Looking for something to review?

A couple of weeks ago, in the height of the August holiday season, this weblog posted the following message: 

Part of JIPLP's aim was to provide reviews not merely for books, in the conventional manner, but also for other media in which ideas and information concerning intellectual property law and practice are promulgated.  This might take the form of, for example, films, weblogs, Twitter feeds and so on.  After all, it is now beyond doubt that alternative and social media attract far wider attention and much more devoted readership than do the traditional, paper-based products on which most of us depended for our legal education and our introduction to principles of IP law.

In its earliest days JIPLP did indeed carry reviews of alternative and social media, but it is a while since we have commissioned such reviews.  But the time has come to look afresh at the available materials and to commission our readers to produce some fresh impressions of them.

JIPLP then invited readers to review a number of blogs and Twitter accounts, of which the following remain unclaimed:

Accordingly, JIPLP seeks reviews of the following:

* The TTABlog (well-respected US trade mark weblog, last reviewed in our December 2006 issue) 

* The EPLAW Patent Blog (a multi-authored European-based patent blog which has not previously been reviewed) 

* IP Kenya (Victor B. Nzomo's often challenging blog, which was launched at the beginning of 2011)

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JIPLP is also interested in receiving reviews of these Twitter accounts:

* @WIPO (the Twitter account of the World Intellectual Property Organization, which now has over 10,300 followers) 

* @USPTO ("Leading the Nation and the World ...": over 13,000 followers) 

* @European Patent Office (official account of the Munich-based institution, with over 8,400 followers)

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If you would like to review one of the above, please email Sarah Harris at sarah.harris@oup.com by not later than close of play on Friday 13 September. As usual, if we don't already know you and you haven't written or reviewed anything for us before, do send us a biographical note or explain why you feel that you are well qualified to write the review for us.

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The Butterworths Intellectual Property Law Handbook (11th edition: details here) has just been published by LexisNexis and JIPLP is looking for someone to review it.

Please don't be put off by the fact that the editor of JIPLP is also the Consultant Editor; the journal both expects and demands honest reviews, and the editor has had an entire lifetime of getting used to being criticised.

If you'd like to review this book, please email Sarah Harris at sarah.harris@oup.com by not later than close of play on Friday 13 September. 

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The Art Collecting Legal Handbook, offered a little while ago, is also still looking for a reviewer. Details are as follows:
Editors: Bruno Boesch and Massimo Sterpi
Publishers: Sweet & Maxwell

"Collecting, preserving and promoting cultural goods, whether fine art, archaeological objects or decorative arts, is now global. Oddly, rules and practices have remained very local, save for ICOM’s efforts at the institutional level and UNESCO’s endeavours to help preserve national cultural heritage and combat illicit trafficking. 

This book is designed to help the collector and their advisers navigate the maze on an international level. Each chapter of The Art Collecting Manual addresses a number of issues from the perspective of a different jurisdiction to help collectors making errors that could be potenitally illegal. The format of the chapters follow a question and answer style thus enabling readers to make quick and accurate comparisons in multiple jurisdictions covering property law, insurance, customs, tax, inheritance, intellectual property and more". 

Further information concerning this book can be obtained from its web page here.

Again, if you'd like to review this book, please email Sarah Harris at sarah.harris@oup.com by not later than close of play on Friday 13 September. 

Passing off and Unfair Competition: a JIPLP-GRUR Int event

"Passing off and Unfair Competition" is the theme of the third event held by the Journal of Intellectual Property Law & Practice with its German partners at GRUR Int.   This event, which is kindly hosted in the London office of Baker & McKenzie LLP, takes place on Thursday 23 January 2014 and the programme looks like this:

3.00 pm Registration

3.30 pm Welcome

3.40 pm Chairman’s introduction (Professor Jeremy Phillips)

3.45 pm Ben Allgrove (partner, Baker & McKenzie, London, and JIPLP contributor) looks at the operation of the UK's passing off law

4.15 pm Gert Würtenberger (partner, Würtenberger Kunze, Munich, and JIPLP editorial board member) gives us his perspective on Germany's unfair competition law

4.45 pm Break

5.00 pm Panel discussion, featuring Mr Justice Arnold (whose judgments in the Och-Ziff and Vodkat cases have taken British passing off law to the next level), plus JIPLP editorial board members Dr Birgit Clark and Professors Phillip Johnson and Christopher Wadlow

5.30 pm Questions from the floor

6.00 to 7.00 pm Reception

There is no charge for admission.  If you'd like to attend this event, for which CPD points will be available, please email JIPLP editor Jeremy Phillips on jjip@btinternet.com with the subject line "January event".

