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

Wednesday, 30 April 2014

Wednesday whimsies

Fordham aftermath. Following last week's Fordham IP Conference [if you missed or avoided it, but your curiosity has got the better of you, the easiest place to start your overview is here], here are a few post-event items for you.

Fordham provides much food for thought
* This Kat has received several emails from readers who are asking when the final, corrected version of the transcripts of the Fordham sessions might be available. He doesn't know, but he can report that drafts of some of the sessions have already been transcribed and sent to participants for correction by 15 May -- so hang on in there, be patient. We'll let you know as soon as we hear anything concrete.

* A large chunk of the Fordham programme relates to copyright, a factor which has prompted fellow Kat Eleonora to prepare a handy summary on the copyright-flavoured 1709 Blog, here. If you want to know more, and engage in some serious interaction with other like-minded souls, there is still a space or two available on Eleonora' post-Fordham Copyright Catch-up, which takes place next Tuesday in Central London: details here.

* The IPKat's friends in Geneva at Intellectual Property Watch have posted a report on Fordham, "Fordham IP Event A Firehose Of Current IP Legal, Policy Debates", by William New. It's snuggling comfortably behind a paywall, but this won't deter IP Watch's dedicated band of subscribers.
* Two sets of PowerPoints from Fordham are now in the IPKat's possession. They are "Stop! in the Name of Law – How New EU Customs Laws Create Stumbling Blocks for Intellectual Property Owners" by Christian W. Liedtke (read here or download here) and IPKat team member Jeremy's "IP Pioneers" presentation (read here or download here).

Betty Boop, Kat and crab: this
picture cries out for a witty caption ...
Around the weblogs.  It's all happening in the Southern Hemisphere right now: Jeremy Speres (Floor Swart, Stellenbosch) has joined the blogging team of Afro-IP. That blog now has two bearded Jeremys (Jeremies?), blogmeister Darren Olivier points out. Jeremy S has already opened his blogging account with this post on three recent South African trade mark cases. We wish him well. Meanwhile, on the biliingual IP Tango weblog, the charming and erudite Rodrigo Ramirez Herrera has posted "En Chile es posible renovar registros de marcas en 1 click con nuevo servicio del INAPI", here while, drifting to the Caribbean, this blogger notes an unsuccessful attempt to register the OLYMPIKUS trade mark in Costa Rica, foiled by the ever-viligant local Olympic Committee. Meanwhile, David Berry, writing for PatLit, discusses Octane Fitness LLC v ICON Health & Fitness, Inc., No. 12-1184 (U.S. April 29, 2014) and Highmark, Inc. v Allcare Health Management System, Inc., No. 12-1163 (U.S. April 29, 2014) -- in which the US Supreme Court has doubtless endeared itself to many of our readers by making it easier for US courts to award patent attorney fees.  Over on the jiplp weblog newly-promoted Bristows partner Jeremy Blum (well done!) and his colleague Nicholas Round explain the recent British passing off and trade mark infringement action in Betty Boop, in which the judge, Birss J, considered the paradox that it's easier for a fictional character to gain protection against unauthorised merchandising than for a real one.  Finally, on Art & Artifice, Angela Saltarelli posts this intriguing French case on the right of an art expert to refuse to authenticate a putatively genuine work.

Another Factor package ...
Borders change. Infringement continues.  That's the message from fellow blogger and IP practitioner Michael Factor, who has come up with yet another surprise initiative.  As an Israel-based practitioner he has teamed up with a Palestinian lawyer who is qualified to practise both on the West Bank and in Gaza, to offer a seamless trade mark registration package for the three zones.  The pair will be putting in an appearance at next month's INTA Meeting in Hong Kong.  You can read more about this on Michael's IP Factor blog here. This Kat welcomes all constructive initiatives of this nature.

Vintage litigation -- or Beyond endurance? CTM struggle continues

The Ninth Chamber of the General Court gave judgment today in a fierce battle over a Community trade mark application in Case T‑170/12, Beyond Retro Ltd v OHIM, the other party to the proceedings being a US company, S&K Garments, Inc., which was victorious in the Board of Appeal.

Vintage cats enjoy a sip of vintage wine
This, as readers might guess, is another of those unbearably and protracted Community trade mark (CTM) oppositions. Back in October 2008 S&K secured an international registration, designating the European Community, for the word mark BEYOND VINTAGE for ‘jewellery, precious stones and watches’ (Class 14), ‘clothing accessories, handbags, purses and wallets’ (Class 18) and 'clothing’ (Class 25). In November 2009 Beyond Retro opposed, basing its opposition on its own earlier Community word mark BEYOND RETRO for, inter alia, ‘clothing, headgear and footwear’ (Class 25). Said Beyond Retro, given the similarity of the marks and the fact that both were for clothing in Class 25, there was bound to be a likelihood of confusion among the relevant class of consumers [presumably people in Europe who wear clothes, guesses Merpel, who is greatly attached to her own fur coat but wears nothing underneath]. This likelihood should bar registration of BEYOND VINTAGE under Article 8(1)(b) of the CTM Regulation.

Beyond Retro use
the "V" word too ...
The Opposition Division generously upheld the opposition for goods in Classes 18 and 25, but rejected it for the goods in Class 14. In March 2011 S&K Garments and Beyond Retro both filed a notice of appeal and, in January 2012, OHIM's Fourth Board of Appeal upheld S&K's appeal on the ground that there was no likelihood of confusion, and dismissed Beyond Retro's appeal for much the same reason. The Board of Appeal, defining the average end consumer as being "reasonably well informed and reasonably observant and circumspect", agreed with the Opposition Division that S&K's goods were identical or similar to the ‘clothing, headgear and footwear’ covered by the earlier mark and confirmed that there was no similarity between 'clothing, headgear and footwear' and ‘jewellery, precious stones and watches’. Both marks consisted of English language word elements, which would be recognised as such and understood by some folk in the EU but not by others. There was a low degree of visual and phonetic similarity between the marks for both the English-speaking and non-English-speaking public and. as for non-English-speakers, there was no conceptual similarity between them either. Accordingly there was only a low degree of similarity because of the difference in their conceptual (lack of) meaning. Finally the Board of Appeal found, in contrast to the Opposition Division, that the inherent distinctiveness of the earlier mark was normal for the non-English-speaking public, and lower than average for the English-speaking public.

