Monday, 28 March 2011

Bits and pieces

DOI. Some readers have asked why contributions published in JIPLP -- and indeed other journals -- are often accompanied by a mysterious little piece of coding which contains the letters "doi". The answer simple. The "doi" is each published featured Digital Object Identifier.  In short,

The Digital Object Identifier (DOI®) System is for identifying content objects in the digital environment. DOI® names are assigned to any entity for use on digital networks. They are used to provide current information, including where they (or information about them) can be found on the Internet. Information about a digital object may change over time, including where to find it, but its DOI name will not change.
The DOI System provides a framework for persistent identification, managing intellectual content, managing metadata, linking customers with content suppliers, facilitating electronic commerce, and enabling automated management of media. DOI names can be used for any form of management of any data, whether commercial or non-commercial. The DOI System is an ISO International Standard.
The system is managed by the International DOI Foundation, an open membership consortium including both commercial and non-commercial partners. Over 48 million DOI names have been assigned by DOI SystemRegistration Agencies in the US, Australasia, and Europe.
Using DOI names as identifiers makes managing intellectual property in a networked environment much easier and more convenient, and allows the construction of automated services and transactions.
To learn more about DOI names, see the Overviews, and begin with the Introductory Overview and Introductory Slide Presentation. The Factsheets, including the most recent, "Managing Data Relationships Using DOI Resolution" and "DOI System and Standard Identifier Schemes" discuss key topics about the system. For the most complete description of all aspects of DOI System technology and policy, consult the DOI® Handbook.
Lots more information can be gleaned about the background and functionality of the doi from the website of the International DOI Foundation here.


On the way, or already there.  Subscribers to the hard copy version of JIPLP should note that the April issue was dispatched a few days ago and you should be receiving yours imminently if you have not already done so.


Not mere pedantry.  Contributors are kindly requested to make sure that diacritic marks ("accents") are incorporated into the texts of their submissions.  This is because peer reviewers and members of the editorial and production teams -- who may not have access to your source materials -- may not know that you have left an accent out. This might sound trivial, but some important databases -- the Curia database of decisions of the Court of Justice of the European Union being but one -- are very sensitive to the presence of absence of diacritic signs, and search engine results will also differ (thus searches for 'L’Oréal' and 'L'Oreal') will produce some overlapping hits but also many different ones).

Sunday, 27 March 2011

'Communication to the Public’ in FAPL v QC Leisure and Murphy v Media Protection Services: the Advocate General's Opinion

Author: Enrico Bonadio

City University London

Football Association Premier League v QC Leisure YouTube and Karen Murphy v Media Protection Services Ltd (Joined Cases C-403/08 and C-429/08), Court of Justice of the European Union, Opinion of Advocate General Professor Juliane Kokott, 3 February 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr032, first published online 26 March 2011

Advocate General Professor Juliane Kokott gave her interpretation of ‘communication to the public’ under Article 3(1) of the Info Society Directive and concluded that the showing of live Premier League matches in pubs does not amount to such communication.

Legal context

On 3 February 2011 Advocate General Juliane Kokott released her much awaited opinion in Football Association Premier League v QC Leisure YouTube and Karen Murphy v Media Protection Services Ltd (Joined Cases C-403/08 and C-429/08). Among the many issues dealt with (including conditional access devices, temporary storage and reproduction rights, free movement of services and competition aspects), she gave her interpretation of communication to the public under Article 3(1) of the Directive 2001/29 (the Info Society Directive).

Other relevant provisions quoted and commented by the Advocate General include Recital 23 of the Info Society Directive and Article 11bis(1) of the Berne Convention. Recital 23 states that communication to the public must be interpreted broadly and should cover all communication to the public not present at the place where the communication originates. Article 11-bis(1) of the Berne Convention provides that authors are given the exclusive right to authorise ‘(i) the broadcasting of their works or the communication thereof to the public by any other means of wireless diffusion of signs, sounds or images; (ii) any communication to the public by wire or by rebroadcasting of the broadcast of the work, when this communication is made by an organization other than the original one; (iii) the public communication by loudspeaker or any other analogous instrument transmitting, by signs, sound or images, the broadcast of the work’.

Facts

A first set of proceedings was instituted in the UK by inter alia the Football Association Premier League Ltd (FAPL), which organizes the filming of Premier League matches and the licensing of the rights to broadcast them. These proceedings refer to the use of foreign decoder cards in the UK to access foreign satellite transmissions of live Premier Leagues football matches. FAPL is convinced that this activity infringes its copyrights on various works embodied in the matches. Two actions had been instituted against suppliers of foreign decoder cards to bars and pubs and another action had been brought against licensees and publicans who showed live matches broadcast on the channels of a foreign broadcaster. A referral was then made to the ECJ (Football Association Premier League v QC Leisure YouTube, Case C-403/08).

A second proceeding was instituted by Media Protection Services Ltd against a publican, Ms Karen Murphy, who showed Premier League football matches in her pub by using a Greek decoder card. The latter was fined on the ground that the above decoder card was an illicit access device. Ms Murphy appealed to the High Court, which then referred the case to the ECJ (Karen Murphy v Media Protection Services Ltd, Case C-429/08).

The ECJ deemed it appropriate to hear the cases jointly.

Analysis

One question posed to the ECJ (question 6 in Case C-403/08) demands clarification as to whether the showing of live Premier League matches in pubs violates the exclusive right to communicate to the public copyright works under Article 3(1) of the Info Society Directive. The Advocate General considered it necessary to verify whether this activity effectively amounts to communication to the public under Article 3(1) of the Info Society Directive. She found it does not. It would follow that no infringement of communication to the public right can be claimed here under the Info Society Directive, as such communication does not occur at all.

