From March to September 2016 the team is joined by Guest Kats Emma Perot and Mike Mireles.

From April to September 2016 the team is also joined by InternKats Eleanor Wilson and Nick Smallwood.

Wednesday, 24 August 2016

Singapore Government launches public consultation on major copyright reform

Beautiful Singapore
Singapore is currently engaged in a significant reform of its Copyright ActIn this context, yesterday Government launched a public consultation [open until 24 October 2016, 5 pm GMT+8] to seek feedback on proposed changes to this country's copyright regime. This is the full consultation paper.

In particular, views are sought on the following issues:

Formalities: whether Singapore should have a voluntary system of copyright registration, and details associated with such a copyright registry [it is important to recall that the no formalities rule contained in Article 5(2) of the Berne Convention only applies in an international - not domestic - context].

First ownership: whether creators of certain commissioned works should have first ownership of the copyright in the works. 
Duration: whether the duration of copyright protection for unpublished works should be limited to : (i) 70 years after the death of the creator for literary, musical, dramatic and artistic works, and (ii) 70 years after first publication for sound recordings, cinematograph films and works with an unknown creator if they are published within 50 years of creation, failing which, they will only be protected for 70 years after creation. 
Moral rights: whether there should be a new right of attribution, and details associated with this right [the answer to this should be yes, at least to comply fully with Article 6-bis of the Berne Convention - Singapore joined the Berne Union in 1998].
Information: whether the relationship between creators and publishers/producers can be helped by an information website for creators. 
Exceptions and contractual override: whether certain exceptions in the Copyright Act should be allowed to be restricted by contractual terms, and which exceptions would those be [UK-based readers will promptly recall that the exceptions introduced into the Copyright, Designs and Patents Act in 2014 - including parodyquotation and the now defunct private copying - prevent contractual override]
Fair dealing [Singapore introduced an open-ended exception akin to fair use, yet called fair dealing, in 2010: see s35 of the Copyright Act]: whether the fifth factor (from the exception of “fair use”), which relates to obtaining a copy of the work within a reasonable time at an ordinary commercial price ["the possibility of obtaining the work or adaptation within a reasonable time at an ordinary commercial price"], should be removed.
Orphan works: whether orphan works should be addressed by a limitation of remedies approach, a registry approach with upfront fees, or a modified registry approach with fees paid direct to the copyright owner. 
Text and data mining [a specific exception for non-commercial uses was introduced into UK law in 2014, and is currently under discussion for introduction at the EU level]: whether there should be a new exception for copying of works for the purposes of data analysis to facilitate text and data mining. 
Billy has already started
working on his responses,
though he has not been 

too productive so far
Education: whether there should be a new exception for giving or receiving instruction in the educational context, and whether the threshold for copying by or on the premise of a non-profit educational institution should be changed from 5% to 10%. 
Libraries and archives: whether the current exceptions for libraries and archives should be simplified and redrafted. 
Museums and galleries: whether there should be new exceptions for museums and galleries.
Disabilities [again, in the UK context, the relevant exception was broadened in 2014; in this article, among other things, I had argued that the previous, limited, scope of the UK exception was contrary to EU law]: whether certain technical amendments should be made in relation to provisions benefiting those who are blind, visually impaired, or otherwise print disabled. 
IPOS: Whether there should be a new exception for use by the Intellectual Property Office of Singapore (IPOS) of non-patent literature in patent search and examination work. 
Government: whether there should be a new exception for materials on official government registers. 
TPMs: whether the current list of allowable circumventions of technological protection measures (TPMs) should be retained, and what new allowable circumventions of technological protection measures should be put in place [this is not a minor point of the consultation: under review by the Singapore Government there is in fact (and among other things) the lawfulness of using VPNs to circumvent geo-blocks to access copyright content; the debate on VPNs is not limited to Singapore, but it is rather being undertaken in several countries, eg - recently - Australia].

Those interested in answering the public consultation can do so here, or by post to the following address:

Intellectual Property Policy Division
Ministry of Law
100 High Street
#08-02, The Treasury
Singapore 179434

Tuesday, 23 August 2016

Never Too Late: If you missed the IPKat last week

Did the last week of IPKat pass you by? Here is the 110th edition of Never Too Late with what you missed.

* Life after Cartier: The future of blocking injunctions – Simmons & Simmons Rapid Response EventKatfriend Jonathan Sharples looks back at our rapid response event discussing the Cartier decision and the availability of blocking injunctions to prevent trade mark infringement.

The InfoSoc Directive was found to introduce changes allowing graduated response systems as a form of injunction - independently of a finding of their liability, said Hogan J in Sony Music Entertainment Ireland Ltd & Ors v UPC Communications Ireland Ltd. Eleonora Rosati explains the judgment and its place in the context of EU law.

