Friday, 30 October 2009

Latest issues

The November issue of JIPLP has been available online for some weeks. In case you have not had a chance to check it out, you can read the contents here. Unusually -- since the content of JIPLP tends to tilt in favour of the registered intellectual property rights -- this issue contains three articles on copyright and authors' rights:
* Rubén Iglesias Posse writes on "The legal status of copyleft before the Spanish courts"
* Navajyoti Samanta and Shameek Sen tackle "Copyright exhaustion in India and the USA: a comparative critique"
* Robert Clark provides a critical appraisal, "Public lending right in Ireland: dead poets need not apply".
Subscribers to the online version might like to see how much of the December 2009 issue is already available to them by clicking here. Leading features in that issue include
* Christopher Wadlow, "The great Kenyan coffee crop disaster: a cautionary tale of coffee and counterfeiting" -- this year's Christmas Special, and a remarkable story of misinformation, myth and misunderstanding [available online since 13 October];
* Julian Cockbain's "Petitions for review of European Patent Office (EPO) Appeal Board decisions by the EPO Enlarged Board of Appeal", which has been available online since 23 October; you can read the abstract here.

Monday, 26 October 2009

Domain names: a UDRP epiphany

Tony Willoughby writes:

In my article "Domain name disputes: the UDRP 10 years on", Journal of Intellectual Property Law & Practice 2009 4: 714-725; abstract here), I expressed certain views about the advisability/acceptability of panellists (dispute adjudicators) ‘stretching’ the meaning of the UDRP to cover modern domainer practices.

The situation has changed dramatically with two decisions issued recently by Scott Donahey, the distinguished US panellist who decided the very first case under the UDRP (WIPO Case No. D1999-0001). He has had an epiphany, now realising that he and most of the rest of us panellists have misunderstood the UDRP for the last 10 years. Scotts’ two recent decisions (as with all WIPO UDRP decisions) are to be found on the part of the WIPO website at www.wipo.int dealing with domain names. They are WIPO Cases Nos. D2009-0643 (mummygold.com) and D2009-0786 (octogen.com).

The upshot is that he and some other of the leading WIPO panellists are now willing to find that a domain name registration is an abusive registration under paragraph 4(a)(iii) of the Policy notwithstanding that there is no evidence to suggest that the domain name was registered in bad faith. In other words, the ‘and’ in paragraph 4(a)(iii) can mean ‘or’. It may also lead to renewals equating to registrations, contrary to the consensus view to date (See paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

For an indication of the extent of the change advocated/applied in these decisions reference should be had to that part of the WIPO index dealing with good faith registration and bad faith use, which lists a series of cases all taking a materially different line.

The matter is currently the subject of some debate and my concern is that nobody should assume that my preferred route (as described in the article) is the likely route forward for the next decade. Indeed, it may soon be seen to be heterodox.

Thursday, 15 October 2009

Adequately identifying trade secrets in California trade secret misappropriation litigation

Authors: Robert B. Milligan and Carolyn E. Sieve (Seyfarth Shaw LLP, Los Angeles)

Citation: Journal of Intellectual Property Law & Practice 2009 4(10):703-705; doi:10.1093/jiplp/jpp139

Brescia v Angelin, 172 Cal. App. 4th 133, 17 March 2009

The California Supreme Court left undisturbed a Court of Appeal decision that trade secret identification statements need only be reasonable under the circumstances, and that ‘[t]he identification is to be liberally construed, and reasonable doubts concerning its sufficiency are to be resolved in favor of allowing discovery to commence’. The Court of Appeal found the identification statement of a manufacturer of high protein, low carbohydrate pudding reasonably specific and reversed the trial court's decision dismissing the manufacturer's case.

Legal Context

California Code of Civil Procedure 2019.210 requires, in litigation under California's Uniform Trade Secrets Act, that the plaintiff identify the alleged misappropriated trade secret with ‘reasonable particularity’ before commencing discovery relating to the trade secret. Parties often dispute the meaning of identifying trade secrets with reasonable particularity, which can lead to protracted discovery disputes.