Professor Kokott first noted that the presentation of radio or TV programmes in places where people gather (such as bars, restaurants, hotels, cafes, trains, etc.) fall within Article 11bis(1)(iii) of the Berne Convention which—as shown above—expressly covers the public communication by loudspeaker or any other analogous instrument transmitting the broadcast of the work. She makes reference to the 1978 WIPO Guide to the Berne Convention which clarifies that this provision is intended to cover the above activities (paragraph 122 of the opinion).

The Advocate General considered that this sub-provision of the Berne Convention has not been transposed into EU law, and specifically into the Info Society Directive. This is buttressed, the argument goes, by the fact that Article 8 of the WIPO Copyright Treaty does not mention communication to the public by means of public presentation. Article 3(1) was inserted into the Info Society Directive with the purpose of implementing Article 8 of the WIPO Copyright Treaty (the two provisions have almost identical wording). Further, Recital 23 of the Info Society Directive, Professor Kokott added, confirms this finding, as such provision does not expressly mention the communication to the public by means of public presentation: she added that this issue was discussed within the Council and in particular that the Council Presidency stressed that the acts other than those mentioned in Recital 23, such as making a computer with internet connection available in an Internet café or library, would not be covered by the Info Society Directive (see Council document 5168/00 of 10 January 2000, p. 4, paragraph 9, quoted in the opinion at paragraph 135, note 42).

Professor Kokott also held that the showing of TV programmes in a pub does not fall within the other category of communication to the public, i.e. communication to the public not present at the place where the communication originates (this act is expressly covered by the Info Society Directive: see again Recital 23). In her eyes, where pub landlords show TV programmes to their customers, the relevant public is present at the place where the communication originates: the communication originates on the TV screen (paragraph 144 of the opinion).

Thus, according to the Advocate General, showing TV programmes in a pub does not fall within any communication to the public envisaged by the Info Society Directive: as indicated above, it follows that no infringement of the ‘communication to the public’ right can be claimed here.

Practical significance

These findings of the Advocate General seem to be at odds with the previous case law of the ECJ. In a similar case (SGAE v Rafael Hoteles, Case C-306/05) the ECJ supported a broad interpretation of the restricted act in question and held that the distribution of a signal by means of television sets by a hotel to customers staying in its rooms, whatever technique is used to transmit the signal, is to be considered as communication to the public under Article 3 of the Info Society Directive.

Further, Recital 23 of the Info Society Directive clearly states that ‘communication to the public’ must be interpreted broadly and, as emphasised in the opinion (paragraph 129), the explanatory memorandum on the Commission's proposal for a directive clarifies that Article 3(1) of the Info Society Directive is intended to cover all forms of public communication (COM 97 628, Article 3, paragraph 1, p. 25 of the English version). Therefore, should the ECJ accept the interpretation given by the Advocate General—the author believes—the Court should better distinguish this case from SGAE v Rafael Hoteles and give more detailed explanations on the relevant technical issues.

The ECJ should also explain why the fact that the football matches in the pub are showed free of charge supports the finding that the act in question does not constitute communication to the public, as suggested by Professor Kokott. This author believes that such fact should not affect the decision whether the acts in question amount to communication to the public. Also the guests of a hotel watch TV programmes in their room free of charge: and this did not impede the ECJ from considering the distribution of a signal by means of hotel TV sets as communication to the public (SGAE v Rafael Hoteles).

The practical result of such findings is clear. Copyright owners should not be entitled to enforce their communication to the public rights under the Info Society Directive against publicans, bar owners and the like who show TV copyright programmes to their customers. Yet, even if the ECJ confirms the findings of the Advocate General, this would not have a particular impact in those EU Member States which have implemented or will implement Article 11bis(1)(iii) of the Berne Convention: this provision grants copyright owners the right to prohibit the public communication of radio or TV programmes in places where people gather including bars, restaurants, hotels, cafes, trains, etc. Thus in those Member States copyright owners will still be able to enforce their exclusive rights against that identified category of infringers.

Friday, 18 March 2011

"Fakes in Transit": advance notice

Mark your diaries for Tuesday 27 September 2011, when JIPLP will be holding an afternoon seminar, "Fakes in Transit", on the issues arising from the need to control the movement of counterfeit and infringing goods as they cross the territory of the European Union on their way from manufacturer to ultimate destination.

It is expected that this seminar will discuss, among other things, the Court of Justice rulings in Joined Cases C‑446/09 Koninklijke Philips Electronics NV v Lucheng Meijing Industrial Company Ltd, Far East Sourcing Ltd, Röhlig Hong Kong Ltd and Röhlig Belgium NV and C‑495/09 Nokia Corporation v Her Majesty’s Commissioners of Revenue and Customs, in which the Advocate General's Opinion was published last month.  The main speaker is JIPLP Editorial Board member Marius Schneider (pictured, above right), who is co-editor of Enforcement of Intellectual Property Rights trough Border Measures - Law and Practice in the EU, with Olivier Vrins (Oxford University Press, 2006).

The seminar, which will be free and is expected to offer CPD points, is kindly hosted by the London office of Olswang LLP.  Refreshments will be provided.

Further details will be posted on this weblog once the full programme is available. If you'd like an email notification of the programme details once they've been finalised, email me here with the subject line 'Transit seminar'.

