Thursday, 26 November 2015


Today’s 10th anniversary conference gave me the chance to say goodbye in person to so many of JIPLP’s editorial team, contributors, readers and peer reviewers – but there are many people whom it has not been my good fortune to take my leave face-to-face.  To you, if you are reading this blogpost, I say “farewell and thanks for the memorable experience of allowing me to spend an exhilarating decade at the helm of a flagship journal whose crew have been so admirably guided by our readers.

Good luck Eleonora, Stefano and Marius! I can promise you that, while the task of JIPLP is not always an easy one, it is forever instructive. You will get to meet and correspond with some of the finest and most thoughtful brains in the IP field, as well as some of the most charming.

JIPLP 10th Anniversary Conference: Part IV

Opening the final session of today's conference, Marius Schneider (Ipvocate) addressed the topic of "Policing and enforcing IP", on how the counterfeiting industry has changed.  Gone are the good old days when fakes came in by container. Now they mainly enter the European Union via post and courier services, the result of purchases made from websites. This was effectively the atomisation of counterfeit trade.

Marius gave a summary of the current state of play in terms of the scope of the new Customs Regulation and the scale of the problem it was designed to address. The destruction of small consignments of infringing goods, with minimal paperwork and bureaucracy, is the desired end -- and the law has had some success in dealing with both these goods and items entering the EU in the luggage of their owners. Marius discussed procedures, the exchange of information relating to infringing goods, and international cooperation.

Marius then described the simplified procedure for the destruction of goods -- originally optional, where the owner of the goods did not object.  Further changes are on the way under the EU legislative package, particularly with regard to transit of goods that are not ostensibly destined to be put on the market in the EU.

"Second medical use claims: why are they so difficult to understand?" was the contribution of Darren Smyth (EIP).  This was a fast-changing field, Darren noted, referring the ongoing pregabalin litigation and the continuing uncertainty regarding Swiss form claims.  Broadly speaking, he explained, this litigation concerned an expansion of an exception to an exception.

Darren then gave a lovely, thoroughly intelligible explanation of what Swiss claims were, how they came into existence, and how they were relevant to the pregabalin patent infringement suit. He addressed the concept of "skinny labelling", where a prescribed patented medicine lists all indications except for that for which a particular use has been patented.  Skinny labels have very little meaning in the real world, since the absence of an indication on the label doesn't stop the product so labelled from being prescribed for it ("off-label" use). What usually happens is that the doctor prescribes a generic product; the pharmacist then supplies the cheapest version, which is usually the generic version bearing the skinny label, which is given to the patient for treatment of the patented indication. This didn't make the patent owner very happy.

There are mental elements at play here, involving both what might be intended and what might be foreseen. But surely the doctor doesn't care which version of the right medicine the patient gets, and the pharmacist doesn't know what in particular the doctor intended the patient to be taking the medicine for. A ruling of the Court of Appeal may be needed for the clarification of this.

Who is responsible for infringement and non-infringement? If the patent owner has an obligation to allow competition for the supply of the drug for off-patent purposes, then competition law may be relevant too.  Sir Richard Arnold's cunning plan is that, since the patent owner and alleged infringer can't do it all themselves, the National Health Service should be invoked, issuing instructions as to how the product should be prescribed. This may not however be welcomed by doctors, who are responsible for their own budgets too and who therefore prefer to prescribe generic products.

Jeremy Phillips then closed with his summary, "The Big IP Picture: is there one?" and we all went off for a drink ...

JIPLP 10th Anniversary Conference: Part III

[Blogger's note: no amount of live blogging can do justice to this colourful presentation which, it is hoped, Eleonora can be persuaded to publish, ideally in JIPLP ...] "A decade of random copyright (reform) in Europe" was the chosen topic of Eleonora Rosati (University of Southampton; e-LAWnora -- and one of the three incoming Editors of JIPLP).

After saying some very kind things about this blogger, Eleonora's presentation addressed the past decade of copyright rulings and reforms in the European Union, with all their fits and starts. Until 2009 there was nothing much going on, but then we had Infopaq and an outbreak of judicial activism. From then till 2013 there was a stream of acts, declarations, reports, consultations and decisions that increasingly focused on copyright harmonisation, echoing developments in patents and trade marks.