Section 2019.210 has four primary purposes: (i) it promotes well-investigated trade secret claims and discourages the filing of meritless claims; (ii) it limits the potential for overreaching in discovery as a means to obtain defendants' trade secrets; (iii) it assists the court in framing the scope of discovery; and (iv) it enables defendants to formulate complete defenses and prepare effectively for trial: Computer Economics, Inc. v Gartner Group, Inc., 50 F. Supp. 2d 980 (S.D. Cal. 1999) (describing legislative history of section 2019.210).

The very few reported decisions that discuss courts' assessments of trade secret identification statements omit specific references about the parties' disputes to protect the information claimed as secret. Indeed, until 2005, no published California court decision had set forth any definitive guidelines on what constitutes ‘reasonable particularity’.

In 2005, a California appellate court for the first time attempted to define ‘reasonable particularity’ under section 2019.210 in Advanced Modular Sputtering, Inc. v Superior Court, 132 Cal. App. 4th 826 (2005). It held that while absolute precision is not required at the pre-discovery stage, the identification must be sufficiently specific to distinguish the trade secrets from matters known in the trade. The court observed that ‘[t]he degree of "particularity" that is "reasonable" will differ, depending on the alleged trade secrets at issue in each case. Where ... the alleged trade secrets consist of incremental variations on, or advances in the state of the art in a highly specialized technical field, a more exacting level of particularity may be required to distinguish the alleged trade secrets from matters already known to persons skilled in that field’ (id at 836).

The court found that, to comport with the ‘reasonable particularity’ requirement, the plaintiff must make some showing that is reasonable, ie fair, proper, just, and rational, under all the circumstances to identify its alleged trade secret in a manner that will allow the trial court to control the scope of subsequent discovery, protect all parties' proprietary information, and allow them a fair opportunity to prepare and present their best case or defense at a trial on the merits (id at 836).

Facts

William Brescia accused his competitors of stealing his ideas by producing and selling a high protein, low carbohydrate pudding based on his alleged formula and business plan. Brescia's competitors sued him for trade libel, and Brescia countersued for misappropriation of trade secrets. He added Sylvester Stallone, chairman of the board of the competitor company, and its CEO John Arnold, as cross-defendants more than two years after the cross-complaint was filed, alleging that they had conspired with the competitors to steal his ideas.

Brescia's trade secrets were initially described in the cross-complaint as ‘a formula, manufacturing process, marketing plan, funding plan and a distribution and sales plan for a high protein, low carbohydrate pudding with an extended shelf life and a stable and appealing consistency and most important, when mass produced, an appetizing flavor’ (172 Cal. App. 4th at 138–139).

Brescia later filed under seal the trade secret designation that was at issue in the appeal. In the statement, Brescia identified two alleged trade secrets: a pudding formula and a manufacturing process. The pudding formula was described as ‘Attached under seal as exhibit 1 is a single page, containing a list of the 15 specific ingredients that constituted Brescia's pudding formula in the last quarter of 2003. The list identifies each ingredient by its common name and the percentage it constitutes of the total pudding. The second list identifies the same 15 ingredients listed by their supplier and brand name. Brescia alleges that this formula is a trade secret’. Exhibit 1 contained two lists, one of which gave the common name of 15 ingredients and their respective percentages in the final product ranging from 82.6 to 0.03 per cent, and the other of which gave the brand name and supplier.

The trade secret designation also described Brescia's manufacturing process: ‘Attached under seal as exhibit 2 is a single page description of the manufacturing process for pudding described above as of the last quarter of 2003. Brescia alleges that this manufacturing process is a trade secret.’ The exhibit listed each step in the mixing, testing, and code marking of the pudding.

Stallone and Arnold argued that the trade secret designation was insufficient ‘because neither the formula nor the manufacturing process was distinguished from matters within the general knowledge of persons skilled in the commercial food science field’. They asked the court to take judicial notice of documents from the United States Patent and Trademark Office. These showed that a patent application of a cross-defendant who (according to Brescia's cross-complaint) allegedly helped Brescia develop his formula had been rejected by the office, ‘concluding that the high protein, low carbohydrate pudding formula submitted by [cross-defendant] Scinto and its ingredients would have been "obvious" to persons of "ordinary skill" in the food science industry when the formula was developed’.

