The full list of contents reads as follows:
The full text of the Editorial will be published shortly on this weblog.
- Editorial
Special Issue: The quest for ‘real’ protection for indigenous intangible property rights
The May 2014 issue of JIPLP is a special one, featuring a series of contributions on a topic that is politically, culturally, philosophically and economically challenging -- the protection that is or should (not) be granted to what the guest editors Keri Johnston and Marion Heathcote term "indigenous intangible property rights". We expect that there will be some vigorous responses to some of the contributions -- and look forward to publishing further pieces on this topic in future, especially from intellectual property practitioners whose client work may have to address topics with which most of us remain unfamiliar and often uncomfortable.
The full list of contents reads as follows:
The full list of contents reads as follows:
When the description limits the scope of the invention: careful drafting really matters!
Author: Stefano Barazza (Studio Legale Barazza)
AstraZeneca AB and others v Hanmi USA Inc and others, United States Court of Appeals for the Federal Circuit, Docket No 2013-1490, 19 December 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu054, first published online: April 18, 2014
The Federal Circuit found that a written description defining ‘the present invention’ as a limited subset of the substance mentioned in the claims clearly confined the invention to the limited subset, disclaiming anything else. The doctrine of claim differentiation cannot override the limitations unmistakably set out by the patent applicant in the written description.
Legal context and facts
In 1995, AstraZeneca filed a patent application covering pharmaceutical compositions containing certain salts of an omeprazole enantiomer, namely those defined by the cations Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4. The invention also claimed methods of use of such compositions for the treatment of gastric acid related diseases, including gastrointestinal inflammatory diseases. In response to the rejection of the original claims, AstraZeneca amended its application, focusing on the S-enantiomer of omeprazole, esomeprazole. The amended claims covered pharmaceutical compositions comprising esomeprazole and an ‘alkaline salt’ (US Patent No 5,714,504) or a ‘pharmaceutically acceptable salt’ (US Patent No 5,877,192).
The pharmaceutical company soon brought the invention to the market, manufacturing the brand drug Nexium, containing the magnesium salt of esomeprazole as its active ingredient, for the treatment of gastroesophageal reflux disease and other gastric acid related diseases. In 2010, Hanmi filed a New Drug Application with the US Food and Drug Administration, seeking regulatory approval for a drug containing the strontium (Sr2+) salt of esomeprazole. Hanmi certified, under 21 USC s 355(b)(2)(A)(iv), that AstraZeneca's '504 and '192 patents were invalid or would not have been infringed by the new product.
AstraZeneca filed suit against Hanmi before the District Court for the District of New Jersey (Civil Action No 11-760 JAP), alleging patent infringement under 35 USC s 271(e)(2)(A). In December 2012, the district court ruled on the parties' request for claim construction, finding that the term ‘alkaline salts’, contained in the claims of the '504 patent, was defined by the related written description as encompassing only the Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salts. The same construction was applied to the term ‘pharmaceutically acceptable salts’, employed in the '192 patent, which incorporated by reference the description contained in the '504 patent. The parties consented to the entry of a final judgment that, under the district court's claim construction, Hanmi's product did not infringe the asserted patents. AstraZeneca brought an appeal before the Court of Appeals for the Federal Circuit, challenging the district court's construction of the term ‘alkaline salts’ in the '504 patent.
Analysis
The Federal Circuit upheld the district court's decision, finding that the written description of the '504 patent contained a clear disclaimer of any salt except those characterized by the six enumerated cations. In reaching this conclusion, the court primarily relied on the detailed description included in the '504 patent, according to which:
The court also reviewed and dismissed three arguments advanced by the appellant to dispute the district court's claim construction.
With a first claim, AstraZeneca argued that the six identified salts were just examples of the broader group of ‘alkaline salts’ claimed by the invention. This interpretation, according to the pharmaceutical company, was justified by the presence of a sentence, in the written description of the '504 patent, according to which the ‘[a]lkaline salts … are, as mentioned above, besides the sodium salts … and the magnesium salts …, exemplified by their salts with Li+, K+, Ca2+ or N+(R)4’.
The panel found that the statement did not negate the clear disclaimer language employed in the written description and in the abstract. In this perspective, the judges noted that only four of the six cations were directly mentioned as examples, and that the sentence constituted a mere summary of the two preceding paragraphs, respectively dedicated to the salts from Group IA of the Periodic Table, including sodium (Na), and to those from Group IIA, including magnesium (Mg).
The second argument raised by the appellant concerned the amendments introduced in the patent application after the examiner's rejection of the original claims. AstraZeneca alleged that a broad interpretation of ‘alkaline salts’ was supported, in the prosecution history, by the clinical studies submitted when it amended the original claims to focus on esomeprazole. These studies allegedly ‘involved both the monovalent sodium salt and the divalent magnesium salt of [esomeprazole], thus supporting the full scope of the genus of alkaline salts disclosed in the application and as claimed herein’.
