For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Tuesday, 19 August 2014

Once upon a time, in a faraway time-warp: a Kat relates his IP PhD experiences

Eleonora's earlier post, "It's a wonderful (PhD) life ... Oh wait: is it?", here, promised that this Kat would say a bit about his own postgraduate experiences -- so here they are!  He enrolled for a PhD in October 1973, submitted it in September 1976 and, following a successful viva in May 1977, received his doctorate from what was then branded the University of Kent at Canterbury. Like many things in his life, his experience was very much a one-off. The salient points were as follows (as Jeremy explains):

I intended to pursue a purely academic career (which I did for over 11 years) and saw the acquisition of a PhD as a valuable asset in a generation when law was still seen as a vocational degree and most legal academics in the UK had a professional qualification but no degree higher than a Masters.

The decision to research IP was not made until I had been registered for three months; my supervisor (about whom more will be said later) insisted that I spend time thinking carefully about my subject, bearing in mind that, as an undergraduate, my familiarity with law might be deep but was extremely narrow; many subjects, intellectual property included, were not taught at all to undergraduates in the UK, or were mentioned only en passant in papers such as Personal Property (along with bills of exchange, liens, chattel trespass, trover and detinue). Anyway, I was told to browse the library and look at subjects that I knew nothing about -- particularly those that were adjacent to my initial choice of false trade descriptions -- and ask myself whether those areas wouldn't interest me more. I assumed that this was standard procedure for novice PhD candidates and duly obliged. Once I found the section of the law holdings that contained the IP books, I was hooked.

Fortuitously my arrival at Kent more or less coincided with the short-lived Unit for Legal Research in Computers and Communications, which didn't attract many students or research funds (it was axed after only a few years in favour of more funding for the Law Clinic, on the basis that there was no future for legal research in computers and communications) but it did attract money for lots of books and periodicals.

Although my supervisor, Harry Bloom, was a Senior Lecturer, he held no doctorate of his own and had not previously supervised any PhD candidates. The supervision process therefore developed on an empirical basis. Its salient features were as follows:

Harry Bloom
* Every working day I reported to Harry's office at 11 am, whereupon he would take me for coffee and ask me what I had been reading, thinking and, when relevant, writing, since our previous day's meeting. When Harry travelled to London, as he often did, to deliver a guest lecture or meet a visiting IP personality, I was expected to travel with him. On the train to London we discussed what he was going to be saying; on the train back we would discuss what he had said, what questions had been asked and why, and so on. If time remained, I was expected to complete The Times crossword under his supervision.

* When Harry gave a class, on The Law of Communications (his own invention, embracing media law, IP, dissemination and protection of speech, law and cybernetics), I had to be there for it.  When he wasn't there, I had to fill in for him.

* When any IP dignitary came to visit Harry in Canterbury, I was always expected to join them for coffee and/or lunch. As a special treat I was allowed to drive them back to the railway station in Harry's car, so I could steal a little quality time with them.

* If for any reason I didn't meet Harry for coffee, he would drive over to my flat (most students had no phones in those days) to find out if I was unwell, often bearing some small and edible token of his concern.

* Whatever I wrote was closely examined for content, style, structure and general readability. Harry was the first person to concede that he was not the greatest IP lawyer who had ever walked the Earth, but before he became an academic he was a successful novelist, journalist and scriptwriter: he believed that a PhD that couldn't be understood by its readers was a PhD that wasn't worth writing.

* After a few months, this situation became reciprocal.  Harry would throw a draft article of his own at me and ask me what I thought of it. If I didn't criticise it, he would do so himself.

* Once or twice a term, when my parents came down to visit me, Harry would take them aside and give them an oral report on my progress.

* I was strongly encouraged to pay personal visits to lawyers in private practice, patent attorneys, scholars and in-house IP practitioners, and indeed to anyone who was involved in my topic (the allocation of IP rights between employers and employees) or who wrote on it. His view was that the real world reflects what people write but is not reflected by what they write and that, if you want to understand an argument, you have to understand the people who argue it. Accordingly I spent a good deal of time visiting generally busy and generally bemused IP owners and professionals, to ask them how and why they did or wrote the things that they did.
Not being in contact with other IP PhD candidates, and living in an era when the internet, email, Facebook, Twitter, LinkedIn and the rest of the social media were scarcely imaginable, I had no-one with whom to share my experiences and therefore no idea that my experiences were not typical.

