Monday, 27 June 2011

Cross-linking and JIPLP: more about the experiment

A month ago, this weblog reported on the launch of a cross-linking trial for which a number of Oxford University Press journals, including JIPLP, were selected. Cross-linking is a system for drawing to the attention of an online reader the existence of other articles, notes and relevant features on the same topic or at least a similar one.

The JIPLP team has now learned that the trial is going well. Initial findings from the trial are as follows:
• On average, users who clicked on a recommendation link view 13.82 pages. Users on a journal website which is not exposed to a recommendation service view 7.76 pages. 
• On average, users who clicked on a recommendation link spend 7.42 minutes engaged in their session when compared to a user on a journal website not exposed to a recommendation service, who will be engaged for just 3.91 minutes. 
• On average, engagement on recommended articles is 24.09 seconds. Engagement on all other types of usage is 29.67 seconds. 
• On average, the exit rate for readers who click on a recommended page is 10%, compared to 25% for readers who visit on non-recommended pages.
This is really encouraging, says OUP, which will continue to monitor the usage of the links as the trial goes on.  When there is further data, it is planned to report on online reading habits of JIPLP readers as contrasted with the other journals in the experiment.

Thursday, 23 June 2011

Trade Marks: Insulate for life: how not to be appealing

Author: Andrew Clay (Squire Sanders LLP)


Paroc Oy AB v OHIM Case T-157/08, General Court, 8 February 2011 (unreported)

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr088, first published online: June 9, 2011

The General Court has held that an earlier unappealed OHIM Board of Appeal decision bars the General Court from reviewing a subsequent OHIM Board of Appeal decision, relating to a later filed application for a trade mark, identical to the mark the subject of the first OHIM Board of Appeal decision.

Legal context

Article 65(1) of the Community Trade Mark Regulation (EC 207/2009) provides a right of appeal against decisions of the OHIM Boards of Appeal to the General Court and then to the Court of Justice on points of law only—see Article 58 of Protocol (No 3) on the Statute of the Court of Justice of the European Union.

It is common for trade mark attorneys, whose clients have had their trade mark applications rejected, to advise their clients to wait until there has been a material change of circumstances and then to file a fresh application. The question arises as to what happens when the first application is not abandoned until the Board of Appeal level within OHIM and the second refiled application goes to the General Court. How should the General Court approach the second application? Should it ignore what has gone before or is it bound by the earlier OHIM Board of Appeal decision?

Facts

Paroc Oy AB had filed a first application for registration, as a Community trade mark, the mark INSULATE FOR LIFE, in respect of goods in classes 6, 17, and 19, for common metals and their alloys, rubber, and non-metallic building materials.

The examiner rejected the application in respect of all the goods applied for on the grounds that the mark applied for was devoid of any distinctive character and was descriptive under Articles 7(1)(b) and (c) of the CTM Regulation.

OHIM's Second Board of Appeal upheld that decision on the same grounds, stating that the relevant public would clearly, immediately, directly, and unambiguously understand INSULATE FOR LIFE to mean that Paroc supplied durable insulation which could last a lifetime. The Board held that, because there was no unusual juxtaposition of the elements in the word mark to create a different syntactical, grammatical, phonetic, and/or semantic view from that produced by merely combining the words, the resultant word mark described the characteristics of the goods at issue and thus lacked distinctiveness.

Paroc did not appeal the decision of OHIM's Second Board of Appeal to the General Court. Instead, it filed a second application for registration of the same mark in respect of the same goods, but with the addition of services in class 37 relating to building construction, repair, and installation services. The examiner rejected this application on the same grounds as before and Paroc appealed.

Referring to the reasons set out in the first decision, the Board dismissed the appeal, saying with regard to classes 6, 17, and 19 that Paroc had not put forward any evidence to support a change in the settled case law or in the markets at issue to persuade it to reconsider the ruling in the first decision. With regard to the services in class 37, the Board found that the relevant public would still immediately, and without further analytical effort, understand the mark to refer to a characteristic of the services and not as an indication of their origin; it was irrelevant that the mark had been registered in Finland and the UK as the CTM regime is autonomous with its own rules, and the fact that the examiner's approach to previous similar cases was less strict did not infringe the principle of equality before the law.

Paroc applied to the General Court to annul the second OHIM Board of Appeal decision and remit the case to OHIM for registration of its mark.

Admissibility
The Court held that the subject matter of the first and second cases was practically identical, the only difference being the inclusion of class 37 services in the second application.

Based on settled case law, the General Court held that appeals against decisions, which were confirmatory of an earlier decision, which were not challenged in due time (as was the case here in relation to OHIM's Second Board of Appeal's decision in relation to the first trade mark application), must be declared inadmissible. The OHIM Board of Appeal's (confirmatory) decision accordingly became final, with regard to both the operative part of the decision and the grounds on which it was made, and could no longer be challenged before the Court. Such a challenge would only be permissible if there were new factors, as compared with the first decision, which would necessitate a re-examination of Paroc's situation. Paroc had provided no further information in this regard that could have undermined the confirmatory decision.

In the Court's opinion, Paroc had merely reiterated the arguments it had put forward in the first application, only adding (a) that the mark had been registered in Finland and the UK and (b) that the examiner had erred in the application of Article 7(2) by failing to decide in which Member State the word mark had been refused registration.

The Court observed that the autonomous nature of the CTM system meant that OHIM was not bound by national office decisions to register, although the grounds on which such registrations had succeeded at the national level could have been taken into account if Paroc submitted them to the Court (which it did not).

