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

Thursday, 31 August 2017

Never Too Late: If you missed the IPKat Last Week!


Oyez, oyez! The 160th Edition of Never Too Late is here, cannot miss out on it!

Kat not too excited at the whole raining tomorrow thing
Kat Friend Josey Bright tells us that a Scottish court “vaporized” trade mark invalidity appeal. The contending trade marks “Vapouriz” and “Vaporized inhale the freedom” were the contenders in this Aeolian skirmish. Be ready to be blown away!

If you have to search for a trademark and don’t know how, Kat Mark comes to the rescue! In Battle of the free trade mark databases – Global Brand Database versus TMview he talks about the differences and the features of these two searching tools.

After a short pause, Guest Kat Stephen comes with the third instalment on the Eli v. Actavis UK case in An Improved Improver? - Part 3. Just in case you need to freshen up your memory, here is Part 1 and Part 2.

In Netflix weather report: sunny today, possibility of rain clouds tomorrow? Kat Neil discusses the recent successes in terms of audience and investment of the popular platform but also the possible challenges ahead posed by potential competitors Disney and Amazon. Forecast is never certain for more than three days ahead so the rain might not be coming after all!

Finally, InternKat Cecilia reports on the copyright infringement hit of the Italian summer. In Roger in troubled Waters she discusses a recent decision concerning the album cover of Roger Water’s latest album infringing the copyright of a prior work of art. 

Image credits: Cecilia Sbrolli

PREVIOUSLY ON NEVER TOO LATE


Never Too Late 159 [week ending Sunday 6 August] Cross-undertaking in damages - Napp Pharmaceuticals v Sandoz Limited | In memoriam of June Foray: the greatest screen voice whom you probably never heard of, but likely heard | UK Supreme Court holds that grey market sales can be criminal offence | New administrative notice-and-takedown procedure in Greece | Are you XKING kidding me? Making sense of trade mark conflict in the EUTM system | The challenge of protecting a database without a sui generis right, this time from Singapore | France: costs of blocking injunctions to be borne by internet intermediaries | INTA Trademark Administrators and Practitioners Meeting--early bird registration ends August 4th | TILTing Perspectives 2017 (First Part: Online Enforcement and Black Box Tinkering) | France: 13 million in damages awarded for linking to downloadable copyright works | Monday Miscellany, Sunday Surprises

Never Too Late 158 [week ending Sunday 30 July] The right of communication to the public ... in a chart I From Coca-Cola Zero to Coca-Cola Zero Sugar: big deal or no deal? I Brexit roundtable for brand owners in the financial services industry I CREATe Summer Summit 2017: Open Science, Open Culture & the Global South (and everything between) I BREAKING: BGH asks CJEU what a 'quotation' is: only unaltered reproductions or also something else? I AG Wahl says that, at certain conditions, suppliers of luxury goods may prohibit retailers from selling on third-party online platforms I Book Review: Common Innovation I EPO takes an ‘about turn’ on the patentability of products obtained by essentially biological processes I More on broccoli, tomatoes, and the patentability of a plant or animal obtained by means of an essentially biological process I Copyright protection of minimalist furniture design I Geographical Indications: News from the UK and New Zealand I French Supreme Court : End of the trade mark dispute over 'Cheval Blanc' I Event Report: The European Intellectual Property Teacher's Network 10th Anniversary Conference I Around the IP Blogs
Never Too Late 157 [week ending Sunday 23 July] Sky v SkyKick - no CJEU reference re removal of own name defence to EUTMs | An improved improver? UK Supreme Court moves towards a UK Doctrine of Equivalents in Lilly pemetrexed battle? | An improved Improver? Part 2 | It may be use, but is it trade mark use? | The protection of TV formats: an Italian mock trial | What can the possible implications of the CJEU Pirate Bay decision be? A new paper | In memoriam of Kenneth Jay Lane: "My designs are all original"; "original from someone" | French Commercial Tribunal: clarity in paternity is key

Never Too Late 156 [week ending Sunday 16 July] A film is a film is a film: at Cannes, it's not that simple | BGH grants compulsory license in preliminary proceedings | An improved Improver? UK Supreme Court moves towards a UK Doctrine of Equivalents in Lilly pemetrexed battle | The Smoking Gun - Is IP research the next tobacco scandal? | the special world of pesticide products, counterfeits and parallel imports | New CJEU reference ... asking whether InfoSoc Directive envisages digital exhaustion | Freedom of panorama in Italy: does it exist? | Can Crowdsourcing Solve the Orphan Works Problem? | the EU IPO Observatory study finds trade secrets rule the roost over patents in Europe | Mock (culinary) trial at INTA 2017 | Weetabix in New Zealand Customs dispute over local rival Weet-bix

Sunday, 27 August 2017

Book Review: Economics of the Internet

A perusal through the contributors to the Edward Elgar "Handbook on the Economics of the Internet" warmed the cockles of this dismal scientist's heart, for in it contains a number of IP economists who have dared stray into the dark waters of the Internet. Consisting of a collection of essays, the Handbook includes chapters by experts in many aspect of the digital world.