Lord Lloyd of Kilgerran
There were a couple of negative experiences, but neither could be blamed on my supervisor.  The first was when the regulations for registration and upgrade from MPhil to PhD were retroactively amended and no-one told Harry or me. This meant that I had to conjure some draft chapters out of the air in negative time so that they could be examined and approved.  Fortunately this unexpected requirement was mercifully waived, but not before a quantity of nails were vigorously bitten. Another was a communication to the effect that my thesis couldn't be examined because it had proved impossible to identify a willing and suitable external examiner. Eventually one was identified, this being the amiable, jocund and somewhat rotund Lord Lloyd of Kilgerran (a member of the patent bar and editor of the 8th edition of Kerly on Trade Marks).  Fortunately all ended well.  His Lordship was delighted to spot that he had appeared in some of the cases mentioned in my lengthy list of cases cited and, rather than ask me about them, he spent almost all my viva telling me about the background to them. Apart from saying hello, confirming my identity and thanking him for recommending a pass, I scarcely had to utter a word.

In conclusion I can honestly say that my PhD experience was well worth it. In a way it was as much an apprenticeship as anything else. My subsequent life as an academic, editor, publisher, conference organiser, blogger and lots more was very much influenced by my positive, if sometimes onerous, experiences as a PhD candidate.

Passing off wins the day: fake Patent Office scammers pay up, promise not to do it again

Passing off, like the horse-
and-buggy, might look quaint
but can get you there in the end
"Intellectual Property Office succeeds in passing off claim" is surely the news story that sets all hearts a-flutter in government patent offices, trade mark registries and intellectual property offices in common law jurisdictions, as the curious remedy of passing off -- which is to the law of unfair competition what the horse-drawn buggy is to the SUV -- notches up another notable triumph. According to this news item, posted on the chunky and unlovable GOV.UK website which is replacing the elegant and sophisticated UK Intellectual Property Office website (among others):
Two of the most blatant offenders – ‘Patent and Trademark Office’ and ‘Patent and Trade Mark Organisation’ – and the persons behind these organisations, Mr Aleksandrs Radcuks and Mr Igors Villers, have admitted and settled our claims and agreed to be bound by an Order of the Intellectual Enterprise Court [no, says Merpel, it's the Intellectual Property Enterprise Court, England and Wales. Writing blogposts is an intellectual enterprise though ...] prohibiting them from further acts of passing off.

This means that if these people pass themselves off again as the Intellectual Property Office (IPO), they will be in contempt of court and liable to imprisonment.

Part of the settlement is a substantial payment to the IPO which will cover some of our legal costs. Further proceedings are pending against another organisation that is engaged in similar practices, so watch this space.

Background

On Monday 19 May 2014, we filed a claim for passing off at the Intellectual Property Enterprise Court against the persons behind the companies trading as Patent and Trade Mark Office and Patent and Trade Mark Organisation.

These organisations have been issuing official looking ‘renewal’ notices to holders of UK registered patents and trade marks offering to renew the rights for fees greatly in excess of the official renewal fees. We know that some of our customers have been misled into making excessive payments to these organisations because they thought they were paying the IPO for renewing intellectual property rights.

We therefore felt it was necessary to take appropriate action given the evidence that our customers are being misled or confused and that damage is being caused to the office’s good name.
Happy as he is that this has happened, the IPKat is still concerned about the fate of those people who have been induced to pay these pretend-renewal fees.  In each instance that such a payment is made, it may not be economically feasible for them to commence their own legal action to recover the sums so paid, yet he is uncertain if there is any mechanism by which they can be joined in the UKIPO's action, given that theirs is a claim for money paid on the basis of a fraudulent or at least deceptive representation, while that of the Office is based on passing off.  Do the terms of the settlement require Messrs Radcuks and Villers to disgorge their ill-gotten gains, he wonders, and why is this decision not yet available on the BAILII database of judgments, on the page for IPEC judgments in 2014? Presumably it's because the parties settled everything and there was nothing for the court to give judgment on.

A penny for your thoughts? No, a pound for your breach of confidence: no richesse for Richmond

Following six days of hearings, a claimant that succeeds in pinning the defendants down with liability for breach of contract, breach of confidence and breach of statutory duty might expect to be royally rewarded for its trouble. But this is not always the case, as can be seen from the salutary suit in Richmond Pharmacology Ltd v Chester Overseas Ltd, Milton Levine and Larry Levine [2014] EWHC 2692 (Ch), a 1 August 2014 decision of Stephen Jourdan QC, sitting as a Deputy Judge in the Chancery Division of the High Court, England and Wales.

