Thursday, 26 April 2012

Authorship of cinematographic works and ownership of related rights: who holds the stage?

Author: Stefano Barazza (Studio Legale Barazza)

 Martin Luksan v Petrus van der Let, Case C-277/10, European Court of Justice (ECJ), 9 February 2012

 Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps059, first published online: April 23, 2012

 The ECJ has clarified that the rights concerning the exploitation of cinematographic works, as well as the right to fair compensation provided under the ‘private copying’ exception, vest by law, originally and directly, in the principal director; while the former may be subject to a rebuttable presumption of transfer, the latter cannot be waived or transferred. The decision hints at the necessity of achieving a fair balance between the needs of commercial productions and the protection of intellectual creators.


Legal context

The Berne Convention provides a set of basic rules aimed at ensuring a uniform protection of the rights of authors in their literary and artistic works. Article 14 bis, specifically dealing with cinematographic works, leaves to members the task of identifying the owners of copyright but expressly allows national legislation to deny the principal director certain exploitation rights.

The European Union has frequently intervened on the matter, aiming at easing an approximation of the laws of Member States. Provisions applicable to cinematographic works may be found in Directive 2006/116 (which repealed and re-enacted Directive 93/98), concerning the term of protection of copyright and related rights, and Directive 2001/29, which specifically deals with the information society and allows member states to provide for limitations to the reproduction right, among which is the so-called ‘private copying’ exception. Directive 93/83 is also dedicated to satellite broadcasting and cable retransmission, while Directive 2006/115 (which repealed and re-enacted Directive 92/100) addresses lending and related rights.

In Austria, Paragraph 38 of the Law on Copyright (Urheberrechtsgesetz, BGBl. 111/1936) states that exploitation rights in cinematographic works vest in the producer. The author's statutory rights to remuneration, according to the same provision, are to be shared equally by the film producer and the author, unless the parties have agreed otherwise. Provisions concerning personal or private use of copyright material may be found in Paragraph 42.

Facts

In 2008, Martin Luksan, as scriptwriter and principal director, and Petrus van der Let, as commercial producer, concluded a ‘directing and authorship agreement’ for the production of a documentary film entitled ‘Fotos von der Front’. According to the agreement, copyright and exploitation rights were assigned to the producer, but the director retained rights concerning the distribution of the documentary on digital networks, closed circuit television, and pay TV. However, after the film's completion, the producer made it available on the internet and assigned pay TV rights to a TV network.

Mr Luksan sued the producer, alleging breach of contract and claiming that the defendant had exercised the exploitation rights specifically excluded from the agreement. Mr van der Let maintained in response that, according to Paragraph 38 of the UrhG, all exploitation rights vested in him as the producer of the film and that the contract's provisions on the issue were void. He also claimed to be entitled to the entire amount of remuneration rights, arguing that they necessarily share the fate of exploitation rights and that the statutory provision acknowledged the possibility of contrary stipulations.

The Handelsgericht Wien referred several questions to the ECJ, noting that Paragraph 38 of the UrhG, as consistently interpreted by case law, provides for the original and direct allocation of exploitation rights to the film producer and that statutory rights to remuneration are deemed waivable and may be subject to agreements departing from Paragraph 38.

As to exploitation rights, the court asked whether their original and exclusive allocation to the film producer was inconsistent with the European Union law and whether a statutory presumption of transfer, achieving the same effect, is allowed. With reference to the right to equitable remuneration provided under the ‘private copying’ exception, the referring court demanded whether the original ownership enjoyed by the author must also be applied to remuneration rights and whether a presumption of transfer is permitted, questioning the compatibility of the principles enshrined in Paragraph 38 with the European Union law.

 Analysis

The ECJ first clarified that, within the European Union law, the principal director is always considered an author of the cinematographic work, irrespective of any choice made in national law.