If, having registered for this event, you subsequently find that you cannot attend, can you please email to let us know, so that your place can be allocated to someone else whose name is on the reserve list.

Marriage ends, but patent interest endures

Authors: David Cotta and Peter Cuomo (Edwards Wildman Palmer LLC, Boston, MA, USA)

Taylor v Taylor Made Plastics, Inc, Case No 12-CV-746-T-EAK-AEP (MD Fla) 29 April 2013

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt143, first published online: September 1, 2013

The United States District Court for the Middle District of Florida held that a sole inventor lacked standing to bring a claim for patent infringement where his ex-wife, who had gained an ownership interest through marriage, was not joined as a co-plaintiff.

Legal context

Any party who wishes to bring a civil suit in the United States must have legal standing. Since standing must exist at all times, plaintiffs must ensure that they have standing when they file suit and throughout the course of the litigation. A party's standing to sue for patent infringement derives from the Patent Act, which provides that ‘[a] patentee shall have remedy by civil action for infringement of his patent’ (35 USC § 281). The term ‘patentee’ in this statute includes not only the inventors and assignees, but also ‘the successors in title to the patentee’ (35 USC § 100). Where there are multiple owners of a patent, all of the owners must join as parties in any litigation to enforce the patent in order to establish standing to sue for infringement. If one owner refuses to join, the other owners lack standing and may not proceed with the infringement suit.

Facts

This case related to an inventor's standing to bring a suit for patent infringement. Whereas most challenges to standing in patent infringement litigation involve the failure to join inventors or corporations with an interest obtained through licence or assignment, Taylor was relatively unusual in that the standing issue was created by the distribution of marital assets among spouses.

James Taylor sued Taylor Made Plastics Inc for infringement of US Patent No 5,806,566, which covers a storm drainage conduit plug and sealing band. After the complaint was filed, Taylor Made was contacted by the plaintiff's ex-wife, Louisa Taylor, who informed Taylor Made that she co-owned the patent pursuant to a divorce decree. Seizing upon this information, Taylor Made filed a motion to dismiss the complaint for a lack of standing.

The Middle District of Florida granted Taylor Made's motion and dismissed the case for lack of standing. The court explained that, while patent law is governed by federal statute, the question of patent ownership is an issue requiring the application of state law. Under Florida state law, property acquired during a marriage is presumed to be a marital asset. Florida law also dictates that ‘a patent is personal property that may be the subject of equitable distribution when the inventor and his or her spouse dissolve their marriage’. In this case, Taylor's patent was a presumptive marital asset. Consistent with this presumption, the divorce decree divided ownership of the patent between Taylor and his wife. Accordingly, the court found that Ms Taylor needed to participate in the litigation in order for Mr Taylor to have standing enforce the patent.

Analysis

Although the Taylor case presents unique facts, the body of law supporting the decision was not new. US courts have long required that all parties with an ownership interest in a patent must be joined in an infringement action, Ethicon, Inc v US Surgical Corp, 135 F 3d 1456, 1467 (Fed Cir 1998) (citing Waterman v Mackenzie, 138 US 252, 255 (1891)), and courts analysing patent cases have long deferred to state law on the issue of patent ownership. The Taylor court relied on established precedent, reflected in its citation of Enovsys LLC v Nextel Communications, Inc, 614 F 3d 1333 (Fed Cir 2010). In Enovsys, the Court of Appeals for the Federal Circuit affirmed the denial of a motion to dismiss for lack of standing where a plaintiff-inventor failed to join his ex-wife. The appeals court agreed that, under California state law, the patents were the presumptive joint property of the couple because the patent applications had been filed while the couple was married. In Envosys, however, the court found that the state court divorce decree gave complete ownership to the plaintiff-inventor, providing him with standing even absent joinder of his ex-wife.