Wednesday, 16 March 2011

Articles in search of an author

Here's another selection of subjects for which JIPLP would like to receive articles for publication. This list is emphatically not an exclusive one, so regular topics are welcome too, but readers have expressed interest in topics on this list over the past year and it would be good to match JIPLP's content as closely as possible with the interests and expectations of its readership:
1. Dealing with counterfeit and IP-infringing goods in transit between manufacturer and consignee, in contexts other than that of the European Union;

2. Liability of landlords for infringing activities that take place within their premises; [taken]

3. The acquisition and enforcement of IP rights in public domain historical characters; [taken]

4. General guidance for civil IP lawyers on the intersection of civil and criminal IP litigation;

5. A private practitioner's perspective on best practice in management of client conflicts in an IP practice;

6. Securitisation of IP rights in a time of recession: points to consider;

7. The US Bayh-Dole legislation -- an introduction for non-US businesses;

8. The creation of copyright-protected art works using digital technologies -- key issues; [UK version now taken]

9. The litigation of intellectual property issues before the European Court of Human Rights;

10. The use of musicologists for the purpose of furnishing expert evidence in musical copyright infringement trials.[taken]
For the sake of smooth administration, please bear in mind that the Commissioning Editor is Sarah Harris, to whom all inquiries should be directed by email, here, if you can't find an answer to your question on JIPLP's Instructions for authors page here. If you want to see what JIPLP articles look like and don't have access to one, you can get a sample issue of JIPLP here.

Also, while JIPLP likes to encourage young authors, the journal's staff hate to see prospective contributors disappointed and try to prevent any waste of human capital in terms of time, effort and emotional commitment to lost causes.  Therefore we ask you to bear in mind the following:
1. If you are a law student, you may have some valuable opinions to offer -- but they probably won't be supported by the sort of professional or commercial experience that readers of a journal of law and practice generally expect and appreciate.  Law students' articles are rarely accepted for publication since they are usually rejected at the peer review stage. 
2. If you are writing about a jurisdiction which is not your own, bear in mind that IP practitioners and owners in that country probably have access to far more materials and general information than you do. It is strongly recommended that you show your draft to an IP expert in that country before submitting it for publication so that lacunae can be identified and addressed. 
3. JIPLP is getting increasingly tough with submitted manuscripts that appear to have been poorly proof-read, or not proof-read at all, by their authors.  Peer reviewers often object to having to review error-strewn submissions, which are also difficult and time-consuming to edit.

4. Please don't garnish submitted manuscripts with stylistic devices, dingbats and other features which some poor soul has to remove at a later stage.

Tuesday, 15 March 2011

‘Abstract idea’ exception to patent-eligible subject matter clarified

Author: Charles R. Macedo (Amster, Rothstein & Ebenstein LLP, New York, NY)

Research Corporation Technologies, Inc. v Microsoft Corporation, 627 F.3d 859, US Court of Appeals for the Federal Circuit, 8 December 2010 (RCT II)

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr026, First published online: March 15, 2011

The US Federal Circuit recognizes the broad reach of patent-eligible subject matter and narrow scope of the ‘abstract idea’ exception under 35 USC §101.

Legal context

Over the past few years, culminating in the US Supreme Court decision in Bilski v Kappos, the scope of what type of inventions are eligible for patent protection has been addressed and clarified. In the first significant decision since the Supreme Court decided Bilski, the Federal Circuit addressed patent-eligible subject matter, and the ‘abstract idea’ exception to patent-eligibility in particular. The Federal Circuit has now taken a big step towards providing more clarity to the scope of patent-eligible subject matter.

Facts

RCT is the owner of six related US patents directed to digital half-toning technology: 5,111,310, 5,341,228, 5,477,305, 5,543,941, 5,708,518 and 5,726,772. Almost a decade ago, RCT filed a patent infringement lawsuit against Microsoft in the Arizona federal court, alleging that Microsoft's operating systems, office suites, and other applications infringe these six RCT patents (Research Corp. Techs., Inc. v Microsoft Corp., No. 01-CV-658 (D. Ariz. filed 21 Dec. 2001)).

In prior proceedings, a District Court assigned to the case granted a series of summary judgment motions without opinions relating to non-infringement and invalidity in favour of the defendant, Microsoft. The District Court also issued a finding of inequitable conduct. These decisions were the subject of a prior appeal, which resulted in reversal and an order that on remand the case be assigned to a new District Court judge (Research Corp. Techs., Inc. v Microsoft Corp., 536 F.3d 1247, 1254 (Fed. Cir. 2008) (RCT I)).

On remand, the new judge assigned to the case held, inter alia, that the asserted claims of the '310 and '228 patents were invalid under 35 USC §101. This ruling (as well as others relating to the effective date of claims of four of the asserted patents) was appealed in the present appeal. This Current Intelligence addresses only the Section 101 issues raised in it.

Analysis

On appeal, the Federal Circuit again reversed the District Court's summary judgment, finding that the '310 and '228 patents did not claim patent-eligible inventions under 35 USC §101. In reaching this decision, the court (per Chief Judge Rader) provided a helpful state of the law on patent-eligibility after the Supreme Court's decision in Bilski.

