For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 18 December 2014

A Kat's 2014 Copyright Awards

It's Katwards day!
With the holidays and end of the year quickly approaching, it seems about time to think of what has been and what will be next in the world of the greatest IP right, ie copyright. 

Like last year, this Kat has decided to review the copyright year, and award a number of [symbolic] prizes to the most relevant developments occurred in 2014. Overall it would seem that in 2014 Europe was the place to be, copyright-wise.

So here we go:

Most important copyright decision

This Kat has little doubt: like it or not, it has been the decision of the Court of Justice of the European Union (CJEU) in Svensson [here and here; the Court confirmed its value as a precedent a couple of months ago in its quick order in BestWater].

It has to be said that this judgment has left many disappointed [starting with the Association Littéraire et Artistique Internationalesee here], also because it has probably raised more issues than those it solved. 

In particular, the 'new public' criterion may not appear that straightforward to both understand and apply. Surely there may be some subjective connotation in determining "the public taken into account by the copyright holders when they authorised the initial communication." The question is: how can those who provide links be sure about the intention of the relevant righholder? 

Although it could not be an exaggeration to suggest that one may surely link but do so at his/her own peril, it is hard to think of a case that had a higher potential to affect our daily activities over the internet than Svensson

In this Kat's opinion, surely PRCA (the case about the lawfulness of internet browsing) did not have the same importance as Svensson, notably because at the time of referring it to the CJEU [here], the UK Supreme Court already appeared (rightly) confident to say that, no, you don't need permission to browse the internet.

Most important piece of legislation

Well, this is kind of difficult category to fill in, since this Kat is under the impression that 2014 has not been really busy for copyright legislators.

To be honest, not much has happened in the US, EU and Australia, where most time has been devoted to policy discussion and consultations [hereherehere and here] instead. 

As regards Europe, next year promises to be more exciting: EU Commissioner for Digital Economy and Society, Günther Oettinger, announced that his first initiative will be new copyright legislation. He also added that such legislation "should only cover what no longer works national level". This Kat found this statement a bit hard to understand. IP is an area where the EU and Member States share competences, so surely any initiative at the EU level must comply with the principles of subsidiarity and proportionality?? Anyhow, let's try not to be too pedantic and wait for new developments which, if this Kat had to guess, will concern issues such as private copying levies and licence segmentation, including geoblocking. 

Overall, it would seem that the most exciting place to be in 2014, copyright legislation-wise, was the UK. This was not just because a number of secondary instruments were adopted following the Enterprise and Regulatory Reform Act 2013eg the orphan works licensing scheme, but especially due to the introduction of new exceptions into the Copyright Designs and Patents Act (CDPA).

If this Kat had to choose a particular exception she would go for one of the completely new ones, notably parody, caricature and pastiche. This is for no particular reason if not that fair dealing with a pre-exisiting work for these reasons should not be considered an infringement in the first place. So this Kat is glad that the UK eventually acknowledged that, too.

Mr Justice Arnold
Copyright person of the year [new category!]

This is a new category aimed at acknowledging the contribution of a particular person to copyright law, policy and debate. After wondering whether Taylor Swift could be the copyright woman of the year due to her anti-Spotify public engagement, this Kat thought that there might be someone else who has contributed more to copyright than her this year. 

This person is The Hon Mr Justice Richard Arnold, and is so for a number of reasons which are not limited to all his Arnoldian IP references to the CJEU.

A couple of days ago this Kat wondered whether 2015 would be the year of blocking injunctions. There is probably no other judge who has looked into this issue as thoroughly and seriously as Arnold J has done. Reading something like the judgment in Cartier [here and here] is an antidote to many shabby policy and lobbying briefs that have been circulated lately [see further below in relation to this]

In addition, Arnold J contributed with some (much needed) rational analysis to the debate surrounding both the need for an overhaul of the CDPA and how a good copyright act should be drafted [so this is not just something that concerns the UK]. He did so in the context of the 2014 Herchel Smith Intellectual Property Lecture [see John's report here]. The editors of the Queen Mary Journal of Intellectual Property have informed this Kat that the text of the lecture will be featured in 2015's Issue 2 of the Journal.

You "purchased" this ebook and
- thank goodnees -
you have found your cat:
can you resell the ebook?
Most important unresolved issue

This probably concerns digital exhaustion: can you resell your ebooks, videogames, iTunes tracks? 

Following the 2012 decision in UsedSoft [see here for a Katpoll], debate has ensued as to whether the conclusions that the CJEU achieved under the Software Directive could be extended to the InfoSoc Directive

A number of contrasting approaches have been adopted at the national levels: on the one hand German courts have held the view that, no, there is no digital exhaustion under the InfoSoc Directive; on the other hand, a Dutch court has found that, yes, there is digital exhaustion under the InfoSoc Directive.

In its leaked draft White Paper [here], the previous EU Commission stated that policy initiatives regarding digital exhaustion are still premature [this somehow echoes the state of the debate in the US]. However, if no hints will be provided at the policy and legislative levels, do not despair! The CJEU decision in Art & Allposters is awaited soon: it will be interesting to see if the Court follows the Opinion of Advocate General Cruz Villalon [here, not yet available in English!], and holds that there can only be analogue exhaustion.