As the book explains, the Internet is a series of tubes, the Internet has challenged many theoretical assumptions and has prompted a re-examining of economic analysis. The book is divided into five parts, with the key parts addressing theoretical foundations, institutional arrangements and internet architecture, economics and management of applications and services, and past & future trajectories. Not all of the authors identify as economists, which helps towards developing the book's more narrative, as opposed to an econo-scientific, tone.

A chapter by Sacha Wunsch-Vincent (WIPO) looks at the economics of copyright and the Internet.  Wunsch-Vicent develops a handy table which breaks down the pros and cons of the effects of the copyright system. He notes that, for example, the 'creative supply' of copyrighted works is incentivised by the copyright system, but copyright may reduce follow-on creativity by limiting access to other creative works. While the incentive effect increases the availability for consumers, copyright also increases the costs to consumers. The author notes the huge challenge of data for analysis, but ends on a hopeful tone noting that economists and governments are working towards solutions to these challenges.

Hal Varian, you know he works in tech
because he's got the right shirt.
Joi Ito, Flickr
Hal Varian (Chief Economist of Google) writes on "The economics of Internet search." Noting that advertising is a 'low-yield' business, Varian describes how a shift to cloud-computing has decreased entry costs into the market. In what seems to be a general thesis that the search engine market is contestable, he also argues that users of search engines easily switch between search engines and therefore there is "robust competition" between search engines for users, and predicts a market equilibrium with "a few large competitors in any given country or language group." This argument is not convincing, as Google has emerged as the clear winner of this competition and has even attracted fines for abusing its market dominance in advertising. (In Varian's defence, the chapter is an updated version of a 2007 speech, and a lengthy publishing process may contributed to his arguments being out of date.) The rest of the chapter is more relevant, and discussions of economics are nicely detailed through a history of the development of search engines and Google's advertising model.  Varian ends by pointing to the future importance of data both for business and researchers.

Other chapters touch on copyright, cultural economics, cybersecurity, data and business strategy. One rather modest quote in the preface caught my eye, "coordinating and synchronising 49 authors was sometimes challenging, often took longer than hoped, but ultimately was always rewarding." It is quite easy as a reader to view handbooks such as this as simply a collection of papers. However, recent personal experience has made me appreciate the vast amounts of work that go into curating, editing and assembling such books. The editors have managed to put together a nearly 600 page book full of interesting topics by top authors, and it can't have been easy!

I'm pleased to see that economists are paying more attention to the economics of the Internet. Copyright research has long-embraced the digital world and we are likely to see further investigations linking IP and the Internet (I'm currently combining trade secrets research and cybersecurity.) The Handbook is written in an accessible manner, with the bulk of the book not requiring advanced economic or maths knowledge, and is clearly a good fit for teaching. Readers interested in broadening their knowledge of economic analysis of the Internet will also find it useful.

The Handbook on the Economics of the Internet, by Edward Elgar Publishing, edited by Johannes M., Bauer and Michael Latzer, is available here for £184.50 in hardback and £36 in a soon-to-be-published paperback. Rupture factor of the hardback: medium-high, nearly 600 pages.

Friday, 25 August 2017

France: "Photoshop decree" coming up soon

The French Health's Ministry has recently reformed national laws to back 'real body' campaigns because they're worth it! There will be no more 'photo-shopped' photographs of models going undisclosed in the French press, as of the 1st of October 2017. Any photograph edited to modify the figure of models (male or female) will have to bear the notice "Retouched Photograph" to comply with the law. Advertisers who fail to abide by this new legal obligation may face a €37,500 fine, which can be brought to 30% of the expenses incurred to produce the advert.

