Personal data protection and IP rights enforcement: two worlds apart?

Author: Riccardo Sciaudone (Grimaldi e Associati)

Bonnier Audio AB and others v Perfect Communication Sweden AB, Case C-461/10, Court of Justice of the European Union (ECJ), Advocate General's Opinion, 17 November 2011

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps005, first published online: January 30, 2012

Directive 2006/24 on the retention of data generated or processed in connection with the provision of publicly available electronic communications services or of public communications networks does not preclude the application of a national provision, based on Directive 2004/48 on the enforcement of IP rights, according to which an internet service provider (ISP) may be ordered to give a copyright holder information on a subscriber in civil proceedings, provided that this information should have been preserved to be communicated and used for this purpose in accordance with detailed national legislation complying with EU law on the protection of personal data.

Legal context

A preliminary reference to the ECJ from the Swedish Supreme Court deals with the ability of copyright owners to obtain details about the identity of users connected to a certain Internet Protocol address which was used to infringe copyright.

Directive 95/46, on the protection of individuals with regard to the processing of personal data and on the free movement of such data, was adopted to protect the rights and freedoms of persons with respect to the processing of personal data by laying down guidelines determining when this processing is lawful.

Directive 2002/58, concerning the processing of personal data and the protection of privacy in electronic communications, imposed on Member States the obligation to ensure the confidentiality of communications made over a public electronic communications network. Article 15(1) provided for the possibility for Member States to derogate from that principle of confidentiality, including under certain conditions the retention of, and access to and use of, data for law enforcement purposes.

Lastly, Directive 2006/24 imposed on Member States an obligation for providers of publicly available electronic communications services and public communication networks to retain communication data for the purpose of the investigation, detection, and prosecution of serious crime, as defined by each Member State in national law. It also amended Directive 2002/58 by stipulating that Article 15(1) does not apply to data retained under Directive 2006/24.

Directive 2004/48 provides a legal framework to combat infringements of IP rights. Article 8 of that Directive provides, in particular, that judicial authorities may order that information concerning the origin and distribution networks of the goods or services which infringe an IP right shall be provided by the infringer and/or any other person who possessed, used, or was involved in the production of the goods or services. This information may include the names and addresses of such persons and information on the quantities produced.

Directive 2004/48 was transposed into the Swedish legal order by amending the Swedish Copyright Act. The new provisions came into force on 1 April 2009.

Facts

Five audio book publishers, after discovering that several of their books were being made available online in the early hours of the same day in which the new provisions of the Swedish law came into force, applied to the judicial authority in Solna to obtain from the Swedish ISP ePhone the identity of the subscriber who had shared the infringing material.

After the Solna district court decided in favour of the companies, ePhone appealed to the Court of Appeal, which reversed its decision on the basis that the publishers were unable to prove the infringement of their IP rights. The publishers appealed to the Swedish Supreme Court, which decided to stay the proceedings and ask the ECJ:

whether Directive 2006/24 precludes the application of a national provision based on Directive 2004/48, according to which an ISP may be ordered to give a copyright holder information on a subscriber in civil proceedings, thus facilitating the identification of a particular subscriber claimed to have committed an infringement;

whether the fact that Sweden has not implemented, in the prescribed period, Directive 2006/24, had an impact on the previous question.

The Advocate General Niilo Jääskinen (‘the AG’) has now provided his opinion on these questions.

Analysis

In order to answer those questions, the AG looked at the material scope of Directive 2006/24 and taking into account that the procedure at hand was a civil one and that information had been requested by private parties, not by the competent national authority, the AG concluded that Directive 2006/24 was not applicable in this specific circumstance. This being so, the second question was dismissed as devoid of purpose.

Having said that, the AG investigated further the limits of the protection of personal data in relation to legislation, such as the Swedish approach which aimed to protect IP rights. This is where the AG's opinion gets really interesting.

The starting point of this part of the AG's reasoning is that, according to Article 6(b) of Directive 95/46, personal data must be collected for specified, explicit, and legitimate purposes and must not be further processed in a way that is incompatible with those well-defined purposes. Collection of personal data, methods used in order to do so, as well as its purposes must be decided in advance. Further processing of personal data in a way that is incompatible with those purposes is therefore not permitted.

This being the guiding principle, the AG turned to verify whether such provisions had been adopted at EU or national level.

As regards EU legislation, the AG observed that neither Directive 2002/58 nor Directive 2006/24 provided a possibility or an obligation to retain or to use personal data for cases of infringement of IP rights when such infringements are invoked by private parties, nor to use already existing data retained for different purposes. The AG also noted that, although Article 8 of Directive 2004/48 did make some reference to personal data, that provision specified neither the kind of personal data referred to nor the purpose or duration of its retention or the nature of the subjects entitled to access it in the case of infringement of IP rights.

The AG thus concluded that current EU legislation does not provide a discipline for the retention of personal data generated in connection with electronic communications and for their transmission in the case of infringement of IP rights invoked by private parties.

As regards Member States' legislation, the AG, drawing on Case C-275/06 Promusicae [2008] ECR I-271, affirmed that the basic and main principles of both the right to protection of IP rights and the right to data protection must be fully respected.

