Subscribe: The IPKat - supporting prudent IP use
Added By: Feedage Forager Feedage Grade A rated
Language: English
article  case  court  directive  intellectual property  law  mark  marks  national  new  protection  registered  trade mark  trade 
Rate this Feed
Rate this feedRate this feedRate this feedRate this feedRate this feed
Rate this feed 1 starRate this feed 2 starRate this feed 3 starRate this feed 4 starRate this feed 5 star

Comments (0)

Feed Details and Statistics Feed Statistics
Preview: The IPKat - supporting prudent IP use

The IPKat

Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpe

Last Build Date: Thu, 22 Mar 2018 21:54:44 +0000


National and EU text and data mining exceptions: room for coexistence?

Thu, 22 Mar 2018 13:08:00 +0000

If only all mining activities were these cheerful!A few days ago this blog reportedthat Irish Government has recently proposed the introduction into Irish law (new section 53A of the Copyright Act) of a copyright exception for text and data mining (TDM).From an EU standpoint, the most interesting aspects of the Irish proposal are probably the following:First, its timing: while it is true that a TDM exception was first proposed in the 2013 Modernising Copyright Report, an actual initiative of that Member State's Government comes at a time when discussion is well underway to introduce a mandatory TDM exception at the EU level [Article 3 of the Proposal for a Directive on copyright in the Digital Single Market - on the EU proposal see further here and here]. Secondly, the different scope of the Irish exception [which would be derived from Article 5(3)(a) of the InfoSoc Directive] and the EU exception, in the sense that the former – while only allowing non-commercial TDM – would not limit the catalogue of beneficiaries. The EU exception – at least in the version proposed by the EU Commission - would instead be available to ‘research organisations’.Following the publication of the IPKat post, I have engaged in some discussions on whether and to what extent national TDM exceptions – having a different scope from the EU one – would survive after the introduction of an EU exception. Another question would be whether EU Member States could continue to rely on Article 5(3)(a) of the InfoSoc Directive to introduce their own TDM exceptions following the introduction of an EU exception.These questions do not have an easy answer, especially if one looks at the text of the directive as originally proposed by the EU Commission.Dreaming of freedom ...The Commission’s versionArguably, the text of the original Commission’s proposal does not leave room for national TDM exceptions.If in fact one looks at Recital 5, the goal seems to be one of maximum harmonization, in the sense that other directives – including the InfoSoc Directive and its TDM exception under the umbrella of the research exception – would only apply to “uses not covered by the exceptions or the limitation provided for in this Directive [ie the Directive on copyright in the Digital Single Market]”. This might mean that, as the new directive covers TDM, there will be no room for national transpositions of Article 5(3)(a) of the InfoSoc Directive to allow TDM that bypass the Directive on copyright in the Digital Single Market. This conclusion appears reinforced if one also considers Recital 14, which highlights the shortcomings of TDM exceptions rooted within the InfoSoc Directive alone.The Council’s latest versionHowever, things may be different if the version of the EU TDM exception eventually adopted was the one most recently proposedby the Council. In fact, in this version (which would appear the last instance in which the Council has touched upon TDM), what is interesting is the wording of Recital 5 and Article 17.First, Recital 5 states that “[t]he exceptions and limitations existing in Union law should continue to apply, including to text and data mining, education and preservation activities, as long as they do not limit the scope of the mandatory exceptions laid down in this Directive and on condition that their application does not adversely affect nor circumvent the mandatory rules set out in this Directive”. This would suggest that national TDM exceptions could survive after the adoption of this new directive, as long as certain conditions are satisfied. In a way, this solution appears to have points of resemblance with the grandfather clause in Article 5(3)(o) of the InfoSoc Directive.... and freedomArticle 17(2)(b) requires that the InfoSoc Directive is amended, to the effect that exceptions adopted pursuant to Article 5(3)(a) will be without prejudice to the exceptions and the limitation provided for in the new directive … including TDM. This might suggest that, even after the in[...]

Courts continue to struggle to find appropriate forms of injunctive relief when social media is involved: Frank Industries versus Nike

Thu, 22 Mar 2018 09:06:00 +0000

Social media offer new opportunities for trademark owners to contact and engage consumers.  At the same time, alleged unauthorised uses of trademark by third parties in social media threads have become more and more frequent. In an attempt to control and limit the damage, rightsholders apply for injunctive relief, presenting the courts with the difficult task of balancing between the protection of a registered trademark and the irreparable damage that might result from erasing social media threads in connection with the alleged infringer.  The case at hand, Frank Industries v. Nike Retail [2018] EWCA Civ 497 , in addressing the alleged unauthorised use of the registered trademark LNDR (UK and EU mark) owned by Frank Industries (FI), by Nike UK, provides an excellent example of this tension. Both companies design and sell sportswear. Nike launched an advertising campaign to promote its brand to Londoners, under the slogan “Nothing beats a Londoner”. During the campaign, Nike used the marks LDNR and LNDR as forms of abbreviation for the slogan. The campaign was launched in the beginning of January 2018, and already on 26 January 2018, FI's solicitors wrote to Nike, complaining that the sign was infringing the registered mark.  Nike carried on using the sign, and the following week it proceeded to launching a video using the signs on YouTube.  FI began proceedings against Nike, alleging both trade mark infringement and passing off seeking also both an injunction restraining Nike from infringing the marks and from passing off and an order for delivery up or destruction on oath of infringing material. Preliminary injunctions ruling On 22 February 2018, FI applied for an interim injunction, which  was granted on  2 March 2018 by the High Court of Justice ([2018] EWHC 424 (IPEC). Paragraph 1 of the order was a restraining order while paragraph 2 was a mandatory order requiring Nike, by 4 p.m. on 16 March 2018, to take all reasonable steps to delete the signs LDNR, LNDR, LDNER and LNDER from social media accounts within its reasonable control, including Twitter, Facebook, Instagram and YouTube.  The scope of the interim injunction is for a period of four months (taking into consideration that the trial date is set for the 12th of July 2018). The ruling of the High Court was appealed and the Court of Appeal ruling came on the 13March 2018.Lord Justice Lewison considered the steps followed by the High Court in ruling on the preliminary injunction (see paragraph 10 of the High Court judgement): "Following the sequence set out by Lord Hoffmann, I must consider the following matters in deciding whether to grant an interim injunction.  One, whether the damages will be an adequate remedy for the claimant; if so, no injunction should be granted.  This must be on the assumption that the defendant is good for the damages: See American Cyanamid at page 408. Two, whether there is a serious question to be tried; if not, no injunction should be granted.  Three, if the answers to one and two are no and yes, respectively, whether the cross‑undertaking in damages would provide the defendant with an adequate remedy if an injunction were granted; if yes, the injunction should be granted.  Four, if there is a risk of irreparable harm both ways, the court must go on to assess the balance of irreparable harm in order to determine whether granting or withholding the injunction is more likely to cause the greater irremediable prejudice overall.  Five, among the non‑exhaustive list of matters which the court may take into account are (a) the nature of the prejudice to the claimant if no injunction is granted and the nature of the prejudice to the defendant if an injunction is granted; (b) the likelihood of the prejudice in each case occurring; (c) the extent to which the prejudice may be compensated by an order of damages, or by the cross‑undertaking; (d) the likelihood of either party being able to satisfy such an award; and (e) the court's[...]

Controversy looming for this year's pre-EQE

Wed, 21 Mar 2018 20:51:00 +0000

The pre-examination European Qualifying Examination ("pre-EQE") was introduced in 2012 as an entrance exam to the main EQE for European Patent Attorneys. Only after passing the pre-EQE is a European patent attorney trainee allowed to enroll for the Main Exam. Controversy over the pre-EQE is not new. In previous years, candidates have successfully appealed to the disciplinary board of appeal (DBA) against their result on the grounds that the answers to some of the questions were ambiguous (D3/14). This Kat has been alerted to the fact that, this year, the questions for the pre-EQE were particularly ambiguous, setting the stage for the greatest pre-EQE controversy so far. UPDATE: The pre-EQE results have now been released, see here.  The Examiner's report can be viewed here. 2018 pre-EQEThe pre-EQEThe pre-EQE is a multiple choice exam, with 20 questions, each question having 4 statements for which candidates must indicate true or false. A complicated marking scheme dictates that for each question: 4/4 = 5 marks, 3/4 = 3 marks, 2/5 = 1 mark, and 1/5 = 0 marks. The complicated mark scheme highly rewards getting all of the statements within a question right, or equivalently, heavily penalises one mistake in a question. The pass mark is 70/100. The paper is divided into two sections, legal questions and claim analysis. The claim analysis section deals with issues of clarity, added matter, novelty and inventiveness with regards to a series of claim sets, amendments and prior art documents.  It may seem odd to those used to EP patent application prosecution, that claim analysis may be reduced to mere true or false statements. Deciding on the closest prior art and inventiveness without the opportunity to argue your point can feel, at times, unfair. At the very least, it is hoped that the issues presented in the exam should be fairly clear-cut and unambiguous. To complicate matters, the pre-EQE may be taken in English (EN), French (FR: "Examen préliminaire") or German (DE: "Vorprüfung"), for which there are corresponding versions of the paper. It is intended that the answers to the EN, FR and DE papers are identical. Every year, DeltaPatents provides their model solution to the pre-EQE (EN version) before release of the official mark scheme. In recent years, the German Plattform für den Gewerblichen Rechtsschutz (GG-IP) has also been providing model solutions (DE version). It has become customary for candidates to check their solutions with these model answers before the release of the official mark scheme and results. In 2017, the DeltaPatents solution was identical to the official solution.ControversyGiven the subject-matter and format of the exam, it is perhaps not surprising that the pre-EQE has already been beset by controversy. In 2015, following successful appeal by a candidate to the disciplinary board of appeal (DBA), the EPO published an Addendum to the 2015 pre-EQE, in which it was decided to a award marks for either True or False for 2 statements in Question 15 and 17 respectively. After some initial uncertainty, the marks of candidates who did not file an appeal, but who would have passed in light of the changes, were upgraded (IPKat here and here).This yearThe 2018 pre-EQE (EN, FR and DE) took place at the end of last month. This Kat has been alerted by colleagues to a worrying disparity between the solutions provided by GG-IP and DeltaPatents this year. Particularly, the GG-IP and DeltaPatent model answers differ on 5 points, corresponding to an alarming 10 marks (out of 100), (for comparison, last year's GG-IP solution differed from the DeltaPatents solution on 2 statements, corresponding to 4 marks out of 100). The complicated mark scheme of the pre-EQE causes ambiguity in a few statements to have a disproportionately large impact on a [...]