Background of the 'Photoshop' reform
Retouched photograph
This measure was first introduced in 2016 by the enactment of the Law No 2016-41 'on the modernisation of our health system' dated 26 January 2016 (see Article 19, here in French language). The initiative came from the Ministry of Health who wished to take concrete steps towards improving issues of "body image in our society by preventing the promotion of unattainable ideals of beauty and tackling anorexia among young adults, [...] models in particular" (according to their official press release reported here in French language). The Ministry reports that at least 600,000 teenagers and young adults suffer from eating disorders, including 40,000 from anorexia. These illnesses are the second most common cause of death for the age group 15-24, after road accidents. Ultimately, the government hopes that the negative message the notice conveys to consumers will deter advertisers from editing photographs in the first place.

It took over a year and a half for the measure to come into force as the 2016 reform could only be implemented by the introduction of a government decree. The decree, nicknamed the "photoshop decree" by the press, was finalised and published by the French government on 4 May 2017 (see here). The new dispositions were drafted in collaboration with the industry according to the Ministry, and can now be found under Articles L 2133-2, R 2133-4, R 2133-5 and R 2133-6 of the French Public Health Code. It is clear from these provisions are not limited to the fashion press, and will apply to all forms of commercial advertising campaigns that are communicated to the public online, in the press or on billboards. 

The main provisions (translated)
Article L 2133-2 provides that, "photographs used for commercial purposes of models, as defined by Article L 7123-2 of the Employment Law Code [here], whose physical appearance has been modified through the use of image processing software to slim down or thicken the model's silhouette must bear the notice: 'Retouched Photograph.'"

Article R 2133-5 further specifies that the, "notice must be affixed in the manner that is accessible, easily readable and clearly distinct from the advertising or promotional message." It goes on to stress that such presentation will be governed by  "rules and conventions of good practice defined by the industry", and for this purpose the text refers directly to the French advertising regulation authority known as 'Autorité de Régulation Professionnelle de la Publicité'.  

It is clear from Article R 2133-6 that the obligation to disclose the retouching of images rests on advertisers rather than photographers or publishers. Indeed, the provision reads "[t]he advertiser shall ensure that the legal obligations found under Articles L 2333-2, R  2133-4 and R 2133-5 of the Code are respected. To this end, they must ascertain that the photographs used for commercial purposes they purchase, directly or via other third parties, were retouched using image processing software with a view to slim down or thicken the model's silhouette". From the wording of the provision, it appears that only editing concerning the body shape of models will be subject to public disclosure but other common aspects of photo-shopping such as skin tone, hair colour or wrinkles may continue to go incognito. 

Going forward
Whilst the Public Health Code gives some pointers as to how the new regime is to be applied in practice, a number of key questions are yet to find answers. First, it is still unclear from the wording of the new provisions what will be deemed an "accessible" and "easily readable" notice, complying with principles of good practice in the field of advertising. Should we expect warning messages as prominent as the ones displayed on cigarette packs? It will be for advertisers and possibly French administrative courts to define this as the reform enters into force in October.

Retouched Photo-giraff
[French humor 
does not always translate...]
Similarly, as the rule applies to online advertising campaigns, one may also wonder whether this will force advertisers to apply the notice :
  •  all online publications accessible from France
or 
  • on all online publications targeting French consumers
or 
  • on all online publications in French language regardless of national borders
or 
  • on all online publications (to be on the safe side)
This technical detail of the reform can have significant implication of the geographical reach of the new laws.

Finally, Article L 2333-2 mentions a possible increment of the €37,500 fine to 30% of the expenses incurred to produce the advert, without explaining which costs the text refers to. Are we talking 30% of the production costs of the photograph itself or 30% of the production costs for the entire campaign including publication expenses and so forth. This is yet another technical detail which could significantly affect the impact of this new measure as infringement could be followed by a hefty price tag if the courts decided to opt for the second alternative.

On the whole, the effectiveness of the reform will largely depend on the diligence with which the government will monitor and sanction infringing advertising campaigns. We shall wait for October 1st to come, and see what comes of it...

Thursday, 24 August 2017

Around the IP blogs!

JIPLP is the weblog of the Journal of Intellectual Property Law and Practice. Here's where editorial panellists, readers and contributors can come together and share their view on all aspects of IP law and practice. And here are the Author’s Takes of August 2017:

The Author's Take. 📷✍️📚
by Yin Harn Lee
Lecturer in Law, University of Sheffield

by Luxmi (“Lux”) Rajanayagam
Queen Mary, University of London

by Mario Pozzi
Roedl&Partner Law Firm, Milan – Italy


In this post, Lasse Søndergaard Christensen and Louise Thorning Ahle analyze the possibilities of enforcement with regard to products protected as neither a registered nor an unregistered Community design on the Danish market.