RTC II begins its analysis with a restatement of Section 101 itself, and the statutory definition of ‘process’ found at 35 USC §100(b). Relying upon the Supreme Court's decision in Bilski v Kappos, 130 S. Ct. 3218, 3225 (2010), RTC II confirmed the broad words of the statute, and the ‘wide scope’ of patent-eligible subject matter. Drawing from Bilski's discussion of previous Supreme Court cases, RTC II, at 867–68 (citations omitted), explains:
the Supreme Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’” The Supreme Court has articulated only three exceptions to the Patent Act's broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.” The Supreme Court reasoned that laws of nature and natural phenomena fall outside the statutory categories because those categories embrace “the basic tools of scientific and technological work.” Abstractness, also a disclosure problem addressed in the Patent Act in section 112, also places subject matter outside the statutory categories.
RTC II concludes that ‘section 101 does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent’. Id. at 868. Thus Section 101 is merely a ‘threshold’ test, and the other provisions of the US Patent statute (eg Sections 102, 103, and 112) serve better gate-keeping functions.

With respect to the case-at-hand, RTC II found that the claims at issue met the statutory aspects of Section 101 and the statutory definition of process found in Section 100(b). The court then considered whether the claims were subject to one of the three judicial exceptions. In this regard, the only issue raised was whether the ‘abstract’ exception applied. RTC II took this opportunity to follow the Supreme Court's mandate in Bilski to avoid applying a rigid formula or definition for abstractness but instead develop ‘other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text’. Bilski, 130 S. Ct. at 3231. Thus RTC II, at 868, held:
With that guidance, this court also will not presume to define “abstract” beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.
With this guiding principle, RTC II recognized that
In that context, this court perceives nothing abstract in the subject matter of the processes claimed in the ’310 and ’228 patents. The ’310 and ’228 patents claim methods (statutory “processes”) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask. Id. (emphasis added).
RTC II found support for its conclusion in ‘[t]he fact that some claims in the ’310 and ’228 patents require a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” … .’ It also offered as a new touchstone ‘that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act' Id. at 869 (emphasis added).

Relying upon the Supreme Court's decision in Diamond v Diehr, 450 U.S. 175 (1981), RTC II flatly rejected the notion that the inclusion in the claims of ‘algorithms and formulas, even though admittedly a significant part of the claimed combination, do not bring this invention even close to abstractness that would override the statutory categories and context’.

As a concluding note, returning to the court's original point that Section 101 does not replace the other requirements of the Patent Act, RTC II distinguished its holding that the claims at issue were not so abstract as to override the statutory language of Section 101 from a holding that the claims were concrete enough to meet the specificity requirements of Section 112:
In the context of the statute, this court notes that an invention which is not so manifestly abstract as to over-ride the statutory language of section 101 may nonetheless lack sufficient concrete disclosure to warrant a patent. In section 112, the Patent Act provides powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention. Thus, a patent that presents a process sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite because the invention would “not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.” Star Scientific, Inc. v R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008). That same subject matter might also be so conceptual that the written description does not enable a person of ordinary skill in the art to replicate the process. Id.
Practical significance

RTC II appears to offer a first taste of the new standard governing patent-eligible subject matter that we can expect to see coming out of the Federal Circuit with Chief Judge Rader in charge. In RTC II, the court rejects myopic rules that would unduly narrow the scope of patent-eligible subject matter, and keeps the focus on the other protections of the US Patent Act as mechanisms to protect against patent claims that are vague and of suspect validity.

Monday, 14 March 2011

Three JIPLP announcements

1. Prospective and contributors as well as referees have sometimes been a little surprised at the somewhat stilted, not to say robotic, flavour of emails which they receive from the journal's team. The cause of this is the use of a large number of automatically generated templates which have proved difficult to change en masse and labour-intensive to change individually. The good news is that, over the next few months, the entire stock of templates is to be revised and made generally more human-friendly.


2. The printed version of the March 2011 issue, which subscribers should have received a week ago or longer, should be accompanied by a printed index to volume 5 (2010). Online subscribers are reminded that they can search the journal's current and back issues via its website here.


3. Later this week this weblog will be publishing a list of articles in search of authors, so that suitably qualified people can volunteer to submit their drafts with a view to peer review and publication. Before we do so, we ask readers if there are any topics that they've been waiting for and which never seem to get covered. Tell us and we'll do our best to find an author for them.

Sunday, 13 March 2011

Post-expiry saisie-contrefaçon: Belgium and France diverge

Author: Kristof Neefs (Altius, Brussels)

Sandoz/Daiichi Sankyo, Cour de Cassation (France), No. 09-72946, 14 December 2010

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr025, First published online, 11 March 2011

The French Cour de Cassation has ruled in Sandoz/Daiichi Sankyo that a so-called saisie-contrefaçon, a discovery procedure for intellectual property holders, cannot be awarded after the patent has expired, even when the petitioner seeks evidence of acts that allegedly occurred during the patent's term. This judgment is at odds with case law on saisie-contrefaçon in Belgium and it is discriminatory. Furthermore, it appears it cannot be reconciled with Directive 2004/48 on the enforcement of intellectual property rights.

Legal context



Article 7 of Directive 2004/48/EC requires EU Member States to provide for ‘prompt and effective provisional measures to preserve relevant evidence in respect to the alleged infringement of intellectual property rights’. Such measures can be ordered, if necessary without the other party having been heard, on application by ‘a party who has presented reasonably available evidence to support his/her claims that his/her intellectual property right has been infringed or is about to be infringed’. Long before the deadline for implementation of Directive 2004/48, Belgium and France had a procedure in place, labelled saisie-contrefaçon in each jurisdiction, for discovery of intellectual property infringements. A saisie-contrefaçon can be obtained by means of an ex parte petition, which can be opposed by the targeted party after service and the execution of the discovery measures. The procedures in Belgium and in France are similar.