The 5 Pointz case: a response (on the risk of cultural gatekeeping in copyright)

Tue, 20 Mar 2018 18:43:00 +0000

The piece of (street) artwork at stake in the '5 Pointz' caseThe recent decision in the 5 Pointz case [here] has brought back to centre stage one of the quirks of US copyright law: the right to object to any intentional or grossly negligent destruction of works of ‘recognized stature’ (US Code, Title 17, §106). As explained by Katfriend Mira Sundara Rajan in a recent commentary of the case [here], this right was introduced by the 1990 Visual Artists Rights Act (VARA) under the umbrella doctrine of moral rights (although this right goes beyond what the moral right doctrine traditionally entails).  From one vantage, the decision is to be welcome, inasmuch as  it protects a notable piece of street art [per the court  and mainstream media, here and here], thereby  enabling the preservation  of more contemporary forms of our cultural heritage. However, this Kat has some reservations regarding the ability of the IP law framework to embrace such a role. In particular, who determines what is ‘recognized stature’ and under criteria is it determined? The answer: mainly as the court decides (read: judges), for the simple reason that Congress offered little in the way of definition or guidance on this point [see Cheffins at 600]. This places US judges in the difficult position of acting as cultural gatekeepers, given that they have the final say as to what is worthy  of such protection.Judges themselves have noted  the challenge in being asked to rule on the protection of works of recognized stature [see Martin v City of Indiana(1999) ; Cheffins v Stewart(2016)]. This is especially so in that  they are called upon to render judgment on an issue in which they are not expected to have any  necessary expertise, namely, when is a work of "recognized stature”. Some may argue that a concern about judges serving as cultural gatekeepers is allayed by the fact that the context is unique to US law and it is an unusual form of moral right. Moreover, since few decisions are actually rendered under this provision, this risk of cultural gatekeeping is well-contained. However,  in this Kat’s view, this it is not the only occasion in which judges are in the position of playing the part of cultural gatekeepers. After all, copyright law applies selectively to prescribed categories, and only these categories, of original creative works in a fixed form – conditions which are themselves culturally-bounded [hereand here]. Furthermore, once copyright subsists in a work, it provides a platform to control its dissemination, thereby fundamentally impacting on the nature of our cultural landscape. Right holders, artists and their heirs can even pursue claims bordering on strategies of ‘heritage preservation’ or ‘heritage safeguarding’, either through the moral right doctrine of integrity, or the economic right to control some most derivative works, and of course, the US right to object to the destruction of works of recognized stature. Cultural gatekeeping thus can be seen as underpinning almost every aspect of copyright long before the right to object to the destruction of works of ‘recognized stature’ was introduced in the US. Thus, the larger question is how to make sure no (or limited) cultural gatekeeping takes place there? First, we do so by reiterating  that copyright law does not deal with cultural quality or aesthetic considerations, something both commentators and  judges in various jurisdictions (including in the US) have often emphasised [see Gracenat 304; Schott Musik (1997) 145 ALR 483, 486, Hensher v Restawile (1974) 2 All ER 420, 423]. In many ways, eschewing any consideration of cultural or aesthetic quality is one of the main safeguards within copyright law to prevent cultural gatekeeping. Indeed, judges have been vigilant not to behave as art critics [see Bleinsteinat 251]. When they have, they have been corrected thanks to the appeal mechanism, i.e. corrective mechanisms[...]

Never Too Late: if you missed the IPKat last week!

Tue, 20 Mar 2018 17:00:00 +0000

The 186th edition of the IPKat’s news roundup.DesignsKat friends Nina O’Sullivan and Victoria Wilson reported on the 2017 key design cases brought before both the EU and the UK’s courts in The best and the brightest: key UK and EU design decisions from 2017.Speaking of key decisions, following the DOCERAM v CeramTec CJEU judgement (C-395/16), Kat friend Alexander Haertel discusses the decision in detail and its possible repercussions in German design law on the brink of change following yesterday's CJEU decision in DOCERAM v CeramTec.CopyrightA few months back, the IPKat reported on the adoption of an administrative enforcement model in Greece. Now the law has come into force and Kat friend Theodoros Chíou gives a detailed overview of the system in Greece: new notice and take down administrative mechanism for online copyright cases now in force.Frida KahtoA new type of authors' organization: an exclusive interview with the Executive Director of Authors Alliance. The IPKat, through the pen of Kat Neil, had the pleasure of engaging in a written interview with Brianna Schofield, the Executive Director of the Authors Alliance, which represents the interests of authors wanting to take advantage of digital opportunities.Can Mattel be prevented from making its own Frida Kahlo Barbie doll? Mattel has launched the “Inspiring Women Series” of Barbies, which counts on its ranks also the 11 1/2 version of Mexican artist Frida Kahlo, but this decision, and especially the appearance of the doll, were not well-received by everyone. Kat Eleonora discusses whether an image right’s infringement claim by the Frida Kahlo Corporation would have legal ground under Mexican law. Does 5 Pointz, a.k.a. the “world’s largest open-air aerosol museum”, fulfil the standard of recognized stature? The almost 30 year old site has been at the centre of a legal battle after it was whitewashed overnight. Kat friend Mira T. Sundara Rajan in The 5 Pointz case: Should works of art be protected from destruction? If you are interested in the protection of graffiti, you might enjoy reading thisIPKat post.9th Circuit ‘slam-dunks’ claim of copyright infringement by Nike photograph of Michael Jordan and ‘Jumpman’ logo: the story behind the legendary Jordan’s silhouette and the legal dispute which followed. GuestKat Nedim reports.Kat Mirko discusses how loses to German publisher and is found liable for damages. is an online database of free e-books, following US copyright law. The books, however, could be translated into German among other languages and, after doing the math on the difference in copyright terms in the two jurisdictions, did not end up well for the website.PatentsAIPPI UK Event Report: Registration, notice and infringement - is certainty an illusion? Kat friend Lucie Fortune fought the cold to attend the latest AIPPI UK event and kindly reported on it for us.Rare as an Ojos Azules KatShould you register your exclusive patent licence with the UK IPO? Well, it would be better, as illustrated by the case L'Oréal v RN Ventures: exclusive licence registration and costs recovery. GuestKat Eibhlin reports.They are rare but their occurrence in nature has been reported from time to time: the Eighth Granted Petition for Review was obtained before the EPO. Intern Kat Rose discusses its intricacies.In Memoriam Trevor Baylis: the life-saving wind-up radio and the precarious lot of the sole inventor. On March 5th, the inventor, sportsman, stuntman and underwater escape artist passed away at the age of 80. In his post, Kat Neil remembered Mr. Baylis’ life and accomplishments.Weekly Roundups: Monday MiscellanyPREVIOUSLY ON NEVER TOO LATENever Too Late 185 [week ending 4 March] Exclusive interview with Johanne Bélisle, Chief Executive Officer of the Canadian Intellectual Property Office| Patents and the Fourth Industrial Revolution. What indications for the future on the basis of [...]