In the recent decision W.F. Gözze Frottierweberei Gmbh, Wolfgang Gözze GmbH v Verein Bremer Baumwollbörse, case C-689/15, the European Court of Justice analyzes an issue which the EUTMR rules do not clearly resolve, i.e. whether or not a licensed EUTM registration may be invalidated if the owner fails to carry out quality controls on licensee/licensees’ products.


In Close Thais with Madrid, as from November, MARQUES reproduces the official WIPO notice regarding the accession by the Kingdom of Thailand to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.


Photo courtesy of Mr. He Gong and his lovely kitten Ruobai.

Is there a role for the tort of unlawful means in patent law?

Can a patentee be liable to a public health authority for the tort of causing loss by unlawful means, as a result of making misleading or dishonest representations to the EPO/Court as to the validity of a patent?  This was the subject of an interim decision of Roth J. earlier this month in the Competition Appeal Tribunal:  Secretary of State for Health and Others v Servier Laboratories Limited and Others [2017] EWHC 2006 (Ch) (available here).   

A torte of lawful means
Background

This is the latest instalment in the fall-out from Servier's actions in relation to its pharmaceutical product perindopril (branded as Coversyl), an ACE inhibitor used in the treatment of hypertension and cardiac insufficiency, which has been the subject of a number of reports on this blog dating back to 2008 (see here).

Servier's perindopril product was launched in the UK in 1990, and was protected by a patent for the process for the industrial synthesis of perindopril: EP 0,308, 341.  The present action relates to a later patent granted for the alpha crystalline form of the perindopril salt: EP 1,296,947. It consists primarily of an antitrust claim by various health authorities (in the form of a follow on claim for damages following a finding of infringement of Art 101 and 102 by the Commission, on the basis of various agreements made by the Defendants with generic manufacturers and suppliers involving patent settlements and technology acquisitions, and also as a stand-alone claim for abuse of dominant position based on the Defendants' conduct before the EPO/English Court).  The English health authorities also brought a free-standing claim for the tort of unlawful means, and the present application concerned an application by Servier to strike out this element of the claim.

Claimants' case

The Particulars of Claim alleged that Servier's patent application for what would become the '947 patent "contained express and implied representations that the alpha form was novel and implied representations that the alpha form was not obvious".  These representations were repeated in opposition proceedings before the EPO, and in proceedings before the English Court where Servier successfully obtained an interim injunction (this was subsequently overturned when the '947 patent was held to be invalid).

The claim alleged that the representations were untrue, in that the alpha form was not novel and/or not obvious, in particular because:
  • Servier's earlier '341 Patent led to the production of the alpha form as its inevitable result; 
  • the perindopril marketed by Servier in the UK both before and after the time of filing of the '947 patent was in alpha form; 
  • Therefore, the alpha form was part of the state of the art and/or would have been obvious to the skilled person.  
It was further alleged that Servier's agents either knew or were reckless as to these matters, and that Servier "obtained, defended and enforced" statutory patent rights in the UK in relation to the '947 Patent "by deceit: that is, by means of misrepresentations made dishonestly or recklessly to the EPO and/or the English Court" - the  result being that generic entry to the market was delayed, meaning that Servier was able to charge higher prices and maintain larger volumes of the market, resulting in an interference with Claimants (as payers). 

Court's analysis

Servier applied to strike out the claim for tort of unlawful means on the basis that it disclosed no cause of action.  Roth J. observed that it may be challenging for the claimants to establish the express or implied representations that are said to found the allegation of deceit, given that there is no doctrine of "fraud on the patent office" (unlike the US), but for the purpose of this strike out application, he assumed that the allegation of deceit was made out.  
A job for parliament - not the Courts
The Court analysed the House of Lords authority of OBG Ltd v Allen [2007] UKHL 21 in detail, and concluded that the tort of unlawful means comprises 3 elements:

(a) the use of unlawful means towards a third party
(b) which is actionable by that third party, or would be if they suffered loss, and
(c) intention to injure the claimant. 

Servier's strike out application focussed on limb (a) above.  The Claimants' response was that limb (a) should not be interpreted restrictively and that the tort is still in the process of development and so should not be struck out before all the facts are found at trial.  While Roth J. agreed that some aspects of the tort of unlawful means may require refinement (e.g. what constitutes "unlawful" means), he concluded that the only legal issue on application has been determined by Lord Hoffmann in OBG v Allen (with whom the majority agreed):

"Unlawful means therefore consists of acts intended to cause loss to the claimant by interfering with the freedom of a third party in a way which is unlawful as against that third party and which is intended to cause loss to the claimant.  It does not in my opinion include acts which may be unlawful against a third party but which do not affect his freedom to deal with the claimant."