Where is copyright in 2015? There is a general feeling that copyright is not fit for purpose, Eleonora observed. Her talk then embraced topics as varied as orphan works, originality of authorship, geo-blocking, liability of service providers, content portability, exceptions and defences to infringement -- some of which are not exclusively (or even at all) copyright issues, and others of which may have relevance to competition law. Apparently a draft directive on content portability is expected from the Commission within the next few months, possibility on account of the Italian preoccupation with watching Serie A football.

Turning again to the Court of Justice of the European Union, Eleonora pointed out that it had addressed matters ranging from the commercial to the metaphysics, musing on questions such as "what is parody?"  It would be wrong to think that the Court of Justice has been just a minor character in this saga, she added, noting that everything now seemed to revolve around it.

Eleonora then turned to freedom of panorama and the astonishing rumours that have abounded about making it unlawful to include publicly displayed copyright content in the background of one's photographs and that the EU was planning to send people to jail for linking their websites to allegedly infringing material.

In "Patents in perspective" Stefano Barazza (University of South Wales) substituted his talk "towards endogenous patent policies?" and indicated that he was going to touch upon something that troubled him. He started with the Tesla pledge to remove the "patent wall" which threatened to stop the development of electric vehicle technology.

Why did Tesla's Elon Musk do this? He recognised the size of the market, the absence of traditional competitors, the difficulty of satisfying the market and the need to create a growing, developing technology that should be able to motivate creative minds to enter the field.  But was this all? Stefano remained unpersuaded by this. Why was this portfolio thrown open with no conditions and qualifications? Might there be some underlying reason?

Said Stefano, it seems that there is a shift from exogenous patent exploitation policies, imposed on businesses from outside as it were, by reference to legal standards and industry norms, towards endogenous ones, generated by patent owners themselves.  He reviewed the histories of patents as an instrument of social and economic policy in Switzerland and Netherlands, comparing them with Germany, Italy, France and Spain and contrasted them with the Indian concept of Jugaad (a "colloquial Hindi and Punjabi word that can mean an innovative fix or a simple work-around, used for solutions that bend rules, or a resource that can be used as such, or a person who can solve a complicated issue").

Exogenous patent policies tend to establish consistency across diverse fields.  They tend not to provide the same degree of reward and stimulation across all fields, producing "closed innovation".

How does closed innovation work? It's good for rent-seeking and for defence strategies. There's usually a lack of discussion and a lack of sharing. It can also be inefficient in that it often results in innovative products not entering the market or generating profit, and with severe lack of growth.

Turning now to Tesla, Stefano discussed "patent pledges", promises not to sue or to limit enforcement, are becoming increasingly important.  Other companies such as Microsoft, IBM and Nokia have made similar sorts of pledges. He also reviewed the ECO-Commons -- not so much a patent pool as a collective waiver.

The opening of patent portfolios is not new.  Bessemer and some other patent owners have been doing it since the 1960s. What they have in common is their facility for sharing inflowing knowledge and information, which is then expanded and spread to others by the same process. Open innovation is not about outsourcing, he added: it's about collaboration. And while patent rights are exclusionary, they can be made to be diffusionary instead, leading to other ways of monetising patents.

It should not be suggested that exogenous patent policies should replace endogenous ones, but rather that they should be seen as alternative business structures.  Stefano then discussed the Monopoly paradox: in Monopoly, assets are fixed, players are unwilling to trade and risks. In chess, risk-taking and the flexible nature of the players' assets.  A chess analogy better explains the Tesla strategy.

JIPLP 10th Anniversary Conference: Part II

"Dealing with commercial change: from Scandecor to Starbucks" was the next presentation, by another JIPLP founder member, Neil Wilkof (Bressler & Co).  Trade mark law didn't just happen, he explained; rather, it evolved as a response to what businesses actually do.  Scandecor dealt with the notion of a bare exclusive licence, where the owner of the mark was not the user of the mark, and vice versa. With quality control, there was a single source for the mark, which could therefore serve as a badge of origin.

Scandecor recognised the fact that commerce had changed since the 19th century, when trade mark statute law was first passed, passing off law began to develop and trade mark licensing of any kind was not the norm.  Now, to confine trade mark protection only to the business that actually uses the mark would be unrealistic, Neil said.  19th century legislation and the Trade Marks Act 1905 made no reference to licensing.  Now we come to the Trade Marks Act Act 1938 ("the greatest statute ever drafted"), which instituted the notion of the "registered user", which preserved "single source" doctrine while allowing multiple users. Now the Trade Marks Act 1994, with a broader definition of "trade mark" and a removal of the registered user requirement has unshackled the law relating to licensing practice.