* Wednesday Whimsies
New EUIPO research on infringing business models, ITMA's Autumn seminar, UNION-IP events and more...

Andy Lee brings us an example of paying non-monetary issue fees (in relation to infringement) in practice, in this guest post. 

The US Supreme Court refused to review a big case concerning patentability of a diagnostic method - but on the bright side the US Court of Appeals for the Federal Circuit may have just cleared up some uncertainty to the Alice/Mayo test. Mike Mireles explains all.

*  After the split: so is it HP, Hewlett Packard, Hewlett Packard Enterprise or what?
Neil Wilkof ponders the legacy of brands following a corporate split or acquisition. 


Never too late 109 [week ending on Sunday 17 August] EPLAW mock trials | CJEU "flat rate" reimbursement of legal fees in C-57/15 | Transmission or retransmission? | Judgement in Actavis v ICOS | Collective management of copyright for images displayed by search engines | Corporates and #Rio2016 | Global branding

Never too late 108 [week ending on Sunday 10 August] Limerick Competition - the results | UK finally speaks out about the "facts" of IP post Brexit| Is "Deadwood really cluttering up trade mark registers? | Weekly roundup: Friday Fun 

Never too late 107 [week ending on Sunday 31 July] Article 28 declarations |Costs of ISP blocking injunctions |Friday Fantasies, featuring legal challenges to Brexit and  more |Huawei v Samsung |Hospira v Genentech |Questions on Article 3(b) SPC referred to CJEU |Book Review: Trade Secret Protection |Pokémon Go

Never too late 106 [week ending on Sunday 24 July] | Innovation & IPRs in China & India: Book Review Paris Tribunal rejects request to filter 'torrent' searches on Bing | Red colour mark reinstated in Germany | Update on Napp v Dr Reddy & Sandoz Litgation | Patent jurisdiction tussle in Rhodia v Molycorp | Decision on ISP liability from Rome | Copyright in the Animal Kingdom 

Monday, 22 August 2016

New IP law titles: from EU copyright to ISP liability

For some odd reasons, it seems that many good IP titles are being released at a time of the year when - at least in the Northern hemisphere - the attention for anything that relates to IP is increasingly and acutely replaced by a slightly stronger interest for holidays, sunshine, and the outdoors.

This has been also the fate of the following excellent titles:

The much-awaited second edition of Concise European Copyright Law, edited by Thomas Dreier and Bernt Hugenholtz (Kluwer:2016)

Despite the pretty appearance and title that might induce you into thinking that this is just concise overview of EU copyright law, be reassured that it's not [and not just because the tome exceeds 700 pages]

I first encountered this book (at that time in its first edition) as a student. It was hiding on a library shelf, pressed in between much heavier [in every sense] and thicker copyright books. The fame of the editors prompted me to open and read it: the contributors' ability to analyse relevant EU copyright directives in an essential yet thorough fashion left me very much impressed, and made me realise once again how those who truly master a certain discipline are able to say everything in a way that makes you think that the relevant concepts are actually easy to grasp. The truth is instead that it is not concepts per se which are easy, but it is rather their own explanation which possesses the clarity that can follow a complete understanding.

The second edition has retained this distinctive quality, which makes it a pleasure to read and consult. 

Bonus feature: In my own opinion, the commentary to the InfoSoc Directive (by Stefan Bechtold) is probably one of the most comprehensive and interesting ones currently available.

The Liability of Internet Intermediaries by Jaani Riordan (OUP:2016)

As the author observes in his preface, this is the first book dedicated to the doctrines and remedies which regulate the legal liability of internet intermediaries (or ISPs). 

Developed out Riordan's doctoral dissertation at Oxford, this book will appeal to academics and practitioners alike.

Also thanks to its rational and clear structure, the author has succeeded in a fairly challenging task (that few so far have completed successfully), ie explaining the law of ISP liability by showing also a thorough understanding of the functioning and ongoing development of underlying technologies.

Following an inquiry into relevant legal principles, the book also offers specific insights into topical areas of the law, including - amongst others - data protection, copyright, and defamation.

A particularly interesting section is the one devoted to Member States' case law in the area of website blocking. This is a must-read chapter that - if nothing else - shows how fragmented the relevant and seemingly harmonised ISP liability framework [and relevant remedies against ISPs] remains within the EU.  

Friday, 19 August 2016

After the split: so is it HP, Hewlett Packard, Hewlett Packard Enterprise or what?

Sometimes this Kat is puzzled by the selection of a company name (or names) after a corporate split, spin-off or acquisition. This Kat has
previously shared his bemusement over the selection of the corporate name, Mondelēz International, adopted in 2012 in connection with the spin-off of Kraft Food’s global snack and food brands (as reported on Wikipedia, it “… was suggested by Kraft Foods employees and is a combination of the words for "world" and "delicious" in Romance languages”). Uncertain in its pronunciation and difficult to store in one’s long-term memory, this Kat still wonders. One thing, however, can be said in defense of Mondelēz, after sorting out what the company name refers to, there is never any confusion between it and any other Kraft (or indeed any other) entity. The same cannot necessarily be said about the company names that were selected in connection with the 2015 split of the once-known Hewlett-Packard Company.