The tort of unlawful means requires that the third party's freedom to deal with the claimant is affected.  This could not be satisfied on the facts, because the 'third party' is the EPO/English Court, and there was no question of their "freedom to deal" with the English health authorities being affected. 

Further, four members of the House of Lords in OBG Ltd v Allen had emphasized the need to confine the tort within careful limits.  There was a public policy in confining remedies in this area to the field of competition law which has legislative basis, rather than upsetting the balance between the Courts and legislature. In summary, the claim for the tort of unlawful means was struck out, and the case proceeds on the basis of competition law only.

Monday, 21 August 2017

Around the IP Blogs!

This Kitten is delighted to bring you the highlights from some recently published IP blogs.

Driving around the Blogs!
Marie-Andree Weiss on The 1709 Blog summarizes the motion for judgment on the pleadings filed by the defendants in Solid Oak Sketches, LLC. v 2K GAMES, INC. and TAKE-TWO INTERACTIVE SOFTWARE, INC., Case No. 1:16-cv-724-LTS-RLE. The defendants argued that the reproduction of the tattoos that appear on three players in the NBA 2K video game does not amount to copyright infringement but rather “constitutes de minimis use and fair use”. 

Moving to trademarks, Michael Factor reports on The IP Factor the opposition lodged by Paletas Masa S.A. de C.V. and Sweet Reality Sweet Marketing Company against the 3D trademark application filed by Grupo Bimbo S.A.B. de C.V., consisting in the shape of a paintbrush covering confectionery in class 30. The Israel Patent Office refused the registration on the grounds that the proposed shape did not fulfill the essential function of a trademark (badge of origin), it has aesthetic appeal and there was no evidence that it had acquired distinctiveness. Thus, the requirements established in Circular 033/2016 for registering 3D trademarks were not fulfilled.

Turning to designs, David Musker blogs on MARQUES CLASS 99 about the case Chanel SAS v EUIPO, ECLI:EU:T:207:517, T-57/16 (not in English yet). There, the General Court of the CJEU overruled the decision issued by the EUIPO Board of Appeal on the ground that the Registered Community Design 1689027-0001 (comprising two interlocking S shapes) does not produce a different overall impression on the informed user in relation to the Channel monogram (comprising two interlocking C shapes) registered as a trademark in France since 1989.

Switching to patents, Dennis Crouch analyzes on PATENTLYO the case Georgetown Rail Equipment Company v. Holland L.P., No. 16-2297 (Fed. Cir 2017).  As reported, the US Court of Appeals for the Federal Circuit upheld the decision rendered by the District Court of Texas, which found Holland L.P. liable for infringing US Patent No. 7,616,329 (system and method for inspecting railroad track), based on the Court's construction of the preamble of the claim 16, ruling that it does not limit the scope of protection but rather it “is meant to describe the principal intended use of the invention”.

Last, but not least, Hirotaka Nonaka provides on TRUSTinIP some insights regarding the report issued by the Ministry of Economy, Trade, and Industry (METI) of Japan. In particular, attention is drawn to the proposal for compulsory licenses on SEPs (Standard Essential Patents) and an alternative dispute resolution system, which will be discussed by METI at the end of this year.

Sunday, 20 August 2017

When "mayo" is not mayonnaise, yet still is mayonnnaise: All a matter of the label?


When is “mayo” not mayonnaise yet still can be called “mayo”, even when the product has no egg-based ingredient? This Kat was reminded of this question in reading recently that Hampton Creek, Inc., a much ballyhooed, unicorn-valued food tech company with a knack for attracting headlines, seems to have done it once again. In the words of the July 17th article that appeared on Bloomberg.com-- “Hampton Creek’s Entire Board Leaves Except for CEO.” Seeing this headline recalled the “mayo/mayonnaise” episode that engaged the company in 2014-2015. The tale is worth recounting as a window into how regulators deal with arguably descriptive or misdescriptive terms.

Let’s first start with the trademark aspect. As it appears on the on-line USPTO registry, the mark JUST MAYO was registered (no. 4786403) on August 4, 2015, for “vegetable-based spreads”, in class 29 and “egg-and dairy-free mayonnaise; salad dressing”, in class 30. The mark seems to have gone through examination without any descriptiveness or misdescriptiveness objection, despite that the word “mayo” is recognized as shortened form of “mayonnaise”. This Kat suspects that the fact that the word “mayo” was disclaimed in accordance with US practice (“no claim is made to the exclusive right to use ‘mayo’ apart from the mark as shown”) eased the potential problem of the word being deemed as descriptive or misdescriptive.