Practical significance

In many states, an inventor's patent will become marital property as long as it was acquired during the marriage. Inventors should be aware of community property laws and other laws governing the allocation of marital assets in the state where they reside, particularly if they are going through a divorce proceeding. Inventors who are involved in divorce proceedings, or are otherwise providing for the distribution of marital assets, should be mindful of the consequences of divided patent ownership. Inventors can avoid being saddled with patent rights they cannot enforce by keeping patent ownership whole or by reaching an agreement with their spouses that requires their spouses to join in and cooperate with subsequent efforts to enforce jointly owned patents

"Greek Yoghurt": what you think it means

Back in late July of this year, the jiplp weblog published this piece by Leigh Smith on the ongoing litigation in before the courts of England and Wales in Fage v Chobani. This litigation may well determine, for years to come, the right of traders in yoghurt to deploy the adjective "Greek" in relation to their product.  The current effect of the common law of passing off is to grant relief, through a device called "extended passing off", to any members of a class of business who share the goodwill in what is essentially a descriptive term.  Is "Greek Yoghurt" such a term?

The jiplp weblog ran a sidebar poll as to what readers of this blog thought the words 'Greek Yoghurt' meant. That poll, which is entirely non-binding and has no evidential value or judicial sanction, is now closed. It asked the question "What do the words GREEK YOGHURT mean to you?"  Your responses were as follows, there being 152 respondents:

A yoghurt that is thick, creamy and made in accordance with a specific formulation 54 (35%)

A yoghurt that is thick and creamy 38 (25%)

A thick, creamy yoghurt made in Greece according to a specific formulation 35 (23%)

Any thick, creamy yoghurt that is made in Greece 13 (8%)

Any yoghurt that is made in Greece 12 (7%)

Remarkably, some 60% of respondents would not assume that a product called "Greek Yoghurt" comes from Greece.  However, 23% of respondents, or nearly a quarter, would expect "Greek Yoghurt" not only to come from Greece but also to be a particular type of yoghurt -- which can be verified by inspection -- and to be produced by a specific process, this being something that cannot easily be verified by the domestic consumer at the point of purchase.

September JIPLP now available in print

The print version of JIPLP's September 2013 issue (click here for contents) has already been posted to subscribers' terrestrial addresses. If you are one of the relatively small number of readers who prefer to receive your JIPLP in paper format, you should be receiving your copy any day now if you've not already done so. This issue was available in full to online subscribers on 9 August.

You can read Neil J. Wilkof's guest editorial "IP and immigration: are there winners and losers?" here.

Advance online publications

The following items, which are now available to JIPLP's online subscribers, will be published in print over the next few weeks.

August 29, 2013

Select this article
Article:

• W. Wesley Hill
Media monitoring, copyright and technology: implications of recent casesJournal of Intellectual Property Law & Practice first published online August 29, 2013doi:10.1093/jiplp/jpt141(7 pages)
Select this article
Current Intelligence:

• David Evans and
 
• Jason Romer
A Guide to Guernsey image rightsJournal of Intellectual Property Law & Practice first published online August 29, 2013doi:10.1093/jiplp/jpt153(2 pages)

August 26, 2013

Select this article
From GRUR Int.:

• Ronny Hauck
The Unified Patent Court: claims for information and protection of confidential informationJournal of Intellectual Property Law & Practice first published online August 26, 2013doi:10.1093/jiplp/jpt140(6 pages)

Wesley Hill's article looks at, among other things, the impact of the robots.txt exclusion protocol and the doctrine of implied licence. David Evans' and Jason Romer's note explains the ambit of the curious Image Rights (Bailiwick of Guernsey) Ordinance 2012. Ronny Hauck looks at a Unified Patent Court topic that has escaped the attention of most people, but which is of great importance in practice: the protection of confidential information during and beyond the transitional period leading to the operation of Europe's new patent litigation forum.

Forthcoming event: save the date!

The third joint event conducted by JIPLP and its German friends at GRUR Int will be held in London, on Thursday 23 January 2014.  The topic under discussion will be a comparison of the functional utility of the common law of passing off with that of the German statutory delict of unfair competition.

Venue, speakers, panellists and other details will be announced soon.  Meanwhile, JIPLP can confirm that the event will run from 3.00 pm to 6.00 pm, followed by a pleasant reception.  CPD points will be available too.

Want to review a weblog or Twitter account?

Part of JIPLP's aim was to provide reviews not merely for books, in the conventional manner, but also for other media in which ideas and information concerning intellectual property law and practice are promulgated.  This might take the form of, for example, films, weblogs, Twitter feeds and so on.  After all, it is now beyond doubt that alternative and social media attract far wider attention and much more devoted readership than do the traditional, paper-based products on which most of us depended for our legal education and our introduction to principles of IP law.