As to the alleged misapplication of Article 7(2), the Court stated that this did not add any new factual element, and ‘was manifestly unfounded in law’, as Article 7(2) merely provided that the grounds for non-registrability set out in Article 7(1) could apply notwithstanding that they existed in only a part of the Community: Article 7(2) did not create any specific obligation on OHIM to give reasons for its decision. With regard to OHIM's previous decisions about similar word marks, the Court rejected Paroc's repeated inequality arguments as these decisions, with the exception of one, were already in existence at the time of the first decision.

The Court thus held that the appeal, save in relation to the inclusion of the class 37 services, was inadmissible as it was directed against those parts of the OHIM Board of Appeal second decision that merely confirmed the first OHIM Board of Appeal first decision.

New services
The scope of the Court's consideration of Paroc's appeal was thus limited to the question of the correctness of refusing to register the mark in relation to the class 37 services.

After establishing that the relevant consumer was the general or specialist public in the construction sector, who has a command of English, the Court considered whether the Board correctly analysed the meanings of the different word elements of the mark and the mark as a whole. It noted that Paroc did not dispute that the word element ‘insulate’ had no meaning other than to insulate. The Court dismissed Paroc's argument that the element ‘for life’ would not immediately be understood by the relevant public to mean ‘lasts for a lifetime’ or ‘for a lifetime period’ as Paroc did not submit any other possible meaning for the words but merely asserted that ‘the combination of the words has various connotations and was likely to give rise to multiple associations and suggestions’. The Court concluded that the mark did not have an unusual or ambiguous character in light of the rules of the English language and that the relevant public would immediately and directly take the sign to refer to very long lasting services related to the use of a particularly durable insulation material, and not as an indication of origin of those services. Consequently, the Board did not err in its judgment that the mark was devoid of distinctive character under Article 7(1)(b), which made it unnecessary to assess whether the mark was descriptive of the services under Article 7(1)(c).

Analysis

The dismissal of this appeal emphasizes the principle that decisions which are merely confirmatory of earlier unappealed decisions are not to be challenged by the General Court, unless there has been a material change in the facts leading up to the first and second decisions.

Given how overworked the General Court is in relation to trade mark matters it is perhaps unsurprising that it used this case to send a signal that it will not rehear issues that have already been lost before earlier Boards of Appeal, where those defeats were not themselves appealed.

Paroc's decision to abandon its first application and refile a new application for an additional class of services lost it any chance of appealing the OHIM Board of Appeal's first decision, which first decision then proved largely fatal to its outing in front of the General Court in relation to its second trade mark application. In Paroc's case, this was probably of little significance as its mark was so devoid of distinctive character, but it is easy to imagine cases where a Board of Appeal has genuinely erred, in which case following Paroc's strategy could matter greatly.

Practical significance

The message for those seeking to register trade marks, which may lack distinctiveness, is clear: if an OHIM Board of Appeal upholds the decision to refuse registration and that decision is not to become an insurmountable road block, the only course of action is to appeal the Board of Appeal's decision to the General Court within the requisite time frame (two months from the date of the decision to be appealed).

Tuesday, 14 June 2011

Further pressure on expert privilege

Editor's note: while this case does not turn on any issue of intellectual property, it is of substantial importance in all IP litigation in which a party requires the services of an expert -- particularly where, having received those services, that party opts to change to another expert.

Author: Paul England (Simmons & Simmons LLP)

Ricky Edwards-Tubb v JD Wetherspoon [2011] EWCA Civ 136, 25 February 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr071, first published online 7 June 2011

There is little doubt that the rules of litigation privilege in England and Wales, to the extent that they apply to expert evidence, are under pressure.

Legal context

Can the notes and draft materials produced by an expert who is being consulted by a party to a dispute be disclosed to that party's opponent?

Normally, such material is protected by litigation privilege, which means that nobody except the party seeking the advice can see it. However, there are limitations to this rule. In particular, in circumstances where a party instructing an expert decides it wants to change its mind and rely on a different expert. In such cases, a number of English authorities have, in recent years, suggested that the court may impose a condition that the work of an earlier expert be disclosed as the price of giving its permission. But, these cases are ambiguous about the exact circumstances in which the courts will be prepared to do this; for example, does the condition apply to experts instructed before proceedings are initiated, does it apply to experts who have not been named? In JD Wetherspoon, the Court of Appeal has stated clearly that imposing this condition should be the normal approach as the price of being permitted to change a named expert. This is the case, whether or not proceedings have actually started.

However, JD Wetherspoon remains unclear about how far back this power reaches; in particular, can the court insist that the work of advisory experts who have been instructed behind the scenes be disclosed? The court seems to try to distinguish between such experts and those instructed for proceedings. But, in the practical world of preparing for proceedings, the difference is often far from clear.

Facts

The case arises from a fall at work suffered by the claimant. Further to the pre-action protocol for personal injuries actions, the claimant gave notice to the other side of three surgeons that might be instructed to give expert evidence. One of these, Mr Jackson, examined the claimant and provided a report. This report was never relied upon or disclosed by the claimant. Proceedings were issued but the particulars of claim were supported by the report of a different orthopaedic surgeon, Mr Khan. Accordingly, the defendants issued an application for the disclosure of the earlier report of Mr Jackson.

Analysis

The background to this issue
Although JD Wetherspoon is a medical negligence case, there is no suggestion in its reasoning that its principles should be limited to such cases. In fact, the Court stressed its general application, which means that it will govern IP litigation too. It is the latest in a number of cases in which a rule of law has developed that allows the court to impose a disclosure obligation as a condition of a party being permitted to change the expert it has instructed to give evidence.