The Federal Drug Administration (“FDA”), the federal regulatory body that monitors packaging and labeling of food products, was of a different view, at least initially. It sent a warning letter to Hampton Creek Foods on August 12, 2015, claiming inter alia as follows: “
3. Your Just Mayo and Just Mayo Sriracha products are misbranded …. in that they purport to be the standardized food mayonnaise due to the misleading name and imagery used on the label, but do not qualify as the standardized food mayonnaise…. The name “Just Mayo” and an image of an egg are prominently featured on the labels for these products. The term “mayo” has long been used and understood as shorthand or slang for mayonnaise. The use of the term “mayo” in the product names and the image of an egg may be misleading to consumers because it may lead them to believe that the products are the standardized food, mayonnaise, which must contain eggs …. Additionally, the use of the term "Just" together with "Mayo" reinforces the impression that the products are real mayonnaise by suggesting that they are ‘all mayonnaise’ or ‘nothing but’ mayonnaise.”

“4. Your Just Mayo and Just Mayo Sriracha products are misbranded ....Specifically, these products purport to be mayonnaise by prominently featuring the word “Mayo” on the labels, which has long been used to refer to mayonnaise. Mayonnaise is a food for which a definition and standard of identity has been prescribed by regulation …. According to the standard of identity for mayonnaise, egg is a required ingredient ….”
The FDA complaint was issued several months after Unilever (in support of its HELLMAN and BEST FOODS mayonnaise brands) had filed an action against Hampton Creek, claiming that the JUST MAYO mark violated truth-in-advertising laws, resting on a 1957 FDA regulation that required mayonnaise products to contain an egg ingredient. Subsequently, however, Unilever withdrew its law suit (but later introduced a similar product). Still, the FDA went ahead with the filing of its August 12, 2015 complaint.

The TRULY MAYO brand seemed to have a real problem, whether or not it had been registered as a trademark. After all, one thought that “mayo”, or “mayonnaise” had to be egg-based. Au contraire—on December 17, 2015, following meetings between the agency and the company, the FDA reversed course and issued a statement, whereby the issues so forcefully raised in its warning letter were deemed to have been “resolved”. In practice, as reported (here, here and here) that meant that Hampton Creek was permitted to maintain the brand name and logo, subject to various changes to the product packaging.

These changes included using a larger font size to indicate product attributes, such as “egg-free”, adding the words “Spread &* Dressing” (suggesting that the FDA was not comfortable with simply redefining the term mayonnaise to include various new ingredients), and making smaller the visual image of an egg with a pea shoot inside. As well, the label would define the word “just” to mean "guided by reason, justice and fairness”, rather than to suggest that the product was “just” another form of mayonnaise.

This Kat does remain a bit puzzled about all of this. What exactly is the problem being resolved here? What is meant by “mayo” and “mayonnaise”; what exactly is “egg-free” mayonnaise? At the consumer level, on what basis did the FDA have reason to believe that these changes to the labeling would resolve the regulatory issues regarding the name “just mayo” (the definition of the word “just” as a prophylactic measure seems particularly problematic to this Kat).

Friday, 18 August 2017

Friday fantasies

I heard IP events?
CITMA Autumn Conference -- IP and social media

12th October 2017, 10am – 7pm
Hyatt Regency Birmingham
Earn 5 hours’ CPD
Registration has opened, see further details here

UNION-IP September Dinner Meeting - "Actavis v Lilly, interpretation and file wrapper – what do we do now?"

UNION-IP is delighted to announce that Andrew Waugh QC of Three New Square will be speaking at their autumn dinner meeting on Thursday 28 September 2017. Having been involved in the recent Actavis v Lilly Supreme Court case, and indeed some of the earlier leading decisions as well, Andrew will take participants through the history and implications of Actavis v Lilly and lead the debate: Actavis, interpretation and file wrapper – what do we do now?
Full details of the event can be found here.

LeadershIP in Brussels on 25 September 2017

The LeadershIP conferences are a catalyst for a balanced and open discussion on current hotly-debated global issues at the intersection of intellectual property rights and antitrust policy. See further information here

Location update:

"As demand has been so high for attendance at the "Equivalents: K = Na. Is the genie out of the bottle?" event on 1 November 2017, we have moved the event to a larger hall."
The event will now take place at:
UCL Institute of Education (Logan Hall)
20 Bedford Way
Bloomsbury
London WC1H 0AL


Photo courtesy of Mr. He Gong for his lovely kitten Ruobai.