Today Beyond Retro's application to annul the Board of Appeal's decision was upheld. According to the General Court:
89 ... it is apparent ... that the Board of Appeal’s analysis regarding the comparison of the signs was also carried out with regard to the English-speaking public. The Board of Appeal found, as it did in respect of the non-English-speaking public, that there was a low degree of visual and phonetic similarity. By contrast, as regards the conceptual comparison, unlike what it found as regards the non-English-speaking public where it concluded that there was no conceptual similarity, the Board of Appeal found that there was a low degree of conceptual similarity between the marks at issue.

90 That latter finding concerning the conceptual aspect of the comparison might, to a certain extent, have been capable of giving rise to a change in the Board of Appeal’s findings on the likelihood of confusion with regard to the English-speaking public compared with the other part of the relevant public.

91 That analysis is not capable of being called into question by the fact that the Board of Appeal also categorised the distinctiveness of the earlier mark as lower than average in respect of the English-speaking public, as OHIM maintained at the hearing. The global assessment of the likelihood of confusion implies, for the Board of Appeal, not only taking into account the distinctive character of the earlier mark, but, above all, weighing up the various relevant factors regarding the similarity of the goods and that of the signs and their interdependence, as is apparent from settled case-law ...

92 The statement of reasons for the contested decision does not show that the Board of Appeal carried out a global assessment of the likelihood of confusion as regards the English-speaking public. That omission, as regards a legal consideration having decisive importance in the context of the decision, makes it impossible to understand, in a clear and unequivocal manner, the conclusion attached to the reasoning followed by the Board of Appeal in its assessment of the likelihood of confusion concerning that public.

93 In that regard, ... the Board of Appeal failed to provide a sufficient statement of reasons.

94 It follows that the contested decision, in so far as it concerns the goods in Classes 18 and 25, is unlawful on account both of the infringement of Article 8(1)(b) of Regulation 207/2009, as regards the existence of a likelihood of confusion with regard to the non-English-speaking public, and of the infringement of the obligation to state reasons, as regards the global assessment of the likelihood of confusion with regard to the English-speaking public.
While she is not normally a betting Kat, Merpel is confident that we have not yet heard the last of this litigation.

Special 301 Report's special one is Italy this year: are administrative enforcement models the way to go?

Via a very special Katfriend and friend of this Kat's, comes the news that today the Office of the US Trade Representative (USTR) released its 2014 Special 301 ['301' as per Section 301 of the Trade Act 1974 as amended] Report

As IPKat readers will probably know and as Wikipedia explains, this annual report first published in 1989 [see here for last year's one] identifies trade barriers to US companies and products due to IP laws in other countries, and - among other things - includes a list of countries which do not provide "adequate and effective[Merpel knows that there are things that are effective but may not be adequate, yet wonders whether also the other way around is possible] protection of IP rights.

This year's Report identifies a wide range of concerns of the Obama Administration, including: (a) the deterioration of IPR protection, enforcement and market access for persons relying on IPR in a number of trading partners; (b) reported inadequacies in trade secret protection in China, India, and elsewhere, as well as an increasing incidence of trade secret misappropriation; (c) troubling 'indigenous innovation' policies that may unfairly disadvantages US rightholders in China; (d) the continuing challenges of copyright piracy over the internet in countries such as Brazil, China, India, and Russia; (e) market access barriers, including non-transparent, discriminatory or otherwise trade-restrictive measures, that appear to impede access to healthcare; and (f) other ongoing, systemic IPR enforcement issues in many trading partners around the world.

USTR finds that trade secret
protection remains an issue,
especially when it comes
to cat food recipes
Bad news first. In 2014 10 countries are on the Priority Watch List and 27 countries are on the Watch List. Several countries, including Chile, China, India, Indonesia, Thailand, and Turkey, have been listed every year since the Report’s inception.

Now: the good news. Since 1989, there has been significant progress in IP protection in a variety of contries, such as Korea [yet Merpel suspects that the Korea the Report has in mind is South Korea], Australia, Israel, Japan, Qatar, Spain, Taiwan, the United Arab Emirates, and Uruguay. 

This year, two countries have been removed from the Watch List for the first time. They are the Philippines and Italy.

The former has been removed on consideration of the "sustained actions that the Philippine government has undertaken to improve intellectual property rights protection and civil and administrative enforcement". 

This Kat's native land Italy has been removed "in recognition of its latest effort, addressing copyright piracy over the Internet." 

Of course, what the Report has in mind is adoption by this blog's favourite administrative authority, ie AGCOM [#GoGoAGCOM], of its "long-awaited regulations [here] to combat copyright piracy over the Internet." 

enforcement in progress
Still according to the Report, "[t]he regulations, which entered into force on March 31, 2014, provide notice- and-takedown procedures that incorporate due process safeguards and establish a mechanism for addressing large-scale piracy [click here for a Katreport on AGCOM's first blocking order]. The adoption and entry into force of these regulations is a significant achievement, resulting from intensive efforts over many years, which the United States strongly welcomes. We look forward to continuing to work with Italy on our shared commitment to IPR protection and enforcement, and will closely monitor Italy’s implementation of these regulations."

Considering USTR's enthusiasm for Italy's enforcement reform [also acknowledged by IFPI in its 2014 Digital Music Report, noted here], the question now is whether this model will be imported by other countries around the world. In other words: is (usually faster) administrative-based enforcement of IP rights - especially copyright - the way to go? 

This Kat suspects that other countries in Europe and elsewhere may envisage adopting solutions similar to AGCOM's regulations. To find other examples, it may be sufficient to look at current Spanish IP reform plans or site blocking in Malaysia. In all this, however, it is also quite interesting to recall that in its very recent 2-week public consultation on online copyright enforcement, Singapore acknowledged the need for improving the enforcement framework, yet rejected graduated response and administrative models, in that they "may not be suitable in Singapore's context as they are too intrusive on internet users".  