The basis on which the courts have developed this rule is Civil Procedure Rules (CPR) 35.4 under which, if a party wishes to call an expert, it must seek permission. However, where an expert has already been instructed, the courts have embellished the rule with their power to impose conditions under CPR 3.1(3)(a). They have indicated that they can impose, as a condition of permitting a substitute expert, a requirement that material prepared by the expert being replaced is disclosed. The general reason for this measure is that the court should not allow its procedures to be used to facilitate ‘expert shopping’—the unlimited casting about for an expert who is supportive of a particular case.

However, the exact circumstances in which such a condition might be imposed have been unclear. Before JD Wetherspoon, in Beck v Ministry of Defence [2005] 1 WLR 2206 and Michael Vasiliou v Nicos Varnavas Hajigeorgiou [2005] EWCA Civ 236, the courts seemed to suggest that, if the original expert is named pursuant to an order and during proceedings, the court should not countenance ‘expert-shopping’ by permitting a replacement expert without ordering disclosure of the original, unwanted expert's report.

However, the Court of Appeal in JD Wetherspoon goes further: the condition can be imposed whether proceedings have started or not. So, as in the facts of this case, if an expert has been named in the course of an applicable pre-action protocol and the party who has named that expert later seeks to rely on a report by a different expert, the court can order that the earlier expert's report be disclosed as a condition of its permission under CPR 35.4 to use the new expert.

Cases without a specific protocol, such as IP disputes
IP proceedings do not have a dedicated pre-action protocol. However, the CPR does provide a general ‘Pre-Action Conduct’ Practice Direction which says:
the party seeking the expert evidence (the first party) should give the other party (the second party) a list of one or more experts in the relevant field of expertise whom the first party would like to instruct.
In big disputes with parties who are sophisticated and well-resourced, there is often a tacit acceptance that neither party will expect the other to follow this direction. However, this cannot be taken for granted. Accordingly, any party who does follow the Pre-Action Conduct Practice Direction needs to be aware of the possible consequence of exchanging a list of experts—that seeking to rely on an expert later on who is not named in the original list is likely to result in the disclosure condition being imposed.

Cases not following any pre-action protocol at all
The Court of Appeal in JD Wetherspoon also refers to circumstances in which a party has elected to ‘take advice pre-protocol’, at ‘his own expense’. In these cases, it says that ‘the same justification does not exist for hedging his privilege’. Here, the Court is trying to make a distinction between experts instructed to report for the purpose of proceedings and experts instructed privately to advise a party. It is where the decision becomes ambiguous and hence where danger lies. In particular:

  • What do the words ‘pre-protocol’ mean? For parties who are not following a protocol, do they suggest that any advice sought during a period that the court deems should have been used to follow pre-action protocol steps is potentially disclosable (for example, where the advice of an expert is named ad hoc to try to help settle a matter)?
  • What does the court mean when it says at ‘his own expense’?—all expert evidence is prepared at the instructing party's expense. Is the court saying that the costs of early soundings of ‘behind the scenes’ experts who are never instructed to give evidence cannot be recovered?
  • What does ‘instructed for the purpose of proceedings’ mean in practice?
  • In particular, what about experts who were brought in with a view to give evidence at trial but later, without ever having been named, are used only as advisory experts? What about vice versa?

These questions are not glib. The Court of Appeal referred in its judgment to a small and, at first sight, odd decision from the County Court, Carruthers v MP Fireworks Ltd (Bristol County Court, 26 January 2007). In Carruthers, the Court ordered the disclosure of an earlier expert's report, apparently regardless of whether that earlier expert had been named, as a condition of changing to another expert. Many had thought this decision wrong, but in JD Wetherspoon, the Court seems to endorse it, emphasizing that the disclosure condition is attached to the granting of permission, not the circumstances in which the earlier report was prepared. There is thus a real question arising about whether the disclosure condition will, in some circumstances, apply to require the privilege in behind the scenes expert materials to be waived.

In an apparent acknowledgement that this may be the practical result of its decision, the Court says that attaching a disclosure condition to permission should be the ‘normal’ order even though it envisages that:
It is likely that one party may ask the other whether there has or has not been any prior report, and/or may seek orders with the condition attached whether or not there is some positive indication that there has been one.


Practical significance

JD Wetherspoon is important because it says that it is not just experts who have been instructed to give evidence during proceedings and named in an order to which the disclosure condition might apply; even the advice of experts who have been interviewed behind the scenes may be at risk. Also, ‘report’ is not defined in Part 35, so there is no guarantee or reason why notes and other materials should not be included.

The decision means that it cannot be taken for granted that advice received from any expert will always remain safely protected by litigation privilege. Tremendous care therefore needs to be exercised when dealing with experts.

Monday, 13 June 2011

July JIPLP now online -- with an editorial on the wisdom of the crowd

Subscribers to the electronic version of the Journal of Intellectual Property Law & Practice (JIPLP) will be delighted to note that the July 2011 issue is already accessible to them in full. The contents of this issue can be viewed here, and non-subscribers can purchase access to individual articles and current intelligence notes if they so choose.

This month's editorial, "Time to Participate", endorses the peer-to-patent experiments currently underway in several countries and asks whether the wisdom of the crowd might equally benefit the registration process of other intellectual property rights, notably trade marks. You can read it below, in full:
"Time to participate

Two years after the completion of the first phase of its trial in the USA and launch in Australia, the Peer-to-Patent experiment is to be tried in the UK. The notion is simple: by involving members of the public in the process of identifying relevant prior art and, ideally, pinning it to specific claims in a published patent application, hard-pressed examiners will be assisted in determining whether the application should be rejected for lack of novelty or inventiveness or be allowed to proceed to grant. This is achieved by the wiki, which enables experts in the relevant who are distant from the patent-granting office to post their comments on a website which acts as a repository for comments, observations, and references to relevant material.

