Sunday, 14 September 2014

Beware of Predatory Publishers

Contributors to JIPLP sometimes email to say that they have been invited to write for often impressive-sounding journals of which they have never heard, and which offer to charge them for the privilege of publishing their work.  These publications are appropriately termed "predatory publishers".  As Wikipedia explains
"In academic publishing, some publishers and journals have attempted to exploit the business model of open-access publishing by charging large fees to authors without providing the editorial and publishing services associated with more established and legitimate journals. "Beall's List", a regularly-updated report by Jeffrey Beall, sets forth criteria for categorizing predatory publications and lists publishers and independent journals that meet those criteria".
Jeffrey Beall's Scholarly Open Access blog carries a list of hitherto identified predatory publishers which, sadly, is a long one. The 2014 list can be surveyed here.

I have just received an email, the relevant parts of which are reproduced below:
13 - September - 2014 
Dear Dr. Jeremy Phillips,

I came across to your research paper titled "Switzerland still not part of Germany, even for trade mark purposes" and feel that your research is having a very good impact
[this "research paper" is actually a 1,350 word Current Intelligence note published this April. I'm not aware of it having any impact on anyone ...].
With a view to begin a long-term fruitful association with you, I invite you to submit your upcoming research articles / papers for publication in Global Journal of Management and Business Research (GJMBR), an international double blind peer reviewed research journal [Has any reader of this blog come across this title or any articles published in it? Has anyone been invited to peer-review any submission made to it? Has anyone had an article rejected by it? It would be good to know].

This may be noted that due date of forthcoming issue GJMBR is 15 October, 2014.

The process of publication is expected to be completed within three to five weeks. Our processes follow rigid quality control measures and comply with international standards in journal publishing. For more details please refer to websites https://GlobalJournals.org (Core Website) and http://JournalofBusiness.org

... 
Yours Sincerely,

Dr. R. K. Dixit

Chief Author (Hon.)

(Fellow of Association of Research in Business [I can find no evidence to suggest that this Association exists])

Global Journals Incorporated [no.150 on Beall's List]
Naturally it is for JIPLP contributors to decide where and how they submit their articles and case notes. However, they are advised to check carefully whether the journals to which they send their work are those which will enable them to reach their target readership, will reflect well upon their professional or scholarly reputation and which offer a truly interactive and constructive peer review and editorial process that will help enhance the quality and the readability of the published product.

Wednesday, 10 September 2014

Karen Millen v Dunnes Stores: CJEU clarifies ‘individual character’ requirement for Community designs

Author: Nina O'Sullivan (King & Wood Mallesons SJ Berwin, London)

Karen Millen Fashions Ltd v Dunnes Stores, Dunnes Stores (Limerick) Ltd, C-345/13, EU:C:2014:2013, Court of Justice of the European Union, 19 June 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu153, first published online: September 9, 2014

The Court of Justice of the European Union (CJEU) has confirmed that, when assessing the individual character of a Community design, it is not legitimate to do so by reference to a combination of features taken from a number of earlier designs. The assessment must instead be made by reference to specific earlier designs taken individually. The CJEU has also confirmed that the holder of a Community design does not need to prove that its design has individual character but must merely indicate what constitutes the individual character of that design.

Legal context

Council Regulation 6/2002 on Community Designs provides for two forms of protection for Community designs: the registered Community design (RCD) and the unregistered Community design (UCD).

Article 4(1) of the Regulation provides that a design will be protected by a Community design to the extent that it is new and has individual character.

Article 6(1) provides that a design will have individual character:
[I]f the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:

(a) in the case of an unregistered Community design, before the date on which the design for which protection is claimed has first been made available to the public … .
Article 11 provides that an unregistered design that meets the requirements in Section 1 (i.e. Articles 1-9) of the Regulation shall be protected by UCD for three years from the date on which the design was first made available to the public within the Community.

In relation to infringement proceedings, Article 85(2) states:
[T]he Community design court shall treat the Community design as valid if the right holder produces proof that the conditions laid down in Article 11 have been met and indicates what constitutes the individual character of his Community design … .
Facts

In 2005 Karen Millen, a company, began marketing three women's fashion garments in Ireland: two striped shirts (one blue, one brown) and a black knit top. Dunnes Stores representatives bought samples of the garments and arranged for copies to be made on its behalf, which it put on sale in its Irish stores in late 2006. In January 2007, Karen Millen commenced proceedings in Ireland against Dunnes Stores for infringement of the UCD in its designs. Dunnes Stores accepted that it had copied the designs but disputed that the designs for the three garments were protected by UCD.

In particular, Dunnes Stores argued that:

* the garments did not have individual character as required by Article 6(1) and

* Karen Millen was required to prove, as a matter of fact, that the garments had individual character.

