The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 31 July 2017

TILTing Perspectives 2017 (First Part: Online Enforcement and Black Box Tinkering)

This Kitten was delighted to attend the 5th edition of TILTing perspectives (already announced here), which took place at the Tilburg University from 17 until 20 May 2017. Here is her report.

The program was divided into different tracks, and this Kitten attended the IP sessions, which were truly engaging.


Behind the Scenes of Online Copyright Enforcement: Empirical Evidence on Notice and Takedown

Dr. Sharon Bar-Ziv (Haifa Center for Law & Technology and Sapir Academic College) presented the outcomes of her research carried out with Prof. Niva Elkin-Koren, which focused on Israel and whose aim was to analyze the two current strategies for online copyright enforcement: through intermediaries (Notice and Takedown -N&TD-) and by courts.

The goal was to identify who are the players, what kind of materials are removed, whether the enforcement proceedings comply with copyright law objectives, and whether they are effective. For such purposes, a random sample of 10,000 N&TD from May to October 2013, was taken (unfortunately, it was not made clear from where the sample was drawn) and then the N&TD were analyzed. As well, 273 lawsuits involving allegations of online infringement, filed in the Israeli courts between 2010 and 2013, were analyzed. 

Among the interesting outcomes, Dr. Bar-Ziv highlighted that in the digital arena, 66% of the complaints filed based on copyright infringement were not in fact related to infringement but rather dealt with censoring issues, such parody videos or bad reviews. She also remarked that private individuals filed most of the lawsuits against corporations for claims based on misuse of photographs. When software is at issue, large multinational companies (Microsoft followed by Adobe) top the list of sending out N&TD demands to local Israeli intermediaries, such as www.iatraf.co.il and www.dacho.co.il.

Dr. Bar-Ziv noted that the high cost and prolonged length of litigation reduce the effectiveness of enforcement before the courts. To the contrary, the low cost and virtually instant remedies are the potentially positive side of enforcement through intermediaries. However, in fact, 85% of the cases examined, the link was still online, 8% of the cases did not receive a response or an error was received, 5% of the cases were taken down, and 2% of the cases yielded other responses. As a result, she concluded that the N&TD system requires further examination due to lack of transparency regarding the content removed.


Black Box Tinkering: Beyond Disclosure in Algorithmic Enforcement

Dr. Maayan Perel (Haifa Center for Law & Technology and Netanya Academic College) presented the outcomes of her research also carried out with Prof. Niva Elkin-Koren and once again focused on Israel.

The research had the aim of enhancing public scrutiny regarding online copyright enforcement by checking the algorithmic behavior used by the intermediaries. 

Considering that algorithms are often referred to as black boxes because their inner workings are mysterious due to their technical complexity, Dr. Perel applied the methodology of black box tinkering, which, in the words of Nicholas Diakopoulos, refers to a “process of articulating rigorous examination drawing on domain knowledge, observation, and deduction to unearth a model of how that system works” [1].

A small sample of infringing and non-infringing content was uploaded to the platforms: a video in which the fair use defense applied, a non-infringing video, a video infringing only music, an infringing image, and infringing videos with and without Content ID. Thus, after uploading the content, an analysis took place regarding how the algorithm responded, especially whether it detected, blocked or removed automatically the infringing content, and, if not, whether a notice and takedown was submitted. 

The outcomes revealed that there was no uniformity in the N&TD practices. Dr. Perel remarked that both infringing and non-infringing content was removed without any specific standard. Moreover, Dr. Perel mentioned that the implementation of black box tinkering methodology may give rise to a possible violation of the terms of use of the platforms and legal provisions, such as the Computer Fraud and Abuse Act, since it may be considered as unlawful computer intrusion. Thus, she highlighted the necessity to establish a safe harbor for research purposes.

Stay tuned for the second part of TILTing perspectives 2017!

*Pictures are courtesy of Martin Husovec (@hutko).





[1] Nicholas Diakopoulos, Algorithmic Accountability Reporting: On the Investigation of Black Boxes, Columbia Journalism School, p. 13. http://www.nickdiakopoulos.com/wp-content/uploads/2011/07/Algorithmic-Accountability-Reporting_final.pdf 

France: 13 million in damages awarded for linking to downloadable copyright works


Now that the CJEU has confirmed that linking to protected content could lead to infringing copyright comes in some cases (see see herehere and here), a slew of practical questions arise. Not least, how much do copyright owners lose from online platforms hosting links to unauthorized copies of their works uploaded by third parties? In other words, how much damages should be awarded by courts, and on what basis? Two euros per protected works, according to the Paris Court of Appeal's latest decision on the matter. Multiply this by the number of copyright works infringed, itself multiplied by the number of views each file received, divided by two, and you obtain the flat rate going for damages in relation to the secondary liability of platforms indexing links to files "ready for download" on their website.  Confused much? Let's simplify matters, here is how the formula would read in pseudo-mathematical terms: 

In this case, the total amounted to 13 millions euros, and followed a prison sentence of one year awarded by the Paris Criminal Court. (Paris Court of Appeal, Pol 5, Ch 13, 7 June 2017, D.M. v APP, Microsoft, Sacem and others, available in French language here; Paris Criminal Court of First Instance, 2 April 2015 [unreported]).