On this premise, the AG observed that, in order lawfully to transmit personal data, EU law requires that national legislation must expressly provide an obligation to retain personal data with a view to specifying the categories of data to be retained, purpose and duration for their retention, and the categories of people that can access the data. Using personal data retained for purposes different from those provided by the legislation would be contrary to personal data protection principles.

The AG's opinion seems to suggest a (questionable) watertight subdivision between IP rights and data protection. It seems that the AG excludes any (natural) reciprocal interference unless expressly provided. Further, the AG's opinion apparently underestimates the circumstance that, although requested by a private party, the access to personal data is ordered by a judge. Would the AG apply the same kind of test to other areas of EU law?

Practical significance

Should the ECJ follow the AG's opinion, publishers will be denied the right to obtain, in the course of civil proceedings, details about the identity of users connected to a specific Internet Protocol address that has been used to infringe copyright, such data having been clearly retained for purposes different from those at stake in the case at hand.

It is easily foreseeable, as emerged from the arguments put forward by the Member States that intervened in this preliminary reference, that many other EU Member States have copyright legislation similar to the Swedish Copyright Act and that therefore a not inconsiderable number of copyright owners could face the same obstacles to access personal data in similar circumstances. Should this be the case, national legislatures will soon be requested to address the issues raised by this case and to provide IP rights holders with adequate legal remedies. In the meantime, there is a considerable potential for an increase in litigation.

Tallinn Airport cannot monopolize the word ‘airport’

Author: Anneli Kapp (Käosaar & Co, Estonia)

Tallinna Lennujaam AS v M&A AS, The Harju County Court Decision 2-10-47190, Estonia, 31 May 2011

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jpr207, first published online: January 22, 2012

The Harju County Court in Estonia has dismissed an action filed by Tallinna Lennujaam AS requesting the transfer of the domain name ‘lennujaam.ee’ (airport.ee), registered in the name of M&A AS.

Legal context

The rules of the Estonian Domain Disputes Committee regulate claims for handing a domain name over to an applicant, but an action can still be based on regulations provided in the Trade Marks Act regarding the infringement of trade mark rights.

The Supreme Court in Estonia found in its Decision 3-2-1-4-06 that the legal protection of the owner of a registered trade mark is derived from Article 14(1) of the Trade Marks Act, according to which the proprietor of a trade mark has the right to prohibit third parties from using similar signs in domain names in the course of trade.

Facts

Tallinna Lennujaam AS (Tallinn Airport Ltd) operates and develops airports belonging to the company which are located in Estonia, including Tallinn Airport. On 29 March 2009, Tallinn Airport was named after Lennart Meri, the president of the Republic of Estonia from 1992 to 2001. Lennart Meri, the first president of the newly independent Estonia, had become a national legend whose character and heritage symbolized statesmanship as well as national pride and the arrival of Estonia on the world stage.

Lennart Meri

The plaintiff affirmed that LENNART MERI TALLINNA LENNUJAAM was a well-known trade mark because the majority of the Estonian population who used the services provided by Tallinn Airport Ltd did so by identifying the ‘lennujaam’ (‘airport’) as LENNART MERI TALLINNA LENNUJAAM. There was thus a likelihood of confusion on the part of the public as many customers had been confused by believing that the website ‘lennujaam.ee’ belonged to Tallinn Airport. Further, the plaintiff contended that the domain name was confusingly similar to the business name Tallinna Lennujaam AS. The plaintiff declared that the domain name ‘lennujaam.ee’ in the defendant's name damaged the reputation of the well-known trade mark LENNART MERI TALLINNA LENNUJAAM and misled the average consumer by giving the impression that there was a commercial connection between the plaintiff and the defendant.

On 13 September 2007 the domain name ‘lennujaam.ee’ was registered in the name of AS M&A (defendant), a sole shareholder of Baltic Tours AS, one of the oldest travel agencies in Estonia. The domain name was used by Baltic Tours AS to sell holidays, business trips, and flight tickets, including tickets for flights from Tallinn Airport.

The defendant argued that there was no likelihood of confusion, because the data of the service provider had been indicated on the website and, moreover, the defendant had been active in a different field of commercial activity (booking and selling of flight tickets) to the plaintiff (airport operating and providing aerial navigation services).

According to the defendant, the statement about LENNART MERI TALLINNA LENNUJAAM being a well-known trade mark was unsubstantiated, considering the fact that Tallinn Airport had only borne the name of Lennart Meri for less than one year, so it could not rule out that the name combination had not yet become well known. Further, the defendant pointed out that the plaintiff had not even determined the extent of legal protection of the putative well-known trade mark. The domain name ‘lennujaam.ee’ was neither identical nor confusingly similar to the trade mark LENNART MERI TALLINNA LENNUJAAM. The defendant declared that the domain name ‘lennujaam.ee’ referred to the characteristics of the services provided on that website and had become customary in good faith business practice. The defendant added that the plaintiff had no right to prohibit the third parties from using the word ‘lennujaam’ (‘airport’) due to its descriptive character.

