Wednesday, 30 June 2010

DNA Sequence Patents and that JIPLP article: the sequel

Early this month, this weblog announced the publication in JIPLP of a major article by Michael Kock, "Purpose-bound protection for DNA sequences: in through the back door?" This article was a lengthy critique of the Opinion of Advocate General Mengozzi in Case C-428/08 Monsanto Technology LLC v Cefetra BV and others, in which the Court of Justice of the European Union was expected to deliver its ruling later this year in an important dispute arising from the importation into the European Union of soya meal derived from Monsanto's Roundup Ready patented soybeans.
The EPLaw Patent Blog has reported that Monsanto now has withdrawn its actions in the underlying litigation which led to the reference to Europe's top court and that the reference proceedings are now terminated. Argentina is reported to have objected since it wished to continue the proceedings but. according to the court, this is not possible since Argentina was not actually party to the proceedings.

Friday, 25 June 2010

No extensions allowed

Author: Peter Jabaly (Rutgers Law School)

Autodesk, Inc. v Dassault Systemes SolidWorks Corp. 2009 WL 5218009, 31 December 2009

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq076

A California district court finds that the non-functional use of a file extension (eg marketing and advertising) may be trade marked. Protection, however, may not be extended to the functional uses of file extensions, as when the file extension is necessary to achieve the interoperability of the brand name with the generic version.

Legal context

Where a computer file extension is useful and innately functional, trade mark law, which protects reputation rather than functionality, is inapplicable and any attempt to apply it would inhibit competition.

Facts

Software programs store data in files. To locate these files more easily, each file is given a unique name. A file name is generally held in the form of a prefix and suffix separated by a period (eg ‘acrobat.pdf’). The prefix describes the content while the suffix, or file extension, describes the category of data being stored. The purpose of the extension, when combined with the suffix, is to allow the user to identify and locate the file when it is sought. The file names are useful in grouping the files (eg ‘.jpg’ for photos or ‘.dat’ for numerical data). Though programmers follow these conventions for the sake of convenience, they are by no means required to do so and some file extensions are shared among different computer programs. This is unsurprising since there are a limited number of permutations in the three-character file extension.

In this action, Autodesk Inc. sued Dassault Systemes SolidWorks Corp. under a theory of common law trade mark infringement. In its complaint, Autodesk alleged that it held a common law trade mark right in the ‘DWG’ file extension in connection with and related to the marketing and advertising of its AutoCAD program. In its defence, Solidwork maintained out that no one could hold a right to a trade mark that is functional.

Analysis

At the hearing, Autodesk reluctantly accepted the Court's call to disavow the trade mark law claim and solely pursue a wordmark claim. A wordmark right would provide Autodesk with the exclusive use of the .dwg file extension in connection with its product packaging, marketing, and advertising. In taking this nuanced approach, Autodesk hoped to disarm SolidWork's most compelling argument that registered trade mark law does not apply to functional marks. Autodesk, however, mistakenly believed that it could make this argument without rejecting the claim to full trade mark protection. In other words, Autodesk wanted to have its cake and eat it too, possibly in an effort to obtain a favourable ruling on this narrow legal question, revisiting a larger, more contentious issue later.

The Court did not take kindly to this position in the oral arguments. In the written transcript of the exchange, it strained to understand the legal basis for Autodesk's claim of trade mark infringement. After lengthy semantic wrangling, the plaintiff (through counsel) asserted that other companies may only use the .dwg file extension when it was necessary to the interoperability of the software with Autodesk's own AutoCAD program. Satisfied it had received an admission of an incontrovertible truth, the Court issued an order granting summary judgment in favour of Autodesk 5 days later.

Realizing what it had disclaimed, Autodesk adjusted its argument after-the-fact. After its victory, Autodesk claimed that what it truly meant to assert was that other programmers were only allowed to put ‘.dwg’ at the end of a computer file when ‘the file format is Autodesk's proprietary technology or completely interoperable therewith’. Autodesk blamed its misstatement on the youth and inexperience of the attorney who argued the case. The Court dismissed this scapegoating by restating the doctrine of judicial estoppel, which precludes a party from gaining an advantage by asserting one position and then later—after a tribunal had relied on that position—taking a clearly inconsistent position.