The court draws its conclusion from a careful recognition of the applicable directives, emphasizing the necessity of a coherent interpretation of their provisions, which constitute a uniform set of principles and rules (see Joined Cases C-403/08 and C-429/08 Football Association Premier League Ltd and Others [2011]). The status of author is unanimously attributed to the principal director by Directives 93/83, 2006/115, and 2006/116, while recital 20 in the preamble of Directive 2001/29 openly declares that it shares the same principles (additional remarks may be found in the Commission's Report of 6 December 2002 (COM(2002) 691 Final).

The interpretative path followed by the ECJ falls in line with the objectives set by these directives, which aim at ensuring the maintenance and development of creativity in the interest of authors (recital 9 in the preamble of Directive 2001/29), recognizing IP as an integral part of property, promoting the European cultural creativity, and safeguarding the independence and dignity of artistic creators and performers (recital 11). Accordingly, the ownership of copyright and related rights necessarily vests in the authors themselves, as exploitation rights merely represent one aspect of the property right protected by Article 17 of the Charter of Fundamental Rights. Among the provisions that expressly link ownership to authorship, the court mentions Article 2 of Directive 93/83, Article 2 of Directive 2001/29, and Article 3 of Directive 2006/115.

As observed by the Austrian government, however, Article 14 bis of the Berne Convention, which benefits from the protection offered by Article 351 TFUE and binds the European Union under Article 1 of the WIPO Copyright Treaty, allows Member States to deny the principal director certain exploitation rights. On the point, the ECJ notes that the international agreement allows, but does not require, a similar provision: in this case, Member States are expected to refrain from adopting an optional measure which is contrary to the European Union law (see Case C-324/93 Evans Medical and Macfarlan Smith [1995] ECR I-00563) and cannot exempt themselves from the obligations arising from it.

Accordingly, a fair balance may be achieved between the protection of the creative and artistic work of authors and the investments required for the commercial production of cinematographic works (see recital 5 in the preamble of Directive 2006/115, recital 10 in the preamble of Directive 2001/29, and case C-61/05 Commission v Portugal [2006] ECR I-06779) only through a rebuttable presumption of transfer of exploitation rights from the authors to the producer or through a contractual agreement between the parties. The path is clearly laid out by Article 3(4) of Directive 2006/115, which contains a presumption of transfer, subject to contractual clauses to the contrary, in relation to rental rights originally attributed to performers, and Article 3(5) which allows Member States to provide for a similar presumption with respect to authors. As the ECJ infers, Directive 2001/29, sharing the same principles and aims set by Directive 2006/115, is compatible with a presumption of transfer of the exploitation rights governed by the directive.

In her Opinion of 6 September 2011, the Advocate General observes that a similar solution had already been suggested by the Commission (see COM(92) 602 Final). She notes that the presumption should fulfil three conditions: the existence of a contract between the principal director and the film producer, the possibility of contrary stipulations, and the attribution of a fair compensation to the author. The exploitation rights vested in the author are subject to the protection guaranteed to property rights by the Charter of Fundamental Rights: subsequently, any restriction affecting them is subject to the conditions set by Articles 17 and 52 of the Charter.

With reference to the right to equitable remuneration, the court limited its judgment to the fair compensation provided by Article 5(2)(b) of Directive 2001/29 under the ‘private copying’ exception. The ECJ, with a restrictive interpretation, clarified that the exception refers solely to the reproduction right and cannot be extended to remuneration rights. The conclusion is supported by Article 5 and recital 12 of the preamble of Directive 2006/115, which state that the right to an equitable remuneration cannot be waived by authors: as previously mentioned, Directive 2001/29 shares the same principle, despite using the word ‘compensation’, instead of ‘remuneration’ (the court, recalling case C-271/10 VEWA v Belgische Staat [2011], explains that the concept of ‘remuneration’ is also designed to establish recompense for authors). Moreover, member states which adopted the ‘private copying’ exception must ensure that the fair compensation attributed to the right holders is actually recovered (Case C-462/09 Stichting de Thuiskopie [2011]), which implies that the related right cannot be waived.