In Belgium, the saisie-contrefaçon is governed, for all eligible intellectual property rights, by Article 1369bis of the Judicial Code. To be awarded discovery, the petitioner must show that the intellectual property right invoked is prima facie valid and that there are indications that it has been infringed or is about to be infringed. Discovery will then be carried out by a bailiff and a court-appointed expert who may describe all objects, elements, documents or processes which can evidence the alleged infringement or its origins, destination or scope. Anyone ‘entitled to file an infringement action in accordance with the relevant intellectual property act’ can solicit such measures. In Belgium, a saisie can even be awarded on the basis of a foreign patent where are indications that evidence of infringement abroad can be found in Belgium (Belgian Cour de Cassation, 3 September 1999, Docket No. C.960097.N).

The French saisie-contrefaçon for patents is based on Article L615-5 of the French Intellectual Property Code, which holds that ‘any person having the capacity to file an infringement action’ may request the court to have a bailiff and an expert describe, in detail, allegedly infringing products and processes at the targeted party's premises.

Facts

In a dispute regarding pharmaceutical products having the active ingredient pravastatine, originator Daiichi Sankyo (‘Daiichi’) petitioned for a saisie-contrefaçon at the premises of the generic manufacturer Sandoz on 17 March 2009. The relevant SPC had expired some three years earlier, on 10 August 2006, but Daiichi alleged that it had been infringed by Sandoz in July 2006. Daiichii thus sought evidence of past infringements of the SPC, after it had expired. To explain the delay, Daiichii submitted that the French patent office had erroneously held that the SPC had lapsed, a decision which was reversed by the Paris Court of Appeal in 2007.

The ex parte decision awarding discovery was successfully contested by Sandoz. The first instance Court revoked the decision on 15 April 2009. In its judgment of 18 November 2009, the Paris Court of Appeal annulled the withdrawal of the saisie by the first instance Court (M. Schaffner & R. Viret, Validity of a ‘saisie-contrefaçon’ carried out after the expiry of the patent, Journal of Intellectual Property Law & Practice (2010) 5 (11): 756-757). The Court held that it was irrelevant whether the SPC was still in force at the time of the petition, as long as any act committed at that time was not the subject of the request.

In turn, Sandoz sought and obtained the annulment of the appellate judges' decision from the French Cour de Cassation. The Court's reasoning is brief. It rules that Sandoz' first plea in law is well-founded and that only a party who can establish both the existence of their title and the fact that it is in force is entitled to a saisie-contrefaçon. The Cour de Cassation annulled the judgment and ordered Daiichi to pay the costs of the proceedings.

Analysis

The decision in Sandoz/Daiichi is objectionable for several reasons. First, no legal provision appears to support the view that a patent has to be in force to obtain a saisie-contrefaçon. The French Intellectual Property Code and the Belgian Judicial Code only require that the petitioner has the capacity to file ‘an infringement action’. The latter includes claims for damages, which can be filed both before and after the expiry of the patent, as long as the claim is not barred by the applicable statute of limitations. There is a plain logic to these provisions: as long as the discovery request relates to infringements – ie acts which necessarily occurred during the patent's term – and the patentee can still act, the status of the patent at the time of the saisie request does not seem relevant.

Secondly and in the same vein, the Cour de Cassation's judgment is discriminatory: the expiry date of a patent or an SPC is an arbitrary cut-off date for entitlement to solicit discovery. In terms of claims for damages, nothing but the relevant statute of limitations distinguishes the holder of an expired patent and one of a patent that is still in force. As long as the former's claim for damages is not statute-barred, he too deserves the right to collect evidence of infringement. This was, in my view rightfully so, the reason why the Paris Court of Appeal had allowed the saisie requested by Daiichi in the judgment under appeal and, a few months earlier, in Deprat/Zurfluh Feller (Paris Court of Appeal 3 March 2010, Docket No. 07/14488). Similarly in Belgium, the Antwerp Court of Appeal dismissed Disco-Press' claim to annul a decision awarding discovery to Philips because some of the patents invoked had expired. According to the Antwerp Court, expiry did not exclude the determination of infringing acts that occurred during the patent term (Antwerp Court of Appeal, 2 November 2005, Docket No. 2004/AR/1870).

Thirdly and finally, the judgment appears to be at odds with Article 7 of Directive 2004/48 which requires that measures for collecting evidence are made available to parties ‘who have presented reasonably available evidence to support his/her claims that his/her intellectual property right has been infringed or is about to be infringed’ (emphasis added). This provision does not require that infringement is current or continuing at the time of the request for discovery. As the Directive imposes harmonized minimum standards for intellectual property protection, it does not allow national provisions (or interpretations) which are less favourable to intellectual property holders. Admittedly, one could argue that Article 4 of Directive 2004/48 holds that the measures and remedies set out in the directive must be made available to ‘holders of intellectual property rights’ and to ‘all other persons authorized to use those rights’ and that an expired patent no longer qualifies as an intellectual property right. Most will agree, however, that such interpretation of the Directive is flawed because, among other reasons, it affects more than just the provisions on evidence.

This critique does not imply that the physical seizure of stocks or a freezing order, measures which can be requested as a measure accompanying discovery in Belgium when infringement cannot reasonably be contested (Article 1369bis/1, §4 of the Belgian Judicial Code – France has a similar provision in Article L615-3, 2nd indent of the Intellectual Property Code but it does not form part of the saisie-contrefaçon), should still be available after expiry. Such measures exceed the probatory nature of discovery and resemble a preliminary injunction. Injunctive relief is in principle no longer available post-expiry – save in exceptional circumstances, for instance where it can be proved that the goods were manufactured during the patent's term and that their manufacturing was thus an infringement. Accordingly it can, normally speaking, no longer be awarded as a measure accompanying a saisie-contrefaçon either. This would unduly limit the seized party's freedom to operate.