Book Review: Certification and Collective Marks

Tue, 20 Mar 2018 12:13:00 +0000

Katfriend Alex Mogyoros is a doctoral student at the University of Oxford, St. Peter’s College. Her research focuses on trade marks and certification marks, and is supported by a Canadian Social Sciences and Humanities Research Council Doctoral Fellowship. She has kindly provided us with a review of Belson's Certification and Collective Marks: Law and Practice : Jeffrey Belson’s book is a very welcome and highly needed contribution to trademark law scholarship. Certification and collective marks are an often-overlooked area of trademark law. They have been described as “shy beasts” [i]that “cast almost no shadow.” [ii] So it is perhaps not surprising that little has been written on the subject. For those new to this exotic area of trade mark law, certification marks and collective marks are special forms of trade marks, often regulated under trade mark legislation, but distinct from ordinary trade marks. Certification marks indicate that the goods or services bearing that mark are certified as meeting a particular set of standards or have certain characteristics or qualities. Collective marks, as Belson explains, are marks that generally function as a sign of membership, such as association with a trade or industry association.This book is the second edition of Belson’s earlier book entitled Certification Marks: Law and Practice published in 2002, and is likely the only major treatise that has been written on the subject in the last 15 years. This book will be of particular interest to those who were keen to see the recent introduction of the EU Certification Mark. In keeping with the first edition, Belson offers a comprehensive and mostly descriptive account of the law concerning certification and collective marks. It is self-described as a “wide-scope, research-based treatment of both the historical development and present state of applicable laws and policies,” and the book more than lives up to its promise. In eight chapters, Belson is able to bring a lot of clarity and insight to this topic. He positions the law of certification and collective marks in its historical context (Chapter 1), explores the statutory and doctrinal aspects of these legal entities (Chapters 3-5), and consider their application and use in practice – namely in regulation and standard setting, the use of ecolabels and the authentication marking of digital products (Chapters 6-8). His increased focus on collective marks, and focus on ecolabels (those signs that indicate a product is environmentally friendly) are two of the contributions to this new edition that stand out. His chapter on ecolabels (Chapter 7), which Belson defines as “a voluntary sign, used on or with products, to represent that the product causes significantly reduced harm to the environment) is of particular interest given the growing prominence of such signs, and the increased value sustainable and environmentally friendly brands enjoy. Belson takes a broad approach to ecolabels, considering the legal status and typology of these signs, and the different intellectual property rights that may be engaged by their use. It would have been interesting to see a more focused examination of how ecolabels challenge traditional understandings of certification marks – especially, as Belson notes, some ecolabels are registered as trademarks and others as certification mark. Even still, Belson aptly identifies the different moving parts that are engaged where ecolabels are used, such as the trust consumers need to have for an ecolabel’s message, so these marks can be relied on to ultimately generate a positive environmental impact. Kats love napping readingWhile this book does put forward original arguments on the issues raised by the law of certification and collective marks, these arguments are at times obscured by the thorough and rigorous account of the law. Nevertheless, Belson undoubt[...]

Swedish Supreme Court says that painting based on photograph is new and independent creation and hence … non-infringing

Mon, 19 Mar 2018 17:41:00 +0000

Mr Lemberger's picture (left) and Mr Andersson's painting (right)Exhausted after several days of intense work, I (finally) afforded the luxury of watching some TV. Zapping my way through the channels, I stumbled upon something called “Domstolen” (ENG: “The Court”), a reality TV-show in the form of a reportage, based on somewhat recent court cases and judicial developments in Sweden. Just as I was about to zap away to the next channel there appeared a case concerning copyright infringement.The case reported is colloquially known as Swedish scapegoats – a case from 2017 that made all the way up to the Swedish Supreme Court, and concerned a copyright dispute between the author of a close-up photograph and the author of a painting that was based on that photograph.Markus Andersson is a Swedish artist who primarily paints images in oil and watercolor. In 2006 he was invited to exhibit his oil paintings at the Moderna Museet in Stockholm(The Museum of Contemporary and Modern Art). Mr Andersson exhibited a number of oil paintings of Swedish people, represented as scapegoats (a scapegoat is someone that is used to lay the blame on for all that goes wrong). Amongst others, there was a painting depicting the prosecuted – but subsequently freed of charges – Christer Petterson,ie the alleged murderer of former Swedish Prime Minister Olof Palme. The portrait used as a basis for the painting of Christer Pettersson was a photograph by Jonas Lemberg. Mr Lemberg had followed and photographed Christer Petterson for a few days in 2005. One of the photographs taken by the Mr Lemberg was a close-up portrait of Christer Petterson that was consequently circulated on Swedish media. The painting The painting used dull colours in a rugged landscape and – compared to the photograph - featured a goat depicted in the upper right corner in the background. A photograph of the painting was subsequently uploaded onto Mr Andersson’s website and also sold in poster format.When finding out about the painting, Mr Lemberg claimed that the artist had infringed the copyright in his close-up portrait of Mr Christer Petterson. The District Court and the Court of Appeal’s decisionsThe Solna District Court held that, because main focus of the painting was Christer Petterson, which was also the case in the close-up photograph, the painting could not be considered a new and independent work, but rather an adaptation of the original work. This was the case despite the alteration of the environment, such as the dull colours, the rugged landscape and the goat.  The Court of Appeal, however, held that the painting could not be regarded as an adaptation of the close-up portrait but rather as a new and independent work. In the Court of Appeal’s judgment it is stated that “the face of Christer Petterson has … been highlighted and the face seems less angular than in the photograph. In addition, the colours in the painting are more subdued and adapted to the background, which also causes some differences in how the light falls over the face”. The Swedish Supreme CourtThe main issue subsequently raised before the Swedish Supreme Court was whether the work in question should be regarded as an adaptation of the photographer’s existing work or rather as a new and independent work. According to 4 § of the Swedish Copyright Act (SCA), a person who has made an adaptation of a work or shall have copyright in the work in the new form, but the right to exploit it shall be subject to the copyright in the original work. Hence, the exclusive rights of the author of the adaptation would be dependent on the original photographer’s rights. The former would therefore not be allowed to dispose of the painting by, for example, making copies of it without obtaining the prior approval of the original copyright owner. If however the work was regarded as an independent work, the artis[...]

Will trade mark law stop Marine Le Pen’s new campaign?

Mon, 19 Mar 2018 16:28:00 +0000

Marine Le Pen, current leader of 'Front National'Last week, Marine Le Pen, leader of the political party National Front (‘Front National’), announced the re-branding of her party, following a defeat in the latest presidential elections in France. A new name, a new team, and a new programme, are all on the cards. The National Front is now to be called ‘Rassemblement national’ (read: National Rally). The objective is to ‘soften’ the image of the National Front, and thereby to distance the party from its tumultuous past (hereand here). Ironically, perhaps, this is not the first time that the name ‘National Rally’ has featured as the name of a national party. Indeed, it had already been used by a collaborationist party known as ‘National Popular Rally’ (‘Rassemblement National Populaire’), founded in 1941 by Marcel Déatduring the period of Vichy France (through 1945) (here). Evidence of prior use of the phrase 'National Rally' by the National Front in the 1986 electionsIn fact, the phrase ‘National Rally’ had already been used by her father (Jean-Marie Le Pen) back in 1986 (here), and Marine Le Pen claimed that the party had registered it as a trade mark with the French Intellectual Property Office. However, there  does not appear to be any evidence that any such application was ever filed on the behalf of the National Front or its key members (past or present), much less than it was ever registered or renewed. That said, the French Intellectual Property Office (INPI) advised the press (here) that it is still checking whether an application was indeed filed back in 1986.'RN Rassemblement National'  (National Rally) mark purchased by the 'Front National' from Mr BigratAs for the new brand, a number of registrations for similar signs, owned by other right holders and in other classes of goods and services, appear on the INPI registry (here). For example, the INPI records show that the ‘Rassemblement national Nin-Jutsu’ (read: National Gathering of Nin-Jutsu) used by an association dedicated to the martial arts is registered (here) and already in use (for the classes 16, 25, 28, 41). There is one registered mark, using the exact same phrase for the purposes of an (apparent) political association, that might have prevented the National Front from using its new brand. However, contrary to what was reported online, the ‘National Front’ was able to purchase this mark from its right holder, Mr Frederick Bigrat, on 22 February 2018, and it can be expected that the records of the French Intellectual Property Office will indicate the re-assignment of the mark soon. As such, the apparent controversy on the ownership of the trade mark, which occupied the national press for the best part of last week, had in fact been resolved before it even started. Having said that, commentators (hereand here) have rightly noted that the other right holders may still file an opposition or pursue other proceedings to prevent a claimed risk of confusion following the renewed attention given to the mark by the National Front.[...]

Unlawful street art used in a promotional campaign: H&M withdraws its complaint

Sun, 18 Mar 2018 13:50:00 +0000

The H&M advertisementStreet art and copyright have been increasingly at the centre of attention. Katfriend Angela Saltarelli (Chiomenti) reports on a case that was initially brought by H&M against a street artist and – nearly as fast as the creations of fast fashion-focused businesses -  has been now settled.Here’s what Angela writes:“H&M, the famous Swedish fast fashion retailer, sued on March 9 last an LA-based graffiti artist, Jason “Revok” Williams, before the US District Court for the Eastern District of New York, requesting a court order that would enable the company to use Revok’s artwork in the background of its new men’s sportswear campaign called “New Routine”, without paying any royalty. Before the lawsuit, on January 8, 2018 the street artist had sent H&M a cease and desist letter, complaining about the unauthorized use of his artwork in the fashion retailer’s new campaign, requesting compensation for copyright infringement, negligence and unfair competition. H&M reverted back to Revok’s letter with this complaint, arguing that the graffiti was unlawful and constituted mere vandalism. The retail giant claimed that the making of an illegal act, including criminal trespass and vandalism to the detriment of property of New York City, would entail that the artist does not own any enforceable copyright on his work. On a subsidiary basis, H&M stated that its production team for the campaign went to the New York City Department of Parks and Recreation (“DPR”) to request whether it needed to pay royalties for using the graffiti images as part of its campaign. H&M stated that DPR confirmed that the company should not pay anything. This case created in few days a heated debate in both the legal and artistic community [see, eg, here]. As to legal debate, some commentators have held the view that the US Copyright Act does not make any difference between artworks that have been legally created and those which have not, only requiring the work to be original and created on a fixed medium. On the other hand, others have submitted that illegal artworks are not copyrightable, because they fail to promote the progress of science and useful arts, as stated in the US Constitution.  As to the artistic community, street artists lashed out at H&M harshly over the past few days … so much that last Friday H&M announcedvia Twitter to have withdrawn the court complaint, saying that it “respects the creativity and uniqueness of artists, no matter the medium. We should have acted differently in our approach to this matter. It was never our intention to set a precedent concerning public art or to influence the debate on the legality of street art.”H&M announced also that they contacted Revok to find an amicable solution.The legal debate over copyright protection of street art created in conditions of unlawfulness remains therefore open.”[...]