A presumption of transfer of the right to fair compensation, whether rebuttable or otherwise, appears, therefore, incompatible with the European Union law. The same remark applies to the partial presumption laid out by Paragraph 38, which allocates only half of the statutory rights to the director (the Advocate General notes that a separate compensation for the producer may be provided under Article 5(2)(b) and Article 2(a) and (b) of Directive 2001/29).

 Practical significance

The ECJ accurately draws the perimeter of a set of rules and principles that, within the court's interpretation, prove to be coherent and uniform (implicitly addressing some of the doubts expressed by E. I. Obergfell, ‘No need for harmonizing film copyright in Europe?’ (2003) 4 The European Legal Forum 199–205). By recognizing the principal director as a statutory author, to whom copyright and related rights are originally attributed, while openly acknowledging the possibility of transferring exploitation rights to the producer, providing authors with a fair compensation, European Union law achieves a fine balance between the aims of protecting authorial rights and facilitating the production and exploitation of cinematographic works. The widespread adoption of similar measures, as well as the affirmation of the parties’ contractual autonomy, seems to question the traditional dichotomy between copyright and authors’ rights systems (see P. Kamina, Film Copyright in the European Union, Cambridge University Press 2002).

Although the path laid out by the ECJ clearly diverges from the transatlantic doctrine of ‘work made for hire’ (see T. Kreutzer, Das Modell des deutschen Urheberrechts und Regelungsalternativen, Nomos 2008), it contributes to the development of a flexible system which, despite differences in national legislation, appears ready to face the economic, social, and technological challenges of our time (see the Green Paper on the online distribution of audiovisual works in the European Union: opportunities and challenges towards a digital single market of 13 July 2011, COM (2011) 427 Final).

Tuesday, 24 April 2012

Beware of competition law! Relying on patents to extend protection for medicines may be anticompetitive

Author: Michele Giannino (Desogus Law Office, Italy)

Case A431 Ratiopharm v Pfizer, Italian Competition Authority (Autorità Garante della Concorrenza e del Mercato), Decision no 23194, Italy, 11 January 2012

 Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jps065. first published online: April 23, 2012

 The Italian Competition Authority holds that the patentee of a brand medicine who files an application for a divisional patent and the related supplementary protection certificate with the intention to hinder the entry of generic firms abuses its dominant position and infringes Article 102 TFEU.

 Legal context

In AstraZeneca (COMP/A.37.507/F3 Generics v AstraZeneca), the European Commission ruled that AstraZeneca infringed Article 102 TFEU because (i) it had obtained supplementary protection certificates (SPCs) for Losec with the submission to the patent authorities of deliberately misleading information; (ii) it had withdrawn its marketing authorization to commercialize Losec in the form of capsules with the result that generic firms were unable to rely on its authorization for capsules to commercialize the generics. On appeal (Case T-321/05, AstraZeneca v European Commission), the General Court (GC) substantially upheld the Commission rulings but it ruled out the prospect that the deregistration of the market authorization Losec capsules infringed Article 102 TFEU. In the Pharmaceutical Sector Inquiry Report (Pharma Inquiry), the European Commission confirmed the idea that patent procedure misuse could trigger competition liability, establishing that, under certain conditions, applications for divisional patents could delay entry of generic firms.

 Facts

Pfizer was the owner of the parent patent EP0364417 for the active ingredient of latanoprost for the glaucoma medicine Xalatan. Its patent protection was due to expire in July 2011 except for Italy where the protection ended in September 2009 because it had not applied for an SPC. In 2009, the EPO granted Pfizer's divisional patent EP1225168 for which it sought an SPC only in Italy. In this way, it extended the patent protection of Xalaton in this country until July 2011. However, in 2010, the divisional patent was revoked by the EPO and the SPC was annulled. Then Pfizer obtained a further one-year extension of patent protection until January 2012 for paediatric trials under EC Regulation 1901/2006. It also warned generic firms against entering the market before July 2011 and it sued some of them.