In this action Richmond, a contract research organisation, claimed damages or equitable compensation from Chester and the two Messrs Levine for losses sustained as a result of the disclosure of its confidential information. The saga starts in 2002, when Richmond entered into a shareholders' agreement whereby Chester (a British Virgin Islands company whose shares were held in trust for the Levines, who effectively controlled it) bought 44 per cent of its issued share capital. The remaining 56 per cent stayed in the hands of the three doctors who founded Richmond.  The Levines, representing Chester, were appointed directors of Richmond. While this agreement gave Chester the right of access to detailed information about Richmond's affairs, clause.13 [which is set out in full at para 37 of the judgment] required Chester to treat that information as strictly confidential, save in certain specified circumstances.

Subsequently, in 2009, Chester sought to sell its shares in Richmond and instructed New World Corporate Finance Ltd (NWCF), to advise and assist it in this task. When NWFCstarted to market the shares to third parties, Richmond asserted that, in doing so, it both disclosed confidential information and created the misleading impression that all of the issued shares  in Richmond were for sale. In result, said Richmond, it suffered a reduction in its business.

At trial, the Deputy Judge had to consider the following questions:
(i) did Chester and the Levines owe any duty of confidentiality to Richmond?
(ii) if so, had they breached any such duty by conveying confidential information to NWCF?
(iii) what information did NWCF actually disclosed?
(iv) did NWCF's disclosures to prospective purchasers constitute a breach of confidence by Chester and the Levines of their duties of confidentiality?
(v) did an estoppel arise because Richmond did not initially object to NWCF's disclosures?
(vi) did NWCF's disclosures cause any loss to Richmond?
After tiptoeing through 253 paragraphs, this Kat can report briefly as follows:

* The ordinary and natural meaning of the shareholders' agreement was that Chester had a duty not to disclose Richmond's commercially sensitive information to anybody. However, on that reading, Chester could not realistically expect to sell its shareholding without the board approving the disclosure of confidential information to potential purchasers. It could not be argued that this conclusion was contrary to business common sense, since the commercial reality was that it was always going to be virtually impossible for Chester to sell its shares without the cooperation of the three founding doctors who retained the majority of the shares.

* The Levenes, as directors of Richmond, owed the company a number of statutory duties set out in the Companies Act 2006, ss 172 [duty to promote the success of the company], 174 [duty to exercise reasonable care, skill and diligence] and 175 [duty to avoid conflicts of interest]. Since they had been nominated by Chester they could, in performing their s.172 duty, take Chester's interests into account -- but only provided that they made decisions which they genuinely considered to be in Richmond's best interests.

* In contrast, s.174 and s.175 imposed an objective test and a breach of the s.175 duty to avoid conflicts of interest did not depend on any bad faith on the part of the director, or any awareness by him that his conduct placed him in breach.

* The founders had authorised the Levines to act in a dual capacity so long as Chester complied with its contractual obligations; however, to the extent that the Levines wanted Chester to breach the shareholders' agreement, they would first need the approval of the Richmond board.

* Where there was a contractual duty of confidentiality, equity would not impose any wider, or narrower, duty of confidentiality than that stipulated by the contract. On the facts, therefore, the Levines' equitable duties were identical in scope to those imposed on Chester by the shareholders' agreement. To the extent that the Levines caused Chester to act in breach of that agreement, they would themselves be in breach.

* The Levines were entitled to disclose confidential information to NWCF, since it advised them professionally and such disclosures were specifically authorised by clause 13.2 of the shareholders' agreement. In reality, NWCF probably used that information only to make general statements about Richmond's business and it was unlikely that it had disclosed material of any substance. However, it was likely that it had given the impression that all of the shares in Richmond were, or might be, for sale: the giving of such an impression constituted a breach of clause 13 by Chester. If true, it would have been confidential information falling within the scope of clause 13 and also placed the Levines in breach of their s.175 duty, insofar as their conduct had caused Chester's breach [Merpel's not too clear as to how the impression that all the shares were for sale, if false, would fall within clause 13, but that's another matter].

* there was no estoppel by acquiescence since there was no relevant assumption made by one party which was acquiesced in by the other, where it was unjust for that other party to resile from that assumption. Silence alone was not that sort of assumption; nor had it been shown that the party relying on it had done so to a sufficient extent: the most that could reasonably have been inferred from Richmond's failure to object to NWCF's disclosures was a grudging acceptance that it could do nothing about them, but no way was it capable of being an acceptance that NWCF's conduct was lawful.