Never Too Late: If you missed the IPKat Last Week!

Been away and want to catch up with last week's IP news? No problem! As always, IPKat is here to bring you a quick summary - the 159th edition of Never Too Late.
Keeping one eye open for the latest IP news

How does one calculate the damages caused by an interim injunction? Eibhlin explains the recent Patents Court decision of Napp Pharmaceutical Holdings Limited v (1) Dr Reddy's Laboratories (2) Sandoz Limited (and Ohers) [2017] EWHC 1433 (Pat) which provided guidance on the issue.

Neil pays homage to June Foray, the voice behind a portfolio of character’s such as Lucifer the cat from Cinderella, Jokey Smurf, Mrs. Cauldron from The Garfield Show, Rocket J. Squirrel and Natasha Fatale from “Rocky and his Friends”. Neil ponders the legal protection of voice creations. 

Can grey markets be considered akin to trade in counterfeit goods, when it comes to the application of criminal provisions in trade mark law? The UK Supreme Court answered this question in the affirmative earlier this week in its judgment in R v M & Ors [2017] UKSC 58.

Katfriend Yannos Paramythiotis brings the news of Greece’s recently adopted administrative procedure to tackle online copyright infringements.

Katfriend Darren Meale reports on the CJEU decision Continental Reifen Deutschland v Compagnie generale des etablissements Michelin which upheld tyre giant Continental’s appeal against Michelin, concerning their stylised registered mark ‘X’.

Kat friends Lau Kok KengNicholas Lauw and Jiamin Leow report on how the Singapore Court of Appeal has addressed the issue of database protection in the case of Global Yellow Pages Ltd v Promedia Directories Pte Ltd and anor matter [2017] SGCA 28

Mathilde Pavis explains a decision from the French courts which stated that both internet service providers and browser providers can be legally bound to block infringing content, and pick up the bill for the costs of such injunctions. 

Readers are invited to attend the INTA Trademark Administrators and Practitioners Meeting (TMAP) which takes place in New Orleans from September 17th -19th. 

The 5th edition of TILTing which took place at the Tilburg University from 17 until 20 May 2017. In the first part of this 2 part conference report Verónica discusses two talks. The first on Israel's copyright infringement strategies though intermediaries and the courts, and the second focused on the algorithm of said intermediaries. 

How much do copyright owners lose from online platforms hosting links to unauthorized copies of their works uploaded by third parties? The Paris Criminal Court of Appeal awarded a total amount of 13 million euros and 12 months’ imprisonment in the case of D.M. v APP, Microsoft, Sacem and others, available in French language here.



PREVIOUSLY ON NEVER TOO LATE

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Photo credit: frankieleon

Thursday, 17 August 2017

Freedom of panorama in Portugal: content and scope of the exception

Santuário de Cristo Rei (1959),
Lisbon
Until fairly recently, freedom of panorama within Article 5(3)(h) of the InfoSoc Directive was a relatively little-known copyright exception within those available to Member States under EU law.

With proposals that would make this exception mandatory for EU Member States to adopt and recent national legislative reforms (eg in Belgium and France), this is no longer the case.

After Italy, today the IPKat travels to Portugal to discover the situation in this Member State.

Carlos Madureira and David Serras Pereira (both Sociedade Portuguesa de Autores) explain. 

Heres’ what they write:

One of the most controversial issues pending in the EU copyright reform – with a directive proposed by the Commission on 14 September last and currently being discussed in the European Parliament Committees – concerns the panorama exception, also known as freedom of panorama.

In addition to the discussion whether or not the exception should be harmonised further via legislative proposals, the topic is also being subject to court rulings. Among these we have to highlight the Swedish Patent and Market Court ruling of 6 July 2017, in which that court decided in favour of Bildupphovsrätt in a copyright dispute against Wikimedia Sweden concerning the communication to the general public by the latter, via the internet, of copyright-protected artworks permanently placed in or at a public place. Among other things, in excluding the availability of the panorama exception to Wikimedia, the Swedish court stressed that whether the communication took place for commercial purposes or not was of no significance.

We find it very important to present the Portuguese model for the panorama exception and discuss its application in contexts covered by the adaptation right. Furthermore, the discussion below offers an approach to the concept of public places for the purpose of the panorama exception and its relevant implications, as well the distinction between direct and indirect commercial purposes.