 Analysis

Pfizer enjoyed a dominant position in the market for glaucoma medicines based on latanaprost because of its high market share and entry barriers. The Italian Competition Authority (ICA) was of the view that Pfizer pursued a complex strategy to drive generic firms off the market. This strategy comprised vexatious litigation and patent process misuse in the shape of deliberately filing divisional and SPC applications to extend patent protection.

The ICA based this view on a series of indicia and evidence. First, Pfizer filed the divisional application 13 years after it had applied for the parent patent. Secondly, the divisional did not protect any additional therapeutic use of Xalatan. Thirdly, Pfizer applied for the SPC only in Italy where its protection was due to expire 2 years earlier. Fourthly, Pfizer did not employ the divisional patent to market new medicinal products, which indicated that the only reason why it had filed the divisional application was to block out generic firms. Fifthly, the documents gathered by the ICA showed Pfizer's fear of Xalatan being outpriced by generics and its intention to delay entry of generics through vexatious litigation and by seeking to extend the patent protection.

The ICA also considered that the GC in AstraZeneca reached similar conclusions on when patent misuse amounts to competition infringements. It then showed the anticompetitive effects of the contested conduct by observing that Pfizer caused a 7-month delay in the market entry of generic firms. During this period, the national health system suffered an estimated €14 million in lost savings, while Pfizer extracted a monopoly rent of €17 million. The ICA thus found Pfizer to have breached Article 102 TFEU and imposed on it a €10,677.71 fine. The amount of this fine was lower than the alleged profits of Pfizer.

The ICA's analysis of the competition impact of the divisional application, however, is vitiated by inconsistencies and misunderstandings. The reference to AstraZeneca is misplaced since the GC based its finding of the competition infringement on a narrow set of circumstances: (i) the dominant undertaking's false representation to the patent authorities in support of the SPC application; (ii) the false information being instrumental in obtaining an extension of patent protection to which AstraZeneca was not entitled. Yet Pfizer made no false representation to the Italian authorities and its applications for the validation of the divisional and for the SPC were legitimate means to seek an extension of patent protection.

In the Pharma Inquiry, the Commission expressly recognized divisional patents as a legitimate way to split a patent application. However, the Commission pointed out that, under certain conditions, extension of the examination period brought about by a divisional application could hinder the entry of generic firms by increasing legal uncertainty for them. The ICA, in contrast, found a competition infringement in filing applications for divisional patents and SPC with the purpose of prolonging patent protection. Is it possible to reconcile Ratiopharm v Pfizer with the Pharma Inquiry? Can Pfizer's intent to close off competition from generic companies be considered one of those conditions in the presence of which, according to the Pharma Inquiry, divisionals may restrict competition from generics?

In any event, it seems that the ICA misunderstood the regulatory regime for divisionals and SPCs. Divisionals serve to ensure unity in patent applications and have the same filing date as the parent patent. As acknowledged in the Pharma Inquiry, divisionals can extend neither the content of the original application nor the protection period. Similarly, SPCs are subject to the same limitations and obligations as the basic patent. Therefore, contrary to the ICA assumptions, the protection conferred by an SPC for divisionals cannot be longer than the protection resulting from an SPC awarded for the basic patent.

 Practical significance

The message of Ratiopharm v Pfizer is that a dominant undertaking, as patent holders usually are, may be held to have infringed competition rules when it files a divisional application with the view to hold up the entry of generic firms. The ICA decision is good news for generics in that it limits the options for generators to protect their blockbuster medicines from generic products. However, Ratiopharm v Pfizer is expected to increase compliance costs and legal uncertainty for originators. Arguably, originators may abstain from applying for divisionals lest they receive painful fines for competition liabilities and that may ultimately chill innovation. Considering the relevance of Pfizer's intention in the ICA's reasoning, originators should be advised to clean their internal documents from any statements that can be read as evidence of intention to exploit patent procedures to delay generics entry.

In conclusion, Ratiopharm v Pfizer reshaped the delicate competition/patent law balance by stretching the scope of application of competition law to issues that are at the core of patent law. The underlying rationale for this is to regulate the conducts of patent holders that seek to protect their market position on means other than competition on the merits. However laudable this objective may be, the question whether a firm has misused the patent regulation should be tackled by patent authorities. This what the EPO did when in 2009 it introduced a 24-month time limit for filing divisional applications in order to deal with the issue of abuse of divisionals.