The court again dismissed the argument, finding that the sentence mentioned by the appellant, read in the context of an amendment that narrowed the rejected claims and of the clear limitation set forth in the written description, did not support AstraZeneca's conclusion. Reciting previous case law (Eli Lilly & Co v Teva Parenteral Medics Inc, 689 F 3d 1368 [2012]; Merck & Co v Mylan Pharmaceuticals Inc, 190 F 3d 1335 [1999]), it clarified that ‘the term “genus” can refer simply to an enumerated collection, without an independently unifying characteristic of the collection's members – as when “genus” is used for a Markush-type claim that recites a group whose members may have nothing in common but their membership in the group’. The judges applied this teaching to the sentence at issue, concluding that the reference to the salts ‘disclosed in the application and as claimed herein’ limited the genus to the six identified salts. The panel also observed that the prosecution history did not mention, nor included data for, any salt beyond those identified in the written description.
Finally, the court evaluated AstraZeneca's argument on the applicability of the doctrine of claim differentiation. The appellant noted that each independent claim reciting a pharmaceutical composition comprising an ‘alkaline salt’ had a dependent claim that differed only by the addition of ‘wherein the alkaline salt is a Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salt’. Thus, AstraZeneca claimed that the doctrine of claim differentiation prevented an interpretation that limited the definition of the term ‘alkaline salts’ used in the independent claims to the limited subset mentioned in the dependent claims, as such interpretation would have rendered the latter claims redundant, being identical in scope to the former. The judges, however, swiftly dismissed this argument, noting that the doctrine of claim differentiation ‘cannot override the unmistakable limitation of “alkaline salts” set out in the written description’, as clear statements of scope in the specification prevail on the inference otherwise suggested by claim differentiation (The Toro Co v White Consol Indus Inc, 199 F 3d 1295 [1999]).
Practical significance
The decision of the Federal Circuit falls in line with the previous case law that examined the relevance of the specification during the phase of claim construction. It has clarified that the claims should be read in light of the specification (see Slimfold Mfg Co v Kinkead Indus Inc, 810 F 2d 1113 [1987]: ‘[c]laims are not interpreted in a vacuum, but are part of and are read in light of the specification’), without unnecessarily importing limitations from it. However, the ‘[i]nterpretation of descriptive statements in a patent's written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment’ (E-Pass Technologies Inc v 3Com Corp, 343 F 3d 1364 [2003]). The interpreter, therefore, should look for a ‘clear disclaimer’, through which the patentee explicitly limited the scope of the claims (Liebel-Flarsheim Co and others v Medrad Inc, 358 F 3d 898 [2004]), even if it did not employ an explicit definitional language (Phonometrics Inc v Northern Telecom Inc, 133 F 3d 1459[1998]).
In the case in hand, the court identified the ‘clear disclaimer’ in the statements found in the detailed description and in the abstract, which respectively referred to the six identified salts when describing the ‘present invention’ and the ‘novel compounds’. In SciMed Life Systems Inc v Advanced Cardiovascular Systems Inc, the Federal Circuit relied on similar statements to infer ‘a clear case of disclaimer of subject matter that, absent the disclaimer, could have been considered to fall within the scope of the claim language’ (similarly, see Honeywell International Inc, 452 F 3d 1312 [2006]). In particular, the use of the words ‘the present invention’, ‘this invention’ or ‘all embodiments of the present invention’ is particularly effective in conveying the idea that the patentee is describing the invention as a whole, rather than one of its embodiments. Incidentally, when the specification employs such language, courts are not generally required to evaluate whether the patentee intended, instead, to describe a specific embodiment: according to Modine Manufacturing Co v United States ITC (75 F 3d 1545 [1996]) ‘when the preferred embodiment is described as the invention itself, the claims are not entitled to a broader scope than that embodiment’.
A clear disclaimer language, as shown in the present decision, cannot be easily overcome. The court clarified that sporadic ambiguous statements contained in the specification, or submitted during prosecution, are insufficient to this aim. In Honeywell International Inc, the Federal Circuit exhibited the same attitude towards the relevancy of prosecution history, noting that ‘[w]here … the written description clearly identifies what his invention is, an expression by a patentee during prosecution that he intends his claims to cover more than what his specification discloses is entitled to little weight’ (citing Biogen Inc v Berlex Labs, 318 F 3d 1132 [2003]). Similarly, the doctrine of claim differentiation, according to the court, cannot override the clear disclaimer language used by the patentee (see Multiform Desiccants Inc v Medzam Ltd, 133 F 3d 1473 [1998]: ‘the doctrine of claim differentiation can not broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence’).
In light of the guidance provided by the Federal Circuit, patent applicants should ensure that the specification supports the breadth of the claims, without containing any language that could be interpreted as a clear disclaimer. In particular, the specification should unambiguously distinguish the statements that describe the invention as a whole from those which concern one or more of its embodiments, employing a coherent language throughout the application.
AstraZeneca AB and others v Hanmi USA Inc and others, United States Court of Appeals for the Federal Circuit, Docket No 2013-1490, 19 December 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu054, first published online: April 18, 2014
The Federal Circuit found that a written description defining ‘the present invention’ as a limited subset of the substance mentioned in the claims clearly confined the invention to the limited subset, disclaiming anything else. The doctrine of claim differentiation cannot override the limitations unmistakably set out by the patent applicant in the written description.
