreme Court decided to seek clarification from the CJEU.

Legally speaking, no other consequences should be read from or into this Order. The Ministry of Education, Culture and Sport indicated the same position in the press release published in response to alarmist media news reporting.

However, the Spanish referral may potentially have a wider impact on the European Economic Area, because public funding has been also an established mechanism of private copying compensation for nearly a decade under the Norwegian Copyright Act (see section 12, as amended in 2005). Other EEA countries are also opting for alternatives to copyright levies (eg the United Kingdom, by considering that harm for right-holders of a narrow private copying exception is minimal and/or compensation can be factored in to the prices of original content).

Let’s now see how this new reference concerning the litigious subject of fair compensation for private copying [this one makes 9th case to be resolved by CJEU on this subject since 2010!] progresses before the CJEU.”

Thursday, 25 September 2014

(Red Nose) Day In Court

Thank you to Chris Torrero for sending us a link to this story! As many of you may know, in the UK, Red Nose Day is an annual telethon organised by Comic Relief to raise money for charity. Some people wear the red nose as a sign of their support of the charity. Similar initiatives take place in other parts of the world. 

The National Sids Council of Australia is an Australian charity which holds the registered trademark Red Nose Day in Australia. In 2010, it applied to the Intellectual Property Office of New Zealand (IPONZ) to revoke the Red Nose Day trademarks of Cure Kids, relying on continuous prolonged non-use of the mark. It also explained that having two separate charities in the Australasian region using the trade mark Red Nose Day would confuse the public. In 2011, the IPONZ ruled that Cure Kids had lost the right to use the image and Red Nose Day marks. Cure Kids has now decided to appeal this decision. 

During the appeal, counsel for Cure Kids, Julian Miles QC, argued that the New Zealand public associated Red Nose Day with their charity and believed it to be a New Zealand campaign. The National Sids Council of Australia, on the other hand, argued that the marks hadn’t been used in New Zealand since Red Nose Day was stopped in 1998. Clive Elliott QC explained: “It all comes down to whether there was fixed and present intention to use the mark.”

Mr Miles argued that the trade marks were not used because of ‘special circumstances’, but that public interest had prompted Cure Kids to launch the Red Nose campaign again in 2010. Cure Kids say that during the last three years of non-use, they were preparing to relaunch Red Nose Day. 

In the UK, non-use of a trade mark for an uninterrupted 5 years, without any proper reason, allows anyone to apply to have the trade mark revoked. S.66 of the NewZealand Trade Marks Act 2002 allows for a similar revocation after a period of 3 years only. S.66(2) of the Act specifies that revocation will not take place if there were special circumstances outside the control of the owner of the trade mark, which stopped him from making use of this mark. In order to successfully appeal against the non-use, Cure Kids will have to show that there were special circumstances stopping them from using the trade mark for such a prolonged amount of time (13 years).

The hearing is set to continue later this year, before Justice Simon Moore.

Cigarette Trade Marks and Logos May Go Up in Smoke in France

Everybody knows that the French wear striped shirts with bérets and that they eat cheese and bread while smoking cigarettes. Well, the French government wants to put a stop to that. Not the cheese part [sigh of relief], not the striped shirt part [that could have been an excuse to go shopping though], but the cigarette part. Marisol Touraine, the French Health Minister, announced today the French government plan to fight tobacco use, the plan anti tabac.
Plain? MOI?

Why talk about this on an IP blog? That’s because one of the measures announced by Marisol Touraine is the prohibition of cigarette packages sporting a trade mark or a logo. This is viewed as a way to discourage people from continuing to smoke or to start to smoke.

All the cigarette packages will have the same shape, size, color and typography, and, as such, would be “neutral.” However, the shocking images which are now printed on cigarettes packages, showing, for example, the lungs of a smoker, and warnings such as “Smoking Kills You” will remain. Therefore, it will no longer be possible for trademark owners to use their marks on their own goods.
Yves Martinet, President of the National Committee Against Tobacco is quoted in Le Monde as saying that «The seductive object must become an informative object.» This is an interesting comment, as a trade mark indeed serves as a way to inform consumers about the product, and, as such, trade mark laws are also consumer protection laws. But in the case of products which consumption may not be in the best interests of consumers, such as tobacco, alcohol, or even sodas and other sugared treats, the marks and the logos also serve as a seductive lure. This aspect of trade marks is particularly important for cigarette makers in France as tobacco advertising has been forbidden since 1991.

There is certainly a health protection rational for this measure, but what could be its IP rationale? Article 3.1.f. of the Trade Mark Directive cites trade marks “which are contrary to public policy or to accepted principles of morality” among the trade marks which cannot be registered. Is it against public policy or accepted principles of morality to smoke? Twenty-Five percent of the French are smokers, and so a quarter of the French population would be acting contrary to public morality on daily basis? Oh là là!

Australia passed the Tobacco Plain Packaging Act 2011 (TPPA) in November 2011, which directed tobacco manufacturers to use plain packaging from now on.  Several tobacco companies challenged the legislation on constitutional grounds in the High Court of Australia. They argued there that such a law was an acquisition of property under the Australian Constitution.
Now, that's my kind of plain box...
But the High Court was not convinced, holding that “…the TPP Act is part of a legislative scheme which places controls on the way in which tobacco products can be marketed. While the imposition of those controls may be said to constitute a taking in the sense that the plaintiffs' enjoyment of their intellectual property rights and related rights is restricted, the corresponding imposition of controls on the packaging and presentation of tobacco products does not involve the accrual of a benefit of a proprietary character to the Commonwealth which would constitute an acquisition. That conclusion is fatal to the case of [the plaintiffs]” (at 44)

There is an excellent article in WIPO Magazine which provides a handy summary of the issues in this case.   

Great Britain has already announced the introduction of neutral cigarette packages, following a report by Sir Cyril Chantler, who had been commissioned by the British Government to advise on whether or not the introduction of neutral cigarette packaging would have an effect on public health. Sir Cyril found that such a measure would likely contribute “to a modest but important reduction in smoking, including reducing the rate of children taking up smoking .“ (I am citing the press release.)

According to the article published by Les Échos, cigarette manufacturers have already announced that they will file suit, in France, claiming the measure is a violation of their property rights.  If cigarette manufacturers would indeed win their case, trade mark law would prevail over national health concerns. Would this be a good decision? 

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