Friday Fantasies

Fri, 16 Mar 2018 14:25:00 +0000

IPKat is here with your weekly update of IP news and events! This week we have news of the ratification of the Hague Agreement by the UK, a new IP inclusive group and a number of seminars and events on copyright reform. UK ratifies the Hague AgreementThe UK has ratified the Hague Agreement Concerning the International Registration of Industrial Designs. The agreement will come into force on 13th June 2018. Since 2008, it has been possible to achieve design protection for the UK through the Hague system via the EU’s membership. UK ratification of the Hague Agreement will allow access to the UK as a contracting party in its own right.  Changes in New ZealandAmendments to the New Zealand Patent, Design and Trade Mark Regulations have recently been notified. The amendments include changes to micro-organism deposit requirements for patent applications and changes to the extension of time provisions for filing a counter-statement in patent revocation proceedings. See the recent statement on the changes from the New Zealand Intellectual Property Office for further details. IP InclusiveLast month Baker McKenzie hosted IP & ME’s inaugural event, which went ahead in defiance of "The Beast from the East". The theme of the event was Chinese New Year and the speakers were Jenny He (IBM) and Gabriel Goh (Taylor Wessing). Attendees learned about Chinese New Year and how it is observed by businesses in China and other countries. Maneki NekoNext month will see the launch of IP Inclusive's new initiative Careers In Ideas. The launch party will be held at the Royal Society of Medicine on Tuesday 10th April 2018. See more details on the IP Inclusive Blog. Careers in Ideas aims to raise awareness of all types of jobs within the IP sector, from those suitable for school-leavers to those that require further education. IP Strategy SurveyAISTEMOS is a London based IP data analytics company. They are currently conducting a survey on IP strategy, focusing on the impact of disruptive technologies, such as blockchain and AI, on the attitudes to IP within organisations. See here to participate in the survey. AISTEMOS's report on their IP strategy survey last year can be found here. The IV Edition of More Than Just A Game (MTJFG) will focus on Culture, Identities, Freedoms & Artificial Intelligence, and will be held on Thursday 5th to Friday 6th April 2018 at Ironmongers Hall, Shaftesbury Place, London EC2Y 8AA. The focus will be on the impact of "AI and Immersive Technologies on Interactive Entertainment and our Culture, Identities and Freedoms". During the two days of the conference, leading international academics, publishers, lawyers, industry experts and policymakers will discuss a wide range of legal and regulatory topics, including Intellectual Property Law, Technology, Content & Communities Regulation, Data Protection and Privacy, E-sports and Streaming, Monetisation Regulation and Loot Boxes. The full programme and registration can be found here. EU copyright reformGeo-blocking is the practice of restricting or denying access to certain services or content outside a specified territory. As part of the Digital Single Market Strategy, the Council of the European Union recently adopted the EU Anti-Geoblocking Regulation, now published. See more on the history of the EU's approach to geo-blocking here, here and here.COMMUNIA is an EU project with the stated aim of advocating "for policies that expand the public domain and increase access to and reuse of culture and knowledge". Next week COMMUNIA is organizing a series of European Copyright Action Days in Brussels, in order to highlight "the b[...]

The protection of genetic resources, traditional resources and folklore 35 meetings later…

Fri, 16 Mar 2018 10:57:00 +0000

In a few days it  will be time for the next meeting (the 35th one in fact) of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. Between the 19th and the 23rd of March, the members of the Intergovernmental Committee will convene in Geneva to discuss issues related to the protection of traditional knowledge, genetic resources and traditional cultural expressions. (This body is a WIPO Intergovernmental Committee with the mandate to conduct text-based negotiations for the adoption of legal instruments for the protection of traditional knowledge, genetic resources and folklore). A quick review of the agenda reveals that the majority of issues that will be discussed are reports on the implementation of earlier decisions. Some of them are based on and refer to decisions that were adopted already in 2001. In addition to the usual agenda points concerning the accreditation of organisations, the participation of indigenous communities and the discussion on voluntary funding to enable their participation, this meeting will consider the following documents: GLOSSARY OF KEY TERMS RELATED TO INTELLECTUAL PROPERTY AND GENETIC RESOURCES, TRADITIONAL KNOWLEDGE AND TRADITIONAL CULTURAL EXPRESSIONS (read here) This 47-long page document includes a long list of definitions of key terms used with regards to the exploitation of traditional knowledge, genetic resources and traditional cultural expressions as well as those that concern mechanisms used in order to facilitate the fair and equitable sharing of the benefits arising thereof. The glossary is a revised and updated version of earlier documents with similar content. It is not a surprise that the glossary adopts definitions that have been previously used by other major international legal instruments, such as the Berne Convention, the FAO International Treaty on Plant Genetic Resources for Food and Agriculture and the (UNESCO) Recommendation on the Safeguarding of Traditional Culture and Folklore. Although 47 pages of glossary might seem nothing more  than an expression of exaggerated formalism, reaching consensus on the meaning of terms that are part and parcel of the structures for  providing adequate protection for traditional knowledge, genetic resources and folklore has proven a daunting task. As stated in the document, even the fundamental term of “traditional knowledge” does not enjoy a definition that is acceptable by all. A disappointing statement one would say after over 17 years of negotiations. RESOURCES AVAILABLE ON THE WIPO TRADITIONAL KNOWLEDGE,  TRADITIONAL CULTURAL EXPRESSIONS AND GENETIC RESOURCES WEBSITE (read here) This document provides a review of available resources  on the WIPO website, databases, materials and information that may be accessed by visiting It also presents a series of available activities, such as seminars, workshops and publications. REPORT ON THE IMPLEMENTATION OF CLUSTER C ACTIVITIES (“OPTIONS ON MUTUALLY AGREED TERM S FOR FAIR AND EQUITABLE BENEFIT-SHARING”) (read here) This very short document confirms that the IGC Secretariat continues to work on the accessibility and further use of online contractual clauses and guidelines for the drafting and negotiation of benefit sharing agreements. Nothing new here, it is just keeping up with the previous contributions. REPORT ON THE  COMPILATION OF MATERIALS ON DATABASES RELATING TO GENETIC RESOURCES AND ASSOCIATED TRADITIONAL KNOWLEDGE (read here) This document  includes a list of resources (documents developed   both by the Secretariat as well as such those that have been proposed by Member States), concerning the documentation of traditional knowledge and genetic resources as well as [...]

Spanish Supreme Court puts an end to a “sui generis” case concerning database “sui generis” right

Thu, 15 Mar 2018 16:25:00 +0000

(Probably) *Not* a database right-inspired bandThe Database Directive has been around for a while, yet it is arguable that one of its crucial aspects, this being the sui generis (database) right, has remained somewhat ambiguous.Katfriend David Serras Pereira (SPAutores) reports on a recent SPanish decision concerning indeed the sui generis right.Here’s what David writes:“A long time ago in a galaxy far, far away....The Database Directive was adopted in March 1996, and not so often we hear of national landmark decisions based on the national laws implementing the Directive, giving us clues on the best practices and guidance when dealing with databases cases.Quoting the IPKat’s last post (Technomed v Bluecrest) covering national “newsfeed” on this topic (here) “Database right is an infrequent visitor to the IPKat's pages”! Now, again, two medical industry players, offer reasons to highlight it again!How many times as the Article 7 sui generis right infringement resulted in EUR 5 million fine? None? Not anymore, Spanish judges have decided.In a very recent decision the Spanish Supreme Court (here) has dismissed an appeal for annulment and upheld the judgments issued by the lower courts which imposed a fine of EUR 5 million on IMS Health to be paid to Infonis for having copied the latter’s database.This decision puts an end to this case and shows a good and interesting approach to the sui generis right by Spanish judges in what looks like a landmark decision, especially if one takes into account the (ok… I’m tempted to use it here) “sui generis” amount of the damage award related to the “sui generis” right and the interesting evidence considered by the court.Article 7 of the directive states:“Member States shall provide for a right for the maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.” Spain has transposed this provision by means of Articles 133 - 137 of Real Decreto Legislativo 1/1996, de 12 de abril (here). The caseIn 2010, Infonis (a Spanish company) sued IMS Health claiming that the latter had infringed its database rights. Basically, Infonis claimed that ZBSales, its pharmaceutical marketing database, had been copied by IMS Health and resulted in the creation of a competing and suspiciously similar database (Sanibricks),INFONIS devoted three years to the making of ZBSales (a database tracing the health map of all the Spanish autonomous communities) which was presented to the pharmaceutical market in 2006. In the same year, a 10-year marketing agreement was also reached between Infonis and IMS Health. Yet 3 months later IMS was said to have put an end the agreement and extracted the data contained in Infonis database.Both at first instance and in appeal the claimant succeeded. Both courts found that INFONIS had made a substantial investment in connection with its database. What is interesting is also the evidence relied upon to prove infringement of the database right … Just don’t copycat the errors… they said…So, speaking of evidence, how have the courts reached the conclusion that there had been copying of the ZBSales database?By comparing the two databases (and analyzing more than 20.000 items as reported here) it was found that the Sanibricks database included the same errors of of the ZB Sales these being errors in the names of the basic health zones.It was found that it would very strange (impossible) that the exact same errors present on the claimant database, would be [...]