Most important policy issue for 2015

This Kat thinks it is blocking injunctions, for the reasons given here.

If only some copyright commentators
were this cute and polite!
What this Kat liked the least

What this Kat is about to say is sadly not limited to 2014, but nonetheless featured prominently during this year. 

It is the despicable partisanship employed in the arguments advanced by a number of vocal characters in the copyright debate. Really, sometimes you attend events aimed at copyright professionals and you hear arguments presented in such gross bad faith, that you wonder whether these, rather than attempts to react to their counterparts' arguments, are plain attempts to offend human intelligence.

This Kat is not going to name and shame because it would be neither elegant nor Christmas-y. However, she is a bit bored  to keep reading accounts on one side or the other about any new copyright developments being either "a serious threat to human rights and user freedoms" or "something that undermines the vary basics of copyright protection, with the result that creators are now starving in the streets".

To people who care about copyright (in one way or another) these arguments sound fairly shabby. Yet, those who advance them feature prominently in the copyright landscape, if not - and quite incredibly to be honest - in the policy-making arena.

Can some civilisation be brought back into the copyright debate at all?

A different Interview,
still starring James Franco
Most important copyright-protected work

In copyright terms this is probably The Interview, and not just because this Kat has always been a huge fan of James Franco. 

As readers will probably know already, this film is about a fictional plot to kill North Korean supreme leader Kim Jong-un.

Sony cancelled the planned US release on 25 December, following both threats of violence and 9/11-like terrorism by the same hackers who carried out a cyber attach on Sony, and the announcement by the five biggest cinema chains in the US, operating 20,000 screens between them, that they would not show the comedy.

Not only did Sony cancel the New York premiere, but also announced that it has no further release plans for the film (which cost $42m), including video-on-demand.

Yet, Netflix may rescue The Interview from cyber-bulling by purchasing it, as Quartz advocated. Of course the challenge would be for Netflix to see if there is any value left in something that has been disseminated over the internet already.

The reasons why this film is the most important copyright-protected work of 2014 is because it reminds us of the importance of freedom of expression (which in this Kat's opinion is not antithetical at all to copyright protection), but also that exploitation of a work is no longer bound to a unique solution, eg cinema screening, but that new forms, eg internet streaming, are available as well. 

Instead of focusing so much on cinema screening or waiting for a hypothetical Netflix deal, Sony could do better and make the film available online for people to watch in the safety of their homes.

What does this suggest? That online copyright is not just about enforcement but also - and perhaps most importantly in a case like this - being able to develop new business models that could help you exploit differently your own works and react quickly to a dramatic changes of circumstances. Overall it is a new world of possibilities: go and seize them, as beloved Robin Williams (who sadly died this year) suggested in a most moving film.

BREAKING NEWS: breakfast ruling on unfertilised eggs

Ova and out! "AG Villalón's parthenotes Opinion in IMC could provide stem cell research certainty (at least for now...)" was the title of a helpful note by Shohta Ueno (an Associate with Allen & Overy's IP Litigation team in London) on the first stage of the Court of Justice's ruling in Case C-364/13 International Stem Cell Corporation v Comptroller General of Patents. This case, following a reference for a preliminary ruling from Henry Carr QC, sitting as a Deputy Judge in the Patents Court, England and Wales, seeks guidance on the following question:
Are unfertilised human ova whose division and further development have been stimulated by parthenogenesis, and which, in contrast to fertilised ova, contain only pluripotent cells and are incapable of developing into human beings, included in the term "human embryos" in Article 6(2)(c) of Directive 98/44/EC on the legal protection of biotechnological inventions?
This morning the CJEU ruled that:
"... in order to be classified as a ‘human embryo’, a non-fertilised human ovum must necessarily have the inherent capacity of developing into a human being. Consequently, the mere fact that a parthenogenetically-activated human ovum commences a process of development is not sufficient for it to be regarded as a ‘human embryo’".
The Curia media release is here. More Kat comments to follow ...

The independence of the Boards of Appeal: Merpel roars again

Still troubled by goings-on
at the European Patent Office
There are many aspects of the recent events (See here and links concerning the suspension of a member of the Board of Appeal, and here and links concerning the strikes and demonstrations) at the European Patent Office that trouble Merpel.  One is the apparent erosion of the independence of the Boards of Appeal.  One of their jobs is to tell the first instance that what they have done is wrong, which inevitably has a negative impact on the procedural efficiency of the EPO.  Given that this procedural efficiency is the stated aim of most of the current reforms introduced by the President that are the subject of so much concern, the continued independence of the Boards of Appeal is vital for all users of the EPO.  The Boards have even condemned as in breach of the EPC those procedures that were hardwired into EPO practice, such as the pro-forma Decisions "according to the state of the file" if the applicant did not want to pursue argument further and just wanted an appealable decision (see for example here).