BREAKING NEWS: here are further excerpts from draft impact assessment on review of EU copyright

A couple of days ago this Kat reported that Statewatch made available a link to the Commission's draft Impact Assessment (IA) on the modernisation of the EU copyright acquis [here and here]

That document was not complete, and so today the same source has made further excerpts available. 

These concern:
This Kat will now read all these leaked texts and report on them soon. In the meanwhile: enjoy the reading!

Tuesday, 29 April 2014

Gold Bear wars (.... what the OLG Cologne said)

An update on the Haribo vs Lindt Gold Bear trade mark dispute (see the earlier IPKat post here).  The Higher Regional Court of Cologne has now published its decision (see here; case reference: 6 U 230/12  of 11 April 2014) in which it disagreed with the Regional Court of Cologne (Landgericht Köln) and found the bears not to be similar.

Lindt's teddy
By way of background:  upholding a claim brought by confectionery manufacturer Haribo, the Regional Court of Cologne in December 2012 (Regional Court of Cologne, 33O 803/11) decided that Lindt's three-dimensional gold-foiled chocolate bears amounted to an infringing ‘visual representation’ of Haribo's well-known GOLDBÄREN (in English Gold Bear) gummy bear word marks.  While the court had acknowledged that Lindt did not use the word sign GOLDBÄREN , it held that the sight of the shape of Lindt's three-dimensional chocolate bears inevitably produced connotations with Haribo's bears, which could result in a dilution of Haribo's trade mark rights.   The Regional Court expressly noted the significance of the legal issues raised since there had so far been no decision by the German Federal Court of Justice (Bundesgerichtshof, short BGH) on the question of a conflict between a word mark and a three-dimensional product design.
The original gold bears
In its appeal decision Higher Regional Court of Cologne  – in essence – agreed with the defendants.  Yes, said the judges, theoretically a word trade mark, such as ”Goldbär” (gold bear), could be infringed by a three dimensional shape, such as the defendant's chocolate teddy.  However, this could only be the case where the sign (here: gold bear) was the obvious, unforced, self-contained and distinctive title and thus the closest and most fitting description of that shape sign.  The judges did not believe that this was the case here and explained that there were several additional levels of abstraction that separated the Chocolate teddy shape from the Goldbär word mark.  Further, the overall impression conveyed by Lindt's teddy was not only based on its shape and colour but also affected by the imprints "Lindt" and "Lindt-Teddy" and the Lindt logo. Consumers would regard the word element "Lindt-Teddy" in particular as an indication of origin, bearing in mind that the "Lindt-Teddy" was a seamless addition to the Lindt Gold Bunny product line.  The court disagreed with Haribo's view that Lindt had not taken unfair advantage of Haribo's Goldbär by "approximating" its Lindt teddy to Haribo's gold bears in order to exploit the expectations of quality that consumers associate with Haribo's bears.  The judges explained that the defendants were well known confectionery manufacturers and the allegedly infringing product was an obvious addition to its own product line.

An interesting case that will - without much doubt - make it all the way to BGH (Off with all their heads...?! ... the bears' that is, not the judges...)

"It felt like ... copyright infringement"

Here's another guest post by fellow blogger and NY-based attorney Marie-Andrée Weiss (you can check out her previous guest Katpost here) on one of those tricky, sticky, United States cases in which copyright and human rights get a bit entangled.  So, here goes:

Judge Daniel, in the U.S. District Court of Colorado, recently dismissed a claim that the right of publicity of a same-sex couple had been violated when a organization used their engagement photograph on mailers supporting its anti gay-marriage agenda. The copyright infringement claim, however, survived. The case is Kristina Hill, Brian Edwards and Thomas Privitere v Public Advocate of the United States, Civil Action No. 12-cv-02550-WYD-KMT

Brian Edwards and Thomas Privitere became engaged in December 2009. They hired Kristina Hill, a professional photographer, to take their engagement pictures. They posted the pictures, with Ms Hill’s permission, on the blog they had created to share information about their upcoming wedding. One picture showed the couple facing each other, holding hands and sharing a kiss, with the New York skyline in the background.

This picture was used in 2012, with the permission of neither the couple nor the photographer, by Public Advocate, a Colorado-based organization opposing same-sex marriage, to create two mailing cards. One card, criticising Colorado Republican Senator Jean White, who had publicly supported same-sex marriage, showed a picture of the couple on the front but replacing the New York skyline with snow-covered pines trees. The caption asked “State Senator Jean White’s Idea of Family Values?” Public Advocate used the same photograph and process to create a similar card targeting another Republican Colorado Senator, Jeffrey Hare, who also supported same-sex marriage.

The couple and the photographer filed suit in April 2013 against Public Advocate and several other defendants who, they claimed, had participated in the mailing card project. The complaint asserted two counts, copyright infringement and appropriation of name or likeness. The defendants moved to dismiss the claim.

Right of Publicity and Freedom of Speech

The right of publicity is the right to prevent the commercial use of one’s identity. It is not protected by any federal law, but is protected in some U.S. states either at common law or by statute.  In order to prevail in Colorado in a claim for appropriation of name or likeness, a plaintiff must establish both that the defendant used the plaintiff’s name or likeness and that the use was for the defendant’s own purposes or benefit, commercially or otherwise. However, the plaintiff will not prevail if the defendant’s use of the plaintiff’s name and likeness is protected by the First Amendment. Here defendants claimed that their use of the photograph was protected by the First Amendment, and the judge agreed.

The Colorado Supreme Court recognizes that the First Amendment allows the likeness of someone to be used in a publication, if the matter discussed is either newsworthy or of legitimate public concern. Judge Daniel found the issue of same-sex marriage to be a matter of public concern, noting that, when the cards had been mailed, Colorado had not yet enacted its 2013 law authorizing same-sex marriage.