Infighting at Nigeria’s main collecting society – Powers of the sector regulator

Thu, 15 Mar 2018 16:24:00 +0000

Katfriend and AfroIP blogger Chijioke Ifeoma Okorie returns on a topic that has been increasingly at the centre of attention recently: collective rights management and collecting societies in Nigeria.Here’s what Chijioke Ifeoma writes:“At a meeting of the Board of Directors of the Copyright Society of Nigeria (COSON) held on 7th December 2017, COSON’s founding Chairman (Mr. Tony Okoroji) was removed and one of the founding Directors, Mr. Efe Omoregbe, appointed in his stead. A General Meeting involving COSON’s members (General Assembly) was held on 19thDecember 2017 and the members who attended the meeting reinstated Mr. Tony Okoroji as Chairman and appointed other Board members. Earlier this month, COSON instituted Suit No ID/4827/GCMW18seeking inter alia an injunction restraining Mr. Omoregbe from parading himself as Chairman of the Society.This post reviews the line of events from the perspective of the role of the Nigerian Copyright Commission (NCC), the sector regulator for COSON and other collecting societies in Nigeria.IssuesThe issue here is a dispute between members of the COSON Board and one that concerns the internal workings of COSON. There are no specific provisions in COSON’s Memorandum and Articles of Association regarding disputes arising in relation to the position of COSON Chairman. However, general provisions pertaining to the position of COSON Chairman and the powers of the General Assembly may be found in Articles 17, 36, 44 and 61 of COSON’s Memorandum and Articles of Association. COSON’s Memorandum and Articles may be obtained from the Corporate Affairs Commission (CAC) or from COSON itself.Article 17 is to the effect that the chairman of the management board is to preside as chairman at every general meeting of COSON. Article 36 stipulates that the business of COSON is to be managed by the Management Board and no regulation made by the COSON General Assembly is to invalidate the actions of the Board. Article 44 gives the Management Board to elect the COSON Chairman from amongst its director members and to determine the period for which such chairman is to hold officeWhere there is a dispute regarding which director shall be Chairman of the society, such dispute is one that exists between members of COSON and is within the purview of the NCC’s powers as sector regulator. This is because, by virtue of Regulation 2(3)(iii) of the Copyright (Collective Management Organisations) Regulations 2007(CMO Regulations) and Article 61 of COSON’s memorandum and articles of association, every member of the Management Board excluding the General Manager, is or must be a member of COSON itself.Powers of NCC in relation to the issues at stakeIn relation to disputes between members and/or disputes regarding the Management Board, the NCC may by virtue of the CMO Regulations:(a)  Order an audit of the accounts of the collecting society [Regulation 10].(b)  revoke the licence of a collecting society [Regulations 3 and 20(2)].(c)  serve a written caution to a collecting society [Regulation 20(1)].(d)  suspend the licence of a collecting society for 3 months [Regulation 20(2)].(e)   set up a dispute resolution panel [Regulation 15].Given the nature of the issues as described in the preceding paragraphs, appropriate provisions exist within the CMO Regulations that indicate that the NCC is aware of the resolutions reached at the various meetings. In terms of Regulation 2(3)(vi) of the CMO Regulations, Article 35 of COSON’s memorandum and articles of association provide for the NCC to have its representative as a non-voting member of the Management Board. Further, COSON is required to furnish the NCC with a report of all its meetings by virtue of R[...]

Does ‘Glen’ make you think of Scottish whisky? Advocate General Saugmandsgaard Øe does not think so

Thu, 15 Mar 2018 13:41:00 +0000

Scotch or not?‘Glen Buchenbach’ is the name of a whisky that is produced by the Waldhorn distillery in Berglen, situated in the Buchenbach valley in Swabia (Baden-Württemberg, Germany). The Scotch Whisky Association from Scotland (TSWA) took offence at the name and sued Mr. Klotz, the producer of the Whisky, in Hamburg, Germany. TSWA claims that use of the term ‘Glen’ infringes the registered geographical indication ‘Scotch Whisky’ and asserted a breach of Art. 16 (a) - (c) of the Regulation No 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.  Article 16 protects all the geographical indications registered in Annex III against practices liable to mislead the consumer as to the true origin of such products.The District Court of Hamburg saw itself confronted with an interesting situation: whereas past casesthat were decided by the CJEU involved product names or descriptions that included (part of) the protected geographical indication, in this case there is no similarity, whether phonetic or visual, between the disputed designation (‘Glen’) and the protected geographical indication (‘Scotch Whisky’). Yet, the disputed designation is allegedly liable to cause consumers to make an inappropriate connection with the protected geographical indication.This led the Hamburg court to stay the proceedings and to refer the following questions to the CJEU for a preliminary ruling (C-44/17):(1)      Does “indirect commercial use” of a registered geographical indication of a spirit drink in accordance with Article 16(a) of Regulation No 110/2008 require that the registered geographical indication be used in identical or phonetically and/or visually similar form, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?If the latter is sufficient: When determining whether there is any “indirect commercial use”, does the context in which the disputed element is embedded then also play a role, or can that context not counteract indirect commercial use of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?(2)      Does an “evocation” of a registered geographical indication in accordance with Article 16(b) of Regulation No 110/2008 require that there be a phonetic and/or visual similarity between the registered geographical indication and the disputed element, or is it sufficient that the disputed element evokes in the relevant public some kind of association with the registered geographical indication or the geographical area?If the latter is sufficient: When determining whether there is any “evocation”, does the context in which the disputed element is embedded also play a role, or can that context not counteract any unlawful evocation of the registered geographical indication, even if the disputed element is accompanied by an indication of the true origin of the product?(3)      When determining whether there is any “other false or misleading indication” in accordance with Article 16(c) of Regulation No 110/2008, does the context in which the disputed element is embedded play a role, or can that context not counteract any misleading indication, even if the disputed element is accompanied by an indication of the true origin of the product?’On February 22nd, Advocate General Saugmandsgaard Øe (AG) delivered his Opinion in the case. He concluded that the [...]

General Court confirms that ‘La Mafia se sienta a la mesa’ cannot be a trade mark on public policy grounds

Thu, 15 Mar 2018 10:49:00 +0000

Can ‘La Mafia se sienta a la mesa’ [‘se sienta a la mesa’ means ‘takes a seat at the table’] be registered as a figurative EU trade mark (EUTM) [see right] for a variety of goods and services in Classes 25, 35 and 43 of the Nice Agreement (including clothing and a restaurant chain) or would a registration of this kind be contrary to accepted principles of public policy and morality?This morning the General Court (GC) held that the latter is the correct approach in its decision in La Mafia Franchises v EUIPO, T-1/17.BackgroundIn 2006 an application for registration of the ‘La Mafia se sienta a la mesa’ in the Nice classes above was filed, and the trade mark was registered in 2007.In 2015 Italy filed an application with the EUIPO for a declaration that the contested mark was invalid in respect of all of the goods and services for which it had been registered. According to the Italian Republic this mark was contrary to what is now Article 7(1)(f) of Regulation 2017/1001 (public policy or accepted principles of morality).Italy submitted that the word element ‘Mafia’ refers to a criminal organisation and its use in the contested mark to designate a restaurant chain would: (1) evoke deeply negative emotions; (2) impair the positive image of Italian cuisine; and (3) trivialise this criminal organisation.In 2016 both EUIPO Cancellation Division and the First Board of Appeal of EUIPO sided with Italy and declared the trade mark invalid.La Mafia Franchises thus appealed the decision to the GC, but without success.Today’s decisionArguments of La Mafia FranchisesIn support of its action La Mafia Franchises maintained the view that:     First, neither the organisation known as Mafia nor its members are included in the list of terrorist persons and groups in the Annex to Council Common Position on the application of specific measures to combat terrorism, to which EUIPO’s examination guidelines refer for the purpose of illustrating the prohibition of registration of EU marks that are contrary to public policy.     Secondly, the fact that the mark refers to the word element ‘Mafia’ is not sufficient to conclude that it is perceived by the average consumer as intending to promote or support that criminal organisation. On the contrary, the other elements that make up that mark rather imply that it is perceived as a type of parody or reference to the Godfather series of films.     Thirdly, the goods and services covered by the mark are not ‘communicative’ services. It would follow that the mark was not registered to be insulting, shocking or abusive.      Finally, there are many EU and Italian trade marks registered that include the word ‘mafia’.  The applicant submitted that the mark intended to evoke The GodfatherAssessment of public policy/moralityThe GC began its analysis by outlining the rationale of and test for assessing the absolute ground for refusal based on public policy/morality. In this sense, the analysis should be undertaken from the point of view of ‘a reasonable person with average sensitivity and tolerance thresholds’, and should not be limited to the public to which the goods and services in respect of which registration is sought are directly addressed. Rather, it should include also those consumers that may encounter the sign incidentally. Finally, it should be borne in mind that the perception of a sign as contrary to public policy or morality may not be the same across the EU, also due to linguistic, historic, social, and cultural reasons.It follows that the assessment to undertake is one that takes account of both the[...]