* while both Chester and the Levines had acted in breach of their obligations of confidentiality, those breaches had not caused any loss to Richmond. While the amount of business that had been placed with Richmond had decreased after the breaches had occurred, it could not be said on the balance of probabilities that that decrease in business had been caused by those breaches.

* to conclude, while the three defendants did indeed commit some breaches of their contractual, statutory and equitable duties to Richmond, those breaches caused it no loss. Provisionally, it seemed right to award nominal damages of £1 against Chester for breach of contract, and to dismiss the claims against the Levines.

Ever discreet ...
The IPKat, this case is more interesting than it may appear, as are many that deal with damages. Where there are two or more possible reasons why the injured party suffers loss following a breach of confidence, it's clearly not enough for the defendant simply to show damage: causation must be proved too. And the burden of proof remains with the successful claimant to show how the damage was caused. Apart from the difficulty of achieving this, there is also the uncomfortable prospect of having to open one's books, correspondence and records for close scrutiny by a hostile party intent on disproving causation.  Merpel says, with hindsight this was plainly not the best way to proceed; the interesting thing is to map out the best way that Chester could have put its shares in Richmond on the market in the event that the majority shareholders were (i) cooperative and (ii) uncooperative.

Richmond Hill here and here
Lass of Richmond Hill here
Pound-breach here

Monday, 18 August 2014

This is Fiction, not Trademark Infringement: A Cat (Woman) in Need of a Clean Slate

The Seventh Circuit Court affirmed on August 14 that a fictional company or product cannot infringe the trademark of a real company or product. The case is Fortres Grand Corporation v.Warner Bros., no. 12-cv-00535.

Appellant Fortres Grand sells “Clean Slate,” a desktop management program which erases all evidence of user activity on a computer. It holds the registered trademark “Clean Slate” for computer software. Appellee Warner Bros. released in 2012 the Batman The Dark Knight Rises movie which features the fictional software program “clean slate.”

Fortres Grand noticed a decline in sales of the Clean Slate program after the movie was released and filed a trademark infringement suit against Warner Bros., claiming that its use of the words “clean slate” was both a source of consumer confusion and a source of reverse confusion. Warner Bros. moved to dismiss, arguing that a fictional product cannot infringe a trademark. In May 2013, the Northern District of Indiana granted the motion to dismiss. Fortres Grand appealed and the Seventh Circuit affirmed.

In the Batman movie, the character Selina Kyle, which is none other than Katwoman Catwoman, is in dire need of a software program to delete her criminal past. Fortunately, the fictional company Rykin Data has developed such program, which plays an important part in the plot as Bruce Wayne eventually acquires it after Catwoman is betrayed by a criminal organization which had promised her a copy in exchange for her professional and nefarious services. The program is referred to four times in the movie as “clean slate.” The fictional Rikin Data company was featured on social media (here for example), albeit by fans, not by Warner Bros., as specified in its response brief. One of such sites explains that “Rykin Data has developed the methods in which a software-based application can source the total sum of one's personal information archived on all databases and permanently purge this data, effectively granting the subject a clean slate within the digital world.”
My Data And I Are Wiped Out 

Reverse confusion occurs when consumers believe that it is the senior user which is infringing on the junior user’s trademark. In the Seventh Circuit, a plaintiff claiming reverse confusion must prove that the “large junior user [has] saturate[d] themarket with a trademark similar or identical to that of a smaller, senior user.” However, Warner Bros. had introduced a movie on the market, not a piece of software, and the software referred to in the movie was fictitious. The District Court reasoned that Fortres Grand could not have therefore been damaged by Warner Bros.’s saturation of the market. Also, Warner Bros. did not used the words “clean slate” to identify the source of the fictitious software product and, further, “no consumer – reasonable or even unreasonable – would believe that the The Dark Knight Rises itself is connected to Fortres Grand. “ For the Seventh Circuit, Fortres Grand failed to prove that consumers would be confused into thinking that its software “emanates from, is connected to, or is sponsored” by Warner Bros.