There are troubling signs that the independence is being eroded, quite apart from the house ban and then suspension imposed by the President and the confirmed by the Administrative Council.  (Incidentally, this was referred to in the Communique as "unanimous", but was it?  Merpel has heard that there were two votes against.  Can this be misinformation?)

Readers may recall that there was a proposal to make the Boards of Appeal more independent of the rest of the EPO.  This proposal for the "Autonomy of the Boards of Appeal" has now been pretty much expunged from the EPO website, but survives here.  This proposal is now seemingly dead in the water.  Merpel has however heard that there are plans afoot to review the position of the Boards of Appeal, and this has been discussed at the "Board of the Administrative Council" (AC) or "Board 28".  This is a subcommittee of the Administrative Council according to Article 28 EPC and is currently composed of:
Ex officio members
  • Jesper Kongstad (DK) (Chairman of the AC)
  • Miklos Bendzsel (HU) (Deputy Chairman of the AC) 
Elected members
  • Sean Dennehey (UK)
  • Serafeim Stasinos (GR)
  • Habip Asan (TR)
Merpel supposes that the current examination of the institutional provisions relating to the Boards of Appeal is headed in the opposite direction from the previous proposal, ie to make them less autonomous.

There are already worrying signs that even the members of the Enlarged Board of Appeal do not consider themselves independent.  Two signatures on the now-famous letter of the EBA to the AC protesting the suspension of the Board of Appeal member were notably missing.  These are the signatures of Chairman of the EBA himself, and the member of the Enlarged Board still working (the other two have retired) who participated in Decision R19/12.  The President of the EPO is reported to have been furious at that decision, which found that an objection to the participation of the Chairman of the EBA on the basis of suspicion of partiality, because of his dual role as vice president of DG3 (the Boards of Appeal), was justified.  Can it be that pressure has been applied to these two persons?

In an interesting development, the Chairman of the EBA is also subject to an objection on the basis of apparent lack of partiality in case R 08/13.  Merpel has seen a submission recently filed on that case, which was available on the electronic case file for a short period before being taken down.  The representatives in that case argue that the non-signing of the letter to the AC by the EBA demonstrates that the Chairman's position as Vice President of DG3 is in conflict with his role as an independent judge.  There must surely be concerns that clear independence is not currently apparent.

Wednesday, 17 December 2014

Wednesday whimsies

A time for GOLDENBALLS ...
The Court of Justice of the European Union (CJEU) will be to all intents and purposes closed from 22 December to 6 January, though this Kat has no doubt that several of the CJEU's judges, and particularly those of the General Court, will be contemplating the wonderful world of intellectual property law for those two all-too-short weeks while they recharge their judicial batteries. Merpel thinks they'll need a good deal longer than a two-week break in future if they find a stream of patent cases arising from the new European patent package heading their way -- but she suspects that most of the current bunch will have retired before that happens ...

"Bake off!" Not a new
euphemistic expletive ...
Around the weblogs. Shireen Smith's Azrights post, "Protection of Television Formats: the Great British Bake Off", is a neat and well-structured piece on a subject that is close to media lawyers' hearts as bake-offs are to their stomachs. Enjoy it here.  Meanwhile, SOLO IP's Barbara Cookson was industrious yesterday, with posts on The Agreed Fee (here) and on the applicability of money laundering regulations to UK patent and trade mark attorney practices (here). On Class 46, Laetitia Lagarde writes up a recent General Court case in which the word mark GENERIA and a figurative mark containing the word GENERALIA come in for a close comparison, here.  The QMJIP blog features a helpful note by Axel Paul Ringelhann on the seconf reference of questions for a ruling by the Court of Justice of the European Union in Amazon v Austr0-Mechanica, another dispute involving "fair compensation" for private copying under Article 5(2) of the InfoSoc Directive (2001/29). Even more helpfully, Axel has translated the Austrian reference into English, which you can consult here (katpat, Axel!).

Politician takes up EPO Englarged Board of Appeal independence issue.  In the House of Commons, Westminster, it appears that a parliamentary question now been tabled in relation to one of this weblog's favourite discussion topics: Julian Huppert (Liberal Democrat Member of Parliament for Cambridge, right) gave notice of the following question yesterday:
"To ask the Secretary of State for Business, Innovation and Skills [currently Vince Cable], what steps he is taking to protect the independence of the Enlarged Board of Appeal of the European Patent Office".
This Kat understands that, End of Year Post-Pudding Syndrome permitting, an answer may be floating down from on high some time around 5 January. Let's see what the Secretary for State says.

Something to read?  The December issue of WIPO Magazine is now available to download here.  If you don't fancy reading it in English, it's available in French and Spanish too. It has some pretty serious stuff in it, and some lighter content too, particularly for anyone who might be contemplating owning a driverless car.  Also published is a fresh issue of The Patent Lawyer, details of which are available here.  Finally, for those who love statistics, the World Intellectual Property Organization (WIPO) has published its tally of facts and figures for patent filing in 2013. A whacking 2.57 million were filed, this representing a 9% increase over 2012 and, in Merpel's opinion, a powerful endorsement of the patent system by its users. Statistics for trade marks, designs, utility models and plant varieties are also available, so enjoy!