Nor do I mean to say that a request for post-expiry discovery should not be carefully examined by the court. Discovery should, in those cases, be strictly confined to elements of relevance for acts that occurred during the term of the patent. Use of the saisie-contrefaçon to facilitate mere fishing expeditions is unacceptable (see, for instance, the Belgian Cour de Cassation's judgment of 29 November 2009 in INEOS/Chevron, Docket No. C.08.0206.N.1, in which the Court held that the mere fact that a competitor had opposed the petitioner's process patent with the EPO did not justify discovery at the competitor's production site). However, these concerns are equally relevant to discovery during the term of protection and they do not justify a per se dismissal of the request because the patent has expired. As long as the patentee's claim for damages is not statute-barred, measures to collect evidence to support such claim should remain available.

Practical significance

Once a patent has expired, it seems a saisie-contrefaçon is now no longer available in France and, consequently, it will likely become more difficult to establish damages incurred by past infringements. Depriving patentees, or ex-patentees if you will, of the right to gather evidence after the expiry of their title may encourage competitors to begin manufacturing and stocking up before – but close to – the patent's expiry date. The risk that a patentee would find out may not suffice to deter such strategy in case an immediate and large-scale market entry upon expiry would lead to substantial financial rewards. This concern is particularly relevant for the pharmaceutical industry, where generic competitors often rush to the market upon patent expiry. The outcome of Sandoz/Daiichi Sankyo is unfortunate and it is hoped this wind does not catch the sails of other European courts. To date, post-expiry discovery remains available in Belgium. The French supreme judiciary has now chosen a different route. Perhaps on the next occasion, the Paris Court of Appeal could ask the European Court of Justice for a preliminary ruling on Article 7 of Directive 2004/48, so France can bid adieu to the teaching of this judgment.

Thursday, 10 March 2011

April 2011 JIPLP online, with cobbler's children editorial

The April issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available in full online. Everyone can browse the contents list and order individual items online, while subscribers can of course read the whole thing.

The April editorial deals with the recently-past crisis over the World Intellectual Property Organization's logo and web format, which was misappropriated by a trader offering apparently official but quite worthless services. It reads as follows:
"WIPO and the cobbler's children

There is an old adage which owes its origin to those far-off times when shoes were made and maintained by craftsmen, not mass-produced in far-off lands, to the effect that it is the children of the cobbler—who repairs the shoes of others—who go barefoot. So preoccupied is the cobbler with the needs of others that his family's own needs go unmet.

Much the same might be said for the World Intellectual Property Organization (WIPO), the United Nations agency charged with responsibility for ‘Encouraging Creativity and Innovation’, so quotes the slogan on its home page. At the time of writing, it was more than four months since WIPO was informed of the existence of a rogue website giving an address in Prague, Czech Republic, which boasted a logo and artwork that strongly resembled those of WIPO but offered an expensive and effectively worthless directory entry. Within IP circles, considerable disquiet has been expressed with regard to the operation of a site which, had it been as brazen in its mimicry of a private sector business, would surely have been the subject of vigorous litigation to suppress it.

This episode, however it ends, has raised several issues which this editorial summarizes below.

First, is the protection of the symbols of international bodies under Article 6ter of the Paris Convention sufficient for WIPO's purposes? That provision harks back to a heraldic age and appears to impose duties upon countries of the Paris Union rather than to confer actionable rights in regard to the abuse of protected flags, emblems, and so forth under the Convention. At least one other United Nations agency, the United Nations Children's Fund (UNICEF) has registered both words and devices as trade marks, suggesting that it must have seen some advantage in doing so, in contrast with the position given by one WIPO official that the registration of its restyled logo as a trade mark in 2010 was ‘neither necessary nor useful’. In any event, Article 6ter protection would not appear to cover the imitation on one website of the artwork deployed on another. Copyright owned by national governments and international organizations does not in fact appear to be protected under any international convention, including the two so-called Internet Treaties of 1996.

Secondly, the question has been raised as to whether the powers vested in WIPO under the WIPO Convention extend so far as to enable it to embark upon litigation in national courts at all.

Thirdly, it remains unclear what provision WIPO makes with regard to the monitoring, protection, and enforcement of its own rights since there appears to have been no clear statement from that body.

Fourthly, no footnote is required for the proposition that we live in an age when infringement and counterfeiting is rampant—a proposition which many of us need look further than our spam-boxes for verification. Given that WIPO has gone to such great lengths to promote and emphasize the importance of IP rights, to educate governments, businesses, creators, and even sometimes consumers as to their importance, some members of the IP community were hoping to see strong leadership by WIPO itself in powerfully decrying the sort of practices carried out by its imitator. The feelings of those who have been misled into paying over substantial sums of money in consequence of their having been confused or deceived are not recorded, but some of their professional representatives have expressed great annoyance at what appears to be a lengthy period of silence and inactivity.

WIPO has, to its credit, maintained and updated a page on its website under the rubric ‘WARNING: Requests for Payment of Fees’, which lists bodies that invite payment of fees for non-official services. Indeed, Prague's World Intellectual Property Database features three times on it. But how many people know of its existence? It receives little overt publicity.

I believe that WIPO can do much to emphasize the importance of IP rights by giving a higher priority to the protection of its own. There is at least one precedent for this at United Nations level, where the World Health Organization has a policy of not recruiting cigarette smokers on account of the proven danger to health which that practice engenders. This shows that the WHO not only supports a set of policies but lives them. It is hoped that WIPO will do so too".