Monday, 16 April 2012

More books for review

The Journal of Intellectual Property Law & Practice (JIPLP) has received a further batch of new intellectual property law titles for review. They are listed below. If you are seriously interested in reviewing one of them for the journal and believe yourself to be suitably qualified to do so, please email Sarah Harris at sarah.harris@oup.com by not later than Friday 20 April 2012 and let her know. If you have not previously reviewed a title for JIPLP, please state why you'd like to review the title of your choice.

Please remember: authors, publishers and our readers depend on your assessment of books that are sent for review. If, once you have received the book, you don't feel that you can review it, we ask you to send it back to us so that we can pass it on to another reviewer.

The books available for review are as follows:

Trade Marks: Law and Practice (third edition), by Alison Firth, Gary Lea and Peter Cornford. Published by Jordans.
"Trade Marks: Law and Practice is a concise account of UK trade marks law within the European and international context. ... this text deals with all the relevant domestic and international developments.

The text incorporates and analyses the ongoing amendments to the Trade Marks Act 2004, amendments to the Trade Marks Rules 2000 and the expansion of the system of international registration of trade marks under the Madrid Protocol and the International Trademark Treaty. The appendices include helpful consolidated versions of the Act and the Rules".
Further information concerning this title can be found here.


Business Method and Software Patents: A Practical Guide, by Morgan D. Rosenberg and Richard J. Apley.Published in New York by Oxford University Press.
"In its 2010 decision in Bilski v. Kappos, the U.S. Supreme Court redefined patentable subject matter for business methods and computer software, but did so without imposing definitive tests and definitions, effectively leaving such guidance for future court decisions and the ... USPTO. As a result, the law is essentially being written at present, and will continue to be written and narrowed over the next decade.

Business Method and Software Patents addresses the drafting of business-method and software patents in the wake of Bilski v. Kappos. ... With the use of actual patents filed by the authors, this work provides practical information and guidance on the drafting of successful patent applications".
Further information concerning this title can be found here.


Complex Copyright: Mapping the Information Ecosystem by Deborah Tussey. Published by Ashgate.
"This book draws on a wide selection of interdisciplinary literature discussing complex adaptive systems - including scholarship from economics, political science, evolutionary biology, cognitive science, and religion - to apply general complexity tenets to the institutions, conceptual framework, and theoretical justifications of the copyright system, both in the United States and internationally. The author argues that copyrighted works are the products of complex creative systems and, consequently, designers of copyright regimes for the global 'information ecosystem' should look to complexity theory for guidance. Urging legal scholars to undertake empirical studies of real-world copyright systems, Tussey reveals how the selection of workable configurations for the copyright regime is larger than that encompassed by the traditional, entirely theoretical, debate between private property rights and the commons. Finally, this unique study articulates how copyright law must tolerate certain chaotic elements that may be essential to the sustainability of complex systems".
Further information concerning this title can be found here


Developing a legal paradigm for patents, by Helen Gubby, published by Eleven International Publishing.
"The author is an attorney and expert in legal terminology and linguistics with experience of both common and civil law systems. This book is a historical analysis which shows that the dialogue today over the role and function of the patent system is both based on and reflected by judicial decision-making in earlier times".
Further details available from the publisher's website here.

Tuesday, 10 April 2012

May 2012 issue: Community trade marks and assessing the scale of infringement

The May 2012 issue of the Journal of Intellectual Property Law & Practice (JIPLP) is now available in full to online subscribers. It's the issue which coincides each year with the INTA Meeting and which carries the keenly-awaited and much-appreciated round-up of Community trade mark decisions from the Court of Justice and General Court in the European Union by editorial board member Arnaud Monguiral-Folliard.

Subscribers and non-subscribers alike can check out the full list of contents (which includes plenty of contributions on topics other than trade marks too) here.