Legal context and facts
AstraZeneca filed suit against Hanmi before the District Court for the District of New Jersey (Civil Action No 11-760 JAP), alleging patent infringement under 35 USC s 271(e)(2)(A). In December 2012, the district court ruled on the parties' request for claim construction, finding that the term ‘alkaline salts’, contained in the claims of the '504 patent, was defined by the related written description as encompassing only the Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salts. The same construction was applied to the term ‘pharmaceutically acceptable salts’, employed in the '192 patent, which incorporated by reference the description contained in the '504 patent. The parties consented to the entry of a final judgment that, under the district court's claim construction, Hanmi's product did not infringe the asserted patents. AstraZeneca brought an appeal before the Court of Appeals for the Federal Circuit, challenging the district court's construction of the term ‘alkaline salts’ in the '504 patent.
Analysis
The Federal Circuit upheld the district court's decision, finding that the written description of the '504 patent contained a clear disclaimer of any salt except those characterized by the six enumerated cations. In reaching this conclusion, the court primarily relied on the detailed description included in the '504 patent, according to which:
The present invention refers to the new Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salts of the single enantiomers of omeprazole, where R is an alkyl with 1–4 carbon atoms, i.e. Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salts of (+)-[omeprazole] and (–)-[omeprazole], where R is an alkyl with 1–4 carbon atoms.The judges held that, by using the term ‘the present invention’, AstraZeneca provided a clear definition of the scope of its invention, limiting it to the six identified salts. Further, they noted that the abstract confirmed this limiting disclaimer, as the inventor only mentioned ‘the [n]ovel optically pure compounds’ formed by the above-mentioned cations. Reciting previous case law (Verizon Services Corp v Vonage Holdings Corp, 503 F 3d 1295 [2007]; Honeywell International Inc and others v ITT Industries Inc and others, 452 F 3d 1312 [2006]; and SciMed Life Systems Inc v Advanced Cardiovascular Systems Inc. 242 F 3d 1337 [2001]), they concluded that those statements clearly confined the invention to the six identified cations. The panel clarified that AstraZeneca, by using such language and conspicuously choosing only certain members of the class of salts potentially suitable for use in the invention (which included all the metals of Periodic Table Groups IA and IIA, plus ammonium), ‘conveyed a clear and definitive meaning that it was disclaiming other members of the class—like Hanmi's chosen strontium’.
The court also reviewed and dismissed three arguments advanced by the appellant to dispute the district court's claim construction.
With a first claim, AstraZeneca argued that the six identified salts were just examples of the broader group of ‘alkaline salts’ claimed by the invention. This interpretation, according to the pharmaceutical company, was justified by the presence of a sentence, in the written description of the '504 patent, according to which the ‘[a]lkaline salts … are, as mentioned above, besides the sodium salts … and the magnesium salts …, exemplified by their salts with Li+, K+, Ca2+ or N+(R)4’.
The panel found that the statement did not negate the clear disclaimer language employed in the written description and in the abstract. In this perspective, the judges noted that only four of the six cations were directly mentioned as examples, and that the sentence constituted a mere summary of the two preceding paragraphs, respectively dedicated to the salts from Group IA of the Periodic Table, including sodium (Na), and to those from Group IIA, including magnesium (Mg).
The second argument raised by the appellant concerned the amendments introduced in the patent application after the examiner's rejection of the original claims. AstraZeneca alleged that a broad interpretation of ‘alkaline salts’ was supported, in the prosecution history, by the clinical studies submitted when it amended the original claims to focus on esomeprazole. These studies allegedly ‘involved both the monovalent sodium salt and the divalent magnesium salt of [esomeprazole], thus supporting the full scope of the genus of alkaline salts disclosed in the application and as claimed herein’.
The court again dismissed the argument, finding that the sentence mentioned by the appellant, read in the context of an amendment that narrowed the rejected claims and of the clear limitation set forth in the written description, did not support AstraZeneca's conclusion. Reciting previous case law (Eli Lilly & Co v Teva Parenteral Medics Inc, 689 F 3d 1368 [2012]; Merck & Co v Mylan Pharmaceuticals Inc, 190 F 3d 1335 [1999]), it clarified that ‘the term “genus” can refer simply to an enumerated collection, without an independently unifying characteristic of the collection's members – as when “genus” is used for a Markush-type claim that recites a group whose members may have nothing in common but their membership in the group’. The judges applied this teaching to the sentence at issue, concluding that the reference to the salts ‘disclosed in the application and as claimed herein’ limited the genus to the six identified salts. The panel also observed that the prosecution history did not mention, nor included data for, any salt beyond those identified in the written description.
Finally, the court evaluated AstraZeneca's argument on the applicability of the doctrine of claim differentiation. The appellant noted that each independent claim reciting a pharmaceutical composition comprising an ‘alkaline salt’ had a dependent claim that differed only by the addition of ‘wherein the alkaline salt is a Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salt’. Thus, AstraZeneca claimed that the doctrine of claim differentiation prevented an interpretation that limited the definition of the term ‘alkaline salts’ used in the independent claims to the limited subset mentioned in the dependent claims, as such interpretation would have rendered the latter claims redundant, being identical in scope to the former. The judges, however, swiftly dismissed this argument, noting that the doctrine of claim differentiation ‘cannot override the unmistakable limitation of “alkaline salts” set out in the written description’, as clear statements of scope in the specification prevail on the inference otherwise suggested by claim differentiation (The Toro Co v White Consol Indus Inc, 199 F 3d 1295 [1999]).