This 13-million liability (and prison sentence) fell on the owner and manager of the website "wawa-mania.eu". Wawa-mania.eu offered a forum platform allowing members to index links redirecting internet users to servers hosting infringing content they could then download. Wawa-mania also offered downloadable circumvention tools to remove anti-piracy locks shielding Windows software from copying. 

Facts 
In 2009, the forum-like website "wawa-mania" was subject to investigations in France by the Information Technology Fraud Investigations Brigade (in French, BEFTI short for 'Brigade d'enquêtes sur les fraudes aux technologies de l'information'), which revealed mass infringement of protected material ranging from videos, music to computer software. Some of the forum members, known as "uploaders" would obtain infringing copies of copyright works from at least four servers including "rapidshare.com", "Megaupload", "Gigaup.com" and "Free". Once downloaded from these servers, uploaders would re-upload the content online, and share links to the files on "wawa-mania". The forum-like website generated revenues from advertising spaces on its pages.

A penny for your thoughts...
The owner of "wawa-mania", known as 'D.M.', admitted to creating the website in 2006 and managing it ever since, renting server space from a third-party host for this purpose. He explained in preliminary hearings that as "super administrator" of the website, he handled responsibilities of content editing, user management, update of the operating software and held special rights to access to the server. D.M. also admitted to knowing that most of the content shared were breaching intellectual property rights, but stressed that his website hosted no files but merely listed links to access files located on a different server.

Legal proceedings & appeal decision
D.M. first faced litigation on the basis of counterfeit by the Paris Criminal Court of First Instance ("tribunal correctionnel") on 2 April 2015. The criminal court handed down a one-year prison sentence, together with a range of fines, to sanction D.M.'s continuous provision of means and infrastructure to enable the infringement of protected content. In the same judgment, the criminal Bench also ordered for the take-down of the website for a period of two years, and required Google and Yahoo to have the following publication appear in results searching for the names D.M. or "wawa-mania": "On 2 April 2015, the Paris Criminal Court of First Instance sentenced D.M. to a one-year prison sentence for the counterfeit of copyright works carried out by uploading links on the forum wawa-mania that enabled the downloading of protected works illegally obtained". The criminal decision will stand as the right of appeal has now lapsed.
...Two euros for your links.

Civil litigation followed suit, headed by a number of claimants including Microsoft, SACEM, Disney, Universal City Studios or Twentieth Century Fox - to only name a few. On 2 July 2015, the Paris (civil) Tribunal awarded damages for a range of damage (economic, moral, procedural) to each claimant. The main bill, 13 millions euros, concerned the infringement of copyright's economic rights for providing links to downloadable material exclusively, and was calculated as per the formula described above, i.e. two euros, per views divided by two, per copyright work listed on the website. The Paris Tribunal divided in half the number of views for each work recorded by the linking-website because they recognized that users "viewing", or accessing, the files may not have downloaded them. Halving the number of views before applying it as a coefficient in the equation to calculate damages was regarded as a fair account of the "likely" levels of infringement. Nothing in the decision explains or justifies why the likely levels of infringement would be accurately obtained by dividing the number of views by two. Is this a rough guess on the part of the court? Was there expert evidence submitted to support this calculation? Was it based on the Court's own experience of downloading and streaming - or perhaps that of a reasonable person?

The Paris Court of Appeal approved the calculation put forward in the first instance decision. They too regarded the division of "views" by two as appropriate since the claimants did not submit evidence that viewing or accessing the files lead to their download consistently. For this reason, the fixed amount of damages had to account for a probable, and not proven, prejudice. The rest of the tribunal decision was confirmed in every aspect, only further damages to cover litigation costs were added by the Paris Court of Appeal, totaling at additional 2,200 euros - a relatively small sum in comparison to the multi-million euro sanction. 

The decision confirms two things. First, and more generally, it evidences that intellectual property enforcement measures do, or can, have 'teeth' in the context of secondary liability - provided that claimants and public prosecution are in the position to gather the necessary evidence of infringement, and take legal actions. These remain big "ifs". Second, the decision goes to show that the "linking" defense website owners may be tempted to argue would not hold in the context of platforms dedicated to enabling illegal downloads.

The caveats in liability rules carved by regulations and jurisprudence for file-sharing or link-sharing platforms have limits, and this is one illustration. It appears that French Court are stiffening their position with regard to illegal online practices. Looking at this decision together with a recent case heard by the French Supreme Court dated 6 July 2017 (see here), this is the conclusion one is inclined to come to. Indeed, the highest civil court recently held that internet service and browser providers ought to cover the costs of blocking and filtering injunctions, regardless of their lack of liability. This line of jurisprudence is in tune with the EU 2016 copyright reform proposal which identifies internet intermediaries as key allies in the fight against infringement and the 'value gap' (See Article 13, Recital 38). 

Monday miscellany


Letting the Kat out the bag!
Welcome to Monday Miscellany - here you will find a mixed bag of reports, call for papers, events and job vacancies, enjoy!