The purpose of the publication must be primarily non-commercial in order to be protected by the First Amendment. The court found this use to be non-commercial, reasoning that even if some of the cards’ recipients may have been thus incited to donate money, it would only be a “collateral effect.” The court thus found that the defendants’ use of the couple’s name and likeness was protected by the First Amendment, and dismissed the claim with prejudice.

No Fair Use of the Photograph

Judge Daniel however denied the defendants ‘motion to dismiss the copyright infringement claim, which will now proceed.

The defendants had argued that their use of the photograph was fair use. Section 107 of the Copyright Act allows a work protected by copyright to be used without permission for several worthy purposes, such as for comment or criticism, and cites four factors which can be used by the courts to decide, case by case, if a particular unauthorized use is fair: purpose, transformation, what is taken, and effect on the market.

The first factor directs the courts to look into the purpose and character of the use, including whether such use is for “nonprofit educational purpose.” The defendants argued that their use was fair because it was educational, as it was part of their effort to inform Colorado voters about “traditional family values.” But the court was not convinced because ‘education’ should be interpreted as referring to the type of education done in schools.

The court was not convinced either by defendant’s arguments that the use was ‘transformative.’ This is an important issue, as the Supreme Court held, in Campbell v Acuff-Rose Music, Inc. (1994, here), that “the more transformative the new work, the less will be significance of other factors, like commercialism, that may weigh against a finding of fair use.” The court noted that defendants “merely took the lifted portion and superimposed it on a mailer.” Changing the background was not sufficient to make it transformative enough to be protected by fair use.

Under the second fair use factor, the nature of the work, the more creative the work, the less likely it is that allegedly infringing use is fair. Judge Daniel found that the original work was creative and that, therefore, this factor did not play in defendants’ favour.

The third factor examines the amount and substantiality of what is taken and compares it to the copyright work as a whole. However, the qualitative nature of the taking is more important than the quantity of the taking for the courts. Here Judge Daniel found that the defendants “used the focal point, the most important portion of the photo: Edwards and Privitere holding hands and kissing,” even though that particular portion amounts for only 20% of the entire picture, so the third factor also did not play in their favour.

As for the fourth factor, the effect on the market, the judge left it for the remanding court to decide, since a decision on this issue warrants more evidence. As for the effect on the defendant’s situation, one can imagine that ‘heartbroken’ could still describe it. Sometimes it is very hard to love the First Amendment.

Stay close, but keep your distance? No paradox really ...

King's College, London: putting an interesting
slant on the teaching of copyright ...
It's no secret that this Kat has a soft spot for the King's College, London, Distance Learning programmes for copyright, programmes to which he has alluded from time to time on this weblog and elsewhere. Is it because he doesn't have to teach it? No. And it's not because of his initial cynicism, as a traditional hands-on, face-to-face IP teacher, as to whether any distance learning course might succeed at all. No, it's because he has had an opportunity to speak to some of the good folk who, through no fault of their own, have actually chosen to study copyright through an eight-month distance programme and who have come out at the other end of it not only unscathed but, as far as can be ascertained, as happy, contented, well-adjusted individuals who have even enjoyed and benefited from it.

Pub-goers experience a distant footie match
It seems quite appropriate that, of all subjects, knowledge of copyright should be distributed at a distance. Some things can only be enjoyed at close quarters: a good whisky (or, if you prefer, whiskey); the subtle fragrance of an exotic scent; and other things that are best not mentioned on a weblog read by the young and innocent.  Copyright however is the legal right that imbues its subject matter with the facility of being experienced at a distance.  We can experience the chill of the Arctic in movie classics like the soon-to-be-remade thriller Ice Station Zebra without having to visit the Arctic; we can watch broadcasts of football matches from the comfort of our favourite, doubtless licensed, pubs; we can curl up with a good story to read without having to curl up with the author too. And, if we are naughty, we can infringe other people's copyright at a not inconsiderable distance by file-sharing or by making endless perfect digital reproductions on our PCs and other copy-friendly devices.  So, if you want to get to grips with copyright, just like the works protected by it, you don't have to get too close in order to do so.

Cosy consumption -- at a distance
What, then, is King's offering? There's a choice of postgraduate Diploma or Masters courses in UK, EU & US Copyright Law (and there's even some French and German law thrown in for good measure). The faculty consists of a number of Katfriends, led by Tanya Aplin (Professor of Intellectual Property Law, King's College London).  Other contributors are the legendary Adrian Sterling (Professorial Fellow, Queen Mary Intellectual Property Research Institute and Visiting Professor, King’s College London), Trevor Cook (WilmerHale, New York), Robert Burrell (Professor of Law, The University of Sheffield and Winthrop Professor of Law, University of Western Australia), Brigitte Lindner (Serle Court,  London), Pascal Kamina (Professor of Law, University of Franche-Comté), William McGrath (Davis McGrath LLC) and Makeen Makeen (Senior Lecturer in Commercial Law, School of Oriental and African Studies, University of London).

If you want to know more, here's where you click.

The course, which commences on 1 October 2014, is handled by IBC, who can't offer a discount to IPKat readers since the course belongs to King's, but who promise to be extra nice to anyone who quotes VIP Katcode FKW12324IPKL when applying.

Monday, 28 April 2014

Monday miscellany

Ending soon. Last week's Wednesday Whimsies mentioned that Edward Elgar was running a World Intellectual Property Day Celebratory Sale of books in its Research Handbook in IP series. This Kat noted that the publisher didn't mention when this special offer ended.  He has now learned from Edward Elgar that the offer remains open till close of play this Friday, 2 May.

Coming soon. Katfriends Toe Su Aung and Chris Oldknow are setting up a new venture, Elipe [Wow, says Merpel, there are so many ways you can pronounce it: is it two syllables or three?]. Elipe is billed as a dedicated service that nobody else is providing in IP –  helping companies to get much more out of their IP portfolio, cases and anti-counterfeiting strategy through active government and media engagement. Says Toe Su "We are not an IP law firm, we are not a broad public affairs firm – we support IP issues through focused engagement with government bodies, other companies and media".  More details are promised. 