The defendant claimed that the plaintiff had acted in bad faith by filing the action three years later than the date on which the plaintiff became aware of the alleged infringement of its rights by jeopardizing the investments made for using the domain name ‘lennujaam.ee’ and causing the defendant significant and unjustified costs in connection with the civil action.

Analysis

The judge, having taken into account previous court practice and special literature in the field of trade marks and domain names, concluded that a domain name can have a similar purpose to a trade mark because of its distinguishing, descriptive, and advertising characteristics on the internet. Accordingly, the determination of the extent of legal protection of a domain name should be guided by the Trade Marks Act.

Although, during the hearing, the judge explained to the plaintiff that the relevant evidence should be submitted in order to prove the fact that it was a well-known trade mark, the plaintiff continued to plead that a fact which the court should deem to be a matter of common knowledge did not need to be proved—thus the trade mark LENNART MERI TALLINNA LENNUJAAM should be declared well known without submitting any evidence in support of that proposition. The judge declared that, for the purpose of recognizing a trade mark as being well known, the duration and extent of the use should be taken into consideration and the realization of reputation cannot take place in such a short time. Therefore, the judge did not recognize LENNART MERI TALLINNA LENNUJAAM as being a well-known mark.

The judge noted that, even if the trade mark LENNART MERI TALLINNA LENNUJAAM had been well known, the likelihood of confusion between the trade mark and the domain name was not identified. The judge emphasized that the word ‘lennujaam’ (airport) is customary in the current language and should be free to use, so the plaintiff was not allowed to monopolize the word ‘airport’. Further, the word ‘lennujaam’ is an element of the trade mark LENNART MERI TALLINNA LENNUJAAM which is not subject to protection.

Practical significance

The ‘lennujaam.ee’ case illustrates that the registration of a pertinent and memorable domain name can give a good advantage in business activity. The implementation of such action would have created the situation where the airport operator could interfere in other companies' economic activities by monopolizing the word ‘airport’. If the judge had agreed with the plaintiff's claim that the domain name ‘lennujaam.ee’ infringed its right to its business name Tallinn Airport Ltd, this kind of interpretation would have been unreasonable and contrary to the meaning of regulation of the exclusive right of the trade name.

The dismissal of the action shows that the exclusive right of the well-known trade mark owner is still restricted by such goods and services with which the trade mark became well known and that the scope of legal protection is based on the form of the trade mark in which it became well known. The decision also shows the importance of submitting the relevant evidence during the proceedings.

Protecting product shapes and features: beyond design and trade marks in Australia

Author: Amanda Scardamaglia (Swinburne University)

Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 92 IPR 222, Full Court of the Federal Court of Australia, 5 August 2011

Journal of Intellectual Property Law & Practice (2012) doi: 10.1093/jiplp/jpr206, first published online: January 22, 2012

In what has been described by Bodum's lawyers as a landmark legal battle that is possibly the first of its kind in Australia, the Full Court of the Federal Court of Australia has found in favour of the Danish designer and manufacturer of coffee plungers, protecting the distinctive shape and features of its Chambord plunger from imitation, in the absence of design or trade mark registration.

Legal context

The tort of passing off and the related statutory cause of action for misleading and deceptive conduct protect the reputation or goodwill embodied in or attached to certain indicia, including trade marks, trade names, the get-up or packaging of goods, or other forms of activity or material used by a trader, which have acquired a secondary meaning as being distinctive of the trader's goods or services. While these complementary causes of action are widely and successfully used as an adjunct to claims for trade mark infringement, in Australia, the majority of recent claims for passing off and misleading and deceptive conduct based on the reputation in a product's get-up alone have failed.

Some of these cases, including the recent Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 84 IPR 12 decision, failed because the courts found that no secondary reputation subsisted in the features of the product, independent of the trader's distinctive trade mark or other indicia. In other cases, such as Koninklijke Philips Electronics NV v Remington Products Australia Pty Ltd (2000) 100 FCR 90 and Dr Martens Australia Pty Ltd v Rivers (Australia) Pty Ltd (1999) 95 FCR 136, the courts held that the respondents had sufficiently distinguished their products from the applicant.

That is not to say that a trader has not successfully protected the get-up of its goods in a claim for passing off and misleading and deceptive conduct. See for example Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354.

Bodum goes further, with the Full Court of the Federal Court of Australia recognizing the applicant's reputation in the get-up of its goods, independent of any proprietary rights in the shape or design of its product. In doing so, this decision has raised a number of questions, particularly as to its significance and interpretation in the future. For example, does the decision have the effect of providing quasi design or trade mark protection for the design or shape of a product via the tort of passing off and the statutory prohibition of misleading and deceptive conduct? Or does the case reflect the proper application of the principles of passing off (and misleading and deceptive conduct) which, according to Deane J in Moorgate Tobacco (1984) 156 CLR 414 at 445, have been adapted over time ‘… to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers to believe that goods or services have an association, quality, or endorsement which belongs or would belong to goods or services, of, or associated with another or others’.