In other words, Autodesk could have made a correction at any time prior to the issuance of the decision. Had that correction been made, the Court would have not ruled in favour of Autodesk because of the functionality issue. No one has the ownership of file extension designations. To do so would contravene the spirit of the Lanham Act and would clog up commerce. Trade mark law seeks to prevent consumer confusion in connection with a commercial transaction. In contrast, file extensions tell the computer the type and the location of a certain file. As the Court succinctly said, ‘A computer is not a consumer’. A computer or a computer user, for that matter, is unconcerned with the maker of the file. The primary function of a file extension is to identify a file.

Practical significance

The case stands for the proposition that file extensions are not eligible for trade mark protection, but may be eligible for wordmark protection. The decision is also a cautionary tale: a winning argument may result in a larger defeat. In order to obtain wordmark protection, Autodesk was required to disavow broader trade mark protection. Further, the case provides a lesson in lawyering. Skirting an issue may be tactful in certain circumstances but, when a favourable outcome hinges on taking a position on a central issue, it is important to consider that issue carefully and take the long view. It is clearly preferable to lose the battle but win the war. Autodesk's counsel took the short view. It made the admission and relinquished Autodesk's colourable claim of right.

Thursday, 17 June 2010

Louis Vuitton Holds ISP Accountable for Combined $21.6 Million

Authors: James L. Bikoff, David K. Heasley and Phillip V. Marano (Silverberg, Goldman & Bikoff LLP, Washington DC)

Louis Vuitton Malletier, S.A. v Akanoc Solutions, Inc. et al., No. 07-03952 JW, slip op. (N.D.Cal., 19 March 2010); see also 591 F. Supp. 2d 1098 (N.D.Cal. 2008)

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq079

In the summer of 2009, a jury in the US District Court for the Northern District of California found a web host contributorily liable for copyright and trade mark infringement because it harboured websites selling counterfeit Louis Vuitton goods from China.

Legal context

Despite a relative wealth of jurisprudence on indirect liability, US federal courts have struggled in the digital millennium to apply these theories in the converging areas of IP and internet law. What duty does a web host owe to a copyright owner when third parties store infringing content on the web host's servers? And what duty does an online auction house owe to a brand owner when third parties use the service to sell counterfeit goods? As both legislation and judicial precedent in the USA have evolved to address questions such as these, two primary theories of indirect liability—vicarious and contributory—have driven the law forward.

The roots of vicarious liability lie in the agency principles of respondeat superior, ‘let the superior answer’ for the torts of the agent. Accordingly, vicarious liability for copyright infringement requires that an intermediary defendant hold both (1) the right and ability to supervise directly infringing conduct and (2) a direct financial interest in the infringing activity. This standard differs markedly from trade mark law. Vicarious liability for trade mark infringement requires that an intermediary defendant and a direct infringer have an apparent or actual partnership or exercise joint ownership or control over an infringing product or service.

In contrast, contributory liability is based on tort principles of enterprise liability and imputed intent. Contributory liability for copyright infringement requires that an intermediary defendant have (1) actual or constructive knowledge of another's direct infringement and (2) either intentionally induced a direct infringer or materially contributed to direct infringement. Again, this standard differs markedly from trade mark law. Contributory liability for trade mark infringement, a much less solidified area, requires actual knowledge of specific infringement and either intentional inducement or continued assistance by supplying an infringing product. When an intermediary defendant supplies a service rather than a product, federal courts typically consider the extent of control exercised by that defendant over the third party's means of infringement. Although these standards may appear to be similar, the US Supreme Court has explicitly instructed that the tests for indirect trade mark infringement are more difficult to satisfy than for indirect copyright infringement.

Courts often struggle in applying these theories to intermediaries on the internet because analogies to traditional brick-and-mortar entities can be difficult. Cases involving IP and contributory liability often turn on whether an internet service provider is more like a landlord or a flea market operator than a telephone service provider or some other type of public utility. In addition, courts attach great significance to the actions taken by an internet service provider once it has knowledge of direct infringement. Akanoc Solutions represents the relatively rare circumstance where an internet service provider entirely fails to mitigate direct infringement by taking appropriate action.