There was no likelihood of confusion either for the District Court, as both products were not similar. Fortres Grand argued on appeal that the court should have compared its “Clean Slate” software to the fictitious software developed by Rykin Data. But the Seventh Circuit was not convinced by this argument, quoting the 2003 Supreme Court Dastarv. Twentieth Century Fox case where the Court explained that “origin of the goods” in the Lanham Act means “the source of wares… [i.e.] the producer of the tangible product sold in the marketplace” (at 31). Therefore, it was indeed the movie which had to be compared with Appellant’s software. However, confusion could still be likely if the public would attribute a single source to both products, but the Seventh Circuit noted that both products are “quite dissimilar” and were also sold in different channels of trade.
This Duck Does Not Infringe Any Trademark 

The Seventh Circuit did not address the First Amendment issue, but the Northern District Court had also found that Defendant’s use of “Clean Slate” was protected by the First Amendment, citing the 1989 Rogers v. Grimaldi Second Circuit case. For the Second Circuit, the Lanham Act applies to artistic works “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” However, First Amendment weights more in the balance if the use of trademark “has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” The District Court found that Warner Bros. had satisfied the two prongs of the Rogers test and thus found its use of “clean slate” protected by the First Amendment.

This is particularly welcome as “clean slate” is such a common expression. The Seventh Circuit noted that it is “commonly used  and ”is just one variation of a phrase (pinakis agraphos in Greek (often translated “unwritten tablet”) or tabula rasa in Latin (often translated “blank slate” or “scraped tablet”)) that traces its origins at least as far back as Aristotle and is often used to describe fresh starts or beginnings.” Allowing a trademark owner to prevent the use in a movie of a common expression would have had a chilling effect on free expression.

Source for the Acme image is The Complete Illustrated Catalog of ACME Products


It's a wonderful (PhD) life ... Oh wait: is it?

No, dear, it's probably NOT 
an invitation to THAT ball, but rather
a reminder from your supervisor
about that missing chapter of yours
There may be a time in your life when you start thinking about spending a few more years in (higher) education: the perspective of a one-year masters degree (possibly an LLM) is not enough to satisfy your sudden or well-established thirst for knowledge in a particular field, so the perspective of embarking a three-to-four-year PhD adventure does not look so unreasonable.

This is indeed what happened also to some Kats, even the IPKat himself. You of course are aware that our blogmeister Jeremy is an IP pioneer ("active in IP since 1973!"). What you might have missed, however, is that Jeremy himself went for a PhD in IP back in the 1970s, and was probably one of the first people in Europe to write a doctoral dissertation in this area of the law. Jeremy will be posting some observations on his own time as a PhD student a little later this week.

Also I decided to do a PhD at some point of my sentimental copyright education, and I explained the reasons here. Overall, I had a good time as a doctoral student at the European University Institute in Florence, even if -- as it happens in any situations -- there were, especially at the beginning, some doubts and difficulties. If I have learned anything during my time in Florence, it is that passion for your chosen area and almost insatiable curiosity are key to be able to undertake and -- most importantly -- enjoy your time as a doctoral candidate, which may not be the most social experience you can dream of. However, this does not mean that your life becomes your thesis: on the contrary, there is still a lot of time to devote to personal interests and professional, non-PhD-related projects (for instance, while doing my PhD I did a 6-month internship at Bird&Bird in London, completed my training contract and passed the Italian bar).

It seems however that not many people find their time as PhD students enjoyable. Last week Times Higher Education published an article devoted to the PhD experience in areas other than law. The result was that all five out of five interviewees pretty much hated their time as doctoral students.

So, after reading that piece, my question became: 

Are things so terrible also for those doing a PhD in IP?

I collected the considerations of some doctoral candidates (past and present) from a number of jurisdictions, both in Europe and elsewhere, around the following questions:
  • Why did you decide to do a PhD in IP in the first place?
  • How are you feeling/did you feel while doing it? Ever thought of dropping out of the PhD?
  • Is/was the PhD experience as you expected?
  • Are you finding it/did you find your PhD useful to enrich your professional expertise?
  • Are you thinking/where you thinking of remaining in academia upon completion?
  • Is there something they did not tell you about life after a PhD that you would have liked to know in advance?
  • Would you recommend doing a PhD in IP?
  • Any other point worth addressing!

As you will see, their assessments are both thoughtful and very candid (which is way they are so valuable), and in some cases given upon condition of preserving the anonymity of respondents (I will refer to anonymous contributors as Katfriend #1, #2, #3, etc). 