In that connection, this Kat recently met an acquaintance, who has a long-time connection with the company. Over a cup of coffee, this Kat innocently asked: “So which HP company do you now work for. And who is running the company”? My acquaintance fumbled his response to both questions, before ultimately coming up with the correct answers. As Kat readers may be aware, the former Hewlett-Packard Company has split into two separate companies. The then existing company changed its name to HP Inc. and retained the company’s personal computer and legacy business (with its ticker remaining HPQ), while a new company was created, called Hewlett Packard Enterprise Co. (with its ticker symbol “HPE”) and consisting of four divisions—Enterprise Group, Services, and Software and Financial Services. In May 2016, it was announced that Hewlett Packard Enterprise would sell its Enterprise Services division to Computer Sciences Corporation. This transaction is to be completed by March 2017; in the meantime, it does not appear that a name has been chosen for this new company.

So what we have is that the existing company has discarded the name Hewlett-Packard Company in favor of HP Inc. (“HP” being a name and mark long associated with the company). The second company is called Hewlett Packard Enterprise Company. (Kat readers will carefully note that the hyphen between Hewlett and Packard has been discarded, and its full presentation, it also includes a logo in the outline form of a green rectangle.) The two companies still both roughly share the Hewlett-Packard nomenclature history.

But it does not have to be this way. Consider Accenture, by some metrics the world’s largest consulting company. Accenture began as the business and technology division of the accounting firm Arthur Andersen and then became known as Andersen Consulting. Tension between the consulting and accounting practices led Andersen Consulting to change its name in 2001 to Accenture. In that same year, the Enron scandal broke, implicating Andersen Accounting and leading to its virtual demise. While the Andersen name will forever be associated with the Enron scandal, Accenture (no whiff of the word “Andersen” in its name) was recently recognized by Fortune magazine among the world’s most admired information technology services companies.

For sure, there may have been a bit of luck involved, since one of the terms of the arbitration award in the dispute between the two companies was that the latter could no longer use the Andersen name—leading to Accenture. But it also points to the risk in sharing a common name, when the two entities are separate and independent, and each goes off in its own business direction. One wonders how Andersen Consulting would have played out if it had retained the name Andersen as the accounting company was being dragged through the mud of Enron.

Regarding Hewlett Packard Enterprise (or HP or HPE or whatever), the issue is in no way connected to negative spill-overs, such as Enron, but rather what kind of corporate identities are being created. Truth be told, trying to keep straight the two companies by name and fields of activity is a constant challenge. One gets the sense that, at least for the moment, those concerned at the two companies seem to want a bit of confusion in their identities. Consider the following, which appears on the Hewlett Packard Enterprise website--
“Hewlett Packard has been in the innovation business for more than 75 years. Our vast intellectual property portfolio and global research and development capabilities are part of an innovation roadmap designed to help organizations of all sizes – from global enterprises to local startups – transition from traditional technology platforms to the IT systems of the future.”
Even after the split, what seems most important is that the two companies both continue to recall their common Hewlett Packard heritage, in haec verba. Whether this is an effective naming strategy in the longer term will remain to be seen.

Never Too Late: If You Missed the IPKat Last Week #Nevertoolate

Uber and Netflix: The challenge of becoming a global brand

'Tell JK I'm still rolling, tell Russell I'm a brand'. Becoming a global brand isn't as easy as Tine Tempah makes it sound - in this article, Neil Wilkof considers the difficulties Uber and Netflix have faced in their efforts to expand into new territories.

Are companies allowed to tweet about #Rio2016? 

Katfriend Oliver Löffel (Löffel Abrar) analyses the legal perils of tweeting using the hashtag #Rio2016 and explores how the position varies in different territories.

Compulsory collective management of copyright for images displayed by search engines: a French cultural exception to EU law 

Katfriend Olivia Klimis and Nicolas Lescot (De Gaulle Fleurance & Associés) take a look at new provisions in the French Intellectual Property Code (IPC) that regulate the publication of a plastic, graphic or photographic work by an online communication service. Do the new provisions comply with EU law? The post picks up where Eleonora Rosati left off in her post on the 2012 French legislation that allows  and regulates the digital exploitation of out-of-print 20th century books

BREAKING: Puns at the ready, Mr Justice Birss delivers epic CIALIS judgment 

At an eye watering 113 pages consisting of 491 paragraphs, Justice Birss's decision in Actavis v ICOS [2016] EWHC 1955 is recommended beach reading for those ready to jet off the south of France for their August holidays.