Facts

Louis Vuitton Malletier (‘LVM’), which owns trade mark and copyright registrations relating to a variety of handbags and other goods, is the sole and exclusive distributor of its luxury merchandise. In late 2006 it discovered five websites it believed to be selling counterfeit LVM merchandise. By tracing the internet protocol addresses of the websites, LVM was able to send repeated takedown notices to the entity harbouring the websites on its servers—Akanoc Solutions, Inc. (‘Akanoc’). As a web host, Akanoc provided its customers with ‘internet protocol addresses, routers that link internet traffic to websites, and servers that store internet content and allow the content to be accessed through the internet’.

Shortly after sending its takedown notices, LVM purchased and tested items from the websites. Each item was sent using a return address located in China—Akanoc's website advertised an ‘extensive background knowledge of the Chinese economy’ and specialization in ‘creating unique solutions’ for Chinese companies seeking to sell goods in the USA. Each item was determined by LVM to be a counterfeit replica of its products. As its investigation progressed, LVM observed that the infringing websites either remained operable or were moved to different internet protocol addresses that were also owned by Akanoc.

Faced with such persistence, LVM sued Akanoc, its principal—Stephen Chen—and Managed Solutions Group, Inc. (‘MSGI’)—another entity controlled by Chen that owned Akanoc's servers. The complaint, filed in the US District Court for the Northern District of California, alleged four causes of action: (1) vicarious copyright infringement, (2) vicarious trade mark infringement, (3) contributory copyright infringement, and (4) contributory trade mark infringement. After conducting discovery, LVM filed an amended complaint that extended its allegations of indirect copyright and trade mark infringement from the five original websites to an additional 72 counterfeiting websites.

Analysis

In late 2008 the Northern District of California issued a decision granting the defendant's motion for summary judgment with respect to LVM's vicarious liability claims and denying the motion with respect to LVM's contributory liability claims. The Court held that:
  • No reasonable jury could find the defendants vicariously liable for copyright infringement because there was no evidence of a ‘direct financial interest’ in the underlying infringing activity. In the Ninth Circuit, ‘the central question of the "direct financial benefit" inquiry ... is whether the infringing activity constitutes a draw for subscribers, not just an added benefit’. The ‘essential aspect’ of the inquiry is ‘whether there is a causal relationship between the infringing activity and any financial benefit a defendant reaps’. LVM's claim for vicarious copyright liability was denied because there was no evidence that third parties sought or abandoned the defendants' web hosting services based on their ability to infringe, or that the defendants ‘made more money when they allowed infringement to continue’ and ‘less money when they did not’. The defendants' wilful blindness of the direct infringement was not enough to carry the claim.

  • No reasonable trier of fact could find the defendants vicariously liable for trade mark infringement because no ‘actual or apparent partnership’ existed. The defendants only sold their web hosting services to ‘resellers’, not individual websites, and thus did not deal directly with or receive money from any website operators. Again, wilful blindness was not enough to carry the claim.

  • The defendants could be held contributorily liable for copyright infringement because they had actual knowledge, or at least should have known, of specific pirated material available on their servers and failed to purge such material from the system. To establish the defendants' knowledge of infringement LVM proffered a number of its takedown notices, letters between counsel for the parties, and the defendants' internal emails discussing the takedown notices. LVM also proffered evidence on the ‘simple measures’ the defendants could have taken to purge infringing material from the system, including internal emails discussing their ability to remove individual websites by disabling a single internet protocol address. Moreover, Stephen Chen's deposition testimony illuminated the defendants' apathy toward takedown notices, ‘[We] just don't have a lot of experience with [complaint letters], and we don't have any mechanism to take care of letter complaints’.