The High Court of Ireland decided in favour of Karen Millen. On appeal, the Irish Supreme Court referred two questions to the Court of Justice of the European Union (CJEU), summarized as follows:
When assessing the individual character of a design for UCD, is the overall impression it produces on the informed user to be considered by reference to whether it differs from the overall impression produced on such a user by:

* any individual design which has previously been made available to the public, or

* any combination of known design features from more than one such earlier design?

Is a Community design court obliged to treat a UCD as valid where the right holder merely indicates what constitutes the individual character of the design or is the right holder obliged to prove that the design has individual character?
Analysis

Individual character

The first question concerned the assessment of the overall impression that a design produces on the informed user compared to that produced by any earlier design which has been made available to the public. Dunnes Stores had relied upon a range of features taken from a number of earlier designs which it argued, taken in combination, meant that the Karen Millen designs lacked individual character.

The CJEU decided that the assessment of individual character should be made by reference to one or more specific earlier designs, taken individually. It rejected Dunnes Stores' argument that the court could take into account a combination of features drawn from a number of earlier designs.

In its earlier decisions on Community designs (Judgment in PepsiCo v Grupo Promer Mon Graphic, C-281/10 P, EU:C:2011:679, and Judgment in Neuman & others v José Manuel Baena Grupo, C-101/11 P and C-102/11 P, EU:C:2012:641), the CJEU had confirmed that, where possible, the informed user will make a direct comparison between the designs at issue. The CJEU emphasized, however, that it did not thereby shut out the possibility of an indirect comparison; a direct comparison could be impracticable or uncommon in the relevant sector (eg because of the characteristics of the items). Accordingly, in some cases it would be legitimate for a court to base the assessment on an imperfect recollection of the overall impression produced by those designs. However, as Advocate General Wathelet indicated in his Opinion, even an indirect comparison based on imperfect recollection was still conducted by reference to specific designs, rather than on specific features from several different earlier designs.

Dunnes Stores relied upon recitals 14 and 19 to the Regulation, which use the expressions ‘the existing design corpus’ and ‘in comparison with other designs’, respectively. However, the CJEU noted, these expressions were not carried through to the articles of the Regulation and did not, in any event, support the view that it was legitimate to take a combination of features in isolation from a number of earlier designs. Dunnes Stores also referred to Article 25(1) of the Agreement on Trade-related Aspects of Intellectual Property Rights (‘TRIPS Agreement’) which provides that ‘… Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features … ’. However, the CJEU noted that this was optional wording; Member States were not required to provide for novelty or originality of a design to be assessed in comparison with such a combination of features.

Proof of individual character

On the second question, the CJEU decided that a UCD holder does not have to prove that its design has individual character, but only has to indicate what constitutes the individual character of the design. The wording of Article 85(2) was, the CJEU said, unambiguous. A requirement of proof of individual character would be contrary to the presumption of validity; it would make nugatory the requirement in Article 85(2) that the design holder must indicate what constitutes the individual character of the design and the possibility for the defendant to challenge validity. It would also be contrary to the objective of simplicity and expeditiousness which underpinned the reasoning behind the UCD. Accordingly, the UCD holder was simply required to identify the features of the design which gave it individual character.

Practical significance

Recitals 16 and 25 to the Regulation provide the context for the introduction of UCD, specifically noting its value for those sectors which produce large numbers of designs which may only have a short market life (or indeed which may not actually be commercialized). For those industries—a major one being the fashion industry—the UCD is a valuable right in that it provides an appropriate level (and term) of protection without imposing registration formalities and attendant costs. That said, where appropriate, applying for registered protection through an RCD does have distinct advantages over relying upon UCD protection. As well as providing a longer term of protection (up to 25 years), the registered right can more easily be exploited and enforced (with UCD, there is the additional need to prove copying, over and above the requirement that the alleged infringement does not produce a different overall impression on the informed user). Further, from October 2014, some infringements of registered designs can be the subject of criminal prosecutions in the UK.

The CJEU's decision, while framed in the context of UCD, applies equally to the assessment of individual character of RCDs and harmonized designs under the Design Directive (98/71). It sets a high hurdle for a party wanting to challenge the individual character of a design. The burden of proof is on that party to show that the design does not have individual character, which it will have to prove by reference to specific, earlier designs taken individually, rather than seeking to combine a number of features from the ‘design corpus’ as a whole. This is a particularly important finding for the fashion industry—where it is common for designers to draw on design aspects from a range of previous collections—but also for other design-led industries.

Tuesday, 9 September 2014

Parody and damages for wrongful oppositions: two calls for articles

JIPLP's Readers and Writers Linked-In group is a forum for the exchange of ideas by contributors, readers and subscribers to the Journal of Intellectual Property Law & Practice. Right now it has 272 members and it has already been the source from which a number of articles have been inspired, commissioned and ultimately published.