Neil then addressed the Starbucks litigation, over the attempt to prevent the introduction into the UK of a Hong Kong based NOW TV service, in the face of a local plan by Sky to launch its own NOW channel. The UK Supreme Court affirmed that the passing off requirement for goodwill must require proof of local goodwill. This means that there must be a UK customer base: mere access to the programmes via the internet, or familiarity with it, ie reputation, on the part of Chinese viewers in the UK, is insufficient.

In this context, Neil referred to the Australian ConAgra ruling, which like Scandecor surveyed actual business practice, but stated that the law was no longer in accord with business practice.  Starbucks rejected this approach and refused to allow a passing off case to be founded on reputation alone. The mere fact that change causes uncertainty in business should not bar changes in law is no excuse: it would mean that the common law would never be able to change.

Neil's fundamental question was this. The great advantage of the common law was that, unlike the statute law which was writ in stone, it could shift flexibly in response to changes in commerce. So what had happened to it?

Neil was followed by "Competition law and IP: a new era of encroachment?" by Christopher Stothers (Arnold & Porter). This was a subtle reference to "eurodefences", a last-ditch and desperate attempt to escape liability, sometimes called "the infringer's defence". Such a defence has never succeeded in a UK trial, he added. It was initially the job of the trial judge to strike such defences out, and for the Court of Appeal to reinstate them.

Christopher -- who disclaimed the allegation that he was a competition lawyer and maintained that he really was an IP man -- then reviewed some of the British case law on the subject, taking in Oracle v M-Tech, where the Supreme Court held that, whether there was a good claim that competition law had been breached by the IP owner or not, it wasn't a defence to an action for IP infringement. He also discussed the Italian Xalatan litigation in which Pfizer's conduct -- perfectly normal when viewed from the perspective of IP owners -- was held anticompetitive. Other cases discussed included the complaint over Apple's differential pricing of iTune downloads, ingeniously resolved by doing nothing and simply waiting for a shift in the relative value of the euro and sterling.

Competition authorities don't really understand how the IP system works, which is a problem -- as is the fact that they have to be seen to be helping consumers. But what can we do about it?  There's a need to explain things better and more clearly, since competition authorities will make better decisions if they understand IP law, and how it's used in a business context, better. Also, if IP doesn't fix itself quickly, competition law may be invoked to fix it. Patent trolls and abuse of the facility of bifurcation by suing for infringement in Germany were cited as examples.

JIPLP 10th Anniversary Conference: Part I

Following a kind introduction by Justin Watts on behalf of host firm Freshfields Bruckhaus Deringer, today's JIPLP 10th Anniversary Conference was opened by Sir Richard Arnold (Chancery Division, England and Wales) on the topic '“Let It Be or We Can Work It Out?”: Fair use, quotation and the Beatles case'. Sir Richard, who confessed a preference for full text PowerPoint frames over the more conventional bullet point, took the audience back to 1964 and the Beatles' US conference performance at the Coliseum, which fortuituously was taped and, together with other material, was incorporated into a documentary film, "The Beatles: the Lost Concert", which managed to use 42 minutes out of the hour and a half original tape. Sir Richard reviewed the copyright and performers' rights issues surrounding this venture, which involved a considerable quantity of copyright clearance and negotiation of synchronisation rights.

While the film's prime market was the US, the film was made in the UK, which was why the ensuing litigation came before Sir Richard in July of this year in Sony/ATV Music Publishing LLC & Another v WPMC Ltd & Another [2015] EWHC 1853 (Ch) (there were also parallel proceedings in the US, which required the court to apply both UK and Federal US law).

Before the court there were three main issues: was there a collateral contract to permit the use of the Beatles material; had there been estoppel on the part of the copyright owners and was there a US defence of fair use (the third being the subject of this lecture)? Sir Richard reviewed the non-exhaustive list of criteria to take into account when applying US fair use doctrine -- a doctrine which has not stood still since its introduction in 1976 and has been subjected to both academic and judicial scrutiny.