Be careful with your requests, especially if you want to appeal

This moggy noticed a report on the Deltapatents blog of a salutary little decision of T 2157/10 from the Technical Boards of Appeal of the European Patent Office, dated 14 November 2014, and posted on 3 December 2014 [so some work is still being done at the EPO, despite the strikes, notes Merpel].

In opposition Oral Proceedings, the Patentee contested the admissibility of the Opposition.  The Opposition Division stated that they considered the Opposition admissible, and  "asked the pro­prietor to clarify its requests on file". At this point, the  "[t]he proprietor said that his request was to maintain in amended form."

The patent was maintained in this amended form, and the Patentee then appealed on the admissibility point.

The Board of Appeal considered the appeal inadmissible, because it considered the Patentee not adversely affected by the OD Decision, because the Patentee's top ranked request, maintenance of the patent in amended form, was granted.  Thus, by not maintaining as Main Request the maintenance of the patent as granted, the Patentee was effectively considered to have abandoned the admissibility point.  If the Opposition was inadmissible, obviously the effect would be that the patent would stand in the form as granted, so the Patentee stating "his request was to maintain in amended form" was not considered compatible with maintaining the admissibility objection.

The Patentee argued, not unreasonably, that the request that they formulated was the top ranked substantive request that was "meant to complement its request to have the opposition found inadmissible", and that this did not imply withdrawal of the procedural request to reject the Opposition as inadmissible, but this argument was rejected.  Among other reasons, this position was not considered compatible with the minutes of the Oral Proceedings before the Opposition Division, which were, in the view of the Board, "unambiguous as they stand", and had not been challenged

As is usually the case where a party is considered by the EPO to have withdrawn a request, this decision seems harsh.  It is not clear whether what happened at first instance was intentional or inadvertent, but the case does show how easy it is to become considered to have abandoned a line of defence.

This reminds us of two clear practice points:

1) Keep your requests clearly in mind at Oral Proceedings.  Abandon the request of maintenance of the patent as granted (rejection of opposition) only if you are absolutely sure.

2) Check the minutes of Oral Proceedings, and if they are inaccurate, the time to contest them is immediately, not on Appeal.

This Kat does feel that the relative lack of procedural rules at Oral Proceedings combines with an increased strictness of the Boards of Appeal on what constitutes a valid appeal to make unintentional outcomes a real danger.

After the INTA conference: some helpful Kat-tips

After the conference ...  Last week this Kat was heavily involved in fellow Kat Neil's International Trademark Association (INTA) Trademarks Overlap conference in Munich, Germany (summarised in a series of 10 live Katposts which you can access via Alberto Bellan's "Never Too Late" blogpost here).  He sat through all the sessions, listened carefully to all the speeches, and learned a great deal.  Now that it's all over, he has a few gentle suggestions relating to IP conferences and similar events:

Suggestions for speakers: 
  • Stick to your allocated time. When you don't stop talking at the end of your 20 minutes, you are quite likely to be either stealing time from a later speaker or from the coffee-break or lunch time of hundreds of other people. Skilled IP practitioners and professors at the top of their professions should be able to manage this. Actually, there's no need to use up all your allocated time. If you've said everything that needs to be said and there are still a couple of minutes unused, why not say "that's all, folks!" and sit down?
  • Everybody know how pleased you are to be on the program. While each speaker likes to thank the organisers, the programme planners and anyone else who is entitled to receive a little gratitude, the audience hears the same thanks many times over. A single sentence, sincerely meant, should suffice -- though the event organiser might want to make a separate web page available for longer and more fulsome outpourings of the Oscar acceptance speech variety.
  • Don't accelerate because you are running out of time.  You may be ticking the "I'm finishing in time" box, but the chances are that you will be speaking faster than many members of your audience can listen, and a good deal faster than most people can take notes. Unless of course you'd prefer them not to.
  • Remember to breathe. A good time to breathe is when you reach the end of a sentence. You can even take two breaths when you get to the end of a topic or pause to move from one PowerPoint frame to the next one.  When you don't breathe at the right time, your audience doesn't always appreciate that you may be moving from one topic to another.  Speaking to your audience as though they are small but intelligent children is usually best.
  • Revise your presentation.  Very often speakers have to prepared their talks well ahead of time. Sometimes this is to enable event organisers to include them in conference packs or on USB sticks. On other occasions it is because they have to utilise the time available to them while juggling commitments to clients, colleagues, family and friends. In any event, if you haven't looked at your presentation for a few days before you are scheduled to give it, do take the opportunity to reacquaint yourself with it before you speak. Not only will it help you sound more fluent and confident when giving your presentation, but it will often provide a final chance for you to check references, correct patent errors and decide which bits to leave out in the event of time-trouble or possible overlap with other speakers in the same session.
  • Get familiar with the technology. A surprising number of speakers had problems with the remote device for changing the PowerPoint frames. I found this a bit annoying, but the person sitting next to me was positively aflame with impatience.  Try the technology out in the break before your session and then you can impress everyone by effortlessly moving from frame to frame as though you have been doing it all your life.
Suggestions for chairmen:
  • The audience knows who the speakers are. Apart from the fact that most of them are quite well-known in intellectual property circles, their biographical details appear in the promotional material that those who are interested can read ahead of the event.  You don't need to introduce them as though they are strangers.
  • Check names.  Before introducing any speaker by name, unless that name is a simple one where consensus exists as to how it should be pronounced, do ask the speaker how he or she pronounces it. The saddest start to any talk is the bit where the speaker opens by correcting the chairman's version of it.
  • Be assertive.  You alone have the power to speed up, slow down or curtail speakers -- some of whom might be grateful for your intervention. Use it where necessary.
  • Understand the audience.  If you have anything important to say, a really good joke or whatever, try to save it for the end of the session rather than the beginning if that is possible.  This is because about 25% of the audience either arrive late for the session or are still fumbling around with their hand-held devices when the session starts and they're not giving you the full attention you deserve.
Suggestions for the audience:
  • Be seated on time. It can be disconcerting and disturbing for a speaker to see people shuffling around, standing up, sitting down again and then moving again because they've sat down in the wrong seat or because they fancy sitting next to someone else. Being seated on time is a common courtesy. Ask yourself: if you were speaking, wouldn't you expect others to be sitting there expectantly, hanging on your every word?
  • Don't talk to your neighbour if he or she is manifestly trying to concentrate on what the speaker is saying -- particularly if your neighbour is taking notes, blogging or tweeting. This Kat lost a good deal of content in one of the sessions on account of a running commentary to which his neighbour was treating him on the presentation he was trying to speed-blog. 
  • Think twice when asking a question. Is your question really a question, or are you making a speech from the audience? 350 people may have been willing to pay good money and give up their time to hear the advertised speakers give their opinions on the topics featured in the programme -- but, let's face it, how many of them would pay to hear you? Members of the audience who abuse the question and answer facility by making little speeches of their own often spoil things for others who do have genuine questions to ask. Don't be selfish.
Suggestions for the organising team:
  • Check the venue's internal signage. Even though you have checked out the venue, a large number of registrants and participants who are unfamiliar with it will all be arriving within a short time of one another and they may benefit from a couple of extra signs pointing them to the nearest cloakroom, toilet or whatever. 
  • Have a web-page for irrelevant detail. Many conference sessions, and the INTA event was no exception, contain a good deal of waffle about speakers' recreational activities, sporting affiliations and other extraneous matter which may be of interest to those concerned but which other people find tedious and which consume time unnecessarily when speaking slots are of highly limited duration.  INTA could set a new standard here by setting up a special webpage on which, on a voluntary basis, speakers could list their hobbies, choice of football team, best movies, favourite books, sexual orientation and political persuasion could be featured along with baby photos and educational records. That way, those are interested can indulge themselves and those who aren't can enjoy the conference without the distractions.
  • Think about WiFi and recharging facilities.  Some venues are full of accessible sockets into which registrants can plug their various devices in order to recharge them; others are not. If people can't find somewhere to charge up, or have issues regarding connectivity, they will be sure to ask you so have all your answers ready first. Which leads to the final point:
  • Wear a large, funny, highly coloured and preferably luminous hat.  That way, people involved in the administration can be spotted at a distance by those who need their help, even if they (the conference team, that is) are vertically challenged.
This Kat is sure that he has forgotten a few things, but he is sure that his readers will not be slow to remind him.

Footnote: fellow Kat Neil co-chaired the INTA Conference in question, together with Axel Nordemann. Both Neil and Axel acquitted themselves admirably before, during and after the event and nothing in the foregoing comments should be taken as a criticism, express or implied, of anything they said, did, thought or imagined.

Tuesday, 16 December 2014

What is in the Future for Private Copy Levies in the EU?

A report published in November by the French consumer organization UFC-Que Choisir denounced the high rate of the French private copy levies and compared them to the lower rates of the other Member States. Indeed, the  rates of the private copy levies are not harmonized in the European Union (EU), and some Member States do not even collect them or decided to get rid of such system. 
Collecting Tax is Fun! 

No Levies in Finland, Spain and in the UK
Finland decided last week to do away with private copying levies, as its Parliament voted on December 10 to replace the current private copy levy system, used since 1984, with a government fund designed to compensate artists for private copying of protected works. Swedish liberal MEP Cecilia Wikstrom is quoted in this Digital Europe press release as saying during a meeting in Brussels on December 11: “How would (the pop group) Abba suffer from me making a private copy of my CD for my car or so I can listen to it on my mp3 player while I’m jogging?”  She called the private copy levy system “absurd.”

Spain already has such a scheme, but this move, as reported in this very blog by Eleonora, will be reviewed by the Court of Justice of the European Union (CJEU), as the Spanish Supreme Court has referred two questions asking whether fair compensation for private copying acquired through annual public grants via the State budget is compliant with Article 5(2)(b) of the InfoSoc Directive. This article gives Member States the right to provide a private copy exception to reproductions rights if right holders receive a “fair compensation,” a concept which is, as stated by the CJEU in Padawan, “an autonomous concept of European Union law which must be interpreted uniformly in all the Member States that have introduced a private copying exception.”