Irish Government proposes introduction of Irish text and data mining exception

Wed, 14 Mar 2018 08:29:00 +0000

Readers may recall that back in 2013 the Irish Review Committee released a very interesting report, aimed at Modernising Copyright in this EU Member State [see here, here, here, here, here]. Moving from the realisation (or rather wish?) that "Copyright reform is in the air", the Report recommended a number of changes to the Irish copyright framework as embodied in the 2000 Copyright Act, including an ambitious proposal to introduce a tightly drawn Irish fair use exception (holding that this possibility would not be prevented by the system of exceptions and limitations in the InfoSoc Directive), and a specific exception for linking and marshalling [all this occurred while the CJEU Svensson decision - Katposts on linking here - was pending, and it was not entirely clear whether linking could qualify as an act of communication to the public].After the Report was released, its most ambitious proposals were not brought forward.Now the IPKat has learned from Katfriend Eoin O'Dell (Trinity College Dublin, one of the drafters of the Report and tweeting as @cearta) that the Irish Government has published a Bill to amend the Irish Copyright Act. The goal is - among other things - to take account of certain recommendations for amendments to that Act contained in the 2013 Report and also to take account of certain exceptions to copyright permitted by the InfoSoc Directive ... including the possibility of non-commercial text and data mining (TDM).The Bill in fact contains a number of proposals, including a proposal for an Irish TDM exception.An Irish text and data mining exceptionThe reference to the InfoSoc Directive is a reference to the possibility of relying on the research exception within Article 5(3)(a) of the InfoSoc Directive to introduce a TDM exception as part of a new section 53A in the Irish Act.This is indeed something that the Review Committee proposed in its Report.Similarly to UK law, also the Irish TDM exception would be available to persons who have lawful access to a work solely for the purpose of research for a non-commercial purpose, and provided that sufficient acknowledgment is provided.The central aspects of the proposal are the limitation to non-commercial research, the beneficiaries of the exception, the use of the copies made, and safeguards against contractual and technological override.Non-commercial usesStarting from the first aspect, limitation to non-commercial uses is not surprising, as this appears imposed by Article 5(3)(a) of the InfoSoc Directive itself ("use for the sole purpose of illustration for teaching or scientific research, as long as the source, including the author's name, is indicated, unless this turns out to be impossible and to the extent justified by the non-commercial purpose to be achieved").How the beneficiary of a copyright exception feelsBeneficiaries of the exceptionWhat is probably more interesting is the fact that the Irish proposal would not limit the catalogue of beneficiaries of the TDM exception. While this would be in line with UK law (section 29A of the Copyright, Designs and Patents Act), it would be quite a different approach from the one that the EU Commission has advanced with its proposal for a mandatory TDM exception under Article 3 of the draft Directive on copyright in the Digital Single Market [on the EU proposal see further here and here]. The EU proposal would be in fact only available to 'research organisations', although the Commission itself in its Impact Assessment accompanying the proposal for a directive noted how TDM practices are still a "nascent tool" for research carried out by those organis[...]

Nando's v Fernando's: Food for thought

Tue, 13 Mar 2018 20:46:00 +0000

This Kat is originally from the provincial town of Reading [said Red-ing not Read-ing] in which, like many high streets, there are some questionably branded restaurants and shops. One restaurant in particular has often been the topic of discussion about whether or not it was an infringement of another well-known eatery. As it would happen, this issue has just appeared in the news as being the subject of an IP dispute.It has been reportedthat lawyers of popular chicken restaurant Nando’s, Bird & Bird [natural choice of lawyer to protect your chicken] have sent a Cease and Desist letter to the Reading based Fernando’s restaurant, earlier this month. This Kat would like to chew ponder over the issue… The Parties As readers may be aware, Nando’s is a popular Portuguese Peri Peri Chicken restaurant, which originated in Rosettenville in Johannesburg, South Africa in 1987 and now has 1186 Nando's in the world, 392 of which are in the United Kingdom.Fernando’s Reading is also a Portuguese Peri Peri Chicken restaurant, open since 15th September 2017. Fernando’s director, Asam Aziz claimed that he got the idea for the restaurant from ITV’s dating show Take Me Out, where couples take a trip to the Island of Fernando’s. [Take Me Out is an ITV dating game show - the original TV Format of which came from an Australian show Taken Out, now franchised out to over 30 countries. However, Fernando’s is not a real place and some say that Fernando’s was a term coined by the Take Me Out show, as a play on words - that the couples would take each other out on a date ‘for-a-Nando’s’…Fernando’s. The couples who are selected to go on a date in the TV show in the first season went on a date at Fernando’s which was actually Club Bijou in Manchester, after that it was Cyprus and now the contestants go to the Canary Island of Tenerife.]Trade Mark An image used in the media of the Cease and Desist letter shows Nando’s claiming infringement of a number of their trade marks. The company - Nando’s Chickenland Limited – own 39 trade marks listed on the UK Intellectual Property Office website, in class 43 which includes restaurants, fast-food and take-away. Their marks include the name, a logo in the form of Portugal's Barcelos Rooster [the unofficial symbol of Portugal] and a multi coloured chilli, together with words “Extra Hot/Hot/Mild/Lemon & Herb” amongst others. Nando’s states that their marks are infringed on the outside sign, inside the Fernando’s restaurant and on the menu.Aziz claims that he is being bullied into changing his company’s name and had no intention of copying Nando’s - he wanted to sell Peri Peri chicken, being of Portuguese origin, using the Portuguese chicken as a symbol of the cuisine. It could be that in relation to the Portuguese chicken is “indicating characteristics of the goods or services.” This is a defence that allows traders to describe the characteristics of their products or services such as used in the case of Gerolsteiner Brunnen GmbH & Co v Putsch GmbH where the Court considered the trade name ‘Kerry Spring’ which was intended to identify the geographical location of the water. The CJEU held that the test was whether the geographical location was used within honest practices. Aziz claims he had no intention to infringe, but whether or not he could prove honest practice is another thing...Incidentally, a quick search on the UK trade mark register also revealed a registered mark for a FERNANDO’S in class 43 - restaurant, cafe, etc. So even if Reading Fernando’s are not infringing the marks of Nando’s, they may s[...]

Book review: ‘Rethinking Intellectual Property – Balancing Conflicts of Interest in the Constitutional Paradigm’

Mon, 12 Mar 2018 13:27:00 +0000

In ‘Rethinking Intellectual Property – Balancing Conflicts of Interest inthe Constitution Paradigm’, Gustavo Ghidini reviews the conflicts between various intellectual property rights holders from a constitutional standpoint. More particularly, Ghidini explores how the legal models of patent, trade mark and copyright have evolved over time against the backdrop of the shifting tensions between the right to be excluded and the right to access. These rights, conferred both to the right holders and users of protected content, have secured constitutional protection in various ways (such as through the human right to intellectual property, the freedom of expression and the freedom of economic enterprise). Despite the slew of reforms in IP law that have taken place during the last decades, international and national legislators have contributed little in the form of a constitutional test to resolve these conflicts. Ghidini  stresses that this matter is further complicated by the fact that patent, copyright and trade mark laws have all evolved in silos, thereby offering little coherence or consistency across the various systems. This overspecialism of IP means that each area has responded in a different way to the common question explored by Ghidini: how to reconcile of conflict between the constitutional right to IP protection and the constitutional right to access protected material. The author proposes ‘a dual concentric systemic perspective’ to address conflicts of constitutional rights in intellectual property law (p. 50-51). Do not be scared by the academic jargon, as the phrase refers to a more straight-forward, two-prong process than might seem. Ghidini invites scholars (and judges?) to interpret intellectual property rights in a manner which is, first, consistent with other intellectual property regimes (forming the first circle), and second, with other legal principles of ‘constitutional rank’ (forming the second circle) (p. 51). Ghidini explains that the respective norms forming the firm circles (i.e. consistency with the core principles pertinent to other IP regimes) should be used to prevent (there other views that disagree) the extension of an expired right through its registration under another type of IP protection, taking the example of ‘shape marks’ amongst others (p. 311). Circle you said?Ghidini’s ‘first circle’ [my own terminology, not his] seems to be at odds [which is a good thing!] with the position recently espoused by the EFTA court in the Municipality of Oslo case [see hereand here], supported by the European Copyright Society [here]. In the context of this dispute, the judges and scholars of the EFTA Court, and the European Copyright Society, respectively, were asked whether out-of-protection copyright works could be subject to trade mark registration. Whilst some advocated against this interpretation of the law, both the Court and the European Copyright Society concluded that nothing in the letter of the law prevented such an interpretation (here, p. 3). The European Copyright Society stressed that it was preferable not to invite an ‘external norm’ to solve these questions, but to stick to a ‘robust application of the basic principles’ of individual fields (in this case trade mark law). This case may be the best illustration of the over-specialism of each area of intellectual property law, leading to disparate outcomes in the application of their core principles. By contrast, and in line with Ghidini’s proposal, the late U.S. Supreme Court Justice Scalia J did rely on the constitutional nature of ‘t[...]