There were some initial rumblings of discontent from those who felt that Peer-to-Patent was misguided, that it exposed patent applications to attacks from competitors and disgruntled cranks, and that it undermined the role of the highly trained, skilled examiner. However, there is now a general if sometimes grudging sentiment that the experiment has succeeded. Patent applications within the narrow parameters of the experiment have been exposed to the vigilance and the intellectual prowess of members of the public who have helped to improve the quality of granted patents and who have assisted in making sure that some applications which did not deserve to proceed to grant were stopped in their tracks.

The experiment proceeds with caution. Apart from the three countries mentioned above, only Japan and Korea are committed to similar trials, but the great civil law jurisdictions of Europe, China, and India have yet to do so. Even if all the experiments and trials are successful, one does not yet sense that there is a momentum towards the adoption of Peer-to-Patent as the norm, in all countries and for all sectors of technology.

This Editorial speculates that, if the contribution of members of the public who possess the relevant skills is demonstrated to be of assistance to the processing and examination of patent applications, it might also be of assistance elsewhere. There is no better place for an experiment than the field of trade marks, in respect of oppositions based on a likelihood of confusion of similar or identical marks in respect of similar or identical goods or services.

It appears that there is an unwillingness to admit the truth—in the USA, in Europe, and elsewhere—which borders on self-delusion. In virtually every country, the legal test is relatively straightforward. However, attempts to rephrase or reformulate that language have resulted in the weaving of a web of ludicrously complex verbal formulae for seeking to define whether one mark is, in its commercial context, likely to be confused with another by consumers of the goods or services provided by the trade mark applicant's opponent. Office actions involving oppositions can be long, complex, and unbearably legalistic, taking years (in Europe sometimes more than a decade) to resolve.

At this point a little experimentation would be worthwhile and the EU, the main offender in terms of incomprehensible over-intellectualization of simple and intuitive concepts, would be the best place for it.

Take 100 randomly selected oppositions in which the Opposition Division, Board of Appeal, and General Court have differed as to whether there similarity has led to a likelihood of confusion. Show the marks at issue to two separate groups of relevant consumers. Members of the first group are given legal instructions representing the verbal formulations of the European Court of Justice, plus as much time as it wants, to determine whether there is a likelihood of confusion. The second group is given no legal instruction other than the text of the Community Trade Mark Regulation itself, plus no more than 5 minutes for their response. Compile the five sets of results (the three tribunals, the legally informed and the uninformed) and compare their results.

If there is little or no difference between the General Court's ‘right’ results and either of the consumer groups, one could well argue that the time has come to replace the former—formal, slow, and costly—with a wiki to which the latter could contribute. Or is it really more difficult to tell if two trade marks are confusingly similar than to pin prior art to a patent claim?".

Friday, 10 June 2011

JIPLP: now available on your own phone

Now using a phone
is even more glamorous
I have just received confirmation today that the JIPLP mobile site is now live. To access JIPLP via your mobile, just visit m.jiplp.oxfordjournals.org on your iPhone, iPad, Android or other clever little device and take a look!

Any feedback from readers will be gratefully received. And don't worry about forgetting the QR code -- it will be printed on the back of the next paper issue as well as featuring in the sidebar of the jiplp weblog.

Tuesday, 7 June 2011

Premier League v QC Leisure: an opinion about an opinion -- what's your opinion?

The jiplp blog reproduces below a piece by Nick Bitel. Nick is Chair of the Sports Rights Owners Coalition (SROC), which was created five years ago and currently represents around 40 major international and national sporting organisations. SROC operates as a forum through which sports bodies can share information and experiences. Apart from enabling sports to take joint action to protect their rights, it seeks to enable discussion and sharing of best practice on key legal, political and regulatory issues, to raise awareness of new developments and innovation in sports rights.

Nick's piece comments on a recent Opinion of one of the Advocates General of the Court of Justice of the European Union. If it were submitted for publication in the normal manner, there would be no chance of it being published before the likely date of the Court of Justice ruling.  It therefore seemed a good idea to air it now.  Readers are invited to raise any issues and make comments of which the author might wish to take note before preparing a fuller piece which will be submitted for publication after the Court’s ruling.  If you'd like to make any such comment, please feel free to use the Comment facility at the end of this posting.
"European Court Case could threaten Cultural and Sporting Diversity

Like many others, the Sports Rights Owners Coalition (SROC) was alarmed to read the Opinion of Advocate General Kokott (of the Court of Justice of the European Union (CJEU)) relating to two cases (C-429/08 and C-403/08 Football Association Premier League and Others v QC Leisure and others) which could have far reaching and serious implications for European cultural and sporting diversity, as well as for rights owners, broadcasters and consumers.

The forthcoming judgment of the European Court of Justice, if it follows the Opinion of the Advocate General (AG), could dramatically change the way in which sporting organisations but also more generally content creators, particularly audiovisual ones, are able to sell and distribute their material across Europe. The broadcasting market as we now know it, could potentially become unrecognisable.

Indeed in an attempt at whitening the so-called “grey market” for satellite transmissions of live football matches, the AG recommended in her Opinion quasi compulsory pan-European licences for transfrontier pay TV-services. This would be a total shift from constant jurisprudence and international agreements which have always recognised contractual freedom and territorial dimension of copyright. Some might argue that the AG showed an inherent misunderstanding of the functionality in Europe of the broadcasting market and how rights are sold.