Tuesday, 8 March 2011

JIPLP and OUP's developing countries initiative

Oxford University Press runs a developing countries initiative in which electronic subscriptions to journals are made available either at no cost or at a greatly reduced cost.  Further information, together with the lists of countries included in the free and low-cost schemes, can be found here.

JIPLP is pleased to be associated with this initiative.  While it is sometimes said, with justification, that many of the world's poorest countries have far more pressing issues to worry about such as food, health and their immediate survival, on a wider level they are often criticised for failure to observe international standards and legal norms for the protection of intellectual property even though compliance with them is the gate to World Trade Organization membership and the receipt of some forms of aid.  The more information they have on the subject, the better their understanding and therefore their decision-making is likely to be.

Monday, 7 March 2011

Current Intelligence articles: making things easy for authors

Don't let failure to use the
template spoil your chance
of publication
One of the most successful feature of the Journal of Intellectual Property Law and Practice (JIPLP) has been its Current Intelligence section, in which notes on recent cases, legislation and other events are encapsulated in a succinct yet analytical format. Each month a small number of Current Intelligence pieces are posted on this weblog, and they are much appreciated by the journal's growing readership.

Authors have however sometimes struggled to conform to the template which all Current Intelligence contributions -- without exception -- must adopt if they are to be accepted for publication.  All our authors, being professionally or academically trained, are likely to be quite familiar with the concept.  So what then is the problem?

It is possible that some authors may have composed case notes without any specific journal in mind, then decide to submit them to JIPLP.  Others may have already offered them to other journals, only to have them rejected, and then take a chance that JIPLP will be able to publish them.  Others again may have thought it a good idea to recycle materials that were originally published in advice or circulars to clients or in their newsletters.  In all these cases -- even if the item is well written and carefully thought out -- time spent having to re-frame a submission which has been rejected for failure to conform to the Current Intelligence template is valuable time lost.

To this end, I have prepared a short note for the assistance of all authors, together with a Word template which may be downloaded and used, here.  Please don't think of this template as a straitjacket for authors, but rather as a way of meeting the expectations of readers.  If you want more freedom in your writing, JIPLP is always willing to entertain your submission as an article rather than as a Current Intelligence note.

Friday, 4 March 2011

Some JIPLP news

Following yesterday's JIPLP management meeting in Oxford, I can report on various developments concerning the journal that may be of interest to readers and contributors.

1. Readership: amazingly, if we consider the current economic climate, JIPLP's subscriber numbers rose in the course of 2010 by a very healthy 11.1 per cent.  Considering (i) how many businesses crashed during the year, (ii) how many public sector bodies had to cut their budgets and (iii) how many JIPLP subscribers would have been merged with or taken over by others, this performance is most impressive.

2. Since the journal is progressing so well, Oxford University Press has confirmed that the page extent of each issue can rise to 84 pages per issue. This means that there will be some larger-than-usual issues being published in the course of this year.

3. JIPLP has just become a member of the Committee on Publication Ethics -- COPE -- a forum for editors and publishers of peer-reviewed journals to discuss all aspects of publication ethics. In its short life JIPLP has already encountered ethical issues that touch intellectual property: attribution of authorship and sources, suspected plagiarism and the simultaneous grant by one author of an exclusive licence to one journal and a non-exclusive licence to another.  This blog will keep readers fully informed of the journal's participation in COPE.

4. Oxford University Press will again be exhibiting its titles at the International Trademark Association Meeting (this year's is in San Francisco, mid-May).  Watch this space for details of when someone from the JIPLP editorial and commissioning team will be available to discuss editorial content, future articles and other pleasurable topics.

Tuesday, 1 March 2011

Automatic reversion clauses in copyright assignments: do they work?

Author: Mark Anderson (Solicitor, Certified Licensing Professional, Anderson & Company)

Crosstown Music Company 1, LLC v Rive Droite Music Limited, Mark Taylor and Paul Barry [2010] EWCA Civ 1222, 2 November 2010

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpq207, first published online: February 24, 2011

The Court of Appeal for England and Wales has confirmed the legal effectiveness of a clause in a copyright assignment that provided for an automatic reversion of the copyright to the assignors in the event of breach of contract by the assignee.

Legal context

Counsel argued in this case that English common law does not allow a transfer of personal property to be subject to an automatic reversion of the property to the transferor in the event of an uncertain future event, eg a breach of contract by the transferee (‘automatic reverter’). Copyright is a species of personal property (according to section 90(1) of the Copyright, Designs and Patents Act 1988) and the transfer of copyright is subject to section 90. This provision does not specifically state whether an assignment can be subject to an automatic reverter. However, section 90(2) allows an assignment of copyright to be ‘partial, that is limited so as to apply … (b) to part, but not the whole, of the period for which the copyright is to subsist.’

Facts

The second and third defendants (the ‘writers’), who were songwriters, assigned copyright in their songs to the first defendant (‘Rive Droite’) under song-writing agreements. Clause 18(a) of the agreements provided that, in the event of unremedied material breach by Rive Droite, ‘all rights assigned to [Rive Droite] hereunder shall forthwith revert to the Writer’. Clause 18(b) provided that, if Rive Droite went into liquidation, ‘all rights assigned to [Rive Droite] hereunder shall … revert to the Writer on the day immediately preceding such event’.