Facts

Bodum is a Danish designer and manufacturer of coffee plungers. Its signature coffee plunger is the Chambord, which it has manufactured and sold since the 1950s, although Bodum's Australian subsidiary has only been selling this coffee plunger since the 1980s. Bodum brought proceedings against DKSH, who began importing and selling the Euroline coffee plunger in Australia in 2004. The basis of the claim was that DKSH had adopted the distinctive shape and features of Bodum's Chambord for its Euroline plunger and had engaged in passing off and misleading and deceptive conduct in breach of sections 52 and 53 of the Trade Practices Act 1974 (Cth) (which are now section 18 and section 29 of Schedule 2 of the Competition and Consumer Act 2010 (Cth)). There was no claim for infringement of any registered design or of any shape trade mark, as Bodum had not sought such registration for its Chambord product.

Bodum alleged that DKSH's Euroline plunger embodied each key feature of the Chambord (or features that closely resembled the Chambord). Further, Bodum claimed that although DKSH's packaging and instruction leaflet were marked with the name ‘Euroline’, its product was not marked with any branding or insignia so as to distinguish the Euroline from the Chambord. Thus in advertising or selling the Euroline without any distinguishing labels or branding, DKSH had falsely represented to consumers that the Euroline was the Chambord, or was made, promoted, and sold with the licence, sponsorship, or approval of Bodum: by doing so, consumers were misled and deceived as to the true position or were likely to be misled and deceived as to the true position in breach of sections 52 and 53 of the Trade Practices Act 1974 (Cth). It was also claimed that DKSH had engaged in passing off the Euroline as the Chambord, or as a product sponsored or approved by Bodum.

At first instance, Middleton J dismissed the application (Playcorp Group of Companies Pty Ltd and Another v Peter Bodum A/S and Others (2010) 84 IPR 542). Middleton J accepted that the Bodum brand has a significant reputation in the homeware market, but he did not consider that Bodum had acquired a secondary meaning or reputation in the features of the Chambord plunger. Rather, Middleton J found that the reputation acquired in the Bodum brand was ‘… distinctly tied to its products being properly labelled and sold in conjunction with reinforcing packaging and, significantly, by reference to the Bodum name’. Critical to his reasoning was the fact that

Bodum's presence and dominance has created a situation where it is a well-known brand of some level of sophistication with a separate and distinct identity from look-alike products. This separate identity — its get-up — is never isolated from the Bodum Chambord Coffee Plunger … In this sense, Bodum could be said to be ‘a victim of its own success’ [citing Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354 at 13].

Even if Bodum had acquired a secondary reputation, Middleton J remained unsatisfied that DKSH's products were sufficiently similar to give rise to the misrepresentation alleged by Bodum. Thus in applying, the ‘with or without’ test, Middleton J found that the absence of the Bodum name and logo on the Euroline plunger meant that a reasonable consumer would understand that the Euroline was not a Bodum product; accordingly, no reasonable consumer was or would likely be misled or deceived by DKSH's adoption of the features and shape alone of the Chambord plunger. Nor would a case for passing off be made out.

Bodum appealed the decision to the Full Court of the Federal Court, where Greenwood and Tracey JJ (Buchanan J dissenting) overturned the trial judge's decision, allowing the appeal.

Analysis

On appeal, the majority found that Middleton J had erred in failing to examine the evidence relating to Bodum's secondary reputation in the shape and features of its coffee plunger. Thus, reviewing the evidence which the trial judge failed to consider, the majority found that Bodum enjoyed a substantial reputation in the features and shape of its Chambord plunger, as those features had become distinctive of the product and its maker. Contrary to the argument of the respondent, the Full Court found that ‘[t]he reputation in the features of the Bodum Chambord Coffee Plunger had been reinforced over time by Bodum's use of its trade mark but that use did not diminish the substantial reputation in the aesthetic features of the product itself’.

As to whether DKSH had sufficiently distinguished its goods from Bodum, the Full Court also disagreed with Middleton J. Noting that the question is ultimately a matter of impression, Greenwood J (with whom Tracey J agreed) noted:

… the adoption on the box of a non-distinctive and descriptive trade mark Euroline for a rival product which for all practical purposes embodies all of the features (that is, copies those features) of the product exhibiting the pronounced and substantial reputation … of the Bodum Chambord Coffee Plunger, is not sufficient to distinguish the rival product from the distinctive product sought to be copied. This is especially so as the rival product and the Bodum product are regularly displayed outside the packaging for each product notwithstanding that it may be that the products are displayed in stand-alone fashion, proximately located to the packaging and in some locations in front of the boxes. It would have been a simple matter for DKSH to mark its name prominently on the box or mark its trade mark and product name prominently on the rival product itself (or at least as prominently as Bodum marks its product) or both. A plainly distinctive differentiating trade mark might also have been selected for use on the box and on the product.

The court concluded that members of the relevant class were likely to think that the largely indistinguishable product embodying the Chambord features was the Bodum product, a version of the Bodum product or in some way sponsored or approved by Bodum.