  • The defendants could be held contributorily liable for trade mark infringement because they had actual knowledge of specific counterfeiting websites on their servers and continued to provide their web hosting services while remaining wilfully blind to infringing activity. The evidence proffered by LVM to establish specific knowledge of direct infringement sufficed for both its contributory copyright and trade mark infringement claims. However, the Court struggled to determine whether the defendants exercised sufficiently ‘direct control and monitoring’ of the web hosting service. In order to find such direct control, the Court analogized web hosts to brick-and-mortar flea market operators, ‘Defendants physically host web sites on their servers and route internet traffic to and from those websites. This service is the internet equivalent of leasing real estate’.
LVM's contributory copyright and trade mark claims continued on to trial and, in August 2009, the jury returned a verdict in favour of LVM for a total of $34.2 million. Each individual defendant was found liable for $10.5 million and $300,000 in damages for wilful contributory infringement of 13 LVM trade marks and two LVM copyrights, respectively.

In March 2010, the Northern District of California issued a decision granting the defendant's motion for judgment as a matter of law with respect to MSGI and denying the motion with respect to Akanoc and Stephen Chen. On consideration of the motion, the Court found that evidence was insufficient with respect to MSGI, which merely ‘owned servers that were operated by ... Akanoc’ because ‘[t]here was no evidence that [it] sold domain names or operate[d] the servers’. Accordingly, the jury verdict regarding MSGI was vacated and the overall damages were reduced by $10.8 million.

The Court, however, upheld the jury's consideration of Akanoc's and Stephen Chen's ‘action or inaction after receiving notice of infringement’ because they had ‘numerous tools at their disposal for monitoring their servers and terminating abusive users’ including ‘the ability to suspend a particular user, disable IP addresses used by a particular website or if necessary, unplug a server that contained the data for a particular website’. The Court also denied Akanoc's attempt to seek Digital Millennium Copyright Act (‘DMCA’) immunity from damages for contributory copyright infringement. Stephen Chen ‘testified that he did not understand the DMCA’ or its requirement to reasonably implement a policy to terminate web hosting service for repeat infringers. Moreover, ‘evidence indicated that Defendants had not terminated certain repeat offenders’.

Finally, the Court issued a permanent injunction against Akanoc and Stephen Chen, enjoining them from knowingly hosting internet web sites that display, advertise for sale, offer for sale, or actually sell, export or distribute goods or services that exhibit unauthorized reproductions of the LVM trade marks or copyrights. The injunction left in place a reasonable notice and takedown policy with Akanoc.

Legal significance

Akanoc continued to supply its web hosting services to known pirates and counterfeiters and was held to be contributorily liable for copyright and trade mark infringement. It invited spurious Chinese goods into the USA, it ignored takedown notices from rights holders, it failed to implement a reasonable takedown policy, and it even took steps to obscure the internet protocol addresses of counterfeiting websites.

This case builds on a fairly well-established jurisprudence on indirect liability for copyright infringement. It also adds to a rapidly evolving jurisprudence on indirect liability for trade mark infringement. Most importantly, it highlights the disparity between theories of indirect infringement for these two forms of IP on the internet. The Northern District of California's copyright analysis was well supported with direct precedent, whereas its analysis of trade mark law followed doctrinal trends in favour of protecting trade mark owners. Although this case may appear to be run-of-the-mill in the copyright arena, it is a significant advancement in trade mark jurisprudence. As the law of the internet evolves, federal courts are likely to become increasingly open to a notice and takedown regime for brand owners, similar to that of the Digital Millennium Copyright Act.

Monday, 14 June 2010

Latest IJLIT now available

One of JIPLP's sister journals is the International Journal of Law and Information Technology (IJLIT), which Oxford University Press is now publishing four times a year. While this title is not specifically dedicated to intellectual property issues, it is inevitable that a title of this nature will sometimes tackle topics that overlap with the interests of JIPLP's readership. The current issue carries a piece by Cheng Lim Saw, "The Case for Criminalising Primary Infringements of Copyright– Perspectives from Singapore".

You can view the full contents of the current issue of IJLIT here.

Friday, 11 June 2010

From (A) to (B): use of a similar sign in keyword advertising

Author: Kristof Neefs (Altius, Brussels)

Bergspechte/Günter Guni and trekking.at Reisen, Case C-278/08, Court of Justice of the European Union, 25 March 2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq068

The Court of Justice of the European Union has ruled that the proprietor of a trade mark is entitled ‘to prohibit an advertiser from advertising, on the basis of a keyword identical with or similar to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking which is economically connected to it or, on the contrary, originate from a third party’.