IP is a barrier to the growth of creative industry freelancers, says Creative Industries Federation Report


According to Creative Industries Federation 47% of the creative industry workers are freelance. However, they suggest that there is a lack of understanding by policy makers about freelancers. In a survey of around 700 creative freelancers and 50 businesses, their Report found that legal advice and support (particularly on intellectual property) emerged as major barrier to business growth: “it is clear that many struggle to access good quality affordable advice on issues such as protecting their intellectual property rights.” [p.44] Policy recommendations from the report therefore suggest that the Government should support an independent UK-wide virtual hub - a ‘business booster network’ - which signposts existing business advice, maps local support services, and facilitates peer-to-peer mentoring aimed at creative enterprises and entrepreneurs. [p.46] See the full report here.


Call for papers:


The Singapore Management University will host the 3rd Works-In-Progress Conference: “IP Scholars Asia” on the 1st and 2nd March 2018 in Singapore. Scholars with an interest in comparative law (not only Asian law strictly, but also US, EU, and other countries) are invited to apply. The Call for Papers for full details here.


Events:


The 12th Edition of the Pan-European IP Summit will be held in Brussels on 7th and 8th of December 2017. The event hosts over 100 speakers on topics relating to patent, copyright, trademark, design and new technologies. More information can be found here: http://www.ipsummit.info/

Trademark enthusiasts may be interested in heading to New Orleans for the INTA Trademark Administrators and Practitioners Meeting (TMAP), which will take place from September 17th -19th . Featuring close to 30 speakers, attendees will experience three days of learning, networking and empowerment. For the first time, TMAP attendees and INTA staff will begin the meeting by building bicycles with a local non-profit for New Orleans teens in need. Early bird registration ends on Friday, August 4. To register, visit www.inta.org/2017TMAP.


Looking for something new? Here are some recent IP vacancies:


Motion Picture Association (MPA) EMEA is looking for a new Policy/Advocacy Intern in Brussels, Belgium. The internship is full-time for 6 months, to work closely with the MPA EMEA Policy Department, supporting the team in implementing the EMEA Policy Strategy. Full details here, hurry the deadline for applications is today, 31 July 2017!

Julia Reda is looking for a communications trainee to assist with spreading the word on Julia’s work and its underlying issues, and making it easy to understand, follow and participate in. Full details here, deadline 18th August 2017.

Google Policy Fellowship in Europe and Africa for undergraduate, graduate or law students interested in Internet and technology policy. The fellowship offers an opportunity to spend the summer contributing to the public dialogue on these issues, and exploring future academic and professional interests. More info here, apply here before 11th August 2017.

IP Junior Project Manager for the pan-European Intellectual Property Summit 2017, Brussels, Belgium. The position is for 6-12 months and involves the set-up of the IP Summit which will take place on 7-8 December. Full details here and here.

Think Tank Kennisland (KL) is offering a copyright internship in Amsterdam, the Netherlands from 1st October for four – six months. Full details here (the website is in Dutch but the language of the project work is English). Deadline to apply is 25th August 2017.



photo: Andrea Kirkby

Saturday, 29 July 2017

From Coca-Cola Zero to Coca-Cola Zero Sugar: big deal or no deal?


Okay, Kat readers, what was the biggest news item of last week? Many of you, especially if you follow events in the U.S., will probably point to the drama over Obamacare. Yes, indeed, that was an exciting event. But the really big news item came from Atlanta, Georgia, the home of the Coca-Cola Company, which, on July 26th, issued a press release, which began as follows--
“Since its 2005 introduction, Coca-Cola Zero™ has refreshed hundreds of millions of fans across America with its real Coca-Cola taste and zero calories. From its U.S. introduction into the Coca-Cola® trademark brand portfolio to its global expansion, the brand is sold in nearly 160 countries around the world.

Now, through in-house innovation and extensive market testing, Coca-Cola Zero is getting a new name, new look and even more delicious taste. The no-calorie fan favorite will deliver an even better-tasting recipe and now be called Coca-Cola Zero Sugar.”
Yes, you understand correctly. Coca-Cola is about to launch in the U.S. a successor to Coca-Cola Zero under the name Coca-Cola Zero Sugar. As the release describes, the company has succeeded, after a year of consumer tasting trials, in developing a zero-sugar drink that tastes more like than original Coke product than does Coca-Cola Zero. The announcement further states that Coca-Cola Zero Sugar has already been on sale in 25 countries around the world, including Great Britain and Mexico and has shown strong growth. Coca-Cola apparently feels confident enough to replace Coca-Cola Zero with Coca-Cola Zero Sugar in the US, despite that Coca-Cola Zero was among the 10 leading "sparking brands” in 2016.

Accompanying the new product will be new a packaging design, highlighting the “iconic red Cola-Cola disc”, which will be set against the black background that has come to be identified with Coca-Cola Zero. Also, the words “Zero Sugar” will be prominently featured, just to make sure that consumers know that the drink does not contain any, but any, sugar. The overall goal of the new design is “that [it] looks more like Coca-Cola” [Merpel asks what exactly this is supposed to mean.]