Practical significance

Despite suggestions to the contrary, this decision does not extend the penumbra of the law of passing off and misleading and deceptive conduct into the domain of designs and shape trade marks. In fact, the majority of the Full Court was at pains to emphasize this point at [266], in clarifying that

… Bodum does not contend that it is entitled to a de facto monopoly in the features of the Bodum Chambord Coffee Plunger or, put more precisely, that it is entitled to remedial relief of any kind on the footing that DKSH has no right to import, sell and offer for sale a rival coffee plunger exhibiting the features of the Bodum Chambord Coffee Plunger.

Thus rather than render design and trade mark protection redundant, this decision appears to encourage manufacturers of products with distinctive designs to protect them under the registered design system and possibly register those designs as a shape trade mark, in order to obtain the kind of monopoly protection referred to.

In the absence of registration, the only thing Bodum was entitled to claim, and what the Full Court found, was that DKSH could not adopt the distinctive features of the Chambord coffee plunger without sufficient distinguishing labelling, so as to ensure that no false representation is made to potential purchasers.

As a consequence, nothing in this decision changes the position set out in Interlego AC v Croner Trading Pty Ltd [1992] FCA 624: in the absence of any infringement of a formal IP right, a rival trader may enter the market and copy the product of another and seek to take some of its market share—so long as the rival does not mislead or deceive the public or pretend that its goods are those of another trader. This decision does, however, highlight to rivals the importance of sufficiently distinguishing their goods, something which the courts have long required [Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191].

So while there is no substitute for the protection afforded by the registered design and trade mark system, this decision provides another avenue of protection for traders against rivals with products using similar designs. A manufacturer will only succeed if it has acquired a secondary reputation in the design and the rival has failed to sufficiently distinguish their products.

February JIPLP, with special commercial focus, now online

Neil J. Wilkof

The February 2012 issue of the Journal of Intellectual Property Law and Practice (JIPLP) is now available online in its entirety for the benefit of subscribers to the electronic version of the journal. Non-subscribers can access the contents page for this issue and can also purchase short-term access to its articles and Current Intelligence notes.

This issue, which has a focus on transactional and commercial issues, has been guest-edited by a founder member of the JIPLP editorial board -- the distinguished writer, lecturer, commentator and blogger Dr Neil J. Wilkof. Neil also writes the February editorial, which you can read in full here:

"Do we need a rationale for IP sublicensing?

This is the third time that JIPLP has sought to dedicate an issue to commercial and related aspects of IP rights. The focus is to explore various legal aspects of the manner in which IP rights are exploited.

Against this backdrop, let us consider the following question: should we care about the rationale for various types of IP licensing? More likely than not, this matter has not occupied most readers of this journal. For those engaged in IP licensing, the concern is not over any underlying justification, but rather over the nitty–gritty of the licensing arrangement. The questions that occupy us centre on what right is being licensed, under what terms, and for what financial consideration. Any examination of licensing or sublicensing first principles usually does not arise.

That said, it is our view that our collective resistance to addressing first principles has inhibited our ability to provide robust answers to certain questions with respect to IP licensing. In support of my contention, consider the following: In the course of recently giving a public lecture on the subject of sublicensing, I sought to raise the question: what is the rationale for sublicensing? The limited attempts that have been offered to provide an answer seem to focus on patent licensing and to offer agency law as the justification for sublicensing. The problem is that, in addition to the paucity of judgments that support this view, there is case law holding that a licence in fact creates no agency relationship, at least with respect to trade marks. Not only that, but many IP practitioners have been witness to a licence agreement that provides explicitly that no agency is created between the licensor and licensee.

Pushing back against the need for a rationale for sublicensing, two responses were raised. The first maintained that it is ultimately unnecessary to enter into any consideration for the justification of sublicensing in order to engage in it. Just as we ultimately do not need to reach any single resolution about a justification for patents or copyright in order to practise patent or copyright law, so too it is unnecessary to find any rationale for sublicensing. As Nike is wont to say—‘Just Do It’.

The second response is to suggest that there is no need to inquire independently into the justification for sublicensing. The answer can be found simply by analogy to the law of real property. The sublease has been around for longer than any one of us can remember. No one seems to inquire about the justification for the right to grant a sublease. Nevertheless, the right to grant a sublease is unassailable. Given that, and that there are judgments in certain jurisdictions that have explicitly recognized the applicability of lease law principles to IP licensing, the case for sublicensing has been made out, and no further inquiry is needed.

Let's test these push-back responses by posing a follow-up question that I asked the audience that day. Assuming that there is a sublicence in place, in the event that the main licence is terminated, what is the fate of the sublicence? Assume as well that there are no back-to-back provisions in either the main licence or sublicence. The answer would seem to be tied directly to what is the legal rationale for a sublicence—yes, no, maybe?

If the licensee/sublicensor is the agent of the licensor, what do agency principles inform about this situation? Ditto if the analogy to real property is applicable. But what happens if the common-law rules of agency, or the law of real property, are not identical under continental law regimes? And what happens if a trade mark licensing is involved? There, the licensor may not want the sublicensee to continue to use the mark, especially if the relevant jurisdiction requires quality control with respect to the use of the mark by the licensee or sublicensee, and the licensor does not wish to take the necessary steps to ensure that quality control is maintained.