Background

The cases (now joined at the CJEU) were brought by the Premier League and its official broadcast licensee in Greece (Nova) against two companies (QC Leisure and AV Station) which exported Greek decoder cards into the UK and sold them to publicans. There is also an action against the Publican who bought the Greek card to show Greek Broadcasts of live Premier League football to evade paying the legitimate UK commercial subscription.

Numerous issues were referred by the English National Courts and ultimately the long established principles of Copyright Law and Intellectual Property Rights are now being called into question. Many within the creative industries believe these cases strike at the heart of the European Union’s audio-visual, broadcasting and broadband industries and those, like sport but also the film sector and others audio-visual products, which supply them.

Consumers currently enjoy sports, films, TV programming and other audio-visual products tailored to their specific needs and languages. This case could radically alter all that, should the CJEU follow the AG’s conclusions.

The quite “revolutionary” AG Opinion

To highlight (non-exhaustively) some discrepancies in the AG’s Opinion, firstly she misapplied and/or misunderstood pre-existing jurisprudence and gives a new definition of the right of “communication to the public”. According to her, in a pub with one single TV, the communication to the public of the works included in a broadcast is not actually a communication to the public. The AG does not follow the CJEU jurisprudence in the Rafael Hoteles Case (C-306/05 SGAE v Rafael Hoteles SA) on the grounds that the signal was communicated to only one receiver in the pub! This argument appears to be rather weak when plenty of pubs have actually more than one screen, and there seems to be no justification for her differentiation.

Secondly, the AG ignores the landmark case of Coditel and opines that the long established territorial scope of copyright licensing should no longer exist (or, if it does, there can be no territorial protection). The AG considers that the principle of freedom to provide services enshrined in the EU Treaties precludes any prohibition to use decoder cards in other Member States than the one covered by the licence. She considers irrelevant the fact that such devices were procured and/or enabled by providing false names and/or false addresses.

Moreover, the AG applies the exhaustion principle (of goods) to services and by so doing negates the contractual freedom of rights holders. The AG challenges the essential content of exclusivity rights i.e. the territorial principle in virtue of which it is up to the right holder to decide on the geographic scope of the licence, as enshrined in international and European Copyright law and confirmed by the CJEU.

The AG recommends the granting of pan-European licences not only for live football matches or other sports but also for the trade of music, films and even E-books. However, it is worth mentioning that rights owners can and sometimes do license on a multi territorial basis. Actually the key factor here is the market demand which is based on cultural and linguistic diversity.

This is a common theme, as throughout her Opinion, her analysis seems to be on the basis of the Premier League partitioning the market in order to maximise profit. This is a completely false premise upon which to base a legal Opinion. Like other rights holders, packages of rights are offered to broadcasters to suit their demand, and ultimately those of consumers. Broadcasters want to recoup the revenue laid out for the rights they purchased, and therefore know what their consumer wants.

The fact that the Premier League never received a single bid for a pan European rights package which was offered to the market demonstrates that there is absolutely no homogenous market demand at the European level. No operator (be it a broadcaster or an internet company) was interested in acquiring pan European Premier League rights because there is no demand for it. This applies to all sports.

What if the ECJ follows the AG Opinion?

Not only could the case pre-empt ongoing democratic debate on copyright and authors’ rights at national and EU level and prevent Member States, citizens, industries and trades unions from playing their legitimate institutional role within the usual consultative EU decision making process; but there could be a lot of adverse effects if the CJEU were to decide that the selling of sport, films, and other creative goods nation by nation contravenes EU law:

• As advanced by the AG herself, the Premier League could offer pan- European rights to a broadcaster who will then either sell/sub-license only in the most lucrative markets or offer the Premier League games in any market in the EU but at the price level of the UK (in order to protect the value of the core market). This could render access by consumers in Greece and other small countries very difficult and the only beneficiaries would be the British expats who live outside of the UK;

• To threaten the value of audio-visual content would also affect investment, innovation and redistribution mechanisms. At present a film producer sells the rights to a film, territory by territory talking to individual broadcasters and nationally based distributors discussing how they will promote the film specifically in their own countries and thus benefit from exclusivity in that country. In future it could be possible to only license on an EU wide basis which would overthrow that whole business model. What kind of difficulties are going to ensue for independent producers and distributors?

• This could also mean the end of the territoriality principle which accommodates the different viewing preferences within the EU because it enables audio-visual products to be sold in a way which meets differentiated cultural and linguistic demand, would ultimately threaten the cultural diversity, one of the EU fundamental principles. A recent report by KEA for the EU Commission highlights the need for European film to be sold, distributed and promoted specifically in individual territories to maximize their appeal to local audiences; and

• Following the AG Opinion would also reduce competition as only substantial operators could exploit pan-European rights, thus discriminating against small and local national broadcasters and also inhibiting new entrants into the broadcasting markets.

Conclusion

The EU is thus faced again with tensions where its fundamental principles of free movement of services, competition and cultural diversity cannot necessarily be reconciled.

When referring to access to cultural goods (books, music, sports, films), the AG fails to look beyond purely economical or consumer-driven factors. She disregards cultural habits and languages which have an impact on the contractual relationship between rights holders and broadcasters and subsequently on the business model.

The AG’s Opinion interprets the legal framework in a manner which jeopardises existing business models in the audiovisual sector. In a somewhat rather political as opposed to legal opinion she has opened the Pandora’s box and dramatically threatened the territorial principle which has long governed copyright. Hopefully the CJEU will not follow its AG and will confirm that contractual freedom and exclusivity are actually good for European businesses and European consumers".

Odds and ends

Here's a bit of news about some of our team.  JIPLP Editorial Board founder-member Timothy Pinto has just been promoted to Special Counsel and Head of the Publishing Group at Taylor Wessing.  We are also remiss in failing to mention earlier that Tim's Editorial Board colleague Birgit Clark has moved from Boult Wade Tennant to a new position at Berwin Leighton Paisner.  We wish them both the very best!