Stallone and Arnold argued that, because the pudding formula and ingredients were obvious to persons of ordinary skill in the industry, Brescia ‘should be required, as part of his designation, to describe what it is about his formula that distinguishes it from matters of general knowledge within the food science industry, and thus makes it a trade secret’.

After some procedural manoeuvrings, the trial court entered judgment in Stallone and Arnold's favour on the trade secret misappropriation claim, after it sustained their demurrer to the third amended cross-complaint, based on the alleged inadequacy of Brescia's trade secret designation statement.

The trial court reasoned that the trade secret designation was defective because it made ‘no attempt ... to identify why certain aspects or all of the aspects of the manufacturing process are anything other than matters generally known to persons skilled in the field’, and ‘no attempt ... to indicate why the peculiar product formulation here that is stated with precision is a trade secret, as opposed to the typical ingredients involved in formulating other low-calorie, low-fat puddings’.

The trial court found it significant that Brescia's submission was silent as to whether the alleged trade secrets were known to skilled persons in the field: ‘So by its silence it's doomed to failure, because there's no attempt even to commence to describe why this formula is unique and not known to others. ... It just is a formula. Likewise, it is a cooking or manufacturing process of many steps. Some of which apparently, according to matters of which I believe I can take judicial notice are actually fairly familiar when you are trying to make a comparable product.’

Allowing Brescia's appeal, the California appellate court concluded that his trade secret identification statement was sufficient and remanded the case to the trial court. Though Stallone and Arnold requested that the California Supreme Court review issues regarding Brescia's trade secret identification, in June 2009 that court denied Stallone and Arnold's petition for review. The Court of Appeal decision therefore stands and is binding precedent in California.

Analysis

The California Court of Appeal held that Brescia's trade secret designation met the reasonable particularity standard of section 2019.210. According to Brescia's identification statement, two alleged trade secrets were identified: the pudding formula and the manufacturing process. The statement ‘particularly described’ the details of the pudding formula as of the last quarter of 2003, listing the 15 specific ingredients by common name and the percentage of the total pudding. The statement also listed the same 15 ingredients by their supplier and brand name and particularly described each step in the mixing, testing, and code marking of the pudding.

Brescia's statement was adequate because (i) it permitted Stallone and Arnold to investigate possible defenses; (ii) there was no deficiency in the trade secret designation that would hamper its ability to protect the parties' proprietary information or to determine the scope of relevant discovery; and (iii) there was no showing that the trial court was unable to understand the nature of the alleged secrets and fashion discovery.

The appellate court noted that the nature of the identification required in any particular case need only be reasonable under the circumstances. It held, contrary to the trial court, that section 2019.210 does not require in every case that a trade secret claimant explain how the alleged trade secret differs from the general knowledge of skilled persons in the field. Such an explanation is required only when, given the nature of the alleged secret or the technological field in which it arises, the details provided by the claimant to identify the secret are themselves inadequate to permit the defendant to learn the boundaries of the secret and investigate defenses or to permit the court to understand the designation and fashion discovery. Further, the trade secret designation is to be liberally construed, and reasonable doubts regarding its adequacy are to be resolved in favour of allowing discovery to go forward.

Practical significance

Difficulties remain in ascertaining what level of particularity is required when identifying trade secrets in California trade secret litigation. As courts have recognized, ‘reasonable particularity’ is intended to be flexible, so courts can achieve just results depending on the facts, law, and equities of the cases before them. The level of specificity required depends upon the circumstances of the individual matter.

The California appellate courts, however, have provided some guidance on what ‘reasonable particularity’ means. Brescia clarifies the principles articulated in Advanced Sputtering, particularly that court's holding that the identification must be sufficiently specific to distinguish the trade secrets from matters known in the trade. Although that general standard remains viable, Brescia instructs that the standard does not require every trade secret plaintiff to state specifically in its identification statement how the alleged trade secret differs from the general knowledge of skilled persons in the field to which the secret relates (though this explanation may be required in some cases but not this pudding case). In other words, plaintiffs are not required to prove the merits of their trade secret claim at the pre-discovery stage in their trade secret identification statement—the statement should simply provide sufficient details to allow the defendant to learn the boundaries of the alleged secret and investigate defenses, as well permit the court to understand the designation and fashion discovery.