Handy in the office, too!
Soon to be yours? Calling law firms in England and Wales: can you offer an opportunity to an ambitious, focused Katfriend and IP enthusiast who is looking to transfer the remainder of a training contract to another law firm? Storm-toss'd by recent events within the highly competitive legal services sector, this efficient and capable soul is looking for a minimum one year contract in private practice or in-house, in which to continue to develop a career in intellectual property (copyright, trade marks, designs), media, and branding. This particular Katfriend has an interesting and varied background, providing strong commercial awareness of branding and rights exploitation, coming with two years of genuine experience as an Assistant Trade Mark Attorney practising in trade marks and copyright, a Post-graduate Certificate in Trade Marks and Intellectual Property Law, experience as a Record Label Assistant, marketing for a book publisher and an international film festival, and Music Editor for a tween magazine [yes, really!]. As a trainee solicitor, this deserving case has already completed a six month seat in contentious work, and the compulsory core modules/assessments of the Professional Skills Course. If you think that you can assist this Katfriend, and would like sight of full CV and references, please email the IPKat at and details will be duly supplied.

Around the weblogs.  The jiplp weblog features not just the full list of contents of JIPLP's Special May Edition on indigenous intangible property rights but also the guest editorial by Keri Johnston and Marion Heathcote.  Elsewhere, the 1709 Blog hosts a guest post by Valentina Torelli on a Spanish ruling that will leave copyright owners wondering why everyone thinks they are so over-protected -- it's the same case that the IPKat hosted Carlos Garcia Berned's little note on, here.  There's also a gentle plug for Information Influx from Joao Quintais and Christina Angelopoulos. IP Draughts harbours a thoughtful piece by Katfriend Mark Anderson entitled "Introducing Background IP to a research project: what does it mean?" If you don't know what it means by the time you've read it, demand your money back.  Finally, SOLO IP has fired off a trilogy of fresh posts which you can check here ('Colouring in Trademarks'), here ('Licensing as a Solo Occupation') and here (''The Secret World of CTMR Article 82).

Prometheus bound -- to cause interest in patent circles, that is. This Kat has it on good authority that, a little over a week from now, his good friends at the Chartered Institute of Patent Attorneys are holding a seminar, "Update on the USPTO practice in the light of Myriad and Prometheus". Subtitled "Practical advice for The New World in US Biotech" [now that's daring, says Merpel. Can you imagine any organisation in the US running the strapline "Practical advice for The Old World ..." and getting away without a gentle roasting?], the venue is CIPA Hall, 95 Chancery Lane, London, WC2A 1DT, and the cast consists of Kristina Cornish (Kilburn & Strode, in the chair), Simon Wright (J.A Kemp & Co.) and Mercedes K. Meyer (Drinker Biddle & Reath LLP). Details are available here.

Steaming or streaming? When Fire's too hot to handle. Via veteran katpat-ee Chris Torrero comes a link to "Amazon under Fire: Porn firm sues retailer over the name of its TV streaming device", spotted in the Daily Mail, here. It seems that some poor innocents might come to confuse Amazon's Fire TV with a steaming porn streaming service.  Damages for trade mark infringement are apparently being sought in what Fyre's publicity (left) suggests will be something of a litigation novelty: a Three-Day Free Trial. Better than cost-capping ...

Consumer Concerns cause Consultation on Copycat Crackdown: a Parasitic Product Packaging Private Prosecution Power?