In Memoriam Trevor Baylis: the life-saving wind-up radio and the precarious lot of the sole inventor

Sun, 11 Mar 2018 19:46:00 +0000

There are few more heroic images in the IP world than the sole inventor, assiduously engaged in inventive activity in the privacy of a garage or shed. While the realities of modern-day invention stand in stark contrast to this imagery, there continue to be exceptions. A most notable example was the English inventor Trevor Baylis, he of the seemingly ubiquitous pipe, who passed away on March 5th at the age of 80. The story of Trevor Baylis is a tale of the tensions experienced by sole inventors as they continue to invent-- against all the odds. Born and raised in London, the son of an engineer, Baylis was in his youth as much an athlete as a fledging inventor. An accomplished swimmer who competed for Great Britain at the age of 15, he nearly missed being part of the 1956 Olympic team in Melbourne. He later worked as a stuntman. Baylis served as an “underwater escape artist’ in Berlin, so successfully that, as quoted by the BBC in his own words, “It was fantastic. I made enough money to buy a plot of land and build the house of my dreams.” As for his technical training, his first job was in a soil mechanics laboratory, which allowed him a day-release opportunity to study mechanical and structural engineering. While Baylis had a number of patents to his credit, he was best known for his invention of the BayGen wind-up (also known as a “clockwork”) radio, intended for people that did not have electricity or could not afford batteries to power a radio. The motivation for the radio came in the early 1990’s, when Baylis watched a television documentary on Aids in Africa, which talked about the potential of radio programs in providing critical information that could prevent the spread of the disease. The problem was that many of those infected had no access to a radio. Baylis’s invention sought to address this problem. As described-- “[t[he original prototype included a small transistor radio, an electric motor from a toy car, and the clockwork mechanism from a music box.” A patent application was duly filed. After several early rejections, in 1994, Baylis was able to present the device on a BBC One episode of “Tomorrow’s World”, which attracted great interest. Already in 1996 it won the BBC Design Award for Best Product and Best Design and the World Vision Development Initiative. Baylis was awarded an OBE (Office of the Order of the British Empire) in 1997 and the CBE (Commander of the Order of the British Empire) in 2015. He met both the Queen and Nelson Mandela and became a popular speaker and media presenter. Numerous universities conferred on him an honorary degree. The radio itself was reportedly named one of the 50 greatest inventions in British history. Most importantly, the invention led to the saving of countless lives.All of this would seem to be a tale of a sole inventor who contributed to the welfare of society and was compensated for his efforts. Not exactly: Baylis never appears to have made much money from the wind-up radio (or any other of his invention-based activities). The radio was manufactured, beginning in 1997, pursuant to an agreement with a Cape Town-based company. But as reported in his own words, he ended up with only a “fraction” of what he had been promised (despite that millions of such radios were sold around the world). In a 2013 article in The Telegraph about his financial state, Baylis stated that-- “I’m going to have sell to it [his house] or to remortgage it--I am living in poverty here”.As for the radio, he claimed that his South African business partner designed a[...]

Eighth Granted Petition for Review

Sun, 11 Mar 2018 09:40:00 +0000

Last month, the EPO published it's eighth ever decision granting a petition for review (R 4/17). Granted petitions for review are notoriously difficult to obtain, as the EPO attempts to balance the need for the legal certainty of Board of Appeal (BoA) decisions, and the right to challenge flagrant violations of EPO procedure.  Offices of the Enlarged Board of Appeal, HaarThe right to a petition for review is established by Article 112a and Article 22(1) EPC, which allow the limited judicial review of BoA decisions by the Enlarged BoAas an extraordinary legal remedy. The EPO has repeatedly stressed the strictly limited nature of this remedy:"decisions of the boards of appeal must remain final decisions which are res judicata. However, under certain circumstances many legal systems offer a possibility to review final decisions of a court which are res judicata. It is acknowledged that even a final court decision must be set aside if maintaining it without further review would be intolerable...Under no circumstances should the petition for review be a means to review the application of substantive law" (CA/PL 17/00 of 27 March 2000). A petition for review can be filed on the grounds that:the composition of the board was not correct (e.g. contained a non-impartial member);a fundamental violation or any other fundamental procedural defect of the right to be heard had occurred; ora criminal act may have had an impact on the decision. Crucially, the petition must be filed within 2 months from the notification of the decision and, where ever possible, the objections forming the grounds for review must have been raised during appeal proceedings (Rule 106 EPC). A number of petitions have been considered unallowable because the Enlarged Board of Appeal (EBoA) considered the petitioner to have had the opportunity to raise the complaint with the BoA, but did not.  In one case, where the minutes of oral proceedings contained no statement of the relevant objections having been made by the petitioner, allegedly incorrectly, the petition was not allowed because the petitioner had not requested correction of the minutes nor mentioned the incorrect minutes in the petition (R 7/08). In this resepct, the burden of proof is firmly on the petitioner. Case BackgroundThe present case (R 4/17) related to the granted patent EP 1490411 (Rhodia Chimie) directed to methods for stabilizing emulsions. An opposition was brought against the patent on the grounds that the claims lacked novelty. It was rejected in the first instance proceedings by the Opposition Division. The decision was appealed by the opponent, who cited a new allegedly novelty destroying document.  The case was referred to the Board of Appeal (BoA) (T 1277/12). In line with appeals procedure, the EPO sent the proprietor three letters containing, respectively, the notice of appeal, the statement of grounds and an invitation for the proprietor to respond within the standard time limit of 4 months from notification. According to the EPC guidelines for examination: "Decisions incurring a period for appeal...must be notified by registered letter with advice of delivery" (E II.2.3), i.e. a document sent by the Post Office to the sender of a letter by registered post that the letter has been delivered. Contrary to these guidelines, the three letters sent to the proprietor were sent by registered post without advice of delivery. The proprietor failed to file a r[...]

Can Mattel be prevented from making its own Frida Kahlo Barbie doll?

Sat, 10 Mar 2018 14:47:00 +0000

Frida KahloMexican artist Frida Kahlo de Rivera has left an incredible legacy, and this is arguably true with regard to both her art and personal life and image.It is therefore no surprise that quite a lot of initiatives, including films, restaurants, merchandising, games and even emjois, have been dedicated to this artist.Also Mattel has recently decided to honour Kahlo by dedicating her one of its signature Barbie dolls as part of its Barbie Inspiring Women Series, unveiled on International Women's Day 2018. The Frida Kahlo Barbie has been chosen on account that  "Frida Kahlo continues to be a symbol of strength, originality, and unwavering passion. Overcoming a number of obstacles to follow her dream of becoming a fine artist, Frida persevered and gained recognition for her unique style and perspective. With her vibrant palette and mix of realism and fantasy, she addressed important topics like identity, class, and race, making her voice-and the voices of girls and women alike-heard. Her extraordinary life and art continue to influence and inspire others to follow their dreams and paint their own realities."In producing its Frida Kahlo Barbie, Mattel apparently worked "in close partnership with the Frida Kahlo Corporation, the [seeming] owner of all rights related to the name and identity of Frida Kahlo," and that the corporation was "an important part of the doll development process".Despite this, not everyone is happy with the appearance of the Frida Kahlo Barbie. In particular, a descendant of the artist, Mara Romeo, has suggested that the doll's appearance - which does not really have Kalho's well-known unibrow [according to certain commentators, the doll would not even look like Kahlo] - does not really represent Kahlo: “I would have liked the doll to have traits more like Frida’s, not this doll with light-colored eyes,” Romeo said. “It should be a doll that represents everything my aunt represented, her strength.” According to Romeo, Mattel did not have the right to use Frida Kahlo's image and has now threatened legal action against the famous toy producer.Mattel's own Frida KahloBut would she have a legitimate ground to do so, even assuming that the Frida Kahlo Corporation did not have rights over Kahlo's image?To answer this question, it is necessary to consider whether any image/publicity rights would be available in a case like this and, if there are any, what their scope and duration are.Mexican image/publicity rightsTo this end, I tried to see what the Mexican approach (Mexican law might be applicable to the case at issue) to image/publicity rights is, and found out that Mexico indeed grants specific protection in this sense.Apart from an implied constitutional basis, rooted within the fundamental right to privacy within Article 16 of the Mexican Federal Constitution, Mexico has a specific legislation in place recognising indeed the protection of image rights. Adopted in 2006, the Law on Civil Liability for the Protection of Private Life, Honour and Self-Image is the current statute in force in Mexico which provides a civil framework for the protection of one's own image.In particular, Articles 17 and 18 provide that everyone is entitled to the protection of one's own image, which encompasses any use thereof - including commercial uses. Self-portrait withthe IPKatWhen reading this act, I was under the impression that no express limits are set to the duration of these rights, which appear to be p[...]

German design law on the brink of change following yesterday's CJEU decision in DOCERAM v CeramTec

Fri, 09 Mar 2018 11:04:00 +0000

Was Muffin's appearance solely dictated byhis technical function of squeezing into boxes?Yesterday, the CJEU issued it's decision on a referral from the Düsseldorf Higher Regional Court in a design right dispute between Doceram and CeramTec (Case 395/16) which has the potential to change German design law.  Kat friend, Alexander Haertel (Kather Augenstein) reports on yesterday's decision and what it means for design right protection in Germany.  Over to Alexander:  "O solely mio – Design, the multiplicity of forms theory and Katzenjammer all round Yesterday, the ongoing battle between the “multiplicity of forms” and the “no-aesthetic-considerations” theories in design law took another turn.  For those practising design law, you may recall that there is an outstanding question on how to interpret Article 8 of the Community Design Regulation (CDR). According to Article 8(1) CDR, a community design shall not subsist in features of appearance of a product, which are solely dictated by its technical function. The practical difficulty is in determining whether, or not, the appearance of a product is solely dictated by its technical function.  The debate lies in the interpretation of the word “solely”.In the past, especially in the continental European case law, the so-called “multiplicity of forms theory” was used to determine if a design was solely dictated by its technical function.  The “multiplicity of forms” theory says that it is decisive if there is an alternative design possible (if there is, a design cannot be said to be "solely" dictated by its function).  This theory was not only used by the German case law (Higher Regional Court Düsseldorf, GRUR-RR 2012, 200, 205 – Tablet PC; District Court Düsseldorf, BeckRS 2015, 05506 – Dental-Mischer; Higher Regional Court Düsseldorf, BeckRS 2007, 11285 – Autofelgen), but also in the practice at the EUIPO (HABM-NA ICD 000 003 150, 03 April 2007 – Häkselschneider (No. 20); HABM-ICD 000 002 590, 14 March 2007 – Stempel (No. 27), HABM-NA ICD 000 003 382, 27 August 2007 – Staubsauger (No. 8)), as well as other European courts (Court of Appeal, Landor & Hawa International Ltd. v. Azure Designs Ltd [2006] EWCA Civ 1285, No. 30 ff.).The opposing theory is called “no-aesthetic consideration”. According to this theory, it is decisive if only technical reasons were used to design the product. Whether or not there are existing design alternatives is, according to this theory, not decisive. The latter approach has its origin in a 1971 decision from the UK courts which referred to former English law (Amp Incorporated v. Utilux Oty Ltd [1972] RPC 103) even though that decision was never adopted for community designs. The UK courts had more or less also used the “multiplicity of forms” theory in the past.  However, there has been recent movement in the theories deployed by various courts/tribunals.  The EUIPO is now using the “no-aesthetic consideration” theory, ever since the so-called Chaffcutters-decision of the EUIPO (690/2007-3 - Lindner Recyclingtech GmbH v. Franssons Verkstäder AB, No. 30 ff.). The criticism that the EUIPO wielded against the “multiplicity of forms” theory was that this theory would apply only in relatively few cases as there are usually many alternative designs which have more or less the same technical function. Therefore, there is a danger that by virtue of one technical function, a d[...]