In 2006 Rive Droite sold the copyrights and the rights under the song-writing agreements to the claimant for approximately US$10m. In April 2007 the writers served notice of breach on Rive Droite, alleging accounting deficiencies and other matters, and stating that they would contend an automatic reverter if the breaches were not remedied. In October 2007 Rive Droite was put into administration, owing large sums to the writers.

The claimant contended that it was the owner of the copyrights by virtue of the assignment from Rive Droite and that the reverter was invalid. At first instance, Mann J found that Rive Droite had been in material breach of the song-writing agreements, the breaches had not been remedied in response to the notice of breach, and that the copyrights had automatically reverted to the writers under clause 18(a). The claimant appealed. The Court of Appeal unanimously dismissed the appeal. Various other issues were considered in the action, which are not further mentioned in this note, including the rights of the English courts to decide matters of foreign copyright.

Analysis

Mummery LJ gave the lead judgment. His findings on the reverter point can be summarised as follows:
1. Clause 18(a) was not an agreement to re-assign; rather, it was an automatic reverter, so that re-vesting took place automatically and without the need for further documentation when the reverter event occurred.

2. Section 90 permits partial assignments for a period of less than the full term of the copyright. The key issue was whether section 90 permitted the specific type of partial assignment in this case, ie one where an automatic reverter followed an unremedied breach of contract. Common law rules on personal property were not relevant to this question.

3. Although section 90 did not specifically refer to automatic reverter provisions, the ‘ordinary meaning’ of the words of the section, where they referred to a period of less than the full period of the copyright, did allow such provisions to be legally effective.
Practical significance

In his judgment, Mummery LJ referred to a comment by counsel for the claimant that this outcome of the case was an ‘odd commercial result’, in which the claimant had paid US$10m for nothing, while the writers had obtained a huge windfall by recovering copyrights that they had previously sold and been paid for. Mummery LJ disagreed and pointed out that the claimant had failed to make enquiries as to whether Rive Droite had complied with its obligations under the song-writing agreements. Mummery LJ considered that the claimant's remedies were against Rive Droite (eg for misrepresentation or breach of warranty) and not against the writers. Of course, Rive Droite had long since gone into administration.

The case confirms the validity of automatic reverter clauses in copyright assignments, at least in relation to reverter following breach of contract. Such clauses are commonly encountered in the media sector. There are arguments for and against such provisions being legally effective. Where they are legally effective, there is a greater onus on the purchaser to do ‘due diligence’ on the chain of title. A potential solution where the facts are similar to those in Rive Droite would be for the purchaser to get the original owners of the copyright to execute some form of confirmatory assignment or waiver to ensure that they could not claim the copyright back. Insurance might also be available against this risk.

Although the case did not specifically decide the point, the Court of Appeal's judgments give some hope for assignors who wish to recover copyright from an insolvent company. Clause 18(b) of the song-writing agreements provided for an automatic reverter if the assignee went into liquidation. Such provisions are sometimes considered of doubtful legal effect in light of insolvency laws (particularly the Insolvency Act 1986), including those allowing a liquidator to reject ‘onerous’ contracts and those prohibiting unlawful preference of creditors. By clarifying that reverter provisions are not agreements to re-assign but take effect automatically, there may be greater prospect of recovering copyright from a liquidator who might otherwise refuse to re-assign.

Although not discussed by the Court of Appeal in their Rive Droite judgments, this author has been advised by specialist insolvency counsel that assignments of a determinable interest are encountered in other areas of business law. The technique is apparently used in relation to pension funds (to avoid the pension falling into the estate of an insolvent person) and in relation to subordinated debt obligations (eg this explains how an agreement by a junior creditor to pass any proceeds it obtained to a senior creditor could survive the insolvency of the junior creditor). As Neuberger J (as he then was) commented, obiter, in Money Markets v London Stock Exchange [2002] 1 WLR 1150:
It does appear well established that an interest granted on the basis that is inherently limited on insolvency is recognised by the court. In other words, a determinable interest, that is an interest with a limitation until insolvency, is valid …
However, great care is required in the drafting of any such provision to ensure that it does not fall foul of the insolvency laws mentioned earlier.

This author is interested in the possible implications of the Court of Appeal's judgments for patent assignments. Unlike section 90 of the Act, section 30 of the Patents Act 1977 makes no mention of partial assignments or assignments limited by time. Mummery LJ's reasoning for declaring automatic reverters to be legally effective was very much based on the wording of section 90, which did allow partial assignments. The other two judges in the Court of Appeal in that case were Morgan J and Sir Paul Kennedy, who both agreed with Mummery LJ's conclusions. Sir Paul Kennedy adopted the reasoning of Mummery LJ and made no further comment. On that basis, it might be argued that the majority in the Court of Appeal decided the matter on the wording of section 90, and the case has no relevance to patent assignments.

Morgan J, in contrast, commented on whether the claimant was right to contend that automatic reverter clauses were invalid under general common law principles governing personal property. Part of the claimant's case was that these general principles did not allow an automatic reverter of personal property based on a contingent event. He pointed out that automatic reverter had been possible in certain other areas of property law, eg under the School Sites Act 1841. His conclusion was that the claimant had failed to show that an automatic reverter was impossible under general principles of property law.

Morgan J's comments, as well as the practice in other areas of business law mentioned above, raise the possibility that automatic reverter provisions could be legally effective in assignments of other types of intellectual property. There appears to be nothing in section 30 of the Patents Act 1977 which prohibits automatic reverter provisions. Even if this is technically correct, there may be practical difficulties in persuading a national Patent Office (in the UK or elsewhere) to amend the register to reinstate a former proprietor, in the absence of a formal re-assignment.