With apologies for using enough Cs and Ps to exhaust a jumbo bag of Scrabble tiles, this one is about lookalike products and the powers that brand owners have to address them. The UK government is considering bolstering those powers and is now calling for evidence on the proposal.
Unfair Consumer Practices – limits on enforcement
Photocopying is expensive largely due the costs associated
with removing the frequent jams caused by cats
When the UK government implemented the Unfair Consumer Practices Directive (the UCPD) in 2008 by way of the Consumer Protection from Unfair Trading Regulations 2008 (also known as the CPRs but not to be confused with the litigator’s beloved bible, the Civil Procedure Rules), it left enforcement of the CPRs to a series of “specified enforcers” which despite sounding like a piece of mafia nomenclature, generally means local authority Trading Standards officers or what is now the Competition and Markets Authority. The UK government declined to give rights owners a private, civil right to bring action for injunctive or other relief in the civil courts. With the resources of the specified enforcers being fairly limited (and in the age of austerity, even more limited), aggrieved parties had little option but to report the offending conduct and hope the enforcers did something about it. This may now change.
What are the CPRs?
The CPRs criminalise unfair commercial practices which are, amongst other things, misleading actions or omissions or “aggressive” actions. The CPRs include a blacklist of practices at Schedule 1, which features “Promoting a product similar to a product made by a particular manufacturer in such a manner as deliberately to mislead the consumer into believing that the product is made by that same manufacturer when it is not.” European Commission guidance on the UCPD raises in this context the problem of copycat packaging. The mischief is probably familiar to readers – creating a lookalike product which borrows the general “look and feel” of a market-leader so as to, one way or another, induce consumers to buy the copycat instead. Copycat products may confuse consumers, but they may also create an association without confusing and induce purchases by appropriating a degree of the goodwill or reputation of the copied product (the British Brands Group produced a presentation in 2012 with a great selection of examples of copycat products, you can find it here).
A crackdown on copycat products?
I see what you did there!
Having received “strong representations” from certain unspecified industry sectors, the Department for Business, Innovation and Skills (the BIS) has got wind that copycat products are a problem and that there is a gap in brand owners’ enforcement powers to deal with them. One such problem is, as noted above, that the businesses who suffer (along with consumers) from the effects of copycat products have no power of their own to intervene under the CPRs. The BIS has now launched a consultation calling for evidence on nine issues including:
1.    The nature and scale of any problems associated with the current enforcement arrangements.
The enforcers have indicated to the BIS that they do not see copycat packaging as a particular problem, and not one that deserves priority over detrimental practices. Are they right? (doubt it, growls Merpel).
2.    The extent of any consumer detriment arising from copycat packaging.
The BIS notes the UK Intellectual Property Office’s research report discussed here and asks for comment.
3.    The equivalent enforcement provisions existing in other Member States and how they have worked.
The BIS notes that Ireland already gives brand owners the right to apply for civil remedies for infringements of all of the UCPD. It would be interesting to know how many times that right has been exercised.
4.    The costs and benefits of giving businesses the right to take civil (injunctive) enforcement action against copycat packaging, including any effects on competition and innovation.
The BIS note that “There is a fine line between confusing packaging and using generic cues to provide useful signs to consumers” (nicely put, remarks Merpel).
5.    How the power would work and what impact might there be on the way in which enforcement of the CPRs operates in the UK.
6.    What legal changes might be needed to provide businesses with the right to take civil (injunctive) enforcement action against copycat packaging, including defining the practice covered by the private right of action in order to capture what is intended without providing too broad a power.
The consultation is restricted to considering the case for providing businesses with a power to take civil injunctive action against copycat packaging and does not address other aspects of enforcement of the CPRs including a wider enforcement power for businesses.
The consultation is open until 19 May 2014. The next stage will be “an interim report for further discussion with interested parties”.
Isn't this what IP rights are for?
Imitation is the sincerest form of flattery
Let’s not forget that the CPRs are just a fairly small part of the brand owner’s existing brand protection arsenal. Trade marks, passing-off, design rights and copyright can all be relied upon to stop misleading, confusing and other dubious commercial practices including counterfeiting.
Product packaging is often protected by a mix of trade marks, registered (or unregistered) designs and goodwill, with the final of these three having a good degree of in-built flexibility via the law of passing-off. That said, each has its limits. Lookalikes tend not to use the same brand name – they are not counterfeits. Instead they take elements of the get-up: shape, colour, juxtaposition of geometric design, and so on. Those may not always be protected by registered trade marks or designs. Passing-off succeeded in the famous Penguin vs Puffin litigation, but along with “traditional” trade mark infringement needs evidence that consumers will be mislead or confused. Many forms of lookalike packaging do not confuse, but still take sales away from the copied product by reason of their similarity. Trade mark law does, of course, protect against the taking of an unfair advantage, but only where the right marks are registered and they are sufficiently well known to enjoy a reputation.  
This Kat very much recognises the problem of lookalikes, and thinks that some culprits have been getting away with brand-murder for years. He also suspects that a lot of this is down to commercial decisions, rather than legal limitations, with brand owners acutely aware that many of the most prolific copycats are also their biggest customers. Wouldn’t a change in attitude on the brand owners’ part have a bigger impact than the proposed change in the law? Or will things only improve with both? As always, comments are welcomed.
Thanks to my colleague Jack Rutherford for drawing the consultation to my attention.

Fordham 2014: TTAB session

Smart contributor
The IPKat, who -- despite his most strenuous efforts --  could not be in more than three places at the same time -- is hugely grateful to Gordon Humphreys (Office for Harmonisation in the Internal Market Mediator and Board of Appeal member, right) for donning cat-mask and whiskers at last week's Fordham IP Conference [for details of which see today's earlier post here] and producing the following report for us on a session which might otherwise have gone unnoticed by many of the aliens non-USians present.  Writes Gordon:
On Friday 16 April at the Fordham IP Conference a large slice of the morning session on trade marks was given over to the work of the United States Trademark Trial and Appeal Board (TTAB).

Chief Judge Gerard F. Rogers set the scene with a presentation on how the TTAB had tried to combat increases in the opposition workload in 2010 that had led to backlogs in 2012 and 2013. Having explained that these problems had been caused by a combination of increases in trade mark examinations, the discovery process and delays caused by extensions and suspensions of proceedings, the TTAB had taken the initiative in making opposition proceedings more proactive. For example, phone conferences are now extensively used to resolve discovery, a standard protective order has been created, the online Electronic System for Trademark Trials and Appeals (ESTTA) system is used to access electronic files and email service is now permitted. In addition, the notice of reliance has been adapted to allow for internet evidence and the TTAB issues 40-50 precedents every year that are widely circulated among staff. Another interesting development was that the TTAB has been busy updating its manual of procedure, which is now done annually and leaves sections available for comment. Annual round tables with stakeholders on performance measures and accelerated case resolution (conducting deposition proceedings in writing rather than orally) are also some of the other 'added value' measures that the TTAB has brought to opposition proceedings.

Smart Balance
The next part of the session consisted of a live TTAB opposition hearing held at Fordham Law School's moot court room. Judges Rogers, Masiello and Ritchie sat in the hearing. In this live opposition the mark 'Smart Balance', used for 'butter substitutes' and for which extension to frozen food was sought, was contested by the owners of the mark 'Smart Ones' for 'frozen food entrées'. Unsurprisingly, much of the argument centred on whether 'Smart' had been shown by survey evidence to be unimportant in trade mark terms through common use. The TTAB judges also heard arguments on the various connotations of the composite words both individually and as a whole.

Smart Ones (that's smart
phones" without the "ph" ...
Concepts familiar to European practitioners of 'dominance', needing to look at the whole and not 'slice and dice', the level of sophistication of consumers in terms of purchasing decision and the closeness of the goods in the grocery store were also examined. What stood out was the apparent importance of survey evidence of brand loyalty, percentage-rated likelihood of consumers based on expert evidence, evidence of coexistence on the market and testimonies as well as sales and advertising expenditure and internet evidence. Issues of coaching of survey subjects, errors and admissibility of evidence were also discussed.

Smart witness
There then followed a TTAB judges' panel at which Jeffrey A. Handelman of Brinks, Gilson & Lione of Chicago asked the TTAB judges for practical tips for practitioners. Some ideas that were put forward were to use the brief as a road map for the TTAB, make sure that facts that need to be proved are proved and amend the pleadings as appropriate. The TTAB also cautioned about placing too much emphasis on real world use of goods and services (except where fame or third party use is involved). Finally, it was pointed out that oral argument should be designed to enable the TTAB to 'get a handle' on highly technical goods or services and that depositions should make sure that witnesses answer in complete sentences and that compound questions should be avoided.