Two observations flow from this battery of questions. First, in my heart of hearts, I believe that we would be better able to provide robust answers if we had a firmer understanding of the first principles that govern sublicensing. Secondly, the rationale for sublicensing may not be monolithic, but rather depend upon the specific IP right being sublicensed. In my humble opinion, both propositions warrant further consideration".

Undercover among the intellectuals (two books reviewed)

The Global Governance of Knowledge: Patent Offices and their Clients, Peter Drahos, Cambridge University Press, 2010, ISBN: 9780521144360, Soft cover, 368 pp. Price: £25.99

Intellectual Property, Human Rights and Development: The Role of NGOs and Social Movements, Duncan Matthews, Edward Elgar Publishing, 2011, ISBN: 9781847207852, Hard cover, 304 pp. Price: £75.00

Book review by Christopher Wadlow (Professor of Law, UEA Law School, University of East Anglia, Norwich, UK)

What's it like to work in an intellectual property office, and what kind of intellectual is one likely to find there? Einstein and Housman we know about, but their brief tenures at the Swiss and British patent offices ended more than a century ago, so they hardly count. Are these offices filled with intellectuals in the sense of highbrow, cultured, bookish folk, who might otherwise have gone on to become harmless university professors, fussing over their footnotes; or might they be haunted by intellectuals of another colour altogether, red in thought and deed, from Noam Chomsky to Naomi Klein, from Russian anarchists to Mexican Zapatistas?

When the UK's Patent Office changed its name to the ‘Intellectual Property Office’, no less, with ‘Intellectual’ on a line of its own and more than twice as prominent, I was overcome for a moment by the thought of Concept House transformed into one of Brassaï's seedy left-bank cafés, where louche Parisian habitués and conspiratorial Russians émigrés would assemble at dead of night to drink absinthe and vodka, smoke Gauloises and Sobranies, foment revolution and insurrection, and discuss … Just what? Gustave Eiffel's attempted appropriation of the image of his eponymous tower, perhaps, and Bernard Edelman's celebrated response?1 The registration of ‘Anarchy’ as a trade mark for soap,2 and sports goods?3 The place of Alfred Nobel's dynamite patent in ‘the propaganda of the deed’?4

The first of these two books, by Peter Drahos, has left me sadly disillusioned in this respect, but delighted in others. Drahos is on fine form in The Global Governance of Knowledge, and his well-judged sense of satire is all the more effective for being used to season the dish, rather than smother the flavour. The added piquancy is very necessary since, by his own admission ‘patent office administration … is an excruciatingly dull topic’.

Drahos has conducted interviews at 45 patent offices, and among users and other interested parties, and the result is anything but excruciating to read, although his message is a disquieting one. The core of the book is about patent offices and the way they work, both individually, and increasingly in coordination with one another. There are chapters on the EPO, on the US and Japanese offices, and on trilateral cooperation. There follow individual chapters on the coming generation of patent offices of comparable importance: India, China, South Korea, and Brazil. These case studies are framed by an approximately equal number of chapters in which Drahos expresses his own reservations about the present functioning and future development of the global patent system. Two of his particular concerns are the ‘gaming’ of the system by patent attorneys and their clients for short-term gain in individual cases, but to the long-term detriment of the system as a whole, and the mindlessness with which a one-size-fits-all mentality has been propagated from the developed countries, to the least developed ones. One does not have to buy into every aspect of Drahos's philosophy to agree that there are serious issues here, and there is nowhere where you will find them better documented, or more elegantly presented.

Like Peter Drahos, Duncan Matthews also employs an interview-based methodology and, like Drahos, he has had foisted on him by his publishers a title which is too ambitious by far for what he is really concerned to cover. Just as Drahos's contribution is more accurately described by its subtitle, so Matthews's is about non-governmental organizations, and the role they play in the complex relationship between IP protection, human rights, and development. For this book is the work product from a year spent researching NGOs from the inside; a year embedded inside NGOs, as it were, at the front line of the war against AIDS, HIV, and other human crises.

If that sounds like a mission for PC Mark Kennedy5 then disappointment looms once again. If it is easy access to recreational drugs, running street-fights with les flics, and the all-night debauchery of Le Bal des Quat'z'Arts that you are looking for, then quite frankly the Quaker United Nations Office in Geneva isn't likely to be your scene. Not that Duncan Matthews isn't on the lookout for cheap drugs, but in an entirely blameless sense, unless you happen to be the chief executive of a member of the pharmaceutical industry. His interest is in the success which NGOs have had in promoting human rights objectives, whether in the sense of facilitating access to medicines through compulsory licensing, or allowing indigenous peoples to share in the success (or in the case of the San people of South Africa, the failure) of commercial embodiments of their traditional culture. Unlike the Seattle stone-throwers, these NGOs operate scrupulously within the law, and they pursue their objectives through legal norms and institutions, pitting human rights laws against the IP paradigm of the USTR and the WTO.