Norwegian Supreme Court: no "retransmission" without "transmission"

The Supreme Court of Norway has ruled that a TV cable distributor was not retransmitting broadcasts when it received content via an encrypted fibre connection and proceeded to broadcast it to the public. Ellie Wilson brings you the story.

CJEU: "Flat-rate" reimbursement for legal fees must cover a significant part of the costs incurred by the successful party 

In Case C-57/15 United Video Properties, the CJEU held that while Article 14 Enforcement Directive does not prohibit flat-rate reimbursement of legal costs per se, it sets limits on how Member States can set the flat-rate. Namely, the costs to be reimbursed by the unsuccessful party must be "proportionate", which means that they must cover "at the very least, a significant and appropriate part of the reasonable costs actually incurred by the successful party". Mark Schweizer explores how this ties in with the UPC's proposed ceilings on recoverable costs. 

Gathering evidence in patent proceedings? EPLAW's Europe/Japan mock trials may be what you need

September seems to be the month of mock trials, with at least three in the works as far as the AmeriKat is aware. An exciting mock dealing with the new world of biosimilars litigation will be entertaining the lucky attendees at this year's AIPPI's World Congress in Milan (more details to come). Only a few days later on 23 September 2016 in Paris, not one but four Mock Trials will be heard before Judges Shitara, Girardet, Grabinski and Hacon, respectively. Each hearing will address the topic close to any patent litigator's heart - gathering evidence in patent proceedings. The AmeriKat brings you the details. 

Never too late 108 [week ending on Sunday 10 August] Limerick Competition - the results | UK finally speaks out about the "facts" of IP post Brexit| Is "Deadwood really cluttering up trade mark registers? | Weekly roundup: Friday Fun 

Never too late 107 [week ending on Sunday 31 July] Article 28 declarations |Costs of ISP blocking injunctions |Friday Fantasies, featuring legal challenges to Brexit and  more |Huawei v Samsung |Hospira v Genentech |Questions on Article 3(b) SPC referred to CJEU |Book Review: Trade Secret Protection |Pokémon Go

Never too late 106 [week ending on Sunday 24 July] | Innovation & IPRs in China & India: Book Review Paris Tribunal rejects request to filter 'torrent' searches on Bing | Red colour mark reinstated in Germany | Update on Napp v Dr Reddy & Sandoz Litgation | Patent jurisdiction tussle in Rhodia v Molycorp | Decision on ISP liability from Rome | Copyright in the Animal Kingdom 

Never too late 105 [week ending on Sunday 17 July] High Court rejects Seretide combination colour mark in Glaxo v Sandos | Conference report: Should you arbitrate FRAND terms? | Friday Foghorn, including UK IPO invitation for IP valuation research bids

Wednesday, 17 August 2016

Bad and Good News for Bio-Pharmaceutical Patenting in the United States

Two recent developments in U.S. patent law mean mixed news for the bio-pharmaceutical industry.  First, the bad news -- the U.S. Supreme Court declined to accept for review the closely-watched Ariosa Diagnostics v. Sequenom case concerning the patentability of a diagnostic method.  Second, the good news -- a panel of the U.S. Court of Appeals for the Federal Circuit issued the Rapid Litigation Management v. Cellz Direct decision further clarifying application of the two-step Alice/Mayo test (1. claim directed to a patent ineligible category and 2. lack of inventive concept) concerning laws of nature.

Diagnosis?  Too many dumplings.
Prior to the U.S. Supreme Court's issuance of the Mayo v. Prometheus case invalidating claims to a diagnostic, there was general concern about patents inhibiting the use of diagnostics.  Indeed, the U.S. Supreme Court's decision in Association of Molecular Pathology v. Myriad Genetics was also, in part, directed to the use of claimed inventions for diagnostic purposes.  Since the issuance of the famous Alice v. CLS Bank International case and Mayo v. Prometheus, there is a concern that the Supreme Court has pushed too far against patent eligibility. Post-Mayo, it appeared that few diagnostic inventions would be patent eligible. 

In Ariosa Diagnostics v. Sequenom, a three-judge panel of the Federal Circuit found that Sequenom's diagnostic patent was patent ineligible.  This was despite the fact that the discovery made by Sequenom was very beneficial to patients and apparently against previous wisdom concerning the utility of the material used in the diagnostic.  Moreover, the patentee asserted that the natural phenomenon/law of nature was not preempted by the claimed invention.  Notably, Sequenom requested an en banc rehearing, but was denied by the Federal Circuit.  Interestingly, Judge Dyk wrote a concurrence essentially expressing concern that the Mayo case's sweeping test prohibiting the patenting of diagnostics would result in insufficient incentives for the invention of diagnostics.  Importantly, Judge Dyk set forth a way to distinguish and apply Mayo that would allow for some diagnostics to survive the Alice/Mayo test.  However, Judge Dyk signaled to the Supreme Court that it should take the case.  Unfortunately, the Supreme Court did not accept the invitation to hear the closely watched case.
Alice/Mayo back to the Vet!