Portuguese provision on panorama and the Berne’s three-step test

The Portuguese provision at stake is Article 75.º, paragraph 2, point q) of the Portuguese Code of Authors’ Rights and Neighbouring Rights (Código do Direito de Autor e dos Direitos Conexos), created by the Decree-Law No. 63/85 of 14 March 1985 (as last amended by the Law No. 49/2015 of 5 June 2015).

This provision contains a catalogue of the exceptions/limitations to authors’ exclusive rights (exceptions to economic rights, not also moral rights), where its “closed” nature is the natural consequence of the structure of Article 5 of the InfoSoc Directive, as well as arguably the first step under Berne Convention three-step test.

The wording of the provision states that, among the uses allowed, there is “the use of works, such as, for instance, works of architecture or sculpture, made to be located permanently in public places” (75.º, paragraph 2, point q)

75.º § 4 completes the three-step test by including the two additional steps and stating that “the ways of exercising the uses foreseen in the preceding paragraphs shall not be contrary to the normal exploitation of the work, nor cause an unjustified prejudice to the legitimate interests of the author.

75.º § 3 states that  The distribution of the legally reproduced copies, to the extent justified by the purpose of the act of reproduction, is also legal.”

71.º adds that: “The statutory right to use a work without the author’s previous consent includes the statutory right to translate or otherwise transform, to the extent necessary to such use.

As mentioned above, the exception is only available in respect of economic rights, not also moral rights. Article 76.º a) states that “The free uses mentioned in the preceding article shall be accompanied by (...) the indication, wherever possible, of the name of the author and of the publisher, the title of the work and other circumstances that identify them”. Article 56º underlines that the author enjoys the right to oppose all acts / uses / adaptations of the work that might affect his honour and reputation.

The first thing to underline is that, like all the other EU Member States, the list of exceptions under Portuguese law is exhaustive.

Secondly, the ‘special cases’ covered by relevant exceptions must be also subject to a use that: (a) is not contrary to the normal exploitation of the work; and (2) does not cause an unjustified prejudice to the legitimate interests of the author. Overall Portuguese copyright law uses very balanced and strict criteria to allow the exceptions to authors´ rights. 

Therefore the exceptions to authors’ rights (including the panorama one):

-       are only allowed in special cases (closed catalogue);
-       must not be contrary to the normal exploitation of the work;
-       must not cause an unjustified prejudice to the legitimate interests of the author;
-       are only allowed to the extent justified by the purpose of the exception at issue.

Commercial (direct and indirect) uses not covered

Portuguese copyright law is such that commercial uses are not covered by the panorama exception under Article 75.º § 2 q).

The commercial use of works by for-profit undertakings would deprive authors of potential commercial revenue arising from the exploitation of the various dissemination channels, therefore damaging the normal exploitation of the work at issue and amounting to an unjustified prejudice. Furthermore, a commercial use would exceed the extent justified by the purpose of the exception.

Will Adriano's photographs be covered
by the panorama exception?
The adaptation right and panorama

The above-mentioned conclusion can be also extended to the adaptation right (Article 71.º), which already includes the condition of the extent justified by the purpose of the exception. This is in line with Article 13 of the TRIPS Agreement. It shall not be, however, seen as an argument the non-harmonisation of the adaptation right within the scope of the InfoSoc Directive.

The misleading discussion regarding the concept of public place

Some intend to limit the scope of exclusive rights by trying to focus the discussion on the Portuguese concept of ‘public places’, and arguing that it must be understood as a place that is publicly accessible, even if the access to the public is implicit and/or an entrance fee is charged and/or the right of admission is reserved.

The main question is not “What is a public place?”. It is rather knowing if the work was made to be located permanently in public places. The main question is, therefore, to understand the intention of the author when he realised the work.

This leads to the conclusion that a ‘public place’ for the purpose of the panorama exception must be understood within the context in which it is included. We have to understand the concept “made to be located permanently”. With this expression the Legislator sent a clear message that a public place must be able to receive the permanent location of a work, and that the intention of the author, when creating the work, was to confer it a permanent location.

This is the reason why the Legislator introduced, as the types of works included in the exception, “sculptures and works of architecture”. Those two types of works are intrinsically linked to the concept of permanent location nature, and thereby public places.

The Portuguese exception is able to cover public interiors (for example a public subway station), yet it will not able to cover works in museums if the works were not made to be located there permanently. Such assumption is not based on the definition of public places, but rather on the concept of permanence and will of permanence.”

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