Initially, my idea was to cut and paste their stories, but eventually decided against it: I thought that providing their full accounts as they emailed them to me would have been more helpful to perspective PhD students and might enhance discussion in this forum.
Katfriend #1: There is not just a single formula to make the PhD experience work for you
"I see my decision to apply for a PhD as a natural outcome of my affinity to writing. Already at law school, I used to write articles and case notes. I developed a passion for exploring things that other regarded either too obvious or too complex to think about. From the very beginning, I viewed the PhD studies as a natural step forwards, if I want to become an academic one day. And in this respect, PhD gave me exactly the freedom to do things as I wanted, the flexibly to manage my time according to these different goals, to travel and to meet new people and to respond to challenges. 
Soon, however, I realized that not everybody came to PhD studies with the same vision, and that this personal motivation is strongly reflected in the attitude to work of my colleagues and/or their willingness to discuss things. This is especially true in countries of the continental Europe, where PhD is not necessarily seen as a start of an academic career, but merely as a further qualification of a lawyer.  
Thank goodness: you can
say that you may expect
different things from a PhD
and not be wrong
Second, I realized that what you get from PhD depends not only on you, but also on your supervisor. You can be at a great institution, but if you do not have backing for your vision or plans from your supervisor, you might have trouble to execute it. Also, I realized that there is no perfect fit for student-supervisor tandem. Some people just need more freedom, others more looking over shoulders. I personally found all I expected in my studies, and what I did not found at my home institution (eg internal discussions), I arranged elsewhere (online, at other institution, conferences, etc).  
My plans are definitely tight together with academia, but this passion did not come with PhD studies, but was here already before.  
My recommendation for future students would be: i) to give yourself an honest *reason* why do you want to do a PhD (in three years you can do spectacular things outside academia, so why bother?); and ii) if you convinced yourself, then ask yourself if this *reason fits the institution* where you want to apply (do they have only nice stipend, or also great connections to industry or an amazing library?); lastly, iii) spend more time thinking about the *selection of your supervisor* (if possible); if you feel he/she is not the right match, do not worry to suggest a change; I have seen many colleagues being frustrated about their communication with their supervisors. Try to avoid that."
Katfriend #2: Do not do a PhD for your career, but for yourself 
"I decided to do a PhD for knowledge rather than career reasons because I had questions and wanted them answered. I have to say, I absolutely enjoyed the experience and never thought about dropping out. The PhD (and the studentship that came with it) gave me the opportunity to explore a topic I was really interested in without having to worry about anything else. For me, the key to making it work was self-discipline: when I sat at my desk, I focused on my work (=keep Facebook, Youtube, etc closed). As soon as I finished for the day, I did not work at all. This way, I made the required progress and actually finished in 3 years.  
Oh well, both ...
I think there is a certain expectation of unhappiness though: starting with everybody telling you that it is impossible to finish in 3 years unless you work non-stop (not true!). In my case, I went through a phase of insecurity when all my friends started having meltdowns and everybody kept asking me not how but how bad I felt. It seemed like PhD students by definition have to be stressed out or they are doing something wrong. Since I was not, I started to panic.  
Now that I have finished, I am still not sure if academia is for me. And still, I do not regret the decision to do a PhD and would do it again -- and this is despite the lack of impact that the PhD has made on my life so far. 
Overall, I would not suggest doing a PhD to anyone for career reasons. 3 years (minimum) are simply too long unless you are interested in the topic and I mean REALLY interested."