In Rapid Litigation Management v. Cellzdirect, a three-judge panel of the Federal Circuit found that claims directed to a method to preserve liver cells were patent eligible.  The Federal Circuit further clarified the application of the Alice/Mayo test in the context of laws of nature/natural phenomenon.  As in the Enfish case, the Federal Circuit focused on the first prong of the Alice/Mayo test by finding that the claimed invention was not "directed to" a patent ineligible concept--the discovery that certain liver cells can survive multiple freeze/thaw cycles.  While the discovery was certainly made by the inventors, the patent claimed a "new and useful laboratory technique for preserving" those cells "for later use."  This approach seems to track part of Judge Dyk's analysis in his concurrence to deny en banc review of the Sequenom case.  The Federal Circuit further found that the second prong--inventive concept--was also satisfied to find patent eligible subject matter.  Notably, even though the additional steps were well-known, a method to preserve the cells was not known or present in the prior art.  An instruction to apply a known step a second time in the claims is essentially an inventive concept if prior art directed not to apply the known step again.

A press release issued by Sequenom notes that it has "equivalent" claims in enforceable and valid patents in other jurisdictions, including Europe, Japan and Australia.  It also states it is enforcing those patents in some jurisdictions.  From the perspective of global innovation, will there be less innovation in diagnostics if the Federal Circuit does not continue to "clarify" the U.S. Supreme Court's approach? 

Court Fees - Do you know what to pay?

The IPKat is grateful for this piece penned by Andy LeeSenior Associate at Brandsmiths.

Readers may recall that last September I contributed to an IPKat article on court fees which considered the possibility that a claimant in an IP case could pay the non-monetary issue fee at the commencement of proceedings (£480 at the time, now £528), and then if liability was established at the point of election, if damages were elected for, pay the monetary element of the court fee depending on the level of damages.  I suggested that if an account of profits were elected for then no further fee would be payable because there was authority that suggested such a claim was non-monetary. (Other IPKat articles on court fees are available)

The issue has now had direct consideration in an IP case (in which Brandsmiths are involved) by Master Clark: Lifestyles Equities CV & Anor v Retail Ltd & Ors [2016] EWHC 2092 (Ch). The claim is for trade mark infringement but also inducement of breach of contract. We issued the claim on the basis I had suggested, and given an undertaking in the claim form to pay an appropriate fee if an enquiry was elected for. At the CMC the Defendant had asked for the claim to be stayed until (in its view) the correct fee had been paid. Master Clark asked for written submissions and a formal application which the Defendant then made.

In her judgment Master Clark decided that because there was a free standing contract claim, then a further fee should be paid. However, she then went on to consider the position as if the claim had been for trade mark infringement alone. She confirmed that an account of profits claim was a non-monetary claim (in line with Page v Hewitt). At paragraphs 15 and 16 she then said:

15. The Defendants' third argument was that even if an account of profits is a non money claim, the claim includes a money claim (damages) as an alternative, so that fee 1.1 is payable. I agree with Hildyard J that the Fees Order is not easy to construe, and the logic operating in the distinctions contained in it can be difficult to discern. I also agree with the claimant's counsel that it would be anomalous if a claimant with sufficiently early information about the defendant's activities to enable it to elect for an account of profits in its claim form could pay only the fee 1.5, but a defendant without that information must pay the higher fee. Further, the two forms of relief are not mere alternatives, but are mutually exclusive; and it is not until a claimant elects for an inquiry (which it may not do) that it can be said that its claim is to recover money
16. If, therefore, this claim had been only for trade mark infringement, then I would have held that the appropriate fee had been paid.

Master Clark’s key point was that until the claimant elects to pursue an inquiry as to damages no claim to recover money is brought. Owing to the split nature of IP claims this is not until liability is established, Island v Tring disclosure is provided, and an election made. Therefore, if there had only been a free standing trade mark claim the correct fee would have been paid.

This should therefore be the position with any IP claim because of the split nature. It will be interesting to see how this is applied in practice. As I mentioned in my first post, when the maximum fee was around £2100 it was unsurprising that this issue had not surfaced. However, once the fee was raised to £10,000 (for a claim over £200k) that was a significant rise in the cost of bringing a claim and potentially access to justice. That was even more so when a value of an IP claim is very rarely known at the start. Paradoxically, therefore, by raising the court fees to such an extent, the fee income may actually be reduced.

Wednesday Whimsies

Is it autumn yet?
ITMA Autumn Seminar. This year's ITMA Autumn Seminar will deal with "New Technology IP" on 6 October. With the future of IP shrouded in mystery, or at least, a bit fuzzy with regards to wearable tech, domain names, 3D printing and - of course - Brexit, this conference will deal with the implications of all this new technology, with confirmed speakers from the IPO, Hogarth Chambers, Waterfront Solicitors and more. To sign up or for more information, it's here.