The printed version June 2011 issue of JIPLP was posted a while ago and should be with you by now.  Don't forget -- the safest, easiest, speediest and indeed cheapest way to benefit from a subscription to JIPLP is to sign up for the electronic version.


Editing: it can be a nightmare
if contributors don't help!
Now for a quick word from me as editor.  I do my best to keep JIPLP bubbling with lively, interesting and well-written content wherever possible, and I put a lot of effort into my role.  There are however some things I can't do.  These things include, and are therefore not limited to, the following:
  • Giving authors and readers permission to reproduce articles, current intelligence notes and other features, whether in whole or part, however nicely they ask.  OUP is the exclusive licensee, and I have no permission that I can give;
  • Giving authors permission to use third party material;
  • Filling in the gaps and missing references which an author has neglected or been unable to identify;
  • Verifying the functionality of internet addresses;
  • Reading and giving an opinion on first, second and third drafts of articles before they've even been submitted;
  • Telling contributors which issue their contributions will be published in, until such time as the production team has had a chance to meet and organise the material before it -- this rarely takes place within two hours of an article being submitted for publication;
  • Advising contributors of the likelihood that any journal other than JIPLP will be able and willing to publish their work.
If you bear this in mind and make life easier for me, I'll do my best to make life sweet for you!

Sunday, 5 June 2011

No fairy tale ending for Neuschwanstein trade mark

Author: Birgit Clark (Berwin Leighton Paisner LLP)

German Federal Patent Court (Bundespatentgericht), case reference: 25 W (pat) 182/09, 4 February 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr080, first published online: June 1, 2011

The German Federal Patent Court decided that the mark Neuschwanstein clearly and unambiguously referred to the famous castle of the same name and could not therefore be registered as a trade mark due to an inherent lack of distinctiveness regardless of the goods or services for which registration is sought.

Legal context

Like the corresponding provisions of the Community Trade Mark Regulation, §8(2) No. 1 of the German Trade Mark Act (MarkenG) provides that a trade mark which is devoid of any distinctive character shall not be registered. §8(2) No. 2 MarkenG stipulates that trade marks ‘which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services’ will equally not qualify for registration. §50(1) MarkenG states that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of §8 MarkenG. §50(2) MarkenG further stipulates that, where a trade mark was registered in breach of §8(2) No. 1 or No. 2 MarkenG, the mark may only be declared invalid provided the ground for refusal still exists at the point of the invalidity decision and provided that the application for invalidity was filed within ten years from the date of registration of the mark.

Facts

The famous German castle Neuschwanstein is one several castles and palaces that were commissioned by the ‘fairy tale king’ King Ludwig II of Bavaria in the mid-nineteenth century. Gracefully situated on a hill near the city of F├╝ssen in Bavaria, neo-gothic Neuschwanstein was intended to be King Ludwig's personal refuge. Sadly, however, the king died under mysterious circumstances not long after the castle was completed. Neuschwanstein has since featured in various films and also famously inspired Disney's Sleeping Beauty Castle. With such a romantic history, it is no surprise that the castle has become a major tourist attraction, with more than 1.3 million people visiting the castle annually.

The Bavarian Castle Department, a division of the Bavarian state government, was concerned about the quality of the souvenir trade connected to the castle and, in an attempt to regulate the souvenir industry in 2005, registered the word mark Neuschwanstein at the German Patent and Trade Mark Office (DPMA) for a broad specification of goods and services in classes 4, 5, 15, 24–27, 29, 30, 32–34, 36, 38, 39, 43 and 44. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE), a trade network of souvenir producers, wholesalers, and retailers objected to this registration and filed an invalidity application against the mark at the DPMA, inter alia, arguing that the trade mark was akin to ‘censorship’ of the Neuschwanstein souvenir trade.

Analysis

The DPMA decided in the BSGE's favour and cancelled the mark, holding that the mark Neuschwanstein was a commonly used, non-distinctive term which was incapable of indicating the trade origin of the goods and services marketed under the sign, §8(2) No. 1 German Trade Marks Act (MarkenG). Neuschwanstein was not only a symbol for stylish ambience but was also part of Bavaria's cultural heritage. In view of the DPMA, consumers would therefore regard the mark Neuschwanstein as a mere advertising message and see it as a clear reference to the world famous castle.

Upon appeal by the Bavarian Castle Department, the 25th Senate of the German Federal Patent Court upheld the DPMA's decision, deciding that the term Neuschwanstein clearly and unambiguously referred to the castle of the same name and could consequently not be registered as a trade mark due to a lack of distinctiveness under §8(2) No. 1 MarkenG regardless of the goods or services for which registration was sought. The Court added that the mark was also descriptive of some of the goods and services covered under §8(2) No. 2 MarkenG.

In its decision of 4 February 2011, the Court first assessed descriptiveness of the mark under §8(2) No. 2 MarkenG. With regard to services such as ‘travel services; catering/hospitality services and accommodation services’, the Court found that the average consumer would interpret the mark Neuschwanstein as descriptive of the characteristics of the services rendered, their intended purpose as well as their geographical origin. The Court explained that it was the particular purpose that provision to exclude descriptive signs from trade mark protection since their monopolization was contrary to the justified interest of the general public to be able to use descriptive terms freely. The Court stressed that a potential effect on the freedom to compete was enough in this regard, provided it was reasonable to assume that the mark would be seen as descriptive by the normally informed and attentive consumer in the future. The Court found that the sign Neuschwanstein ‘unambiguously and exclusively’ referred to the castle of the same name. The Court considered that ‘travel services; catering services and accommodation services’ were services that targeted the average consumer, being typically rendered in connection with the visit of a tourist attraction because visitors had to travel to get to the castle and would often eat and/or stay in a nearby hotel. Consequently, the mark Neuschwanstein would be regarded as directly descriptive of such services that were rendered near or in connection with Neuschwanstein castle.