Practical significance
The decision of the Federal Circuit falls in line with the previous case law that examined the relevance of the specification during the phase of claim construction. It has clarified that the claims should be read in light of the specification (see Slimfold Mfg Co v Kinkead Indus Inc, 810 F 2d 1113 [1987]: ‘[c]laims are not interpreted in a vacuum, but are part of and are read in light of the specification’), without unnecessarily importing limitations from it. However, the ‘[i]nterpretation of descriptive statements in a patent's written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment’ (E-Pass Technologies Inc v 3Com Corp, 343 F 3d 1364 [2003]). The interpreter, therefore, should look for a ‘clear disclaimer’, through which the patentee explicitly limited the scope of the claims (Liebel-Flarsheim Co and others v Medrad Inc, 358 F 3d 898 [2004]), even if it did not employ an explicit definitional language (Phonometrics Inc v Northern Telecom Inc, 133 F 3d 1459[1998]).
In the case in hand, the court identified the ‘clear disclaimer’ in the statements found in the detailed description and in the abstract, which respectively referred to the six identified salts when describing the ‘present invention’ and the ‘novel compounds’. In SciMed Life Systems Inc v Advanced Cardiovascular Systems Inc, the Federal Circuit relied on similar statements to infer ‘a clear case of disclaimer of subject matter that, absent the disclaimer, could have been considered to fall within the scope of the claim language’ (similarly, see Honeywell International Inc, 452 F 3d 1312 [2006]). In particular, the use of the words ‘the present invention’, ‘this invention’ or ‘all embodiments of the present invention’ is particularly effective in conveying the idea that the patentee is describing the invention as a whole, rather than one of its embodiments. Incidentally, when the specification employs such language, courts are not generally required to evaluate whether the patentee intended, instead, to describe a specific embodiment: according to Modine Manufacturing Co v United States ITC (75 F 3d 1545 [1996]) ‘when the preferred embodiment is described as the invention itself, the claims are not entitled to a broader scope than that embodiment’.
A clear disclaimer language, as shown in the present decision, cannot be easily overcome. The court clarified that sporadic ambiguous statements contained in the specification, or submitted during prosecution, are insufficient to this aim. In Honeywell International Inc, the Federal Circuit exhibited the same attitude towards the relevancy of prosecution history, noting that ‘[w]here … the written description clearly identifies what his invention is, an expression by a patentee during prosecution that he intends his claims to cover more than what his specification discloses is entitled to little weight’ (citing Biogen Inc v Berlex Labs, 318 F 3d 1132 [2003]). Similarly, the doctrine of claim differentiation, according to the court, cannot override the clear disclaimer language used by the patentee (see Multiform Desiccants Inc v Medzam Ltd, 133 F 3d 1473 [1998]: ‘the doctrine of claim differentiation can not broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence’).
In light of the guidance provided by the Federal Circuit, patent applicants should ensure that the specification supports the breadth of the claims, without containing any language that could be interpreted as a clear disclaimer. In particular, the specification should unambiguously distinguish the statements that describe the invention as a whole from those which concern one or more of its embodiments, employing a coherent language throughout the application.
Illegal download of a cinematographic work in a different language version
Author: Thomas Jochheim (Klinkert Zindel, Partner)
Higher Regional Court of Cologne, file no 6 W 255/12, 1 February 2013; Higher Regional Court of Cologne, file no 6 W 254/12, 23 September 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu051, first published online: April 10, 2014
The granting of rights regarding the German-language version of a cinematographic work may entitle the licensee to take legal action against the illegal download of another language version of that work in Germany.
Legal context
According to German law, a copyright is not transferable, unless it is transferred in execution of a testamentary disposition. The author may grant a right to another person to use the work in a particular manner or in any manner (exploitation right). An exploitation right may be granted as a non-exclusive right or as an exclusive right, and may be limited in respect of place, time and content.
A non-exclusive exploitation right entitles the licensee to use the work in the manner permitted to him. An exclusive exploitation right also entitles the licensee to use the work in the manner permitted to him, but to the exclusion of all other persons, including the licensor. As a matter of fact, the exclusive licensee not only has a ‘positive right’ to use the work, but also a ‘negative right’ of prohibition. He is therefore entitled to take legal actions to assert his claims against infringements as stipulated in s 97 of the German Copyright Act (‘Any person who infringes copyright or any other right protected under this Act may be required by the injured party to eliminate the infringement or, where there is a risk of repeated infringement, may be required by the injured party to cease and desist’).
It is moreover recognized within Germany that the scope of protection of exclusive exploitation rights can be broader than the positive right conferred by them. In a decision of 1999 for instance, the German Supreme Court (Laras Tochter, file no I ZR 65/96—29 April 1999) stated that the right holder of the exclusive exploitation right to reproduce and disseminate a literary work was entitled to prohibit the reproduction and dissemination of an adaptation of that work, even though he was not himself entitled to use the work in this manner.