EUIPO - Research on Online Business Models.  The EUIPO has recently published new research into the business models used for online infringement of IP rights. The report, which contains some helpful visuals for explaining the impacts of infringements and analyses 25 distinct business model canvasses, can be viewed here.

What is the term of European patents? A Katpat and thanks go to Mike Snodin for drawing a recent article he co-authored with Jim Boff to IPKat's attention, explaining why patents in EU Member States may not - or at least should not - expire quite as early as some national laws seem to suggest. This article highlights the incompatibility of patent terms with the UK's international obligations and can be read in full here.

Majulah Singapura!
Singapore IP Week. It is a big month for Singapore, which has seen their first ever Olympic gold medal and next Singapore IP Week. It is always interesting to follow Singapore in its efforts to become a major IP hub.  One way it is doing so is to expose top law students to IP law and policy at an early stage of their career. In that connection, the Intellectual Property Office of Singapore (IPOS) recently partnered with the National University of Singapore’s Faculty of Law (NUS) to offer an academic award for the top student in the Foundations of IP Law course in NUS. The first awardee has now completed her internship with IPOS. The IPKat wonders whether this is something that more national IP offices should be doing to promote the field with young lawyers...

EPO Online Services Workshops. A series of workshops introducing the new online filing service at the EPO will be held in London on 13-14 September, 18-19 October and 29-30 November. The workshops are aimed primarily at Online Filing users, professional representatives and support staff/records department staff who are familiar with the basic functions of Online Filing. For more information and to register, see here.

UNION-IP has just informed the IPKat that "Dr Bobby Mukherjee, chief IP Counsel at BAE Systems and former President of IP Federation, will be speaking at the next UNION-IP dinner meeting on 20 September 2016 at the Royal Overseas League.  Bobby will address us on “IP in the Post-Referendum World: An Industry Perspective”.  With his strong understanding of the industry perspective, personal involvement in policy making and close links with international organisations, Bobby is brilliantly placed to keep us up to date on where IP stands  in the current, and somewhat unexpected, period of change".  The details are in the attached flier and link to book is here.

Don't forget to check our events page for more like this.

Specsavers should've gone to went to the IPO! Based on Specsavers' advertising slogan "should've gone to Specsavers", the word "should've" has been the subject of a trade mark application and can be viewed online at the IPO here.

It is a somewhat controversial aspect of trademarks, but common words can be the subject of trade mark applications when they acquire a distinctive link to a company through "use or association" - should the application be granted, Specsavers will Probably [registered by Carling in relation to beer and alcohol products] be lovin' it [trademarked by McDonald's] ...

For more perspective on this story, see here.

Tuesday, 16 August 2016

Article 8(3) of the InfoSoc Directive mandates a substantive change, says Irish Court of Appeal

Mr Justice Gerard Hogan,
who delivered the Court of Appeal judgment
What (if any) steps may a court require internet service providers (ISPs) to take to assist copyright holders to identify customers who use the network provided by these providers to access the internet for the purpose of illegally downloading or uploading copyright material? What kind of jurisdiction does Article 8(3) of the InfoSoc Directive, as implemented into the laws of Member States, confer upon national courts?  

These are the very questions that the the Irish Court of Appeal (Hogan J) addressed in an interesting judgment issued at the end of July, further to the appeal brought by UPC against the 2015 judgment of Cregan J in the High Court. There, Cregan J had ordered this ISP to implement a form of graduated response system (GRS) within its network for the benefit of - amongst others - Sony Music. 

Apparently, the type of GRS order issued by the High Court was the first of its kind within the EU.

What is GRS?

As explained by Hogan J, "the term GRS is not a term of art, but it refers to types of steps which an ISP may be required to take against copyright infringers, ranging from warning letters at one end of the spectrum to orders blocking access to particular websites at the other." 

The GRS in this case

In the particular case at hand, the High Court had ordered UPC to send each relevant subscriber a cease-and-desist letter upon receipt of notification of the first and second copyright infringement notifications received from relevant rightholders. 

On receipt of the third copyright infringement notice, UPC would then be required to send the relevant rightsholders a notification that the particular subscriber had been the subject of three such notifications. 

The rightsholders would then be entitled to apply to court for an order terminating the subscriber’s internet broadband service. 

Not only did the High Court impose a monthly limit of 2,500 notifications and exclude business users from the GRS, but also mandated upon rightholders to pay 20% of any capital expenditure incurred by UPC (with a cap of €940,000 on each such expenditure). 

Finally, while the order could potentially last indefinitely, the High Court provided that it would be reviewed within in five years from the date of its perfection. 