Legal context

Article 5(1) of Directive 2008/95 to approximate the laws of the Member States relating to trade marks (‘TMD’) provides that the proprietor of a registered trade mark is entitled to prevent third parties not having his consent from using, in the course of trade:
a. any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
b. any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on part of the public, which includes the likelihood of association between the sign and the trade mark.
The Oberster Gerichtshof inquired, in essence, whether Article 5(1) TMD is to be interpreted as meaning that a trade mark proprietor is entitled to enjoin an advertiser's use of a sign that is similar or identical to a trade mark as a keyword in a paid internet referencing service.

Facts

Bergspechte, an Austrian company, organizes outdoor tours such as mountain biking, skiing, and alpine climbing and owns the Austrian composite trade mark.

Bergspechte noticed that typing the keywords ‘bergspechte’ or ‘edi koblmüller’ in an internet search engine resulted in the display, in the sponsored links section, of advertisements of its competitor trekking.at Reisen. Relying on its composite mark, Bergspechte sought an injunction against these advertisements. After two instances, the case went to the Austrian Oberster Gerichtshof on a point of law. In turn, the Oberster Gerichtshof stayed the proceedings and referred the matter to the CJEU for a preliminary ruling.

Analysis

The Bergspechte judgment rides (to use CJEU terminology) on the coat-tails of its Google France judgment which was issued 2 days earlier in Joined Cases C-236 to 238/08 Google France v Louis Vuitton Malletier.

In Google France, the Court had already decided on some of the main trade mark questions in respect to keyword advertising. It had maintained, first, that an advertiser purchasing a paid referencing service and selecting a keyword to trigger the display of an advertisement uses that keyword in the course of trade in the sense of Article 5 TMD. Secondly, such use was ‘in relation to goods or services’, regardless of whether the sign was actually displayed in the advertisement. Thirdly, the advertising function of a trade mark was not adversely affected by use of an identical sign in a paid internet referencing service. Finally, whether the function of indicating origin of the trade mark is adversely affected by keyword advertising depends, in particular, on the manner in which the advertisement was presented. That function would, according to the CJEU, be affected where the advertisement of which the display is triggered by a keyword identical to the trade mark
does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.
In those cases, the trade mark proprietor is entitled to prohibit use of a keyword identical to its trade mark in a paid internet referencing service under Article 5(1)(a) TMD.

In Bergspechte, the CJEU held that Article 5(1) TMD must be interpreted as meaning that
the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with or similar to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking which is economically connected to it or, on the contrary, originate from a third party.
At first glance, the second in the series of AdWords judgments does not add much to the principles laid down in Google France. However, Google France concerned use of signs identical to a trade mark in keyword advertising. In Bergspechte, at least one of the contested uses was that of a sign similar to the trade mark invoked. The judgment therefore provides guidance in respect to Article 5(1)(b) TMD.

In addressing whether keyword advertising is likely to lead to confusion, the CJEU first refers to Lloyd Schuhfabrik Meyer. There the Court maintained that a likelihood of confusion constitutes a risk that the public might believe that the goods or services in question come from the same or economically linked undertakings (Case C-342/97, Lloyd Schuhfabrik Meyer v Klijsen, 17). Next, the CJEU applied the principles set out in Google France, in particular the considerations in respect to detriment to the function of indication the origin of the goods, to infringement under Article 5(1)(b) TMD.

Although it is not expressly mentioned, I understand from the Court's reference to Lloyd Schuhfabrik Meyer that the established principles for the assessment of a likelihood of confusion equally apply to use of a keyword in a paid referencing service. That is to say, whether such a likelihood of confusion, or
the impossibility or difficulty to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking which is economically connected to it or, on the contrary, originate from a third party
exists must be appreciated globally, taking into account all factors relevant to the circumstances of the case (ibid, 18).

One such factor is the relevant public. According to settled CJEU case law, the relevant public to be taken into account is the average consumer of the goods or services for which the trade mark was registered (Case C-251/95, Sabel v Puma, 22). That consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (Lloyd Schuhfabrik Meyer, 25–26).