Facts
In 2013, the Higher Regional Court of Cologne had to decide on two matters regarding illegal downloads of a movie in several foreign-language versions (the ‘Higher Regional Court of Cologne, file no 6 W 255/12, 1 February 2013’) and in the Russian language-version (the ‘Higher Regional Court of Cologne, file no 6 W254/12, 23 September 2013’) via a peer-to-peer network in Germany.
In both cases, the plaintiffs were the licensees of the exclusive exploitation rights of a movie in Germany, including the original English-language version as well as the German version. However, in the first case, the plaintiff′s licence agreement included an additional clause stating that the licensor was not entitled to exploit any language versions other than those licensed to the plaintiff in Germany.
The plaintiffs asserted their claim for disclosure. The request was granted in the first case and denied in the second one.
The Cologne Higher Regional Court stated in both cases that the exclusive exploitation right encompasses a negative right of prohibition, as stipulated in s 97 of the Germany Copyright Act. The court agreed that the claim for disclosure was an auxiliary claim linked to the right of prohibition (s 97 of the Germany Copyright Act). It therefore appeared necessary to make the claim for disclosure dependent on the condition that s 97 of the Germany Copyright Act was fulfilled.
The court further agreed that in order to ensure effective protection, the right of prohibition may be broader than the right holder′s positive right of use. A right holder may therefore be entitled to prohibit a certain use, if that use has an economic impact on its positive rights of use.
As a result, the court found that the plaintiff in the first case had the right to prohibit the foreign-language versions. In particular, it plaintiff referred to the additional clause in the licence agreement and stated that the scope of this clause was to enable the exhaustive and best possible exploitation of that movie in Germany. This scope would, however, be significantly impaired, if people downloaded the movie illegally, especially in foreign-language versions that were widespread in Germany, instead of buying it.
However, in the second case the court denied the plaintiff's right to prohibit the Russian-language version in Germany. Although the plaintiff had the exclusive right to exploit the movie in English, German and also Flemish and Dutch, there was no basis to conclude that he could prohibit all other versions of the movie in Germany. To ensure this, he should have had added an appropriate clause to his licence agreement, but this had not happened.
Moreover, in the court's opinion, it was not evident that the Russian-language version of the movie had any economic impact on the plaintiff's rights. Even though about one million people in Germany have Russian roots, a significant percentage of those people were born in Germany and were unlikely to have a sufficient grasp of Russian to watch a movie in that language. For this reason alone, such people could not be considered interested in the Russian-language version, so the plaintiff's exclusive rights could not be affected by that part of the population. On the other hand, people based in Russian-speaking areas who were interested in the Russian-language version of the movie would not consider buying it in English, German, Flemish or Dutch.
Analysis
The court rightly concludes that the possibility to illegally download a movie in a language version other than the exclusively licensed language version may still have an economic impact on the positive rights of use of the specific right holder.
However, the denial of any economic impact in the second case is not fully convincing. Many people prefer to watch movies in their original version, particularly if this is the English one. Many cinemas offer both original and dubbed versions of foreign movies. Moreover, unlike in Germany or France, it is not common in Eastern Europe to dub all movies, so a significant percentage of the people there are accustomed to watching movies in English. It is therefore unclear why people from Russian-speaking countries would not be at least interested in the original language version of the movie in this case—which would have an economic impact on the plaintiff's rights.
Practical significance
The decisions demonstrate the importance of drafting licence agreements carefully. This applies all the more as s 31(5) of the German Copyright Act states that, if the types of exploitation are not specifically designated when an exploitation right is granted, the types of use to which the right extends shall be determined in accordance with the purpose envisaged by both parties to the contract. This also applies, among other things, to the questions of whether an exploitation right has in fact been granted, whether that right is exclusive or non-exclusive, and how far the exploitation right and the right of prohibition extend. As a result, if not specifically stated otherwise in the agreement, copyright tends to remain with the author.
Higher Regional Court of Cologne, file no 6 W 255/12, 1 February 2013; Higher Regional Court of Cologne, file no 6 W 254/12, 23 September 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu051, first published online: April 10, 2014
The granting of rights regarding the German-language version of a cinematographic work may entitle the licensee to take legal action against the illegal download of another language version of that work in Germany.
Legal context
According to German law, a copyright is not transferable, unless it is transferred in execution of a testamentary disposition. The author may grant a right to another person to use the work in a particular manner or in any manner (exploitation right). An exploitation right may be granted as a non-exclusive right or as an exclusive right, and may be limited in respect of place, time and content.
A non-exclusive exploitation right entitles the licensee to use the work in the manner permitted to him. An exclusive exploitation right also entitles the licensee to use the work in the manner permitted to him, but to the exclusion of all other persons, including the licensor. As a matter of fact, the exclusive licensee not only has a ‘positive right’ to use the work, but also a ‘negative right’ of prohibition. He is therefore entitled to take legal actions to assert his claims against infringements as stipulated in s 97 of the German Copyright Act (‘Any person who infringes copyright or any other right protected under this Act may be required by the injured party to eliminate the infringement or, where there is a risk of repeated infringement, may be required by the injured party to cease and desist’).
It is moreover recognized within Germany that the scope of protection of exclusive exploitation rights can be broader than the positive right conferred by them. In a decision of 1999 for instance, the German Supreme Court (Laras Tochter, file no I ZR 65/96—29 April 1999) stated that the right holder of the exclusive exploitation right to reproduce and disseminate a literary work was entitled to prohibit the reproduction and dissemination of an adaptation of that work, even though he was not himself entitled to use the work in this manner.