GRS explained:
(1) User engaging
in copyright-infringing activities
The appeal

Hogan J noted how the appeal concerned, specifically, the jurisdiction of the High Court to grant GRS injunctions of the kind described above and, more generally, "issues of enormous importance so far as the effective protection of copyright is concerned."

After highlighting the changes brought about by technological evolution and resulting challenges for the music industry, Hogan J noted how over time seeking remedies against ISPs has been also prompted by the ineffectiveness of remedies against primary infringers. Paraphrasing the content of Recital 59 in the preamble to the InfoSoc Directive, the judge observed that ISPs, "after all, are the entities who are far better placed than anyone to identify the customers who have used their services for infringing activities. It is they alone who can match the internal protocol addresses of consumers with infringing activities or take steps to block access to websites who specialise in copyright infringement activities."

This said, the judge deemed it necessary to address the rights and remedies available to rightholders under Irish and EU laws, respectively.

The position under national law: has implementation of Article 8(3) of the InfoSoc Directive changed the law?

With particular regard to the former, the judge undertook an analysis of relevant authorities by noting that a number of basic juristic realities are to be considered, including that ISPs are non-infringing entities. In this respect the question becomes whether Article 8(3) of the InfoSoc Directive as transposed into Irish law by s40(5A) of the Copyright and Related Rights Act (CRRA) has changed the general principle that Irish courts have no jurisdiction to grant an injunction against a defendant who has committed no cognisable legal wrong or where such a wrong is not threatened. 

This question was also prompted by awareness that (as noted by Cregan J in his first instance judgment), prior to the insertion of the new s40(5A) CRRA in 2012, Irish courts had not been able to provide effective remedies to ensure an adequate protection of copyright in the online environment. Indeed, in his 2010 judgment in EMI Records, Charleton J had concluded that Irish courts lacked jurisdiction to order non-infringing ISPs to take action against customers who used their services for the purposes of copyright infringement. In this respect, Charleton J had found that, because of the absence of any legal power for the “blocking, diverting or interrupting of internet communications intent on breaching copyright”, Ireland was not “yet fully in compliance with its obligations under European law.”

(2) The innocent ISP
Following this decision, relevant rightholders commenced proceedings against the Irish State for failure to give effect to the requirements of Article 8(3) of the InfoSoc Directive [this is known as Francovich or state liability principle: in relation to the UK, I suggested this as possibility in case the Court of Appeal had reversed the decision of Arnold J in Cartier and denied the availability of blocking injunctions in trade mark cases: see here], but before the litigation could be resolved the Irish Government adopted s40(5A) CRRA.

The position under EU law 

Hogan J turned to considering relevant case law of the Court of Justice of the European Union (CJEU) in relation to Article 8(3) of the InfoSoc Directive [in particular, ScarletNetlogand Telekabel] and the third sentence in Article 11 of the Enforcement Directive [L'Oréal]

He noted how "it is ... hard to avoid the conclusion that the drafting of both Article 8(3) of the 2001 Directive and the third sentence of Article 11 of the 2004 Directive left a good deal to be desired". Indeed, "[i]f the language of Article 8(3) ... is taken at face value, then, at least so far as Ireland is concerned, Article 8(3) changed nothing since copyright holders were always in a position to apply for injunctions against ISPs." [the problem, as EMI Records demonstrates, was however obtaining an injunction against non-infringing ISPs]

However, a face value interpretation does not appear correct: in fact, "it is ... clear from a series of decisions of the Court of Justice that Article 8(3) of the 2001 Directive (and the companion provisions of Article 11 of the 2004 Directive) have, in fact, changed the law, by mandating the creation of a new form of injunction directed against non-infringing parties which finds no real counterpart in our [read: Irish] system of civil procedure. Again, the essential question in the present case is the extent to which Article 8(3) of the 2001 Directive has effected such a change."

While Article 8(3) has mandated a substantial change, the EU framework provides some in-built limitations to the scope of any such injunctions against ISPs, notably those contained in Articles 15(1) of the Ecommerce Directive [no general obligation to monitor], 3 of the Enforcement Directive, 8 of the InfoSoc Directive, and 1(3a) of the Framework Directive 2002/12.

(3) The notifications
The substantive change brought about by Article 8(3) of the InfoSoc Directive

Having reviewed relevant CJEU decisions, Hogan J concluded that [para 49] Article 8(3) of the InfoSoc Directive "does not simply seek to fill a jurisdictional lacuna in the systems of civil procedure of the Member States by allowing rightholders to apply for an injunction against non-infringing ISPs. This provision is not simply procedural, but it potentially changes the substantive law by requiring Member States to provide their judicial systems with the authority to grant injunctions of this kind, subject only to certain safeguards (such as the prohibition against general monitoring of users contained in Article 15(1) of the Electronic Commerce Directive)."