Turning to the question of distinctiveness, the Court held that Neuschwanstein also lacked the necessary distinctiveness under §8(2) No. 1 MarkenG to qualify for trade mark registration. The Court stressed that names of famous tourist attractions, such as Neuschwanstein, were not only non-distinctive for goods and services that are usually offered in the proximity or in the context of a tourist attraction but for all possible goods and services. Moreover, even marks that did not directly refer to the goods and services covered could nonetheless be non-distinctive provided there was a close descriptive connection between the mark and the actual product. Furthermore, the judges explained that commonly used words or idioms of the German language could also be non-distinctive in this sense and so be unsuitable to serve as indication of trade origin, even if they did not directly describe a product, provided that they were usually understood in this way; for example, due to use in the media or in advertisements. Like high-profile events, such as the Football World Cup, the names of famous buildings should equally not be monopolized.

The judges emphasized that Neuschwanstein was not only a major tourist attraction with over 1.3 million visitors per year but also a world famous landmark of particular cultural, political, and historical importance: such cultural sights, being part of the world cultural heritage, were common property belonging to the general public and, like the names of famous historical personalities, should also not be monopolized or commercialized by trade mark laws. Moreover, consumers would not interpret this name as a reference to a particular trade source or a specific undertaking but would always regard it as a reference to the castle. This assessment was not affected by the question of actual ownership of the building.

Applying these guidelines, the Court found Neuschwanstein was non-distinctive not only for goods and services that were typically rendered in close proximity of a tourist attractions (such as souvenirs, clothing, tobacco), products that were often additionally consumed by tourists (such as pharmaceutical goods, coffee, confectionery, and other goods covered by classes 29, 30, 32, and 33), not to mention supplemental services which were often required by tourists (such as financial services, currency exchange, and transport services) but also for those goods and services that that were not usually rendered in close context to a tourist sight (such as carpets, insurance services, real estate services).

All the same, the judges acknowledged that, in order not to overly limit the availability of names of famous buildings as trade marks, this approach had to be applied strictly and must be limited to buildings that were cultural goods of outstanding importance. Whether this was the case had to be specifically determined in each individual case. Comparing Neuschwanstein with other famous sights, such as the Colosseum in Rome, the Taj Mahal, and the Eiffel tower, the Court concluded that Neuschwanstein was not only a globally known symbol of the German age of romanticism and a significant part of Germany's national cultural heritage but also of political and architectural importance so that its name could not be monopolized by one proprietor.

The Court dismissed the Bavarian Castle Department's argument that the sign Neuschwanstein could be used as a trade mark by affixing it to labels or directly on actual products ‘in a self evident way of practical significance’ to render it distinctive in a trade mark sense. Referring to precedents by the German Federal Supreme Court in the DDR-Logo (I ZR 92/08 of 14 January 2010), SWISS ARMY (I ZB 35/98 of 21 September 2000), and TOOOR! (I ZB 115/08 of 24 June 2010) cases, the Court stressed that a mark that inherently lacked distinctiveness could not achieve distinctiveness by simply affixing it to the packaging of goods. Allowing otherwise, the Court explained, would not only bereave Article 8(2) No. 1 and No. 2 MarkenG of all meaning but would also be contrary to European trade mark law. The judges stressed that any assessment of the distinctiveness and/or descriptiveness of a mark always had to be conducted in the abstract, solely with regard to the meaning of a mark in light of the goods and services covered but unrelated to its actual use on the goods.

Finally, the judges made short shrift with the Bavarian Castle Department's contention that comparable trade marks for the castles ‘BURG ELTZ’, ‘NYMPHENBURG’, ‘LINDERHOF’, and ‘SANSSOUCI’, stating that each case had to be judged on its own merits and that earlier registrations were not binding but could only ever have persuasive importance. In particular, the decision as to whether a trade mark was registrable was not open to discretion.

Given that several aspects of this decision were of fundamental importance, the Federal Patent Court permitted a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof).

Practical significance

According to German media reports, the Bavarian Castle Department was very disappointed by the cancellation of its Neuschwanstein trade mark, stressing that it was not ‘after the souvenir and snow globe traders’ but merely wanted to protect the Neuschwanstein brand from ‘crude abuse’. In the view of the Bavarian Castle Department certain products, such as schnapps or lingerie, ‘were not reconcilable with the dignity of the castle’. While this view is understandable, the Bavarian Castle Department does have further legal options to prevent abuse of the sign Neuschwanstein under German law. This was also expressly mentioned by the Court which pointed out that alternative routes, such as claims under name right provisions under §12 German Civil Code, under the law of delict under §826 German Civil Code as well as unfair competition law claims under §§1, 3 German Unfair Competition Act were not barred by this judgment.

Following the Federal Patent Court's Neuschwanstein decision, names of culturally important buildings and personalites will be more difficult to protect as German trade marks. It should be emphasized in this context that the Court decided that Neuschwanstein was not distinctive enough for trade mark registration per se unrelated to the goods and services covered. How this decision will affect other existing German trade mark registrations for famous buildings, such as the ones cited by the claimant in the case, is unclear, in particular if the German Federal Supreme Court were to confirm this decision on appeal.