AIPPI UK Event Report: Registration, notice and infringement - is certainty an illusion?

Fri, 09 Mar 2018 09:00:00 +0000

Professor Bently kicks off histalk last week with a "plan"Last Tuesday evening, brave (and frozen) IP professionals battled through the Beast of the East to Bristows’ Victoria Embankment offices in London for an AIPPI UK event, with Professor Lionel Bently (University of Cambridge) delivering a talk on “Registration, Notice and Property Definition in Intellectual Property Law.  Kat friend Lucie Fortune (Bristows) reports on the event:"Professor Bently started by posing a number of questions to the room: What is the relationship between registration and infringement in intellectual property law? What is the purpose of registration? Does registration really offer certainty? And what are the implications if this ‘certainty’ is largely illusory?Recent cases such as Trunki and Actavis v Eli Lilly  in the Supreme Court and the CJEU ruling in Specsavers have drawn into focus the relationship between the representation contained on the patent, trade mark and design registers and the scope of protection conferred by those registrations. There has been something of a divergence between the IP rights: from a clear focus on the images included in the Community registered design registration by the Supreme Court in the Trunki case, to the CJEU looking beyond the trade mark register to real-life use of a mark and the complained-of sign in Specsavers v Asda and a  "new" doctrine of equivalents for patents established in Actavis v Eli Lilly.In spite of the differing approaches between patents, trade marks and designs, the goals of registration appear to be broadly the same: to offer notice to the public that protection is claimed, and to define the boundaries of that protection. Indeed, clarity and precision are recognised as a crucial requirement of the registered representation by all three registration systems, in order to provide certainty (see the Guidelines published by the EPO and EUIPO, and the CJEU’s decision in Sieckmann).But, Professor Bently asked, do the current systems really provide certainty? Patent claims delineate precisely what is new, whereas design and trade mark registrations identify the object that is claimed as new or distinctive but typically do not identify what is new or distinctive, and may include non-novel elements. The scope of protection is even less precise for trade marks when use is taken into account and, of course, the registers do not contain unregistered rights. Patents typically contain a multiplicity of claims and are often subject to amendment, or auxiliary requests. Perhaps, Professor Bently commented, the certainty afforded by registration systems is nothing more than a ‘mirage’.Professor Bently concluded by mentioning a number of different possible ways forward (a ‘smorgasbord of ideas’, to use his term), such as legitimising a focus on prosecution history, using disclaimers in trade mark registrations more frequently or creating explicit codes for representation of designs. Or perhaps, we should simply reconsider our expectations for registration. A lively discussion followed, leaving the attendees to mull more philosophical questions over a glass of wine: Do we have certainty now? What could be done to improve the current systems? And is certainty, in fact, always better?"You can access Professor Bently's PowerPoint presentation here.[...]

Never Too Late: if you missed the IPKat last week!

Thu, 08 Mar 2018 14:43:00 +0000

The 185th edition of Never Too Late is here with everything that happened on IPKat last week. The highlight of the week was IPKat's exclusive interview with the CEO of the Canadian Intellectual Property Office. There were also philosophical musings on the relevance of literary criticism to patent interpretation, reports on trade mark cases in Italy and Singapore and a copyright book review. Interview with the CEO of the Canadian Intellectual Property OfficeIPKat was recently honored to conduct an exclusive interview with Johanne Bélisle, Chief Executive Officer of the Canadian Intellectual Property Office, published on IPKat in its entirety: Exclusive interview with Johanne Bélisle, Chief Executive Officer of the Canadian Intellectual Property Office. The interview covered topics including the aims and focus of CIPO's Five-Year Business Strategy, the role of CIPO in facilitating innovation in Canada and the main elements of "brand Canada" (more than just hockey, maple syrup and sphynx cats).Canadian KatPatentsGuestKat Frantzeska considers the EPO report on "Patents and the Fourth Industrial Revolution”: Patents and the Fourth Industrial Revolution. What indications for the future on the basis of patent activity? The Fourth Industrial Revolution (FiR) refers to information and communication technologies (ICT) applied to the individual, home, vehicles, enterprise and infrastructure, for example smart health technologies. Frantzeska provides an overview of the statistics presented in the report and reflects on how the FiR may affect the patent industry. Following on from AmeriKat's recent post regarding the Darts-IP report on patent trolling in Europe by non-practicing entities (NPEs), IPKat hosts a Guest Post by Igor Nikolic of University College London (UCL), who provides his key take away messages from the report and reminds us that the situation may be more nuanced than it first appears. Join the debate!: GuestPost: Is there really a problem with NPE litigation in Europe?Kat friend Dr. Aloys Hüttermann explores the parallels between patents and literature: Do patents and literature have something in common? In a discussion that has interesting relevance to the hot potato issue of claim interpretation, Aloys contrasts the "romantic" author-centered tradition of the US and the text-based tradition of Europe and elsewhere. Following Actavis vs Eli Lilly, is the UK becoming more author-centric? Philosophical minded patent attorneys may be intrigued by a suggestion in the comments for a Derridean deconstruction of patents. This Kat feels many patent attorneys might instead favour the Analytical approach of early Wittgenstein.Postmodernist philosophy KatXi’an IP TribunalGuestKat Tian reports the official opening of the the Xi’an IP Tribunal in China and considers its implications for the Chinese IP protection landscape and the expected increase in IP disputes: The 1st specialized IP Tribunal of Northwest China unveiled in Xi'an. Xi'anTrade marksKat Elenora discusses an Italian trade mark case (sentenza 830/2018) relating to cookies and cushions: Sweet! (or not?): cookie-shaped cushions without trade mark owner's permission. The case was brought by Barilla against a manufacturer of cushions shaped like Barilla cookies and labelled wit[...] loses to German publisher and is found liable for damages

Thu, 08 Mar 2018 07:38:00 +0000

Every cat likes a good bookIn a year-long legal battle between the ‘not-for-profit-corporation’ Project Gutenberg Literary Archive Foundation, its CEO and the German publishing house S. Fischer Verlag GmbH, the District Court of Frankfurt (Landgericht Frankfurt am Main) has found Gutenberg in breach of German copyright law.DefendantsProject Gutenberg is an online archive for free eBooks that has around 56,000 eBooks in its catalogue. Supposedly, the copyright has expired for all the works that are available for download. They are in the public domain, the operators state, arguing that most works were published before 1923, the copyright term being 56 years after publication. While the website’s main interface is in English, users can switch to other languages such as German or French. Gutenberg offers books in various languages, hundreds of which are available in German. Project Gutenberg offers a ‘disclaimer’ (in English) on its website, in which users from countries other than the USA are encouraged to check whether the work they intend to download is (still) protected by their local copyright or not. The books were offered under a ‘Gutenberg License’ which states (among other things):“This eBook is for the use of anyone anywhere at no cost with almost no restrictions whatsoever. You may copy it, give it away or re-use it under the terms of Project Gutenberg License included with this eBook or online at”PlantiffS. Fischer is a long-established publishing house that owns the exclusive rights to various works by authors Heinrich Mann, Thomas Mann and Alfred Döblin. The publisher found that at least 18 books by these authors were available in German for free download from Project Gutenberg to users in Germany. After unsuccessfully requesting the website to remove the books from its servers, the publisher took the website to court.S. Fischer requested the District Court of Frankfurt to enjoin Project Gutenberg Literary Archive Foundation and its CEO from making these 18 books available to the (German) public. It further asserted a claim for disclosure of information about the scope of the infringements and requested the court to rule upon the question whether the site is liable for damages, without asking for a specific amount. This is common practice in IP-related litigation, since it is hard or impossible to specify damages until the scope of the infringements is clear.The District Court’s judgmentAfter several years of litigation, the District Court of Frankfurt sided with the plaintiff. It found Project Gutenberg and its CEO liable for copyright infringement under German law and as such, liable for disclosure of information and damages as requested by S. Fischer. The website was also enjoined from further making available to the public the 18 books in questions, albeit limited to downloads from Germany.The judges first looked at their jurisdiction over the case and affirmed it on the grounds of § 32 ZPO (Zivilprozessordnung, the German law on civil proceedings). It is very similar to Art. 7 (2) of the Regulation No 1215/2012 and establishes a special jurisdiction in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred. While the defendants argued that their website was not aimed at German users, the judges disagreed. They found enough evidence that the website was indeed intende[...]