In its earliest days JIPLP did indeed carry reviews of alternative and social media, but it is a while since we have commissioned such reviews.  But the time has come to look afresh at the available materials and to commission our readers to produce some fresh impressions of them.

Accordingly, JIPLP seeks reviews of the following:

* The TTABlog (well-respected US trade mark weblog, last reviewed in our December 2006 issue) 

* The EPLAW Patent Blog (a multi-authored European-based patent blog which has not previously been reviewed) 

* Excess Copyright (a highly active and sometimes outspoken weblog with archives reaching back to 2006) 

* IP Kenya (Victor B. Nzomo's often challenging blog, which was launched at the beginning of 2011)

********************************

JIPLP is also interested in receiving reviews of these Twitter accounts:

* @WIPO (the Twitter account of the World Intellectual Property Organization, which now has over 10,300 followers) 

* @USPTO ("Leading the Nation and the World ...": over 13,000 followers) 

* @European Patent Office (official account of the Munich-based institution, with over 8,400 followers)

********************************

If these reviews work out well, we'll be looking for more.

If you would like to review one of the above, please email Sarah Harris at sarah.harris@oup.com by not later than close of play on Friday 23 August. As usual, if we don't already know you and you haven't written or reviewed anything for us before, do send us a biographical note or explain why you feel that you are well qualified to write the review for us.

A summer message

Home, sweet home for JIPLP

At this week's JIPLP team meeting in Oxford, I was delighted to discover that the journal is maintaining its upward movement in market conditions which continue to vex most publishers, and indeed most journals. So far this year JIPLP has seen a more than gratifying 6% increase in its institutional subscriber base; production targets continue to be met; reader and contributor satisfaction levels run high and the pipeline continues to flow with high-quality articles and current intelligence notes.  

But JIPLP is meant to be more than just a journal.  Parallel to its formal website, leading to its archives and information for contributors, subscribers and readers, the jiplp weblog reaches out to a large and growing segment of the IP community, with over 800 subscribers and nearly half a million page views to date. To this we have added a Twitter account, which now has over 340 followers. Through this we have publicised articles and blogposts, sought authors on specialised topics and -- perhaps most entertainingly for those who are not authors -- pinpointed egregious errors and bad writing style in the pieces submitted to us.

The JIPLP community continues to seek new ways of making friends, reaching readers and sharing ideas.  Earlier this year we held two highly successful joint events with our German partners at GRUR Int and, for January 2014, we are plotting a London seminar in which we contrast the common law of passing off with the civil law concept of unfair competition, to examine how each works in practice and see what each body of law can learn from the other.  Details will be circulated once available.

In the meantime, we thank our readers, authors and critics for their various contributions to our venture and hope that, your continued input and support, we will be able to bring a better understanding of IP law and practice to the community we serve.

More books for review

JIPLP's latest batch of books for review is listed below. If you're interested in reviewing any of them, please email Sarah Harris at sarah.harris@oup.com by close of play on Thursday 15 August and let her know. As usual, if you are not already known to the JIPLP team, can you please append a CV or give us some brief biographical details so that we can see why your opinion of the book you wish to review might be of particular relevance to our readers.

A quick reminder: while book reviewers are permitted to keep each book once it has been reviewed, if for any reason you are unable to review it within a relatively short time we will be asking you to return it at your own expense so that we can give it to another reviewer.

This batch of books on offer is as follows:

Law, Human Agency and Autonomic Computing: The Philosophy of Law Meets the Philosophy of Technology.
Editors: Mireille Hildebrandt and Antoinette Rouvroy.
Publisher: Routledge (a GlassHouse Book)

"Law, Human Agency and Autonomic Computing interrogates the legal implications of the notion and experience of human agency implied by the emerging paradigm of autonomic computing, and the socio-technical infrastructures it supports. The development of autonomic computing and ambient intelligence – self-governing systems – challenge traditional philosophical conceptions of human self-constitution and agency, with significant consequences for the theory and practice of constitutional self-government. Ideas of identity, subjectivity, agency, personhood, intentionality, and embodiment are all central to the functioning of modern legal systems. But once artificial entities become more autonomic, and less dependent on deliberate human intervention, criteria like agency, intentionality and self-determination, become too fragile to serve as defining criteria for human subjectivity, personality or identity, and for characterizing the processes through which individual citizens become moral and legal subjects. Are autonomic – yet artificial – systems shrinking the distance between (acting) subjects and (acted upon) objects? How ‘distinctively human’ will agency be in a world of autonomic computing? Or, alternatively, does autonomic computing merely disclose that we were never, in this sense, ‘human’ anyway? A dialogue between philosophers of technology and philosophers of law, this book addresses these questions, as it takes up the unprecedented opportunity that autonomic computing and ambient intelligence offer for a reassessment of the most basic concepts of law".