In contrast, Brescia confirms that generalized descriptions of trade secrets, such as the original description in Brescia's cross-complaint described above, are insufficient to meet the ‘reasonable particularity’ requirement. Nor is it sufficient for a plaintiff to merely cite in its statement to pages in a voluminous document production, as this practice tends to obscure rather refine the trade secrets description. We expect that California Code of Civil Procedure 2019.210 will continue to be a sword and shield in California trade secret litigation as parties will continue to dispute whether the trade secret has been identified with reasonable particularity.

Thursday, 1 October 2009

Fragrance brands face a pot pourri

Editorial: Jeremy Phillips

Citation: Journal of Intellectual Property Law & Practice 2009 4(10):685; doi:10.1093/jiplp/jpp153

It has been a good summer for the luxury scent industry. The decision of the European Court of Justice in Case C-59/08 Copad v Christian Dior has given owners of famous and expensive brands the encouragement to review their marketing policy in the knowledge that the sale of products, once placed in the safe hands of carefully selected distributors, may still be policed by them when those goods have fallen into the clutches of less prestigious sellers. Then came the bonus of the same court's subsequent ruling in Case C-487/07 L'Oréal v Bellure that the invocation of a well-known trade mark as a means of describing to a consumer the fact that a competing cut-price product resembled it would in most practical instances constitute an infringement of the registered right.

Will the good times last? It is difficult to predict. Copad enables the brand owners to invoke the need to protect the ‘aura of luxury’ that surrounds their expensive products, but the reasoning of the Court appears to be based on the assumption that perfumes are expensive and luxurious items that people purchase for themselves. Is this so? A recent online survey on the IPKat weblog suggests not. Admittedly, the number of respondents was small (134) and there were no means of ascertaining how representative of the relevant consumer this sample was. However, its results were revealing.

Just under one quarter of the respondents indicated that their normal mode of acquiring a perfume was via the chic and glamorous ambience of an up-market parfumerie, the traditional outlet for such products in continental Europe. In contrast, exactly 50% reported a greater degree of interest in competitive pricing than in the glamour of the purchasing experience: this group can be divided into two uneven sectors: the larger group (31%) who restrained their purchase habits until they visited a duty-free shop and the remaining 19% who bought their fancy scents online. The remaining 36% did not purchase perfumes, but rather received them as gifts.

It cannot be denied that some degree of glamour and excitement attaches itself to the purchase of expensive branded goods at a duty-free shop, since many such outlets are pleasantly appointed and share the vicarious frisson of excitement and adventure which many of us still experience when travelling abroad. However, the overall picture is one of a market of which a full 76% of respondents do not seek to acquire their fragrances from a distributor selected by the manufacturer and 50% avoid making their purchases there for reasons that include, but are probably not limited to, price sensitivity. In situations such as this, it is inevitable that the European Commission will be invited to reconsider its position on the desirability of allowing selective distribution agreements that have the effect of maintaining higher prices. It is equally inevitable that the perfume industry will be asked to respond to questions such as ‘are your luxury products less luxurious in markets where selected outlets face greater price competition?’

Regarding the protection given against the use of well-known brands in the marketing of smell-alike products, the perfume industry appears to be better placed. The ruling of the Court is arguably based upon a fudging of the distinction between a competing product being an imitation of (i) the brand owner's product qua product (ie as a genre) and (ii) the brand owner's product qua branded product sourced by that brand owner. In other words, there is a difference between the manufacturer of a smell-alike product saying ‘my product imitates brand X fragrance’ and ‘my product imitates the characteristics and functionality of a product which, when manufactured by the brand owner, is sold under the brand X’.

For as long as it is difficult or impossible for the Court, or indeed the consumer, to appreciate the subtle differences of these messages, the leading brands should feel secure enough. They have a ruling in their favour, they have a war chest that will tolerate protracted large scale litigation, and, most importantly, they have every reason for wishing to preserve the market position that they have worked so long and hard to achieve. While the long term may presage a diminution in their ability to determine how and where their precious goods are sold, and while the protection against free-riders remains—like an umbrella in the rain—capable of offering cover that extends beyond the object of protection, the short term looks rosy.