Against this backdrop, it is remarkable that the CJEU states, both in Google France and in Bergspechte, that ‘the average internet user’ must be able to distinguish the origin of the goods or services concerned without difficulty. In paragraph 87 of Google France, this statement is linked to the essential function of the trade mark in the area of electronic commerce, ie the enablement of internet users browsing advertisements to distinguish the origin of the goods and services concerned. In so ruling, the Court has seemingly drawn focus to the public of the medium by way of which advertisements are delivered, rather than to the target audience of the trade mark.

The way the public processes advertisements on the internet is relevant. Advocate-General Poiares Maduro had suggested as much in his Opinion in Google France (at 90–91). However, the level of attention of the target public of a trade mark and that of the average internet user do not necessarily correspond. This is especially so where the goods or services for which the trade mark was registered are only purchased after careful examination (see, eg, Case C-361/04, Picasso, 39–40). In those cases, the level of attention of the consumer of the goods is likely to be higher than that of an average internet user. Paragraph 35 of Bergspechte teaches that the relevant internet user is normally informed and reasonably attentive. It would have been helpful if the Court had qualified this by stipulating that the level of attention of the internet user depends on the nature of the goods and services for which the trade mark was registered. In any case, the objective characteristics of the goods and services concerned must be weighed as a relevant factor in determining whether the advertisement causes or is likely to cause confusion in respect to the origin of those goods and services. Any other interpretation would in my view lead to an unjustified discrepancy between the assessment of infringement by way of internet keyword advertising and by way of its brick-and-mortar counterparts.

Practical significance

In Bergspechte, the Court has unsurprisingly stated that use of a sign that is similar rather than identical to a trade mark in internet keyword advertising can be prohibited by the trade mark proprietor when that advertising leads or is likely to lead to confusion. The conditions for infringement under Article 5(1)(b) TMD are brought in line with those set out in Google France for detriment to the function of designating origin under Article 5(1)(a) TMD. Thus an advertiser's use of a similar sign as a keyword infringes where the advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to in it originate from the proprietor of the trade mark or an undertaking which is economically connected to it or, in contrast, originate from a third party. While both Bergspechte and Google France have provided useful guidance to trade mark proprietors and internet advertisers, it is hoped that the CJEU will further refine the principles in the references that are still pending before it in respect to the AdWords service.

Monday, 7 June 2010

Next month's JIPLP now available online

The July 2010 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available to its online subscribers. You can view the contents of this issue here. The Editorial, "No votes, no idea", reads as follows:
"The world's great free economies make great play of the importance of IP rights to their domestic prosperity. IP rights protect investment, create jobs, empower creators, facilitate the delivery of deliverables, enhance communication, and enrich the leisure and entertainment sectors. With the exception of minor political entities such as the anarchists, the extreme socialist left, and the Pirate Party—whose positions are consonant with a lower level of IP protection or even its abolition—there is general consensus among political leaders that IP is somehow a good thing. Since debate on IP protection does not split along party lines, it is unsurprising that the subject is rarely, if ever, raised in electoral manifestos or debated between political rivals.

The absence of debate may be viewed as a good thing, but it is also a bad one. Since party leaders do not take issue with each other's positions on patentability, parallel trade, peer-to-peer file sharing, or design poaching, there is never any real need for them to master the subjects. This is in sharp contrast with topics such as defence spending, development aid, and foreign policy, which impinge little if at all on the daily life of the voter, as well as subjects of more immediate relevance to the electorate such as the environment, education, and public health. Yet IP touches us all every day: the TV and radio programmes we consume to the food in our shops, the medicines in our bathroom cabinets, the downloads on our portable entertainment units, and even the clothes on our backs, IP is everywhere.

Curiously, given the importance of IP and its pervasive quality, the subject is not only off the political agenda—it is almost kept shrouded from any sort of contemplation by the electoral community at large. Thus in the eyes of the governments of some of the world's most open and democratic jurisdictions, and their main trading partners, IP enforcement is believed to be so sensitive an issue that it has been necessary to negotiate the terms of the Anti Counterfeiting Trade Agreement (ACTA) behind closed doors, lest the momentum of the negotiations be stalled by public awareness.