More generally, this move by Coca-Cola raises some questions for this Kat. Remember, the ultimate goal here is presumably to sell more of the Coca-Cola Zero Sugar drink than the zero-calorie product sold under the Coca-Cola Zero mark. Start with this Kat’s own lair. When I described for Mrs. Kat what Coca-Cola was planning to do, her response was: “What’s the difference whether it is called Coca-Cola Zero or Coca- Cola Zero Sugar?” Here, the competition is between Coca-Cola’s no calorie product and those of others. Her preference for years has been the Coca-Cola product, which means that unless she dislikes the taste of the new product, she will remain a customer, whatever they call it. For her, the move will not result in additional sales for the company, but the company seems confident enough that she will not abandon the Coca-Cola product in this product line.

The additional sales would seem to come, if at all, from customers who identify with the Coca-Cola brand first and foremost on the basis of taste. Another member of this Kat’s lair simply will not give up the full-calorie version of the Coca-Cola product, refusing to drink Coca-Cola Zero “because of the taste”. One result of this position is that he limits his intake of regular Coca-Cola because of the calories involved, which means that he drinks less of the Coca- Cola product than he might if calories were not an issue.

Enters Coca-Cola Zero Sugar. If Coca-Cola can convince this Kat’s family member that the new drink tastes exactly, or nearly so, like regular Coca-Cola, he might be tempted to switch (or at least give it a try). If he likes Coca-Cola Zero Sugar, he may well increase the volume of his purchases of Coca-Cola soft drinks. In this case, the move by Coca-Cola will result in increased sales.

This might also explain the change from “Zero” to “Zero Sugar”. Since the launch of Coca-Cola Zero, there has been a legal question whether the word “Zero” has any distinctive power in the trademark sense. Courts and tribunals have differed on this point, some holding “yes”, others “no”. “Zero Sugar” seems clearly in the camp of being unequivocally descriptive, which is not good from the trademark perspective. On the other hand, it reinforces, on a factual level, for people like this Kat’s family member, that the product is indeed sugar-free. Drink as much as you want; after all, it tastes like “the real thing” and there are no calories to count.

A postscript: This Kat later went to the market. There was a full shelf of Coca-Cola Zero bottles for purchase. He took two of them home. If, next week, that shelf is full of Coca-Cola Zero Sugar bottles instead of Coca-Cola Zero, he, or Mrs. Kat, will likely do the same thing.

Friday, 28 July 2017

Brexit roundtable for brand owners in the financial services industry

Via Katfriend Darren Meale comes the news that, together with Royal Bank of Scotland’s IP Legal Counsel Mark Cruickshank, he is organising a roundtable on Brexit specifically focused on brand owners in the financial services industry.

Here's the relevant flyer:

Br*x*t and brands – would you like to join the Financial Services Roundtable?

With answers to questions such as “what is going on?” and “when it is going to happen?” hard to come by when it comes to Brexit, brand owners might want to start being more proactive with engaging with the government in the hope of understanding what their IP rights will look like once the UK leaves the EU.

To that end, Darren Meale (IP partner at Simmons & Simmons) and Royal Bank of Scotland’s IP Legal Counsel, Mark Cruickshank, are putting together a “Brexit and Brands Roundtable” for brand owners in the Financial Services industry. The group will comprise trade mark/intellectual property lawyers from a number of major banks and financial institutions. The role of the group will be to liaise with the UK authorities and the wider IP industry to look at trade mark and other IP issues raised by Brexit, which has the potential to significantly impact on the IP owned by those businesses. A first meeting of the group with representatives from the UK Intellectual Property Office is due to take place in September.

The Roundtable already features a number of big names but there is room for more members. If you are an IP lawyer at a financial institution and would like to join in, Darren would love to hear from you at darren.meale@simmons-simmons.com. To give the group focus, membership is currently limited to financial services brand owners, but brand owners from other industries keen to find out more can also drop Darren a line.

More on broccoli, tomatoes, and the patentability of a plant or animal obtained by means of an essentially biological process


Further to the IPKat blog post of July 26th ("EPO takes an ‘about turn’ on the patentability of products obtained by essentially biological processes"), Kat friend Florica Rus considers issues raised as a result of these amendments .

As reported, broccoli and tomatoes returned to the patent spotlight as the Administrative Council of the European Patent Office (EPO) amended Rules 27 and 28 of the Implementing Regulation and concluded that products (animals or plants) obtained exclusively from essentially biological process are excluded from patentability. This decision applies to European patent applications filed on or after July 1, 2017, as well as to European patent applications and European patents pending at that time.

To refresh the memories of Kat readers, the decisions (Tomatoes II G 2/12 and Broccoli-II G 2/13) caused a great stir within the public, the breeding industry and EU institutions. In particular, the Tomato/Broccoli II decisions created a divergence between the interpretation of the European Patent Convention (EPC) and the Biotech Directive and it was in conflict with national patent laws (France, Germany, Italy and Netherlands), which precluded from patentability products produced by essentially biological processes.