Further details can be obtained from the book's web page here.

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Cyberspace Law Censorship and Regulation of the Internet
Editor: Hannibal Travis.
Publisher: Routledge

"This book explores what the American Civil Liberties Union calls the "third era" in cyberspace, in which filters "fundamentally alter the architectural structure of the Internet, with significant implications for free speech." Although courts and nongovernmental organizations increasingly insist upon constitutional and other legal guarantees of a freewheeling Internet, multi-national corporations compete to produce tools and strategies for making it  more predictable. When Google attempted to improve our access to information containing in books and the World Wide Web, copyright litigation began to tie up the process of making content searchable, and resulted in the wrongful removal of access to thousands if not millions of works.  

Just as the courts were insisting that using trademarks online to criticize their owners is First Amendment-protected, corporations and trade associations accelerated their development of ways to make Internet companies liable for their users’ infringing words and actions, potentially circumventing free speech rights. And as social networking and content-sharing sites have proliferated, so have the terms of service and content-detecting tools for detecting, flagging, and deleting content that makes one or another corporation or trade association fear for its image or profits. The book provides a legal history of Internet regulation since the mid-1990s, with a particular focus on efforts by patent, trademark, and copyright owners to compel Internet firms to monitor their online offerings and remove or pay for any violations of the rights of others".

Further details of this book may be obtained from its web page here.

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The Art Collecting Legal Handbook,
Editors: Bruno Boesch and Massimo Sterpi
Publishers: Sweet & Maxwell

"Collecting, preserving and promoting cultural goods, whether fine art, archaeological objects or decorative arts, is now global. Oddly, rules and practices have remained very local, save for ICOM’s efforts at the institutional level and UNESCO’s endeavours to help preserve national cultural heritage and combat illicit trafficking.

This book is designed to help the collector and their advisers navigate the maze on an international level. Each chapter of The Art Collecting Manual addresses a number of issues from the perspective of a different jurisdiction to help collectors making errors that could be potenitally illegal. The format of the chapters follow a question and answer style thus enabling readers to make quick and accurate comparisons in multiple jurisdictions covering property law, insurance, customs, tax, inheritance, intellectual property and more".

Further information concerning this book can be obtained from its web page here.

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Pharmaceutical Innovation, Competition And Patent Law: a Trilateral Perspective
Editors: Josef Drexl and Nari Lee
Publisher: Edward Elgar

"Public health, safety and access to reasonably priced medicine are common policy goals of pharmaceutical regulations. As both the context for innovation and competitive structure change, industry actors dynamically challenge the balance between the incentive for protection and the achievement of those policy goals.

Considering the arguments from the perspectives of innovation, competition law and patent law, this book explores the difficult question of balancing protection with access, highlighting the difficulties in harmonization and coordination. The contributors to this book, including academics, judges and practitioners from Europe, the US and Japan, explore to what extent patent strategies and life-cycle management practices take advantage of patent laws and health-care regulation and disrupt the necessary balance between incentives for innovation and access to affordable medicine and health care".

Further details of this book may be obtained from its web page here.

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Copyright and Mass Digitization
Authors: Maurizio Borghi and Stavroula Karapapa
Publisher: Oxford University Press

"Mass digitization of texts, images, and other creative works promises to unprecedentedly enhance access to culture and knowledge. With the electronic 'library of Alexandria' having started to materialize, a number of legal and policy issues have emerged. The book develops an extended conceptual account of the ways in which mass digital projects challenge the established copyright norms through the wholesale copying of works, their storage in cloud environments, and their automated processing for purposes of data analytics and text mining. As individual licensing is not compatible with the mass scale of these activities, alternative approaches have gained momentum as effect of judicial interpretation, legislative initiative and private-ordering solutions.".

Further details of this book may be obtained from its web page here