Facts
In 2013, the Higher Regional Court of Cologne had to decide on two matters regarding illegal downloads of a movie in several foreign-language versions (the ‘Higher Regional Court of Cologne, file no 6 W 255/12, 1 February 2013’) and in the Russian language-version (the ‘Higher Regional Court of Cologne, file no 6 W254/12, 23 September 2013’) via a peer-to-peer network in Germany.
In both cases, the plaintiffs were the licensees of the exclusive exploitation rights of a movie in Germany, including the original English-language version as well as the German version. However, in the first case, the plaintiff′s licence agreement included an additional clause stating that the licensor was not entitled to exploit any language versions other than those licensed to the plaintiff in Germany.
The plaintiffs asserted their claim for disclosure. The request was granted in the first case and denied in the second one.
The Cologne Higher Regional Court stated in both cases that the exclusive exploitation right encompasses a negative right of prohibition, as stipulated in s 97 of the Germany Copyright Act. The court agreed that the claim for disclosure was an auxiliary claim linked to the right of prohibition (s 97 of the Germany Copyright Act). It therefore appeared necessary to make the claim for disclosure dependent on the condition that s 97 of the Germany Copyright Act was fulfilled.
The court further agreed that in order to ensure effective protection, the right of prohibition may be broader than the right holder′s positive right of use. A right holder may therefore be entitled to prohibit a certain use, if that use has an economic impact on its positive rights of use.
As a result, the court found that the plaintiff in the first case had the right to prohibit the foreign-language versions. In particular, it plaintiff referred to the additional clause in the licence agreement and stated that the scope of this clause was to enable the exhaustive and best possible exploitation of that movie in Germany. This scope would, however, be significantly impaired, if people downloaded the movie illegally, especially in foreign-language versions that were widespread in Germany, instead of buying it.
However, in the second case the court denied the plaintiff's right to prohibit the Russian-language version in Germany. Although the plaintiff had the exclusive right to exploit the movie in English, German and also Flemish and Dutch, there was no basis to conclude that he could prohibit all other versions of the movie in Germany. To ensure this, he should have had added an appropriate clause to his licence agreement, but this had not happened.
Moreover, in the court's opinion, it was not evident that the Russian-language version of the movie had any economic impact on the plaintiff's rights. Even though about one million people in Germany have Russian roots, a significant percentage of those people were born in Germany and were unlikely to have a sufficient grasp of Russian to watch a movie in that language. For this reason alone, such people could not be considered interested in the Russian-language version, so the plaintiff's exclusive rights could not be affected by that part of the population. On the other hand, people based in Russian-speaking areas who were interested in the Russian-language version of the movie would not consider buying it in English, German, Flemish or Dutch.
Analysis
The court rightly concludes that the possibility to illegally download a movie in a language version other than the exclusively licensed language version may still have an economic impact on the positive rights of use of the specific right holder.
However, the denial of any economic impact in the second case is not fully convincing. Many people prefer to watch movies in their original version, particularly if this is the English one. Many cinemas offer both original and dubbed versions of foreign movies. Moreover, unlike in Germany or France, it is not common in Eastern Europe to dub all movies, so a significant percentage of the people there are accustomed to watching movies in English. It is therefore unclear why people from Russian-speaking countries would not be at least interested in the original language version of the movie in this case—which would have an economic impact on the plaintiff's rights.
Practical significance
The decisions demonstrate the importance of drafting licence agreements carefully. This applies all the more as s 31(5) of the German Copyright Act states that, if the types of exploitation are not specifically designated when an exploitation right is granted, the types of use to which the right extends shall be determined in accordance with the purpose envisaged by both parties to the contract. This also applies, among other things, to the questions of whether an exploitation right has in fact been granted, whether that right is exclusive or non-exclusive, and how far the exploitation right and the right of prohibition extend. As a result, if not specifically stated otherwise in the agreement, copyright tends to remain with the author.
INTA 2014: JIPLP and other attractions ...
Amanda is a leading practitioner in the field of trade marks as well as a JIPLP contributor. Do come and say "hello" to her -- and to us!Book Signing: A Practical Guide to Trade Mark Law Fifth EditionMeet the author, Amanda Michaels, 3-4pm, Monday 12th May,International Trademark Association Annual Meeting, 2014To purchase your copy and get it signed by the author visit the OUP booth #409
Switzerland still not part of Germany, even for trade mark purposes
Author: Jeremy Phillips (Editor, Journal of Intellectual Property Law & Practice)
Case C-445/12 P Rivella International AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Baskaya Di Baskaya Alim E C Sas, Court of Justice of the European Union (First Chamber), 12 December 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu032, first published online: April 2, 2014
The use of a trade mark in Switzerland may, by its very nature, be deemed to constitute use of that mark in Germany, under the terms of a bilateral treaty between Germany and Switzerland on the reciprocal recognition of use of intellectual property rights, but the effect of that treaty does not extend to such deemed use being use of an earlier mark in Germany under the opposition provisions of the autonomous system for the Community trade mark.