Friday, 3 June 2011

Rare US moral rights ruling by Seventh Circuit: no protection for Chicago garden

Author: Jeff John Roberts

Chapman Kelley v Chicago Park District, United States Court of Appeals for the Seventh Circuit, Nos 08-3701 & 08-3712, 15 February 2011

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr082, first published online 1 June 2011

The Seventh Circuit ruled that ‘living art’ in the form of a massive public garden was not entitled to moral rights protection because the work lacked both fixation and an author.

Legal context

Sections 602 and 603 of The Visual Artists Right Act of 1990 provide that ‘the author of a work of visual art’ has the right:
(A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and 
It further explains that:
A ‘work of visual art’ is –
(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer […]
Facts

For years, artist Chapman Kelley delighted the denizens of Chicago with ‘Wildflower Works’, a garden situated in Grant Park, the city's signature public space on the shores of Lake Michigan. The garden was in the form of two enormous ovals bursting with plants and flowers that were planted and tended to by hundreds of volunteers. City officials hailed Kelley's work as a ‘new form of “living” art’ and the press and the public praised the display which changed colours throughout the season and increased in brightness in the ovals' centres.

‘Wildflower Works was a hit’, said the Court.

But nothing lasts forever and one day the Chicago Parks Department sought out new delights. Wildflower Works would have to make way for the new Millennium Park. Over Kelley's objections, the city reduced the garden to less than half its original size and transformed its oval borders to rectangular ones.

The indignant artist argued that his work was both a painting and a sculpture protected from ‘distortion, mutilation or other modification’ under the Visual Artists Rights Act (known in America as ‘VARA’). Feeling civic no longer, he sued for $25 million in damages.

Analysis

The District Court agreed with Kelley that Wildflower Works was indeed a painting and a sculpture for the purposes of VARA.

The judge added, however, that Kelley's creation lacked sufficient originality to qualify for protection. The work was not original, he said, because the artist was not ‘the first person to ever conceive of and express an arrangement of growing wildflowers in ellipse-shaped’ enclosures.

The judge also found that Wildflower Works in any case fell under an exception in the VARA statute that excluded from protection works that were ‘site specific’.

On appeal, Kelley challenged the originality and site-specific findings.

The Seventh Circuit affirmed the ruling but for very different reasons and, in doing so, upbraided the district judge for bungling basic principles of copyright and misunderstanding the relation between VARA and the overall Copyright Act.

The Court noted that VARA contained no blanket ‘site-specific’ exception, and that the categorical exclusion was only for works incorporated into buildings. More seriously, the unanimous Appeals Court took exception to the originality finding, noting that the threshold for what is original is ‘minimal’. Kelley may indeed not have been the first to conceive of such a garden but using this as a reason to deny protection is wrong because it ‘mistakenly equates originality with novelty’.

These remarks, though, amount to obiter dicta because the Appeals Court found a more fundamental problem with Kelley's copyright claim:
The Park District has not challenged the District Court's conclusion that Wildflower Works is a painting and a sculpture. This is an astonishing omission… 
The real impediment to copyright here is not that Wildflower Works fails the test for originality (understood as ‘not copied’ and ‘possessing some creativity’) but that a living garden lacks the kind of authorship and stable fixation normally required to support copyright… 
Simply put, gardens are planted and cultivated, not authored. A garden's constituent elements are alive and inherently changeable, not fixed.
This is a garden, not a work of art
The lack of fixation in Wildflower Works was fatal to Kelley's copyright claim but, the Court noted, not necessarily to all topiary endeavours. It cited a 43-foot flowering work known as ‘Puppy’ by artist (and frequent copyright litigant) Jeff Koons. The Court noted that ‘Puppy’ is not analogous because it is assembled by a huge metal frame with an irrigation system.
Wildflower Works is different. It is quintessentially a garden; ‘Puppy’ is not.
(The Court said it was not pronouncing on whether ‘Puppy’ was eligible for copyright, but will never have to determine the question—the work is conveniently located in Spain.)

Practical significance

The Seventh Circuit's ruling on fixation would seem to be the right one with the lower Court's originality analysis amounting to a glaring error.

The Appeal Court's ruling can be summed up in brief as a reminder that, before an artist can claim VARA protection, she must first surmount the basic requirements of copyright.

The judgment is lucid and entertaining for its copyright analysis but also, and in equal measure, as an exposition on the on-going distrust of the moral rights doctrine in America.

The Appeals Court, in rejecting the claim, took pains to explain that the range of works protected under VARA was significantly narrower than what can be protected by copyright in general.

This is evidenced, it said, by the fact that VARA refers to the specific nouns ‘painting’ and ‘sculpture’ rather than broader adjectives. A work
cannot just be ‘pictorial’ or ‘sculptural’ in some aspect or effect, it must actually be a ‘painting’ or a ‘sculpture.’ Not metaphorically or by analogy, but really.
At other points in the decision, the Court takes pains to emphasize that VARA is narrow and a special form of ‘extra’ protection.

This is a work of aet,
not a garden
Whatever one's position on the merits of moral rights, the Seventh Circuit's ruling is refreshing for its candid discussion of how awkwardly the civil law doctrine fits into American jurisprudence.

At the outset of the decision, the Court acknowledges that the US Congress had to virtually hold its nose to implement VARA, doing so only to comply very belatedly with Berne Convention obligations.

The result, said the Seventh Circuit, is that ‘VARA introduced a limited version of this European doctrine into American law, but it is not an easy fit.’

Based on this history and on the tone of the Seventh Circuit's ruling, moral rights advocates may have to wait a long time before the doctrine gains any traction in US jurisprudence.

In March, Kelley filed an appeal, asking for a full panel of the Seventh Circuit to hear the case.