Between the introduction and the conclusion, three chapters out of eight have a thematic focus, and three concentrate on specific geographical areas. The first two substantive chapters after the introduction deal with public health and access to medicines, and with agriculture, genetic resources, and traditional knowledge. There follow the three national surveys, for South Africa, Brazil, and India, before we revert, in the final two chapters, to the linkage between IP, human rights, and development, and the role of the NGOs. The style of the book is very much in the academic model with, for instance, a lengthy bibliography, and an introduction precisely setting out the research objectives and methodology, and comparing the former to the pre-existing state of the art.

Thoroughly commendable as Matthews's approach may be in principle, it is not without its problems. The first is that NGOs constitute a very diverse ecosystem. To make the exercise manageable, Mathews deliberately confines his attention to NGOs in the sense of social movements of a particular kind, so as to exclude (for instance) industry lobby groups, associations of IP owners, associations for the improvement or advancement of IP, and associations of IP professionals. A back-of-the-envelope exercise in fitting names (or rather acronyms) to these categories shows that some very big beasts indeed have been excluded from consideration at the very outset. Secondly, he concentrates, as the subtitle indicates, exclusively on the role of this kind of NGO in relation to a limited range of rights-related issues, typically in medicine and agriculture, and in relation to a limited range of strategies by which those aims are pursued.

Fieldwork is always time-consuming, and limitations such as these are perfectly valid in terms of setting the parameters for a research programme. In the wider context, however, there is much more to be said about NGOs in relation to IP than is attempted here. Some (the ALAI, for instance) have been around for longer than the Global IP system itself, taking that as beginning with the Paris and Berne Conventions. Many have had observer status at WIPO (or its predecessors) for a century or more. On the other hand, and as Matthews acknowledges, most of the NGOs of the kind with which he is concerned came to be interested in IP very much later, so late in fact, that few (if any) of them were so much as peripherally interested in the original TRIPS negotiations prior to 1994.

This leads to another common feature of these NGOs, which is that very few of them have IPRs as their primary concern, even in the sense of being opposed to them. Rather, each has an agenda of its own, with which IPRs may engage, for better or for worse, and to a lesser or a greater degree. Their primary concerns are typically with advancing or protecting the social and economic rights of specific disadvantaged minorities, and they tend to see IPRs, and even human rights for that matter, mainly, if not exclusively, in terms of their particular cause. This may be a valid and even necessary perspective for social activists, but it is, by definition, an incomplete one. Ironically, it is little different, in principle, from the narrow-minded instrumentalism that put IPRs high on the agenda for the GATT/WTO Uruguay round in the first place. If Naomi Klein is missing from these pages, as she is, then so is Amartya Sen.

Although major sections of the taxonomic tree have been omitted altogether, the NGOs which remain are both diverse, and very numerous. Some of them are world-renowned ‘brands’ in their own right, like Oxfam or Médecins sans Frontières. Others have a prominence which depends on a single dominant personality, such as James Love's Knowledge Ecology International, formerly Ralph Nader's Consumer Project on Technology. Many, however, are as unknown to fame as they are to Fortune. This is how it should be, if grassroots NGOs are to be ‘owned’ by the people they are supposed to represent, rather than by wealthy (albeit well-meaning) absentee activists, but it makes for rather difficult reading whenever the focus changes rapidly. The sheer number of NGOs referred to leads to most of them being denoted by their initials or acronyms, and many of these are not only unfamiliar at first sight, but entirely meaningless to the inexpert reader. To confuse matters further, acronyms are also used for (inter alia) government departments, international organizations, legal instruments, medical conditions, and chemical compounds. The (very necessary) list of abbreviations runs to six and a half pages, from the inscrutable (3D and A2K), to the familiar (WHO, WIPO, and WTO), although WIMSA makes an appropriately whimsical intrusion to upset the dignity of that triad.

Of these two authors, Peter Drahos has at least ten years more experience in this type of research, and it is he who is the more successful in transforming his raw material into a coherent and eminently readable narrative. Small touches illustrate the deftness of his technique, such as his decision to begin his globetrotting (metaphorically, at least) in the tiny island state of Kiribati, whose population of 100,000 manages to support a patent office all of their own, with 20 granted pharmaceutical patents. In one respect at least, Drahos also has the easier hand to play. Patent offices may have proliferated to an absurd degree, but there are still fewer than 200 of them, they resemble one another more than they differ, and we have a reasonably clear expectation of what they are supposed to do. His ecosystem is relatively small and eminently manageable.

Duncan Matthews, in contrast, has to deal with at least a tenfold increase in the global number of players, and a proportionate increase in their diversity and degree of unfamiliarity to the reader. Matthews is also ill-served by his publishers in two avoidable respects. His text is frequently broken up by badly placed boxes of primary legal materials, presented with unnecessary prominence, and the notes (which are often needed to make sense of the narrative) are set as chapter endnotes rather than as footnotes. It is, unfortunately, rather dated since, although the book was published as recently as 2011, the fieldwork was carried out in 2005–2006. In the final analysis, there must be a lot more to say about NGOs (of all stripes) in relation to the workings of the global IP system than there is room to say here, but others will doubtlessly follow where Duncan Matthews has led the way, and this is an eminently interesting introduction to their world.