 In the United Kingdom, The Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014, which came into force on October 1st, 2014, does provide a personal private, non-commercial copying exception, but did not put in place a copyright levy system.  This move is being challenged by the British Academy of Songwriters, Composers and Authors (BASCA), Musicians' Union (MU), and UK Music.

Electronic Devices Included in Private Copy Levy in France and in The Netherlands

Back in France, the Commission Copie Privée (Private Copy Commission) is in charge of setting the rate of the private copy levies. According to Article L. 311-4 of the French Intellectual Property Code, this “compensation depends on the type of support and the duration or the recording capacity it allows.”
Paying a Private Copy Levy? MOI? 

The Commission is chaired by  a representative of the French State and is composed in half by persons designated by organizations representing the right holders, by a quarter of persons designated by manufacturers or importers of recording media  and by a quarter of persons designated by organizations representing consumers. But the Commission has been in turmoil for a while. UFC-Que Choisir left the Commission in the 2000’s, citing lack of transparency in the rates it is in charge of setting. Five of the six representatives of the manufactures/importers resigned from the Commission at the end of 2012.

But better days may be ahead for the Commission, as the Council of State, France’s highest administrative Court, recently validated, for the first time, the private copy levies rate adopted by the Commission Copie Privée  for digital tablets and for decoder-recording devices. There seems to be a current trend to include electronic devices in the private copy levy scheme.
Last week, the Dutch government agreed to pay €33,5 million in damages when it reached a settlement with the Dutch Foundation for Private Copies (Stichting de Thuiskopie). According to the press release issued by the Foundation, it had initiated this action against the Dutch State in 2009, claiming that the private copy levy was unlawful because it was only levied on CDs and DVDs, and not on other objects which may be used to make private home copies, such as MP3 players and hard disk recorders. Therefore, the revenues from the levies were too low to qualify as "fair compensation."

More developments in the private copy levies field are to be expected in 2015.

Image 1  courtesy of Flickr Users Big Dubya under a CC BY-NC-ND 2.0 license 
Image 2  courtesy of Flickr User   randomix under a CC BY-NC-ND 2.0 license 

2015: the year of blocking injunctions?

Improving the legal framework for online enforcement of IP rights, notably copyright, has been probably the most debated policy topic in a number of jurisdictions in 2014, and will likely be so also in 2015.

The recent decision of the Court of Justice of the European Union (CJEU) in Telekabel [here and here] clarified once and for all that blocking orders are compatible with EU law, and that it is left to the concerned internet service providers (ISPs) to determine how best to achieve the result sought by the relevant rightholder(s).

Moreover in the landmark decision in Cartier [here and here], by which the High Court issued the first blocking order in the UK against a number of websites that advertised and sold counterfeit goods, Arnold J expressed the view that currently there are no measures which are as effective as blocking orders. Although blocks may be circumvented (in its report entitled “Site Blocking” to Reduce Online Copyright Infringement: A Review of Sections 17 and 18 of the Digital Economy Act, OFCOM indeed concluded that all blocks may be circumvented), measures such as notice-and-takedown, de-indexing or payment freezing do not appear to have the same efficacy as blocking orders.

The conclusion of Arnold J is particularly relevant with regard to payment freezing, considering that recent papers, eg the Discussion Paper by Mike Weatherley MP entitled Search Engines and Piracy in the UK,  the Action Plan on the enforcement of IP rights [here] that the last EU Commission issued shortly before the end of its term of office, and the 2014 edition of How Google Fights Piracy, argued instead that ‘Follow the Money’ is the approach with the best potential in terms of efficacy. Although payment freezing would have the advantage of a worldwide effect, Arnold J held the view that it would also allow the offending website to continue until it is so starved of funds that it ceases operation. It is unclear whether such time would ever come though, on consideration that the website at hand may simply shift to alternative payment methods.

Frozen (payment)? You can let it go,
said Arnold J
Arnold J also rebutted one of the arguments often advanced against the availability of blocking orders, ie that they are costly for ISPs to implement. Evidence would suggest that the average cost of an unopposed application for a section 97A CDPA order (this is the provision by which UK transposed Article 8(3) of Directive 2001/29 into its own legal order) is not prohibitive: it appears to be around £14,000 per website, excluding subsequent monitoring costs.

In addition Arnold J also held the view that the risk of overblocking (yet another argument advanced against the availability of blocking orders), as well as related reputational damage for the concerned ISPs, would not be significant.

Overall it is fair to assume that the Telekabel and Cartier decisions will orientate future IP and copyright enforcement policy debate to a significant extent, both in Europe and elsewhere.

At the EU level how to ameliorate online enforcement has been discussed for a while now (at least since the 2011 Commission’s blueprint on IP rights [here]), although no actual reform initiatives – whether relating to Directive 2004/48 or Directive 2001/29 – have been placed on the table yet.  