The final part of the morning's session was a comparison between TTAB and OHIM opposition practice. Gordon Humphreys gave a short account of how OHIM's Boards of Appeal follow their written procedure, involving the deliberation and drafting process, emphasizing that the linguistic challenges posed by the EU: 28 have to be factored in, when for example one of the marks is meaningful in a particular language. Robert L. Raskopf of Quinn Emanuel Urquhart & Sullivan, New York, saw the European system as a rather alien world where much would be lost through the inability to seek discovery or cross-examine witnesses. Prof. Dr. Peter Ruess of International School of Management, Frankfurt and Arnold Ruess, Düsseldorf, [this is actually just one person, explains Merpel, and he's called Peter -- but he's very clever and does seem to have two brains] tried to reconcile the two systems by pointing out that they both offer relative advantages and inconveniences, particularly that in much of Continental Europe it is relatively inexpensive to litigate with the result that even some quite small towns in Germany have a multitude of judges and cases. He also pointed out that most German judges would not be impressed by evidence of actual confusion of members of the relevant public [Is that because they require better evidence than evidence of actual confusion, which would be impossible to supply, Merpel muses, or because they still believe that confusion is a state of law and not a state of fact? ]. Prof. Marshall Leaffer of Maurer School of Law, Indiana University also spoke about his experience of the US system, pointing out that its cost and complexity - particularly in discovery - perhaps meant that there could be something to be learnt from simpler, more inexpensive ways of doing things. Prof. Jeremy Sheff of St. John's University School of Law, New York was also interested in drawing drawing on strengths from the two systems.
Tailpiece: If you like the TTAB, you'll just love John L. Welch's TTABlog, here.

BREAKING NEWS: draft impact assessment on review of EU copyright made available

A bit of spice just added
to Claire's peaceful morning,
courtesy of EU Commission 
Statewatch has just made available a link to the Commission's draft Impact Assessment (IA) on the modernisation of the EU copyright acquis [here and here]. Is this the already famous Commission's White Paper that Commissioner Barnier referred to in a tweet in February last?

Although this Kat is not so sure that this document is also 'freely available' on the Commission's website in the Svensson sense, it is nonetheless an interesting reading considering the good deal of attention [and responses: 11,117 according to Commission's Twitter sources] that the Public Consultation on the Review of EU Copyright Rules [here] has attracted. 

The IA is still a provisional version to be finalised in light of responses to the Public Consultation.

Among other things, the IA includes an overview of the legislative and non-legislative policy options that the Commission has been considering. These are:
  1. "Relying on the market to improve the availability of content online, on Member States to take full advantage of the policy space available under the current legal framework [= doing nothing], and on the courts [read: the Court of Justice of the European Union] to clarify provisions of the Directives relevant to the development of new uses and services."
  2. "Commission guidance [= soft law, eg Commission recommendations, MoUs, white, green and other colourful papers] to Member States as well as to market players, in line with the current legal framework, coupled with support for market initiatives [such as Licences for Europe?] and/or market monitoring."
  3. "Legislative intervention aimed at achieving a much deeper level of harmonisation than is currently the case, clarifying the framework for some new uses and services and achieving a more systematic cross-border effect [= re-opening the copyright directives, notably the InfoSoc Directive]."
  4. "[A] European Copyright Code would be developed. the Code would establish a unitary title  (covering the whole territory of the EU) replacing national ones." 
From what this Kat heard at the Fordham IP Conference last week, she would bet that the Commission goes for Option 2. But let's wait for the final version of the IA ... 

For those of you who have just returned from your Easter break ...

Last week saw a good deal of activity on this weblog, which coincided with a good deal of inactivity on the part of many of our readers who took the opportunity to have a bit of a holiday break.  Accordingly the IPKat, after due consultation with Merpel, thought it might be a good idea to welcome you back with a quick update.

Three Kats and friends at the opening of this year's Fordham event
Three Kats (Jeremy, Annsley and Eleonora) attended this year's Fordham Intellectual Property Conference -- an event which we cannot recommend highly enough.  The participants are drawn from some of the leading members of the judiciary, in-house and private practice and academe and the two days are devoted to an intensive pursuit of a deeper understanding of IP. Here you get a warm appreciation of the golden glow of IP at its finest, and also a dark intimation of what IP law produces at its worst.  No-nonsense, highly-focused presentations are closely followed and finely analyses. Anyone presuming to misappropriate more than his allotted number of minutes (anything between 8 and 15) is unceremoniously guillotined. It's an environment in which no holds are barred, no questions are off-limits, no quarter spared.  Hugh Hansen, inventor of the Fordham formula and pretty well synonymous with it, has done the IP community an immense favour by coining this template, and we Kats thank him gratefully for having done so.

The following sessions of this year's conference were noted on this weblog:
  • Multilateral and FTA (that's Free Trade Area) Law and Policy, here
  • IP Leaders here
  • Enforcement issues here
  • Trade Mark Law and the CJEU here
  • Multilateral developments here
  • Perspectives from Intellectual Property Pioneers here
  • The European Unitary Patent and the Unified Patent Court here
  • General Counsel Roundtable, by Annsley, here
  • IP industries' contribution to economic performance and the public's opinion thereof here
And here are some sessions that were noted by members of the IPKat team on other blogs:
  • Fair use and freedom of speech (1709 Blog, here)
  • Copyright revision round the world (1709 Blog, here)
  • Copyright enforcement (1709 Blog, here)
  • Aereo (1709 Blog, here)
  • General Counsel Roundtable, by Jeremy (IP Finance weblog, here)
  • SPCs (The SPC Blog, here)
  • Trade marks at Fordham (Class 46, here)
Two further reports are still to come.  One covers the session on developments before the US Trademark Trial and Appeal Board. This report, which has been kindly prepared for us by OHIM Mediator, Board of Appeal member and regular Fordham participant Gordon Humphreys, will be posted within the next day or so.  There will also be a report on the inter partes review procedure in US patent law.