Legal context
Under Article 42(3) of the Regulation 207/2009 on the Community trade mark, an applicant for registration of a Community trade mark is entitled to request an opponent to furnish proof of use of an earlier national trade mark upon which the opposition is founded. Such use must be within the territory of the Member State to which that earlier mark belongs. Article 5 of the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trade marks provides that use of a trade mark in Switzerland is the equivalent to the use of that mark in Germany.
Facts
Baskaya applied to register as a Community trade mark a figurative sign, depicted below, in which the word ‘baskaya’ was portrayed beneath a line of five stars on a red oval background.
The goods in respect of which registration was sought were ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’ (Class 29), ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’ (Class 30) and ‘beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ (Class 32).
Rivella opposed the application, invoking a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 40/94 (now Art 8(1)(b) of Regulation 207/2009). The opposition was based on the earlier international figurative mark, depicted above, with effect in Germany, Spain, France, Italy, Austria and the Benelux countries, for ‘beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages’ (Class 32).
Baskaya sought, as it was entitled to do, proof of use of the earlier trade mark by Rivella. At this point, events took an unusual turn since, in March 2009, Rivella said that it was maintaining the opposition only in respect of the German part of its international registration; the company submitted a number of documents as proof of use of its mark in Switzerland. It relied, in that regard, on Article 5 of the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trade marks. According to Rivella, under that convention, use of its mark in Switzerland was equivalent to its use in Germany. The Opposition Division rejected the opposition for lack of proof of use of the earlier trade mark within Germany since that the documents provided by Rivella showed that the mark cited in opposition was used only in Switzerland and rejected the application of the 1892 Convention.
Rivella then appealed unsuccessfully to the Fourth Board of Appeal. In the view of the Board of Appeal, the only relevant legal framework within which the use of Rivella's mark was to be considered was that of Regulation 207/2009 on the Community trade mark and, more specifically, Articles 42(2) and (3) of that Regulation, under which the earlier trade mark must have been put to genuine use in the Member State in which it was protected.
Rivella then brought an action before the General Court for annulment of the Board of Appeal's decision. The sole basis of this action was that since, under Article 5(1) of the 1892 Convention, a trade mark was deemed to be used in Germany if it was used in Switzerland, Rivella was not further obliged to furnish proof of genuine use of its earlier trade mark in Germany.
The General Court considered that questions relating to the proof furnished in support of the grounds for opposition to an application for registration of a Community trade mark and questions relating to the territorial aspect of the use of marks were governed exclusively by the relevant provisions of Regulation 207/2009, irrespective of the domestic law of the Member States. The national or international nature of an earlier trade mark cited in Community opposition proceedings in no way meant that the national law applicable to that earlier trade mark was applicable in those proceedings. Although procedures for the registration of trade marks were covered by the national law of each Member State, the same could not be said of the determination of the territory in which genuine use of the earlier trade mark must be established, as that question was governed by EU law. Accordingly the General Court dismissed Rivella's action for annulment.
Rivella then appealed further to the Court of Justice of the European Union (CJEU), in essence raising a subtler version of its earlier ground of appeal. The CJEU dismissed the appeal.
Analysis
The appeal turned principally on two propositions. Rivella first argued that the General Court erred in law by applying the genuine use requirement under Article 42(3) to its earlier trade mark, even though that trade mark was an international trade mark rather than a national trade mark and was therefore not covered by those provisions. The CJEU disagreed. Article 42(3) did not, however, distinguish national trade marks from those granted under the international registration system since the term ‘earlier national trade marks’ mentioned in Article 42(3) had to be understood as referring trade marks which had effect in a Member State, regardless of their provenance via national or international grant mechanisms. If this were not so, observed the CJEU, Rivella's argument would circumvent the trade mark protection system of which Articles 42(2) and 42(3) formed part, depriving them of their useful effect.
Rivella next argued that the question of the ‘territorial validity’ of a nationally registered trade mark was exclusively governed by national law, especially in the case of national trade marks which have been registered under international arrangements and which had effect in a Member State. However, Rivella was in effect seeking to plead its German trade mark in the same manner as a national defensive trade mark, but the CJEU in Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333 had already ruled that a defensive trade mark, under which an earlier trade mark was protected on the basis of national law even if its use could not be established, could not be used to oppose the registration of a Community trade mark.
Practical significance
The line of argument taken by Rivella is one with which many readers will be familiar: a ground of appeal which is too attractive to ignore, yet too flimsy to stand a chance of succeeding.
In legal terms, this opposition is a story of unmitigated defeat for Rivella. In the world of business and commerce, it is something of a triumph in that Baskaya's Community trade mark application has been kept off the register for over six years. Baskaya would have been in a far better position if the Opposition Division had accepted that the use in Switzerland was indeed use in Germany and then dismissed the opposition on the ground that the respective marks were insufficiently similar to one another for there to be any likelihood of confusion, an outcome which in this author's opinion is by far the more probable one.
Case C-445/12 P Rivella International AG v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Baskaya Di Baskaya Alim E C Sas, Court of Justice of the European Union (First Chamber), 12 December 2013
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu032, first published online: April 2, 2014
The use of a trade mark in Switzerland may, by its very nature, be deemed to constitute use of that mark in Germany, under the terms of a bilateral treaty between Germany and Switzerland on the reciprocal recognition of use of intellectual property rights, but the effect of that treaty does not extend to such deemed use being use of an earlier mark in Germany under the opposition provisions of the autonomous system for the Community trade mark.