Against this background, the European Commission (see the Interpretative Notice from November 2016) intervened and took a different view from that of the Enlarged Board of the EPO, concluding that products obtained by essentially biological processes should not receive patent protection. Consequently, the need for harmonization and legal certainty led the EPO to stay ex officio all the proceedings in which the decision depended entirely on the patentability of a plant or animal obtained by an essentially biological process. Following that, on June 29, 2017, the Administrative Council of the EPO amended Rules 27 and 28 of the Implementing Regulation. So, what now?

Amendment of the Rules is welcomed. Even as the impact of these recent developments continue to surface, here are some initial considerations:

1. All the stayed cases will be resumed and even granted patents could be subject to the new Rules, considering the subject-matter of EPO opposition or limitation proceedings or national revocation proceedings. In fact, since 1980, the EPO has granted 180 patents dealing with traditional breeding methods (Patente auf Planzen und Tiere, page 7).

2. The saga of Tomato/Broccoli II will continue to play out, as they are in conflict with these new developments. However, the EPC trumps the Rules when in conflict (Article 164 EPC) and therefore, the EBA is not bound by the Implementing Regulations.

3. As the new Rules are in line with the patent laws in France, Germany, Italy and Netherlands, a decision of the CJEU would probably follow the same interpretation of the process exclusion under article 53 (b) EPC and 4 (1)(b) Biotech Directive.

4. It has been clarified which types of biological material can obtain patent protection as lying outside the exclusion under article 53 (b) EPC (Administrative Council). However, to what extent can patents on native traits be seen as non-technical has yet to be clarified. Considering the degree of innovation in the plant biosciences, there is uncertainty on whether or not to exclude generally from patentability plants with native traits.

5. It remains questionable if the EPO really found the answer to the continuously innovating breeding system and whether it was a good option to avoid defining in a clear-cut fashion between traditional breeding methods (crossing and selection) and breeding methods that involve technical steps in the crossing and selection processes. In other words, it is still open for discussion whether it is the right approach to treat products obtained by a process that involves technical steps even in the crossing and selection processes (See Tomato I/Broccoli I decisions) in the same way as products obtained by purely essentially biological processes (“entirely natural phenomena” Rule 23b (5) EPC), the latter not being patentable.

6. The fear of traditional breeding falling under patentability will still persist. Modern breeding is based on traditional breeding
methods; it is considered predictable and therefore technical. Having this in mind, one can ask whether an identical result cannot be reached upon a repeated breeding process. Is there any difference if this process occurs naturally or is directed by a human? Consequently, there is room to develop best practices for patent examinations and patent drafting.

7. Apparently, small breeders have more freedom to operate without the fear of having traditional breeding put under “patent siege” from big companies.

8. GMOs face in Europe strong and constant opposition. Can it be that after these developments, GMOs will gain more popularity?

In the end, it looks like the current legal changes offer a sensible solution but arguably not a final answer. The implications of Tomato/Broccoli II are far from being totally revealed and breeders will continue to explore the boundaries of Article 53 (b) EPC.

Picture at the middle left by David Monniaux licensed under GNU Free Documentation License

Picture at the lower right by Softeis licensed under GNU Free Documentation License

Around the IP blogs


MARQUES is participating in the China Trademark Festival 2017, where we are conducting a Sub-Forum. 

The China Trademark Festival 2017 is being held in the Guilin International Conference and Exhibition Center, 22 Lijiang Road, Guilin, Guangxi. The Sub-Forum itself takes place on Sunday 3 September and it lasts all morning (9 am to 12.30 pm, to be precise). The title is "Effective trade mark and brand protection and enforcement strategies from national to regional and going global: brand owners’ needs v legal obligations and available procedural means". 

To learn more about the China Trademark Association and the Festival itself, do please visit the China Trademark Association’s official website here.

The China Trademark Association has generously agreed to apply the special registration fee of USD 650 to all MARQUES members who wish to register for the Festival. The registration form can be found hereFor those interested in attending the sub-forum, please contact Alessandra Romeo directly on aromeo@marques.org

Deep in the Guilin, Guangxi, China

“An extra-terrestrial alien visiting Earth in 2007 and returning, now, one decade later, might, at first glance, notice little difference in smartphones between times.” – Recent new technology deployments with Gigabit LTE at Telstra in Australia, Sprint in the US and EE in the UK highlight how much cellular communications technologies have improved since the introduction of mobile data services with circuit-switched and then packet-switched offerings from around 20 years ago." On the IP finance blog, Keith Mallinson congratulates the 10-year anniversary of the iPhone for its significant successes on innovation and IP protection. 


In the blog Art & Artifice, a very readable guest post is brought to readers from Sonia K. Katyal and Joan Kee, who recently co-wrote the article "How Art and Law can work together beyond the marketplace" on the role of art law in engaging with the work of minorities. 


“Beyoncé and Jay-Z are continuing the trend of celebrities looking to legally protect their children’s names in order to either capitalize on them or prevent others from doing so. The music industry power couple registered their daughter’s name Blue Ivy Carter as a European Union trademark back in 2012. They were unable to secure a registration in the U.S., where applicants must prove that they are actually using the mark on goods or services before the U.S. Patent and Trademark Office will grant a registration.” – Check out the analysis on the Fashion Law blog.