More specifically [para 52], "Article 8(3) (as transposed by s. 40(5A) of the 2000 Act) certainly changed the substantive law in relation to injunctions so far as this jurisdiction is concerned. While it is true that Article 8(3) did not quite do so in express terms, a series of judgments of the CJEU – ranging from L’Oréal onwards – has clearly confirmed that Article 8(3) has had this effect by requiring national courts in appropriate cases to grant injunctions against non-infringing ISPs. Certainly, by virtue of this Court’s duty of loyal co-operation and the general principle of interpretation conformé reflected judgments such as Case C-106/89 Marleasing S.A., it is necessary for this Court to construe s. 40(5A) of the 2000 Act as having had this effect."

Article 8(3) injunctions as a regulatory order

This said, and having thus crossed the "legal Rubicon of vesting the High Court with a jurisdiction to grant an injunction against a non-infringing ISP" [para 63], "then what follows is really all merely a matter of degree. It could be said that any order made in those circumstances begins to take on the character of a regulatory solution to the problem, precisely because the order is no longer directed to an infringing party and also because the court is no longer applying purely traditional legal principles such as might have been applicable to determine, for examine, whether to grant an injunction or damages against a defendant who in appropriate civil proceedings had been found guilty of copyright infringement."

Compatibility of the injunction actually granted with Article 8(3) of the InfoSoc Directive

Having exhausted the issue of jurisdiction, Hogan J turned to the consideration of whether the injunction granted by the High Court was: (i) necessary; (ii) that the costs involved were not excessive or disproportionate and that the order itself should not be unduly complicated; (iii) that the cost sharing proposals were fair and reasonable; (iv) that the order respected the fundamental rights of the parties affected, including internet users; and (v) that the duration of the proposed injunction and the provisions for review were reasonable.

In upholding the GRS injunction granted by the High Court, Hogan J agreed with the findings of Cregan J, except on two issues, ie: review after five years, and the costs of future applications. With particular regard to the latter, Hogan J did not think that it would be appropriate for the High Court to make anticipatory orders in relation to future proceedings. 

(4) Patience has reached its limits

This decision is particularly interesting in that it highlights the substantive breadth of Article 8(3) of the InfoSoc Directive: this provision does not merely mandate the availability of injunctions against intermediaries, but it does so independently from a finding of their liability.

This conclusion appears in line with the relevant EU framework, as interpreted by the CJEU. To the judgments reviewed by the Court of Appeal, it is worth adding a mention of the pending reference in Mc Fadden, C-484/14 [the decision on which is expected on 15 September].

This is a reference for a preliminary ruling from the Regional Court, Munich I (Germany), and was made in the context of proceedings between Sony and a person (Tobias Mc Fadden) who operates a business selling and renting lighting and sound systems for various events.

Mc Fadden owns a Wi-Fi connection that is open to anyone to use as it not protected by any password. In 2010 that connection was used by someone other than Mc Fadden to download unlawfully a musical work to which Sony owns the copyright. Following Sony’s formal notice, Mc Fadden sought a negative declaration from the referring court. This dismissed it and upheld Sony’s counterclaim, granting an injunction against Mc Fadden on the ground of his direct liability for the infringement at issue and ordering him to pay damages, the costs of the formal notice, and costs. Mc Fadden appealed that decision, arguing that the provisions of German law transposing Article 12(1) of the ECommerce Directive would shield him from liability for third-party infringements. The Regional Court held the view that Mc Fadden would not be directly liable, but rather indirectly liable according to the German doctrine of Störerhaftung, on the ground that his Wi-Fi network had not been made secure. This court decided nonetheless to stay the proceedings and seek guidance from the CJEU on a number of issues.

In his Opinion [here] on 16 March last, Advocate General (AG) Szpunar held [para 68] that  – also further to Recital 45 in the preamble to the Ecommerce Directive – "it is clear from a combined reading of paragraphs 1 and 3 of Article 12 of Directive 2000/31 that the provisions in question limit the liability of an intermediary service provider with respect to the information transmitted, but do not shield him from injunctions.”

While the conclusion of the Irish Court of Appeal and AG Szpunar appears correct from an EU law standpoint, it is not so straightforward within all EU Member States. For instance, in a post by Nedim Malovic this blog reported that a few months ago a Swedish court refused to grant an injunction against an ISP to block access to The Pirate Bay, on grounds that copyright law in Sweden requires that the addressee of an injunction (an ISP in this case) has aided and abetted a third-party infringement in a criminal sense, ie by providing some sort of direct assistance to the primary infringers. According to the Stockholm District Court this would not be the case of an access provider.

All in all, given the different approaches adopted across the EU, more than the substantive value of Article 8(3) of the InfoSoc Directive, in practice what can be seen is - in line with Hogan J - that the drafting of Article 8(3) has left a good deal to be desired ...

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