This issue carries a guest editorial by Marius Schneider. Like Arnaud, Marius is an editorial board member; his special expertise however lies in the field of border measures for detaining and dealing with counterfeit and infringing goods. In this editorial Marius urges readers to support an exciting and potentially valuable experiment in seeking to assess the scale of IP infringement more accurately than has previously been possible. Marius writes as follows:
"The Rand experiment: don't prevaricate—participate

Commissioned by the EU Commission and the Observatory on counterfeiting and piracy, Rand has come forward with a novel methodology for assessing the scope, scale, and impact of IPR infringements within the EU (on which see a Current Intelligence article in this Issue: ‘Measuring the scope and impact of IPR infringement in the EU’, Marius Schneider, Journal of Intellectual Property Law & Practice (2012) 7(5): 313–316). It is undisputable that previous pan-European multi-sector studies on the phenomenon of counterfeiting and piracy have their shortcomings, either because they do not allow evaluating the scale of IPR infringements within the EU internal market, or because they are financed by industry, rendering them vulnerable to criticism. Rand's approach is to return to the roots of IPR infringements, to companies themselves, since they should be the first to notice that ‘something is wrong’ in their market.

This methodology builds on economic theory and takes as a starting point the unexplained annual change in unfulfilled demand for legitimate product—the decreased quantity of goods sold which could not be explained retrospectively by company-specific supply chain factors, industrial issues, or other market shocks. This figure is aggregated with institutional, economic, and social indicators in order to determine the factor that is highly correlated to counterfeiting and piracy. The approach is in keeping with Rand's interdisciplinary and quantitative problem-solving philosophy, translating theoretical concepts from formal economics and the hard sciences into novel applications in other areas.

Rand's top academic minds believe that this methodology will work. Pilot companies are now being sought to test the model. One would expect that many of those committed to the fight against counterfeiting and piracy will come forward to seize a unique opportunity to test and shape the model which will, according to the declared intention of the EU authorities, be the one multi-sector pan-European means of measuring the impact of IPR infringements. This new methodology—if it works—will be determinative for law-makers, enforcement authorities, and right-holders: It should allow singling-out ‘counterfeiting hotspots’, that is to say countries and regions where legislative and enforcement action is needed in curbing levels of IPR infringement. It should also let companies assess the degree to which they are affected by counterfeiting and piracy, to compare themselves with other right-holders in the same sector, and to make a sector-by-sector comparison.

While there are many good reasons to participate as a pilot in this project, it appears that there is limited enthusiasm among right-holders to participate. This may be due to the novelty of the approach as well as fears relating to the protection of confidential business information. Since the methodology proposed by Rand has been applied in other areas, applying economic theory to solve social and legal problems is one of its specialities, scepticism as to the methodology—although understandable because of the unusual starting-point—is not constructive for as long as it is not tested in practice. A dry-run does not tell us whether the methodology will hold water: only the actual testing of the model will allow confirmation that the Rand methodology is appropriate, whether it requires adjustment, or whether an alternative should be envisaged.

Concerns relating to the confidentiality of the data have been addressed by the EU Commission and Rand: the data and identity of each participating company will be anonymized, stored on Rand's network, and inaccessible to third parties, such as the EU Commission and its services.

As the Rand methodology will not work without company data, the pilot phase will not ‘take-off’ without cooperation from companies and organizations that are willing to contribute actively in building an effective and solidly based policy to tackle IPR infringement. It should be expected that the methodology will produce at least some results—possibly no more accurate than other data that are currently available, yet neutral, which is the aim of the exercise. Through actual testing, Rand and the Commission will learn valuable lessons which should assist in the fine-tuning of the model and in creating alternative methodologies (because the proposed model cannot be applied to non-deceptive IPR infringements—for which an alternative model is paramount, given their importance). However, if not enough companies volunteer, then ‘industry’ may be left holding the bag for the failure of the methodology, which would be undesirable in a climate of widespread criticism of ACTA and every strengthening of IPRs".