Legal context
Under Article 42(3) of the Regulation 207/2009 on the Community trade mark, an applicant for registration of a Community trade mark is entitled to request an opponent to furnish proof of use of an earlier national trade mark upon which the opposition is founded. Such use must be within the territory of the Member State to which that earlier mark belongs. Article 5 of the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trade marks provides that use of a trade mark in Switzerland is the equivalent to the use of that mark in Germany.
Facts
Baskaya applied to register as a Community trade mark a figurative sign, depicted below, in which the word ‘baskaya’ was portrayed beneath a line of five stars on a red oval background.
The goods in respect of which registration was sought were ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’ (Class 29), ‘coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’ (Class 30) and ‘beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’ (Class 32).
Rivella opposed the application, invoking a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation 40/94 (now Art 8(1)(b) of Regulation 207/2009). The opposition was based on the earlier international figurative mark, depicted above, with effect in Germany, Spain, France, Italy, Austria and the Benelux countries, for ‘beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages’ (Class 32).
Baskaya sought, as it was entitled to do, proof of use of the earlier trade mark by Rivella. At this point, events took an unusual turn since, in March 2009, Rivella said that it was maintaining the opposition only in respect of the German part of its international registration; the company submitted a number of documents as proof of use of its mark in Switzerland. It relied, in that regard, on Article 5 of the 1892 Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trade marks. According to Rivella, under that convention, use of its mark in Switzerland was equivalent to its use in Germany. The Opposition Division rejected the opposition for lack of proof of use of the earlier trade mark within Germany since that the documents provided by Rivella showed that the mark cited in opposition was used only in Switzerland and rejected the application of the 1892 Convention.
Rivella then appealed unsuccessfully to the Fourth Board of Appeal. In the view of the Board of Appeal, the only relevant legal framework within which the use of Rivella's mark was to be considered was that of Regulation 207/2009 on the Community trade mark and, more specifically, Articles 42(2) and (3) of that Regulation, under which the earlier trade mark must have been put to genuine use in the Member State in which it was protected.
Rivella then brought an action before the General Court for annulment of the Board of Appeal's decision. The sole basis of this action was that since, under Article 5(1) of the 1892 Convention, a trade mark was deemed to be used in Germany if it was used in Switzerland, Rivella was not further obliged to furnish proof of genuine use of its earlier trade mark in Germany.
The General Court considered that questions relating to the proof furnished in support of the grounds for opposition to an application for registration of a Community trade mark and questions relating to the territorial aspect of the use of marks were governed exclusively by the relevant provisions of Regulation 207/2009, irrespective of the domestic law of the Member States. The national or international nature of an earlier trade mark cited in Community opposition proceedings in no way meant that the national law applicable to that earlier trade mark was applicable in those proceedings. Although procedures for the registration of trade marks were covered by the national law of each Member State, the same could not be said of the determination of the territory in which genuine use of the earlier trade mark must be established, as that question was governed by EU law. Accordingly the General Court dismissed Rivella's action for annulment.
Rivella then appealed further to the Court of Justice of the European Union (CJEU), in essence raising a subtler version of its earlier ground of appeal. The CJEU dismissed the appeal.
Analysis
The appeal turned principally on two propositions. Rivella first argued that the General Court erred in law by applying the genuine use requirement under Article 42(3) to its earlier trade mark, even though that trade mark was an international trade mark rather than a national trade mark and was therefore not covered by those provisions. The CJEU disagreed. Article 42(3) did not, however, distinguish national trade marks from those granted under the international registration system since the term ‘earlier national trade marks’ mentioned in Article 42(3) had to be understood as referring trade marks which had effect in a Member State, regardless of their provenance via national or international grant mechanisms. If this were not so, observed the CJEU, Rivella's argument would circumvent the trade mark protection system of which Articles 42(2) and 42(3) formed part, depriving them of their useful effect.
Rivella next argued that the question of the ‘territorial validity’ of a nationally registered trade mark was exclusively governed by national law, especially in the case of national trade marks which have been registered under international arrangements and which had effect in a Member State. However, Rivella was in effect seeking to plead its German trade mark in the same manner as a national defensive trade mark, but the CJEU in Case C-234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I-7333 had already ruled that a defensive trade mark, under which an earlier trade mark was protected on the basis of national law even if its use could not be established, could not be used to oppose the registration of a Community trade mark.
Practical significance
The line of argument taken by Rivella is one with which many readers will be familiar: a ground of appeal which is too attractive to ignore, yet too flimsy to stand a chance of succeeding.
In legal terms, this opposition is a story of unmitigated defeat for Rivella. In the world of business and commerce, it is something of a triumph in that Baskaya's Community trade mark application has been kept off the register for over six years. Baskaya would have been in a far better position if the Opposition Division had accepted that the use in Switzerland was indeed use in Germany and then dismissed the opposition on the ground that the respective marks were insufficiently similar to one another for there to be any likelihood of confusion, an outcome which in this author's opinion is by far the more probable one.
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