Sir Richard focused particularly on Judge Pierre Leval's influential 1990 article entitled "Toward a Fair Use Standard" 103 Harv. L. Rev. 1105 on transformative use ("key, but not the sole criterion"). Ultimately, does the new work merely supersede the earlier one or does it create something new? The more transformative the use, the less significant are the other factors. The fact that a use is commercial rather than non-profit may weigh against a fair use finding, but will not clinch the issue. Applying US fair use criteria to this English case, what did Sir Richard do? He concluded that the use was partially transformative, but there was little actual comment on the Beatles clips and the performances were being included for their entertainment value. The documentary incorporated 42 out of 95 minutes, which was far beyond what was necessary to establish the impact of the Beatles on contemporary culture. Overall, the use in question was not fair: it was excessive in its scale and insufficiently transformative.

Turning now to the reform of UK copyright legislation (s 30(1ZA) of the Copyright, Designs and Patents Act 1988) and the possible insertion of the words "or otherwise" into the statute governing fair dealing by quotations, Sir Richard compared the parameters of this proposal with the US doctrine. Would it have applied on the facts of Sony/ATV?  Was this use a "quotation"? Was it a "fair dealing" and was more copied than was necessary for the user's purpose? (there being no need to establish the the original work was published and that there was sufficient acknowledgement). This use would be a quotation of the work, rather than from it.  Would the result of Sony/ATV have been any different under UK law? No -- though the fact that the quotations defence is not limited to any specific purpose for the quotation.

Next to speak was Anna Carboni (Redd), on the topic "Marks and names, labels and litigants" -- or rather on the subject of "Cats, KitKats and IPKats".  Anna opened with her recollections of SABEL v Puma, when a full panel of the European Court of Justice (as it then was) first explained the meaning of Article 4(1)(b) of the then Trade Marks Directive 89/104.  "Analogous semantic content" between two marks was not, it seemed a ground on which one was obliged to conclude that there was a likelihood of confusion.

Anna then took the audience through the CJEU ruling in Case C-383/12 P Wolf Head. What evidence of detriment to distinctive character through change in the consumer's economic behaviour was required? Said the court, evidence of a "serious risk" was needed, but this must be based on logical deductions and not mere suppositions.  Eventually the Wolf Head mark was allowed to go to registration, but we still need examples of actual cases of real evidence -- something that the CJEU and General Court have been unable to deliver.

Next came an excursus into the world of non-traditional marks, with an explanation of the Community trade mark application by MGM to register the roar of a lion.  OHIM struggled with the sonogram that had been submitted as a representation of the roar, and with the absence of verbal guidance as to its interpretation.  Following the CJEU ruling in Sieckmann on the criteria of registration of non-traditional marks, the OHIM Board of Appeal still rejected the appeal but this gave MGM the chance to reapply with a more descriptive form of sonogram.   Things will soon be changing: the "graphical representation" requirement will be replaced by any form of description or recordation that enables examiners and members of the public to understand what has been registered.

Anna then turned to the sagas of two Nestlé applications: these related to the Have a Break slogan and the shape of the four-fingered KitKat chocolate bar. In the Have a Break case (Case C-353/03), the CJEU confirmed that, for the purpose of distinctive character acquired through use, "use" meant "use", regardless of whether it was use by itself or in conjunction with another mark, so long as consumers would regard it as serving a trade mark function. As for the four fingers, survey evidence showed that very large proportions of surveyed members of the public recognised the four fingers were attached to the Nestlé product, but not that they relied on it when identifying Nestlé's goods.  UK case law however required some form of reliance.  This triggered a reference to the CJEU on, among other things, whether reliance was part of EU law too -- a puzzling reference since the CJEU rewrote and only partially answered the questions referred.

Wednesday, 25 November 2015

That conference: even more details!

If you are not attending the sell-out Journal of Intellectual Property Law & Practice 10th Anniversary conference (programme here), there;s some good news.  The event's hosts, Freshfields Bruckhaus Deringer, have kindly organised a live link which you can enjoy by clicking and deploying the password JIPLP10. This link is expected to go live at 9.30 am GMT tomorrow -- that's Thursday 26 November.  Accessing this link via Google Chome is recommended, especially if you are hoping to enjoy the 'full screen' facility.  

For those who are attending, here's a reminder that there's a Twitter hashtag of #jiplp10.

Farewell editorial

Tomorrow, at the JIPLP 10th Anniversary Conference, Founder Editor Jeremy Phillips steps down from the editorship.  Here's his farewell editorial:
Ten years after its launch, JIPLP has established itself as a leading forum for serious discussion and comment on matters of concern to the community of intellectual property owners and their professional advisers. It is by no means the only such forum, but its footprint is a large one, embracing the classical model of the formal, peer-reviewed article at one extreme and the informality of a Twitter account and LinkedIn discussion group at the other. Between the two sits both an official website which provides an entry to the journal's entire archive as well as access to articles and other content that has yet to be printed and a more informal blog with which readers can engage.