Tuesday, 3 April 2012

A QR code for JIPLP

A QR ("Quick Response") Code is fast becoming an indispensable means of enabling interested parties to gain access to information.  As the current Wikipedia entry explains:
"Invented by the Toyota subsidiary Denso Wave in 1994 to track vehicles during the manufacturing process, the QR Code is one of the most popular types of two-dimensional barcodes. It was designed to allow its contents to be decoded at high speed. 
Formerly confined to industrial uses, they have in recent years become common in consumer advertising and packaging, because the dissemination of smartphones "has put a barcode reader in everyone's pocket" for the first time. As a result, the QR code has become a focus of advertising strategy, since it provides quick and effortless access to the brand's website. Beyond mere convenience to the consumer, the importance of this capability is that it increases the conversion rate (that is, increase the chance that contact with the advertisement will convert to a sale), by coaxing qualified prospects further down the conversion funnel without any delay or effort, bringing the viewer to the advertiser's site immediately, where a longer and more targeted sales pitch may continue".
Observant readers may have noticed that recent issues of JIPLP feature the QR Code featured here on the back cover. We hope that readers of this weblog will find it handy!

More on decision-taking and legal formalism at OHIM

"Hmm. If those  marks don't
look similar, why does the law
say they are?"
On Sunday this weblog announced the availability to JIPLP's online subscribers of a controversial and stimulating article by Rhys Morgan, "Ensuring greater legal certainty in OHIM decision-taking by abandoning legal formalism".

This article has already generated a great deal of interest.  To facilitate public debate, JIPLP's publishers Oxford University Press have kindly agreed to place it on open access.

You can read this article in full by clicking here.

Sunday, 1 April 2012

Decision-taking and legal formalism at OHIM

The Journal of Intellectual Property Law and Practice (JIPLP) strives to bring before its readers a selection of articles that address a broad range of IP topics over the course of time in a manner that is topical, practical and, where possible, of more than transient interest. All of the journal's articles are peer-reviewed. Having set for ourselves an ambitious targets in terms of quality, relevance and reader-accessibility, we have worked hard first to achieve and then to maintain the standard to which we aspire.

While we have confidence in all our articles, ever so often we receive a submission that appears to us to be exception.  One such piece is "Ensuring greater legal certainty in OHIM decision-taking by abandoning legal formalism", by Rhys Morgan. This article, which has been available to online subscribers since last Friday, is a good deal longer than the typical JIPLP piece, but we felt that the depth of legal analysis and the power of the author's writing fully justified its publication in full.

Here is the abstract:
"The President of OHIM has made legal certainty a priority, but he has inherited a legal practice based on legal formalism, which is characterized by rigidity, lack of sophistication, and unpredictability, and this article argues that legal formalism is an inappropriate way of resolving trade mark issues since it is founded on the erroneous premise that all legal issues can be reduced to objectively identifiable, measurable factors which obey certain rules.

Decisions which ought to be based on trade mark law and an understanding of the broader issues of free and fair competition are instead based on letter-counting, ‘measurements’ of distinctiveness, and doubtful platitudes posing as empirical statements. Legal formalism, or ‘mechanical reasoning’, was adopted by OHIM a decade ago to meet the needs of a short-term business plan, since it offered the promise of ‘automated’ quick decisions. But legal certainty and intellectual rigour have suffered ever since. By way of illustration, the article focuses on OHIM opposition decisions and highlights a number of problems, including the lack of predictability of decisions, a lack of clarity regarding what the trade mark owner has protection for and how far that protection extends, and the damage being caused to a modern competitive market in which a brand is the trader's most valuable commodity.

The article calls for the abandonment of legal formalism and for OHIM to encourage examiners to apply the law in a realistic way, taking account of the subjective nature of trade marks, as well as competition principles and market realities".
In the Editor's opinion, it is the most detailed and fundamental critique of the mode of applying Community trade mark law that he has yet read.  It is also one of the very most important.  He strongly urges anyone concerned with trade law in Europe -- and anyone imvolved in legal policy -- to read it.