I see ...
I see a blocking order
in your future
Outside the EU, following the introduction in 2014 of provisions allowing rightholders in Singapore to apply for blocking orders, 2015 will likely be another big enforcement policy year in the Asia-Pacific region, notably Australia. As a follow-up to the 2014 public consultation on Online Copyright Infringement, among other things Government recently announced its intention to amend the Copyright Act to allow rightholders to apply for a court order that would require ISPs to block access to websites operated outside of Australia.

Blocking orders may be brought back into discussion even in the US, despite the blackout that followed the public stir caused by unsuccessful SOPA/PIPA initiatives. This might be the case if the lobbying efforts of content owners in the US, as revealed by the recent Sony hack, succeeded.

Overall, the international policy debate in 2015 around online IP enforcement and availability of blocking injunctions, whether to block websites hosting infringing content or selling counterfeits, will necessarily include an assessment of the European experience. Such experience is only the one of courts – whether the CJEU or national, notably UK, courts – though. At the EU level in particular, the actual input of actual policymakers (read: the EU Commission or Parliament) has been scarce over the past 3-4 years. 

With a new Commission now in place, in 2015 it will be also interesting to see if a real EU agenda for online enforcement of IP rights is also proposed and developed outside courts, ie at the policy and legislative levels. 

* This is the text of a forthcoming editorial in the Journal of Intellectual Property Law & Practice

Playing by the Rules: or a tale of Fault and Default in infringement proceedings

We all need rules ...
After the momentous world-shaking blogposts of last week, it's great to get back to the nitty-gritty and to focus once again on the small picture. In this vein, this Kat considers Ahmet Erol v Global Fashion Links Ltd, another of those small, almost unnoticed and unreported decisions that form part of the fabric of intellectual property practice and procedure, a small addition to that great coral reef of law which, to the non-practitioner, often appears to be comprised by nothing but detail (including a body of largely arbitrary but essential rules such as the Civil Procedure Rules (CPR) in England and Wales), where there is often little in the way of principle to identify.

This decision of Judge Hacon in the Intellectual Property Enterprise Court, England and Wales, on 9 December 2014, picked up by subscription-only service Lawtel, addresses the topic of default judgments, which a court issues when one of the parties to a dispute fails to enter the litigation and the other side wins by a walk-over.  When is it appropriate to set such judgments aside? This issue is important not just in terms of considering the inconvenience inflicted on the "winning" party which, having got a court order in its favour, then might have to go back to court all over again. It's also important in terms of commercial certainty, since anyone who has a court order in their favour may be reluctant to act upon it by buying, selling or making goods if suddenly the cloud of further proceedings looms on the near horizon.

In these proceedings Erol was the owner of a United Kingdom Class 25 registered trade mark and design [on the overlap of trade marks and designs, see last week's INTA Katposts here and here], consisting of a distinctive combination of a half Union Jack and a crown design (the "half-crown design"). According to Erol, Global Fashion Links ("Global") had infringed its half-crown design by importing and selling a hoodie that replicated that design; design infringement and passing off proceedings were then commenced.

In issuing proceedings, Erol served a claim form and particulars of claim at Global's trading address, and service was deemed to have taken place on 6 May 2014, in default of any acknowledgement of service. However, no response pack was served along with the claim form and the particulars of claim. Global delayed three weeks before even seeking legal advice and then failed to respond to Erol's application for summary judgment which issued on 5 June. To Erol's delight, default judgment was entered in his favour on 4 July -- less than two calendar months after he served his claim and no doubt, in his eyes, a sign that justice was not only done but swiftly done too.

This was not the end of the story but, rather, its beginning.  Shortly after receipt of the default judgment, Global applied to have it set aside. Global sought to rely on, among other things, statements from other traders regarding sales in 2006 to 2007 that were said to establish a sufficiently arguable defence. Accordingly, said Global, it was only right and proper to set the default judgment aside since (i) it hadn't known of the proceedings until mid-May, when the relevant forms reached its trading address (ii) Erol had told Global by phone that, so long as settlement discussions were ongoing, he would take no further action; (iii) Erol had failed to serve a response pack and (iv) the half-crown design had actually been designed for Global's own use in 2005 and Global had sold garments using that design in 2005 to 2006 -- significantly earlier than Erol's claim to have created it in May 2007. This last point was intended to support an invalidity counterclaim which, Global argued, should be permitted to go to trial.

Judge Hacon allowed Global's application and set aside the default judgment.  As he explained:

* The factors that the court had to take into account when deciding whether to set the judgment aside were expressly stated in the CPR r.13.3. This rule provided two grounds for setting aside a default judgment: (i) did the defendant's proposed defence have a real prospect of success, or (ii) was there some other good reason to set aside the judgment in order to allow a defendant to defend the case?

* the test for establishing whether a default judgment was quite like the test for deciding whether to grant summary judgment, except that the burden of proof fell on the defendant. There were a number of aspects of Global's evidence on which it sought to rely at trial that were not clearly probative of its case and which, in some instances, were of so little probative value that the evidence arguably didn't even support that case. However, considering the evidence cumulatively, the threshold of establishing that Global had a real prospect of successfully defending the claim under r.13.3(1)(a) was satisfied.