With IP off the political agenda, the degree of coverage to which IP issues are treated by the mass media is low and generally trivial. Disputes are newsworthy because they concern popular works such as The Da Vinci Code, A Whiter Shade of Pale, or the Harry Potter series rather than on account of their legal significance. The other way IP issues get to press is when celebrities are involved. Thus Beyoncé's allegedly pirated bikini, the loss of sponsorships and endorsements by golfer Tiger Woods and any number of kiss-and-tell indiscretions in which confidentiality arguments are balanced against free speech will be known to many sentient voters, though they may not easily discern the IP issues among the generous cleavages and contrived sound-bites that frame the text.

Many people criticize IP laws, either in principle (because they believe them to be inherently wrong) or in practice (because they accept the principle but object to the manner of its execution). It would be unkind to respond to their critical analysis with the refrain: ‘Well, that's what Parliament enacted and Parliament must be taken to represent the will of the people in any duly constituted democracy’. However, it would not be unfair to remind both critics and supporters of IP that the path to better laws is the achievement of a better understanding of them. Just as in the case of fiscal policy or regulation of the financial sector, the system itself is not easy to grasp; yet we cannot expect either our political leaders or their watchdog, the media, to grasp it for us.

Sadly for those of us who believe that IP is a force for good and that a better understanding of how it works will lead to better laws, there are no votes in IP because it is a subject which is not in general a political issue—and which is likely to remain so for the foreseeable future".

Thursday, 3 June 2010

Patent protection, DNA sequences and the ECJ

"Purpose-bound protection for DNA sequences: in through the back door?" is the title of an article by Michael A. Kock (Seeds & Biotechnology, Syngenta International AG, Switzerland). This article is extremely timely, being a lengthy critique of the Opinion of Advocate General Mengozzi in Case C-428/08 Monsanto Technology LLC v Cefetra BV and others, an Opinion on which the Court of Justice of the European Union will be giving their ruling later this year on an important dispute arising from the importation into the European Union of soya meal derived from Monsanto's Roundup Ready patented soybeans. The abstract of Dr Kock's article reads as follows:
"Legal context: In the first litigation case regarding the interpretation of the Biopatent Directive 98/44/EC, the European Court of Justice is asked to clarify whether a DNA sequence is entitled to patent protection as a compound as such, or only under circumstances where the DNA performs its function.
Key points: Advocate General Mengozzi issued an opinion concluding, ‘"that the protection for a patent relating to a DNA sequence is limited to the situations in which the genetic information is currently performing the functions described in the patent’", thereby arguing for both a purpose-bound and time-limited scope of protection. In his view, the Directive constitutes an exhaustive body of rules and precludes national legislation from conferring wider protection.

This interpretation finds no base in the legislative history of the Directive, which was intended to extent but not to limit protection for biotech inventions.

Practical significance: A ruling following the opinion would have severe consequences for EU biotechnology patent holder. Not only isolated DNA will become unprotected, a patentee would also lose rights against the importation of harvested goods produced outside the EU without his authorization".
If you are not a subscriber to JIPLP, you can still purchase this article by itself from Oxford University Press by clicking here and scrolling down to "Purchase short-term access".

Wednesday, 2 June 2010

Coexistence agreements: JIPLP in court again

For the second time in just over a week, the Journal of Intellectual Property Law & Practice (JIPLP) has featured in an appellate judgment. Last time, the citation was by the Court of Appeal; this time the citation comes in an appeal to the Chancery Division, England and Wales, from the decision of a hearing officer acting on behalf of the Registrar of Trade Marks in Omega Engineering Incorporated v Omega SA (Omega AG) (Omega Ltd) [2010] EWHC 1211 (Ch), 28 May 2010.

The article discussed by the court, and analytically reviewed by Mr Justice Arnold, is "Coexistence in Community trade mark disputes: conditions and implications" [2006] JIPLP 703 by Arnaud Folliard-Monguiral. Arnaud, who works in the Cancellation and Litigation Department of the Office for Harmonisation in the Internal Market (OHIM), Alicante, has been an editorial panellist of JIPLP since its inception.

You can view the abstract of this article here.