“On Monday, news washed up that this "famous" sari of the Nobel laureate nun, who died in 1997, has been trademarked to prevent "unfair" use by people for commercial purposes. India's government quietly recognised the sari as the intellectual property of the Missionaries of Charity in September last year, when the nun was declared a saint by the Vatican” – see the India correspondent Soutik Biswas’s report on BBC. 

Extending reading: IPKat Eleonora formerly provided a commentary here on “Can a colour be considered akin to a shape, so that a sign that consists exclusively of a colour ‘which gives substantial value to the goods’ cannot be registered as a trade mark?”


This month Colombia joined the network of the Global Patent Prosecution Highway (GPPH). This network has 22 members from Europe, North America, Asia, Oceania, and now Latin America. From that side of the pond United States and Canada are members [full list of members can be found here]. Patent applicants who have obtained protection in Colombia may request that the same application be reviewed in any of the other members that are part of the GPPH. This global pilot was launched back in January 2014 allowing ‘patent applicants to request accelerated examination at any of the offices involved in the pilot if their claims have been found to be acceptable by any of the other offices involved in the pilot’.

Photo courtesy of Trey Ratcliff.

Thursday, 27 July 2017

CREATe Summer Summit 2017: Open Science, Open Culture & the Global South (and everything between)


Former Intern Kat Eleanor Wilson attended the CREATe's inaugural seminar on the issue of openness in science, culture, and everything between. The relevancy of the topics considered warrant publishing Eleanor's summary of the event.

IPKat readers may be familiar with the CREATe centre based in the University of Glasgow. To use its full title, the Research Councils UK Centre for Copyright and New Business Models in the Creative Economy, it has explored numerous research areas within this impressive remit. I was lucky enough to attend CREATe’s inaugural Summer Summit from 26 – 30 June, which was jointly organised with National Law University (NLU) Delhi by Dr Sukhpreet Singh (CREATe, University of Glasgow). The theme of the summit was ‘Open Science, Open Culture & the Global South’, and openness was discussed from every possible interpretation – from open access to open exceptions, from open policy making to open education. This post contains just some edited highlights of an intensive week.

The week kicked off with a keynote from Dr Peter Jaszi (American University Washington, DC), who argued that what is sometimes seen as “gaps” in copyright law are part of its fabric and design. Apart from describing copyright as a luxurious piece of lace, he raised some serious concerns about the constrictiveness of closed-list exceptions against the impetus for openness. It quickly became clear that, while it means different things to different people, “openness” is much more than a buzzword. Openness is, it seems, a very broad church which includes the concept of “free as in beer” and “free as in speech”, and embraces openness to access, remix, re-use, and often more.

This concept was developed in the conversations which took place around open education and science. It was clear that openly available education was viewed by Professor G. S. Bajpai (NLU Delhi) as a global mandate, and not an optional extra for universities, particularly when state funding is involved. It was interesting to then contrast the E-Pathshala ["Pathshala" is a Sanskrit term for education] with the Massive Open Online Courses offered by the University of Glasgow.

On the theme of open science, Dr Arul Scaria (CIPPC) highlighted the risks of fraud and harm when scientific research is not transparent, which is also evinced by the woeful statistics for private scientific journals: 90% of papers are never cited and as many as 50% are only ever read by the authors and editors. In the light of this, the preference of scientific authors for the “impact factor” over open access appears to be ripe for a review.

This view was consolidated by Prof Roberto Caso (University of Trento) who acerbically criticises the scientific community’s apparent obsession with metrics and commodification at the expense of open access and pedagogy. All of this was fleshed out by policy-oriented presentations from Claire Fraser from HEFCE and Chris Banks FRSA of Imperial College, both of whom explained in detail the current practicalities and challenges of supporting open access to research outputs and data.

Continuing the discussion on open science enabling a more open culture, Dr Thomas Margoni (CREATe, University of Glasgow) queried why the InfoSoc Directive should mandate a “high level of protection”, rather than a “balanced” or “proportionate” one, and whether one-size-fits all copyright protection remains viable. Particular obstacles to academic research across all fields are the limitations of the newish non-commercial text and data mining copyright exception, since it potentially conflicts with the licenses under which academic works are published.

To remedy the situation, CREATe’s Dr Giulia Dore demonstrated a new tool supported by Horizon 2020 funding, namely OpenMiNTeD, which is designed to support researchers intending to undertake computational analysis of large volumes of material by text and data mining, and is developing a novel “traffic light” system, which will reveal the compatibility of text and data mining with various forms of licence. This was, of course, made possible by employing text and data mining of license terms themselves(!).

This was just one of various new web tools showcased last week, all of which work to further increase openness and indeed are generally available (at least as Creative Commons). There was the Copyright Evidence Wiki, a database for empirical copyright research; Online Media Behavioural Analytics (OMeBA) survey data; and – my personal favourite, and well worth a look – the digitisation of Edwin Morgan’s scrapbooks.