Sabine Jacques (University of Nottingham): The importance of supervisors and getting time off from the PhD
"Having always wanted to specialise in IP law, I found myself having difficulties to satisfy my thirst for knowledge during previous degrees. IP law merely being an optional course in my home country, I ended up daunted by the fact that I was not prepared enough to exercise in the field I intended. It thus came naturally that I found myself contemplating several PhD programmes and am incredibly happy with the experience so far (I am currently finishing my second year). Not only do I have the pleasure to deepen many IP questions but I also pick up transferable skills such as in depth thinking from different view points, time management, building a professional network and communication and research skills. Of course, there are moments of doubts and it is not an easy ride but that is also why good supervisors are mandatory. Even though I had been warned as to the solitude of a PhD research student, I never realised what I was getting myself into until being in it.  
... are probably true!
This is why I believe that two things are really important to my experience. 
The first element is to have good supportive supervisors who are approachable when you need to contact them. Sharing my feelings over the PhD with my colleagues, I value the impact of being well surrounded. Therefore, I recommend future PhD students to get in touch with possible supervisors beforehand to see whether the relationship can be a successful one. The other element for me is to secure a non-PhD related activity (and especially a group one) to combat the loneliness which might appear during the four years. As at the end of the day you remain the only one working on your project, I find it important to share an activity with other people, as much as taking some distance from the project for a couple of hours.  
However, I find myself ill-equipped to recommend the PhD route to just anybody. The PhD being such a personal journey, I do not see how a single experience can serve as guidance. For me, it definitely was the right thing to do."
Tyrone Berger (Monash University): Commitment is key 
"I decided to do a PhD in IP in the first place because my wife was an academic, and I wanted to see what all the fuss was about. It was a decision to do further study, which meant a sacrifice of sorts. Now a few years into my thesis, I have a sense of duty to myself and my family to follow through. I am feeling confident (privately), but such confidence is not well received in academia.  
For the most part you are left on your own. There are University regulations, of course. But what you do with that time is up to you. In the end, you get out what you put in ...! I work hard at developing my craft.  
I would like to remain in academia upon completion, if they have me. The key is to find that decision-maker that is prepared to give you an opportunity. Panels interviews don't do it for me as there is no transparency or genuine feedback. I am an academic now regardless of tenure etc. I have too much invested! Where that takes me only time will tell.   
I would absolutely recommend doing a PhD in IP but commitment is everything, and that is not for everyone."
Believe it or not, doing a PhD is not
the only pleasant thing to do in Paris
Cédric: PhD is not the only way! 
"I first enrolled to ... be able to get paid for the classes I was teaching (I needed this status to be an 'official' adjunct lecturer at the law school, as required in France). I realized later that writing a thesis was not my vocation, and I stopped. Years later, after I came back from a stay at a foreign university, I decided to go for the PhD again, after I understood that the 'Doctor' title is a plus if you want to work abroad. In other words, I wrote a monograph not for the pleasure of helping science, but for more trivial reasons! 
The moments of fun while doing your PhD are rare, and exclusively solitary. Writing and thinking lead to isolation, and socially you have nothing to share on what you are doing. Plus your friends do not see the point of doing this - and they are right! 
I think that embarking a PhD adventure is only partly useful to enrich one's own professional expertise, because you can also improve your professional skills by writing several articles rather than loose sweat, blood and faith in a doctoral thesis. 
I was thinking of remaining in academia upon completion of my PhD. Yet, ironically having finished the PhD precipitated the end of my academic career! 
I would recommend doing a PhD only at certain cumulative conditions: do it in a different country from your own, get full funding (but not from your parents!), write it in English, choose a topic that will help you find a job afterwards.  
Any other point? Well, why write a PhD when you're young? It's an experience you can live later - when you retire for example!"
Katfriend #4: There are difficulties but also pleasant surprises along this journey
"I am not sure when I started my PhD what I really expected. I did not expect that there would be as many extremes - extremely good days when I felt I was making real progress - and bad weeks, when I questioned what I was doing, and why. At times I loved it, and was grateful for the mere opportunity. At other times, it was an object of annoyance and irritation, most often when the relationship with my supervisor, and other colleagues in the department was at its worst. 
A group of doctoral candidates keenly
awaiting the return of their supervisors
I also did not expect to be treated with disdain by academic staff, or feel unsupported - it was almost as if I was a doormat to be trodden over. One professor even stated quite openly that there are ‘students of status - and students without status.’ By this he referred to those with research council funding versus those without. 
I think the biggest thing I wish I had known was to expect the unexpected and prepare for the unknown. Be aware that it will be far from easy, do not expect to be treated with respect from the department, and be ready to have days where things do not go to plan. It is part of the test, but nobody will ever tell you that. 
As for a PhD in IP – I have no regrets about doing the PhD. It is however not the thing itself but the process that is important. I regret the department where I did it sometimes, but without the town, and without those years, I would not be doing what I am doing now, and I would not have had the experiences or travel I have had. I also would not have some of my closest friends. The PhD is a journey – but again, nobody will tell you that. Prepare to be told nothing, and to learn everything yourself – it is a fantastic lesson in self-discovery." 
Katfriend #5: I felt isolated and did not receive the guidance I needed  