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Footnotes

1 Bernard Edelman and Edgar Roskis, “Beyond the frame”, Le Monde Diplomatique, July 1997, http://mondediplo.com/1997/07/photo (English translation of “La rue privatisée”, http://www.monde-diplomatique.fr/1997/07/EDELMAN/8838).

2 2550631 (Unilever, plc).

3 E3618303 and 2311581 (logo, with characteristic initial A in a circle, Stateside Skates Ltd).

4 John Merriman, The Dynamite Club: How a bombing in Fin-de-Siècle Paris Ignited the Age of Modern Terror (Houghton Mifflin Harcourt, New York 2009).

5 Paul Lewis and Rob Evans, ‘Mark Kennedy: A journey from undercover cop to “bona fide” activist’ The Guardian (10 January 2011).

Fakes in transit: seminar materials now available

Yesterday's Fakes in Transit seminar, which was kindly hosted in the High Holborn, London, office of Olswang LLP, provided a great platform for JIPLP editorial board members and contributors to discuss a topic of vital and highly current interest with readers and not-yet-readers alike.  A packed audience of 95 enjoyed the following presentations:

* "Customs and Border Control" by Phillip Johnson (PowerPoint available here) 

* "The Court of Justice rulings in Nokia and Philips: what are they and what do they mean?" by Marius Schneider (PowerPoint available here) 

* "The Commission's Proposal for a new Regulation concerning customs enforcement of IPRs" by Olivier Vrins (PowerPoint available here)

We hope to post a first-hand report of the seminar in the not-too-distant future.

Following the success of this event, JIPLP looks forward to holding further seminars on topics of keen interest and high importance and which, like this one, offer CPD points and make no admission charge. Details of any further events will be posted on this weblog.

Some tips for better style

Editing articles and Current Intelligence notes from authors around the world, I am exposed to all manner of literary devices and techniques. Some enhance the reader's understanding and enjoyment of the written word. Others do not. This post seizes the opportunity to mention some recent phenomena which authors are politely invited to avoid:

• Folly with footnotes: in common with most other reputable and readable journals, JIPLP uses only one level of footnotes. In the past month I have encountered an article blessed with two sets of footnotes, one in numerical order and referring to materials at the foot of each page, the other (strictly speaking, a set of end notes) in alphabetical order and referring the reader to materials which followed the article's concluding paragraph.  I have also today met my first footnoted footnote -- probably the ill-begotten offspring resulting from the union of inaccurate copy-and-pasting and careless proof-reading.  Please supply just one set of footnotes, referring to material at the foot of the page.
  
  
• Badinage with brackets (or playing with parentheses): some contributors deploy these devices so subtly that they convey a degree of meaning that editors and readers may easily miss.  What is the shade of difference between "a likely award of damages" and "a (likely) award of damages", for instance? Or "the putative defendant" and "the (putative) defendant"?  Some other authors use consecutive brackets which, with no unbracketed text between them, look a little like a line of textual railway carriages chugging their way across the page.  Two consecutive pieces of bracketed text are aesthetically unappealing even if intelligible and should not be used.
  
  
• Dissection with dashes: properly used, a dash can create an admirably dramatic effect. However, like many dramatic gestures, the dash loses its power almost in proportion to the extent to which it is employed. To put it another way, " However—like many dramatic gestures—the dash loses its power— almost—in proportion to the extent to which it is employed".  Loss of power through excessive use is not confined to the dash, though. Exclamation marks are similarly afflicted. 

Three more books for review

The Journal of Intellectual Property Law and Practice (JIPLP) has received three more books for review. If you would like to review one of them, please email Sarah Harris at sarah.harris@oup.com by not later than next Monday, 16 January, explaining why you are qualified to do so.

Copyright Law and the Progress of Science and the Useful Arts (Alina Ng, published by Edward Elgar Publishing)

"The American Constitution empowers Congress to enact copyright laws to ‘promote the progress of science and the useful arts’. This book offers the first in-depth analysis of the connection between copyright law as a legal institution and the constitutional goal of promoting social and cultural advancement.".

For further details of this publication, click here.

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The Essentials of Patent Claim Drafting (Morgan D Rosenberg, published by Oxford University Press)

"The Essentials of Patent Claim Drafting is a practical guide to the drafting of patent claims in U.S. patent applications. The actual mechanics of assembling both basic and complex claims are covered in-depth from simple mechanical cases to complex chemical and pharmaceutical cases. The emphasis is on the how-to of claim drafting, rather than on the history and theory of claiming. It contains multiple examples for all types of claims which a practitioner is likely to draft, and provides an easy reference for the drafting of particular types of claims. The Essentials of Patent Claim Drafting is written primarily for novice patent attorneys and patent agents, as well as law students and those studying for the Patent Bar Exam".

For further details of this publication, click here.

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Trademark Surveys (James T Berger and R Mark Halligan, published by Oxford University Press).

"Trademark Surveys: A Litigator's Guide is a legal guide on developing and critiquing trademark surveys. In addition to describing the process and different types of surveys that may be employed, the authors provide strategic insight into how best to use these surveys to save time and money. The last chapter offers practical considerations when requesting the services of a survey expert, and the appendices provide a series of sample survey protocols.".

For further details of this publication, click here.