This last resource was presented by Jesus Rodiguez Perez and Kerry Patterson (both CREATe, University of Glasgow) and demonstrates the potentially prohibitive costs and effort required to diligently search for orphan works, notwithstanding the progress made at the EU and UK levels in orphan works licensing and use by institutions, which were thoroughly explained by Margaret Haig from the UKIPO and Victoria Stobo, an archivist at the University of Glasgow. As a practical exercise, we participants attempted our own diligent searches for authors or owners of orphan works registered at the EUIPO and – so it seemed – came close to a breakthrough, but ultimately had to concede.

For my part, it took a couple of days to get comfortable with the different conceptions of openness without trying to reconcile them into a homogenous conceptual objective. As Dr Martin Kretschmer has mischievously noted, an optimal framework within one country is to adopt a maximally open IP framework while its international neighbours maintain a closed, narrow approach to exceptions, access and use. Evidently, this is not a universal solution to achieving openness internationally.

Two contrasting studies of openness operating in very different contexts were presented. First was on the crowdfunding platform Kickstarter, a platform which seems to reward “remix” culture according to a study by Dr Kristopher Erickson (CREATe, University of Glasgow). The second considered indigenous cultures, where Dr. Saskia Vermeylen (University of Strathclyde) advocates a more respectful approach to shared property, which incorporates fiduciary concepts of stewardship rather than importing closed-off, westernised property principles.

To draw together the strands of the summit, the benefits of “open” for stakeholders from Scottish Power to the British Library are emerging. There are practical steps that academics and businesses alike can take already, although the legal framework could be tweaked to nudge openness onto the agenda. What may be harder to shift is the received wisdom, even intuition, that high protection and secrecy necessarily lead to advantages or profits. Another potential pitfall could be conflict resulting from different expectations of a standard of “openness”, although attempting to coin a universal definition would feel somewhat short-sighted and restrictive.

Photo on lower left by Andrew Dunn and is licensed under the Creative Commons Attribution-Share Alike 2.0 Genesis license

BREAKING: BGH asks CJEU what a 'quotation' is: only unaltered reproductions or also something else?

Miami to Ibiza?
Better: Karlsruhe ...
Via Katfriend Mathias Schindler (Office of MEP Julia Reda) comes the news that today Germany's Federal Court of Justice (Bundesgerichtshof - BGH) has referred a new copyright case to the Court of Justice of the European Union: I ZR 228/15 - Reformistischer Aufbruch.

This is the third copyright reference from the BGH in less than two months: last month, in fact, this court referred the (long-running) Metall auf Metall case, and the Afghanistan Papiere case [both reported here].

According to the relevant press release (and its Google Translate translation), similarly to the two other references mentioned above, also this new case seeks guidance on – among other things – the interplay between copyright protection and the protection of third-party rights and freedoms (including freedom of the press), as well as the proper interpretation of relevant exceptions in the InfoSoc Directive – in this case, news reporting and quotation within, respectively, Article 5(3)(c) and (d) of the InfoSoc Directive.

This new reference has been made in the context of proceedings brought by a German politician who, in 1988, authored a book about “sexual acts of adults with children”. The publisher apparently edited the manuscript without the author's consent and the resulting publication was, according to the author, a distortion of his views.

The original manuscript was found in an archive in 2013, and the author submitted it to several newspapers to demonstrate what he had actually written. Although he did not authorize publication of the manuscript or extracts thereof, he consented to newspapers linking to a statement he published on his own website.

... to Luxembourg
The publisher also released a press report on its own portal to support its view that the original manuscripts had not been distorted. To this end, the publisher included a link that allowed users to download both the original manuscript and the resulting publication. No link to the author’s website was provided.

The author submitted that all this amounted to copyright infringement, and brought proceedings against the publisher, being successful at both first instance and on appeal.

The case eventually reached the BGH, which has now decided to stay the proceedings and make a reference to the CJEU.

Although the press release does not contain the exact questions referred, it appears that the core of the reference, which – as also noted by the BGH – is similar to the Afghanistan Papiere case – concerns the interpretation of the notions of ‘news reporting’ and ‘quotation’ within Article 5(3) of the InfoSoc Directive.

With particular regard to ‘quotation’, the core issue seems to be – by reading the press release – whether this exception requires the quotation to be an unaltered reproduction of part of the original, or also allows the reproduction not to be identical.

This question is a very intriguing one, and the answer may be anything but straightforward. There is no need to say that the resulting outcome will have a significant impact on the scope of the EU quotation exception and - with it - national quotation exceptions.

AG Wahl says that, at certain conditions, suppliers of luxury goods may prohibit retailers from selling on third-party online platforms

Yesterday Advocate General (AG) Wahl issued his Opinion in Coty Germany GmbH v Parfümerie Akzente GmbH, C230/16 [the Opinion has already received a thorough and interesting commentary by leading competition law blog Chillin’Competition].

This is a reference for a preliminary ruling from the Higher Regional Court, Frankfurt am Main (Germany), seeking guidance from the Court of Justice of the European Union (CJEU) on how to interpret relevation competition law provisions [Article 101(1) TFEU and of Article 4(b) and (c) of Regulation (EU) No 330/2010] in the context of selective distribution agreements.