In the past few days, suggestions for two articles have been posted on this group. One relates to parody as a defence: both copyright and trade mark law may be prima facie infringed unless a defence of parody is raised, yet the parameters of that defence in respect of those two bodies of law are not usually coterminous. So what happens when a figurative trade mark or logo is parodied, and how does one advise a client in such a case?

The other relates to the possibility of securing damages for losses caused by a bad-faith trade mark opposition. This has been recognised by the Civil Division of the Supreme Court of Panama -- but might it be available elsewhere, for bad faith oppositions to patents as well?

If you are interested in writing on either of these subjects, do let JIPLP Commissioning Editor Sarah Harris know, by email to sarah.harris@oup.com.

You can check out the JIPLP Readers and Writers Group here.

Monday, 8 September 2014

The second Green Revolution: when no one seems to take the lead

Here, in full, is the September 2014 JIPLP editorial, written by founder Editorial Board member Neil Wilkof:
The second Green Revolution: when no one seems to take the lead

There are issues of importance to the IP community that sometimes seem to slip our collective attention. One is the role of the public, versus the private, sector in facilitating innovation and entrepreneurship. This topic was forcefully addressed by the English-based academic, Mariana Mazzucato, in her widely discussed 2013 book, The Entrepreneurial State– Debunking Public v Private Sector Myths. The author unabashedly and relentlessly makes the argument that the proper role of government is not simply to facilitate or foster innovation and entrepreneurship. Rather, government should play a proactive role in carrying out the innovation function, in parallel with (or even in primacy over) the private sector.

Mazzucato brings various examples, many but not exclusively from the U.S., to show that the state may often be best situated to jump-start innovative activity. More often than not, however, the private sector then seeks to take advantage of these public initiatives to reap (often oversized) commercial benefit without recompense to the public. Her poster child for such exploitation is Apple which, she claims, merely designed and assembled the smartphone on the back of publicly funded basic research. Readers are invited to read Mazzucato's arguments and reach their own conclusions. What seems unassailable, however, is that the IP community has paid scant attention to her work.

A good place to test Mazzucato's views is the question of who will take the lead in carrying out the so-called second Green Revolution. The first Green Revolution, in the 1960s, headed off potential mass famine, particularly in certain Asian countries, by improvements in higher-yielding wheat and especially in rice varieties. While these developments are often identified with the late Norman Borlaug, the initiative was the collective result of government support together with assistance from international research centres and largely American charities. The challenge today is somewhat different, directed at developing more targeted varieties, the most important of which may be for the benefit of rice farmers working the least productive lands.

So what is the problem? As described by The Economist (“A second green revolution” and “a bigger rice bowl”, 10 May 2014), there is no-one ready to take the initiative. Unlike developing new varieties of maize and wheat, areas in which agribusiness is active, the market for monetizing research in new varieties of rice is apparently small. This is because farmers can keep seeds from one harvest for planting in the upcoming harvest with no reduction in yield. As a result, farmers have little or no need to buy seeds for each planting season, which serves as strong disincentive to entry by the agribusiness industry. Seen in terms of market failure, it is no surprise that most research is being carried out by the state. The problem is that there is not enough of it.

Mazzucato does not like relying on market failure as the basis for governmental involvement because it puts the state in a reactive, rather than a proactive, position. But, presumably, she would “tolerate” governmental involvement under such circumstances. However, it does not appear that government is materially more motivated than the private sector to support this initiative. The problem is that government support for such research means government outlays. In an era of shrinking public budgets, support for research on new varieties of rice varieties is a low priority. As well, to the extent that the research involves genetic modification, political resistance may make more active governmental involvement well-nigh impossible in certain jurisdictions. In these circumstances, lack of government will and public support are both missing. That said, Mazzucato seems hard-pressed to offer any prescription how to engage the public in such circumstances; the invitations have been sent, but no one has come to the party.

Seen from the vantage of the IP community, this seeming sad state of affairs puts the public-private debate, as framed by Mazzucato, in bas-relief. As such, the circumstances surrounding the current challenges to funding research in new rice varieties would seem to be a worthy agenda item for IP associations to consider. More generally, how research gets funded is a topic that should occupy the IP community on an ongoing basis, given the importance of funding levels and sources on innovation, entrepreneurship and the IP professions.

September's JIPLP now out

The September issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available in full, online, to its e-subscribers.  The print version will be with subscribers in the near future, if they have not received it already.  Here's a reminder to readers: you don't have to be a subscriber in order to read JIPLP content: you can purchase limited-term online access on a per-item basis via the journal's website here.

The contents of the September issue, listed below, reflect the breadth of coverage of intellectual property to which JIPLP aspires, in terms of variety of IP right, geographical spread and to the different things that people do with IP rights. We hope you like it.

Editorial

Current Intelligence

Articles

From GRUR Int.

IP in Review