* even if this were not the case, Erol's failure to serve the response pack could potentially constitute "some other good reason" under r.13.3 to set aside the default judgment -- subject to the question of delay. Here, Global's three-week delay in seeking legal advice was not excessive. Accordingly Erol's failure to serve a response pack could probably have been a good reason to set aside the default judgment.

* there was some documentary evidence, including an email from Erol to his solicitors on 9 June which implied that there were indeed some ongoing discussions between the parties. However, it was difficult to tell whether Global had been entitled to assume that nothing needed to be done until negotiations had concluded, in circumstances where Global had not responded to the service of the application notice for default judgment.

On the basis of the short note available on Lawtel this decision seems to be in order.  This Kat can't help feeling sympathy with any litigant who comes away from court with a default judgment and then has to go back to square one through no fault of his own; however, the inclusion of a response pack along with the claim form and particulars is a good way of reminding someone who is being sued that they jolly well ought to do something about it, and that wasn't the case here.

Merpel thinks that no-one should commence IP infringement proceedings in early May anyway.  So many of the world's IP practitioners are either clearing their desks ahead of travelling to the annual INTA Meeeting, attending it, recovering from it or covering for colleagues who are doing one or more of those things that must be difficult to get them to focus on the routine side of their work ...

Monday, 15 December 2014

Monday miscellany

Forthcoming events. Several new items have been added to the IPKat's Forthcoming Events list for 2015, including a little batch of IBIL events. Do check out this list when you get the chance. If you like secrets, " "Trade Secrets Protection & Enforcement: powering business growth by protecting your confidential data and know-how and enforcing against its misappropriation" might take your fancy. It's at the Pullman Brussels Midi Hotel, Belgium and there's a 10% registration fee discount for IPKat readers who quote the secret code, which you can find along with the other conference details here.

Holiday posts. The IPKat and Merpel remind readers that blogposts will continue to appear throughout the end-of-year holiday period, even at those very quiet times when it sometimes seems that the rest of the world has gone to sleep. This will, we hope, be welcome news for the thousand or so readers who click through for a little browse on Christmas Day. Do check us out from time to time!

Franchise Law: a suggestions for a good read? One of our readers has emailed with a request that this Kat has so far been unable to fulfil.  He is composing a book on franchising law in his own jurisdiction and writes:
"If you are so kind, please help me to find a good book about Franchising Law. I am investigating franchises but I can't find a good book, I hope you can recommend me some literature regarding this theme".
Preferably a book
on franchising
with pictures ...
This Kat hasn't spotted much on the subject of business format franchises since the last century, when he quite liked the late John Adams' Franchising: practice and precedents in business format franchising, but felt that it was really more of a book on applied commercial law than anything else and that there wasn't much IP in it since most disputes between business format franchisors and their franchisees seemed to go to arbitration rather than get to court, with the result that there weren't many juicy precedents. Also, law firms that advised clients in the establishment of franchises and subfranchises tended to keep their own precedents and templates pretty close to their chests.  He has also seen lots of "popular" books that are aimed at business folk who are thing of either setting up a franchise or buying into one --  but those are definitely not law books.  Be that as it  may, if anyone can recommend any good and recent (let's say 2000 onwards) books or articles on business format franchising, in any major language, can they please post details as comments below this blogpost?

Around the weblogs. Russian IP practitioner Sergey Zuykov narrates his firm's experience of getting a good result before his country's new Intellectual Property Rights Court in a case involving copyright in an unpatented design: it's all on Class 99 here.  Meanwhile, over on Class 99's sister blog Class 46, Christian Tenkhoff explains how Monster ran into trouble with their efforts to register the allusive term REHABILITATE as a Community trade mark for non-alcoholic beverages and nutritional supplements, among other things.  DDR Holdings v is a fascinating post-Alice case on US patent-eligibility, involving an invention directed towards merchandising on the internet: David Berry writes it up for PatLit here.

Difficult data question goes to Luxembourg. Case C-490/14 Verlag Esterbauer is a reference to the Court of Justice of the European Union for a preliminary ruling from the Bundesgerichtshof, Germany, on the following question:
In relation to the question of whether a collection of independent materials exists within the meaning of Art. 1(2) of Directive 96/9 on the legal protection of databases because the materials can be separated from one another without the value of their informative content being affected, is every conceivable informative value decisive, or only the value which is to be determined on the basis of the purpose of the collection and having regard to the resulting typical conduct of users?
If you think you know the answer, do tell us [come to think of it, says Merpel, if you think you know what the question means and what it's about, we'd like to hear from you too: she wonders it it's something about Esterbauer's Bikeline, or is it Bikini line ...]. In either event, if you would like to tell the UK Intellectual Property Office what you think, so it can decide whether the UK government should be making representations to Europe's top court, please email Arthur at by 23 December 2014. Please be assured: the contents of your communication will be so confidential that even you won't be able to find out what you said.

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