This case is linked to, on the one hand, the increasing popularity of electronic marketplaces over which producers have no influence [eg Amazon, eBay] and, on the other hand, the question whether a supplier may prohibit authorized resellers from making use of non-authorized third undertakings over fear that the relevant products would otherwise lose or risk losing their ‘luxury’ image.

Background

As readers may imagine, the latter is indeed the core issue in the background national proceedings, brought by Coty Germany [an undertaking that supplies luxury goods and is certainly not new to having its cases referred to the CJEU: eg herehere, and here] against one of its authorized distributors (Parfümerie Akzente), which has been selling Coty’s products for years both at (Coty-approved) brick-and-mortar locations and online (through amazon.de). When Coty sought to extend the control that it has over physical retail to the online sphere, Parfümerie Akzente refused.

As a result, litigation ensued.

In 2014 the first instance court sided with Parfümerie Akzente, and held that the objective of preserving a prestige brand image does not justify the introduction of a selective distribution system which by definition restricts competition.

The decision was appealed to the Higher Regional Court, which was unsure whether the one at first instance was a correct application of CJEU case law, notably the 2011 judgment in Pierre Fabre Dermo-Cosmétique. The court thus decided to stay the proceedings and refer the case to the CJEU.

AG Wahl
The AG Opinion

AG Wahl noted at the outset that the decision in Pierre Fabre Dermo-Cosmétique has been subject to divergent interpretations by national competition authorities and courts: this case is therefore an opportunity for the CJEU to clarify the meaning and scope of its earlier jurisprudence.

According to the AG, the interpretation given at first instance in the background national proceedings is not the correct one: the seller of luxury products is not prevented at the outset from requiring its authorized retailers to sell products at certain conditions and locations – whether offline (brick-and-mortar shops) or online.

This is because price competition is not the only form of effective competition [para 33], and – indeed – “it is on the basis of that premise that selective distribution systems [based on qualitative criteria] should be seen” [para 34].

The CJEU has recognized the legality of selective distribution systems based on qualitative yet objective criteria (determined uniformly and applied in a non-discriminatory fashion – including preserving a certain product image) since the seminal decision in Metro.

The AG also recalled that it has been gradually accepted that selective distribution systems of this kind may even have positive effects on competition: by favouring and protecting the development of the brand image,

“[t]hey constitute a factor that stimulates competition between suppliers of branded goods, namely inter-brand competition, in that they allow manufacturers to organise efficiently the distribution of their goods and satisfy consumers.” [para 42; on intra-brand competition, see para 44].

Furthermore,

“Selective distribution systems are, especially for goods with distinctive qualities, a vector for market penetration. Brands, and in particular luxury brands, derive their added value from a stable consumer perception of their high quality and their exclusivity in their presentation and their marketing. However, that stability cannot be guaranteed when it is not the same undertaking that distributes the goods. The rationale of selective distribution systems is that they allow the distribution of certain goods to be extended, in particular to areas geographically remote from the areas in which they are produced, while maintaining that stability by the selection of undertakings authorised to distribute the contract goods.” [para 43]

Eau de Toilette ... for Kats
While in principle selective distribution agreements are not contrary to Article 101 TFEU, there are some conditions [the Metro criteria] that sellers must respect [paras 52 ,65-66]:

1.    It must be established that the properties of the product necessitate a selective distribution system, in the sense that such a system constitutes a legitimate requirement, having regard to the nature of the products concerned, and in particular their high quality or highly technical nature, in order to preserve their quality and to ensure that they are correctly used.
2.    Resellers must be chosen on the basis of objective criteria of a qualitative nature which are determined uniformly for all potential resellers and applied in a non-discriminatory manner.
3.    The criteria defined must not go beyond what is necessary.

The AG then focused on the particular case of luxury goods, and recalled [para 72] that:

“In the context of trade mark law, the Court [notably in Dior and Coty Prestige] has emphasised that luxury and prestige goods are defined not only by reference to their material characteristics, but also on the basis of the specific perception which consumers have of them, and more particularly of the ‘aura of luxury’ which they enjoy with consumers. As prestige goods are high-end goods, the sensation of luxury emanating from them is essential in that it enables consumers to distinguish them from similar goods. Therefore, an impairment of that aura of luxury is likely to affect the actual quality of those goods. In that regard, the Court has already held that the characteristics and conditions of a selective distribution system can, in themselves, preserve the quality and ensure the proper use of such goods.” 

Comment

The Opinion of AG Wahl appears both correct and sensible, including from an IP perspective [but see here for a critical take].

Readers will remember in particular that in Dior the CJEU linked the grant of a licence in the context of a distribution agreement concerning luxury products (in that case, "corsetry goods") to the exercise of Dior’s trade mark rights, notably the right to put relevant goods into circulation for the first time. In Coty Prestige the CJEU noted that the exclusive nature of trade mark rights means that any unauthorized use of a trade mark may amount to an infringement [see paras 89-90 of the Opinion].

Let’s see if now the CJEU also agrees with the AG. Stay tuned!

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