That JIPLP has been able to spread its content and its influence through so many channels is a tribute to the blend of conservatism and quality control mixed with a willingness to experiment that has been shown by its publisher, Oxford University Press. OUP, with half a millennium of publishing tradition behind it, is a curious beast, combining the stately dignity of an educational institution with the responsibilities of a charity and the sharp reflexes of a commercial business. Working with OUP is an education in itself.

JIPLP has seen a good deal of change over the past decade, both internally and externally. The shift from human-only operations to an online peer-to-publication system for the submission and processing of articles initially caused some complaints that IP publishing had become commoditised, but it is now well established as the swiftest and safest way of dealing with articles offered to the journal. In reality it should be no more necessary to write to an individual who is editing a journal and engage him in correspondence concerning an incoming article than it should be necessary for a prospective passenger to petition a bus-driver to take him to his destination. JIPLP's system commoditises the process of reviewing, correcting, sometimes rewriting, proofing and publishing articles, but the author remains an individual who engages with the JIPLP team in an organised manner in which each team member knows what is happening to an article and can access it at any time.

A well-organised publishing team is rather like a high-performance car which is admired for its speed and grace, though the components that enable it to perform so powerfully are out of sight of both drivers and spectators. JIPLP's engine functions so effectively because of the people whose contributions are often unknown or unappreciated. On the management side first Chris Rycroft, then Luke Adams and Rhodri Jackson, have been the “alternators”, alternately representing the interests of OUP to its editor and the enthusiasms of its editor to OUP. Special mention should also be given to that one part of the production process which has remained constant over the past decade: the editorial input of Sarah Harris. With a first-rate legal education combined with decades of legal publishing experience, Sarah has always been the steadying hand at the tiller and a source of sage advice for colleagues, peer reviewers and contributors alike. I offer my gratitude to them and to their many fellows, unnamed here but far from being taken for granted.

Among the most satisfying achievements of JIPLP during the past decade came when the hand of friendship and collaboration was extended to us by GRUR, the association of German intellectual property lawyers and academics. This collaboration has led to the publication of JIPLP material in GRUR Int. and vice versa, and also to a thoroughly enjoyable and fulfilling series of joint seminars held alternately in London and Munich. This unique relationship has enabled the traditions of common law to be explained, if not necessarily appreciated, in Germany and for the traditions of the civil law to be explained, if not necessarily understood, in JIPLP's home territory. The friendships that have developed through this relationship have grown stronger as it has progressed and have enabled the two sides to overcome their initial hesitations and differences.

There have been some disappointments too, the principal one being the selfish attitude of a number of the contributors whose work I have edited. In the world of intellectual property law, a world in which there are far more readers than writers, I have too often had to remind the latter that any article that is to be published in JIPLP, a peer-reviewed journal, is to be written for the benefit of the reader, not the amusement, enjoyment or self-advancement of the writer. In short, the writer should seek to be the reader's servant if ever he is to be his master. When pressed, and asked what sort of article they would like to read, these selfish authors list the following virtues: it should be short, or at least no longer than necessary to convey one or more clearly-identified points; its objective should be stated at the outset and it should deliver that objective; it should provide reference to only as many cases, statutes or articles as are needed by the reader to verify or build upon the points the author makes, and it should be written as one colleague might write to another, not as one might address a judge in court or a politician in the lobby. May they only heed their own words.

In handing over to a triumvirate of editors, I give them my affectionate support and my confidence that they will take JIPLP to new levels. They offer a variety of legal and academic experience, coupled with linguistic talent, to which I as an individual could never aspire. Their imagination, diligence and foresight will surely blend to produce a heady mix of the pure and the pragmatic, the judicial and the jurisprudential, which our readers and subscribers so roundly deserve.

Tuesday, 24 November 2015

December JIPLP now available

The December 2015 issue of the Journal of Intellectual Property Law & Practice (JIPLP) has now been published in full online.  Subscribers to the electronic version of the journal -- and that's most of them -- can access this issue here.  Non-subscribers can purchase short-term access to individual items via the JIPLP website.

The Editorial will be posted on this weblog tomorrow in full.  

The contents of the December issue are as follows:


Current Intelligence

Practice Point


From GRUR Int.

IP in Review