For those whose interests extended beyond Fordham, we ran the following posts last week, which may have been a bit swamped by all those Fordham postings:
  • Tuesday Titivation (a brief round-up by Darren S), here
  • Pipcu prevails, counterfeiter calamities and now YOU can be a trade mark 'intern' on your smartphone! (a trilogy of anti-piracy titbits from Darren M), here
  • “Quentin, come here!” -- a plea for Tarantino’s copyright litigation in Europe (a bit of typical creativity from Alberto), here
  • Wednesday whimsies, as usual ... here
  • The EPO Rules on Strikes Revealed to Merpel, here
  • BREAKING NEWS: AGCOM issues the first fastissimo administrative blocking injunction (Alberto again, this time in serious mode, here)
  • Spanish Napster defeats music majors (posted by Alberto for guest contributor Carlos Garcia Berned, here)
  • Phil & Ted's Most Excellent Buggy Company Limited prevails in patent dispute on baby buggies (a Most Excellent analysis by Darren S, here)
  • Own Your (Trade Mark) Power! A fascinating glimpse into the world of US celebrity litigation, posted by ?Jeremy for guest blogger Marie-Andrée Weiss, here
  • Smartphone brands: cachet or commodity? Neil's Thought for the Week, here
Things should be getting back to normal now. Our apologies to those readers who felt a bit bombarded by Fordham -- and to those returning to work who have had so many emails awaiting them on their first day back.

Have a great summer!

Sunday, 27 April 2014

Smartphone brands: cachet or commodity?

First a quiz—how many Kat readers can identify the following smartphone brands: Wiko, Micromax, Karbonn, Symphony, OPPO, Vivo and Walton? I suspect that few or any of you can do so unaided. Well, neither could this Kat, until he perused an article from the 5 April issue of The Economist. Entitled “The rise of the cheap smartphone”, here, the piece sought to describe the proliferation of smartphone brands being marketed and sold in jurisdictions ranging from France (Wiko) to Bangladesh (Symphony) and various countries in between. In a world where popular perception of the smartphone market begins with iPhone, ends with Samsung Galaxy, with perhaps LG, Nexus and HTC branded phones perhaps somewhere in between, the reality is far removed. While profits are elusive (“Apple and Samsung—the only vendors making much money”, the article states), smartphone manufacturers continue to offer an increasing number of alternatives at lower and lower price points.

As such, the question becomes—to what extent will brand cachet continue to be a material factor in how consumers make their smartphone purchasing decisions? By this I mean the extent to which a given smartphone brand enjoys a consumer premium not based solely and explicitly on the functionality, ease of use, design or price of the product, but rather on some more general and holistic aura that conveys prestige or distinction. The value of brand cachet is often translated into premium pricing power that transcends the objective factors of the device itself. The function of a trade mark is to create a badge of product identity for the consumer; the function of a cachet brand is to turn that product identity into a continuing and oversized commercial advantage. The greatest enemy of brand cachet is product commodification. When this happens, and the various product alternatives are differentiated only on the basis of price, the benefits conferred upon brand cachet disappear.

Against this background, is the smartphone market at the cusp of replicating the trajectory of the PC computer industry towards product commodification and away from brand cachet? Those with grey hair (if any hair at all) will recall that the early 1980s marked the high point of the PC brand. IBM leveraged its trade mark strength in the mainframe segment to turn a product assembled from off the shelf components to a brand that commanded a premium price. Even more dramatically, Apple offered the Mac alternative, promoting the brand almost from inception of the product on the basis of a unique brand image, here. But innovations in product fulfillment and distribution and price ultimately trumped the brand premium that most consumers were willing to pay for an IBM PC (the Mac never enjoyed a large market share). The upshot is that, except perhaps for die-hard Mac aficionados, the PC has become a commodity, with the leading trade marks in the PC world bereft of any cachet quality.

I think that it is fair to say that, for the moment, cachet brands in the smartphone world begin and end with the Apple iPhone (allowing for some debate over the Samsung Galaxy, here)— but no more. The profit margins enjoyed by Apple on its iPhone devices certainly reflect its status as a cachet brand. The threat to this commercially comfortable state of affairs was well-stated in the piece in The Economist, as follows:
In both rich countries and poor ones, cheaper smartphone brands are are making inroads. Demand for pricey phones, mainly in developed economies, is slowing but that for less expensive devices is booming. People buying their smartphone today, perhaps to replace a basic handset, care less about the brand and more about price than the richer, keener types of a few years ago.
We see an explosion of smartphones priced under $100, and even under $80 in many cases. Component costs are decreasing as the functional capabilities of these components continue to improve. On the one hand, this means that an increasing number of smartphones are available at a low price point undreamed of several years ago. On the other hand, these dynamics offer cachet brands and their pretenders the opportunity to create even a wider wedge between the costs to make, ship, market and sell the device and the ultimate premium price willingly paid by the consumer. Moreover, as this cost/price wedge increases, it becomes more attractive for other manufacturers to attempt to market and sell their own semi-premium smartphones at price points that lie between the price points of the low end devices and those at the premium brand level.

As The Economist reminds us, other high-flying smartphone brands have proved to be “brittle”— recall the fate of Ericsson, HTC, Motorola and Nokia. Pricing and the process of commodification proved too much for these erstwhile mobile phone champions. When put to the brand cachet test, none of these brands endured. I can already hear the push-back—“Come on Kat, the smartphone is different from the PC. People relate to their smartphone in a personal way quite unlike the impersonal manner that they relate their PC. At the high end, even at the popular consumer level, there is a status and aspirational element that will continue to be met by cachet brand smartphone products.”

Perhaps, but consider the following anecdote. This Kat recently purchased a smartphone for Mrs Kat. Cachet brands are not her style generally, and so I eschewed them in favour of a smartphone brand that seeks to fit itself between the high and low price points for the product. Her reaction was “thank you, but all I really want is a bit of an upgrade for my 5-year old Nokia.” Commodification, here we come?

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