"I began life as a PhD student in IP with a certain amount of confidence and optimism. I had just completed an LLM at a prestigious law school with flying colours and successfully passed a very tough bar exam. What’s more, my legal education had brought to the forefront my interest in theory and abstract thinking. My teachers picked up on this and noted that I was naturally inclined towards the academy. Writing a PhD seemed to me, and to those around me, as the natural next step towards a career. 
I found the PhD experience very difficult. I hoped for guidance on how to make the transition from being a good law student to becoming a good legal academic. In my mind, this involved some senior figure showing me how to produce good legal scholarship. But this tuition was not readily available. Over the course of three years, I met with my academic supervisor very infrequently – roughly every two or three months. She is a nice person, but far too busy for serious academic supervision. She rarely gave intelligible feedback; it felt like we were always speaking two different languages. In three years, I don’t think she ever read anything I wrote. Even more problematically, it felt like the whole institution had failed to define its vision of good legal scholarship. This left me completely rudderless. I did not know what to write about; I did not even know the type of questions that I should be asking. 
There is no way around this fact: it was an isolating, lonely, and incredibly frustrating time. It was a real sink or swim environment. Some students sunk and flunked out of the program. That prospect of failing horrified me, as did the idea of having no source of income and no positive references from my last employer. So I doubled down and worked as hard as I could. I took no holiday for over two and a half years. I regularly worked twelve-hour days and ate all my meals at my desk. But in doing so, I became a much better scholar. I defined for myself a vision of good legal scholarship and tried to produce something fitting of that description. Ultimately, I completed my PhD (which barely passed) and accepted a post-doc position at another institution. For which, my PhD supervisor provided a reference (but which I drafted myself).  
Perhaps, therefore, this was a success of sorts. But it came at a high price. At the end of five years of doctoral and post-doctoral study, the constant stress levels have taken a serious toll on my health. I developed a heart arrhythmia, very serious insomnia, and suicidal behaviour. I was subsequently diagnosed with generalized anxiety disorder and dysthymia (chronic depression). The anti-depressants are helping a little. I cannot ascribe all of these problems to my PhD. I am probably the type of person naturally inclined towards these illnesses. But it certainly feels like my experience as a doctoral student contributed significantly towards these maladies."
Katfriend #6: What happens after the PhD? Sadly, not much it would seem
"I do not remember having very clear expectations of what I wanted my PhD experience to be before I started it, but it has definitely been more isolated and lonely than I had hoped. I had also thought that, being part of the fairly small IP research cluster at my law school, I would have a lot more interaction and perhaps a greater sense of camaraderie and equality even with the more senior and more established members of staff. This, however, was not the case, and over the course of my PhD I have been made very conscious of my status as a student first and foremost, rather than as a junior researcher and hence more of an equal. 
Classic PhD moment:
a supervisor and his PhD candidates
One thing that I would have really appreciated being told before starting on an IP PhD was how difficult it would be obtaining an academic appointment, especially within my current jurisdiction (the UK) [this is something that also this blog addressed here]. 
Notwithstanding the importance of IP, it remains very much an optional subject as it is currently taught in most universities, and many of the junior positions I have seen advertised so far are either not in IP or require the appointee to be capable of teaching at least one foundational law subject. In addition to the dearth of IP-focused academic positions, there is also the more general and now seemingly ever-present problem of a dearth of positions for junior academics in law in the first place. Even where these are available, most of them seem to be for fixed-term research and teaching positions, which are not particularly conducive for building a career, implementing longer-term research plans, or giving one any sense of stability and permanency. 
I began this PhD with the intention of remaining in academia for my foreseeable working life, and that is still my primary aim. But I also have a sense that this is increasingly becoming one of my few remaining options. While I qualified as a lawyer in my home jurisdiction, I now feel both too underqualified and too overqualified to return to legal practice, having been away from it for so long. This is also something I wish I could have been told before starting my PhD – that towards the end, I would feel ill-equipped to return to legal practice even if I wished to, and potential employers might share the same perception."

Katfriend #7: The PhD system is really broken 
"It goes without saying that I have gained a lot from the PhD and it has been a privilege to have the opportunity to complete one. However, I also think it's important to articulate that there's a huge structural flaw with IP PhDs, which is reflective of the broader field of humanities scholarship. There is no incentive for supervisors to offer anything more than a cursory check on what a PhD researcher investigates. This means that everything from the question being answered, the method, the refinement, the exploration and the product is a vastly inferior version to what could be produced if there was more of a collaborative, cooperative spirit. The disappointment of many PhDs should provoke a deep reflection on IP scholarship as a whole, but without incentives to do so, it will continue in its sorry, hamstrung state, where a lot of research is repetitive and fails to enhance understanding or advance the field, and scholars are made through sheer survival."
*******

A high degree of initial intellectual curiosity seems to be the main common driver behind the stories told above. Also, some of the stories reported are less dramatic accounts than those of the Times Higher Education article.

However, it seems that in most cases the way the PhD experience actually turned out depends a lot on the relationship (or lack thereof) with one's own supervisor. 


It would be interesting to hear from PhD supervisors how they perceive their role and what guidance they practically offer their students [also: do they ever think whether THEY are doing the right thing for their students, rather just than questioning what their students are actually trying to write?], as well as the experience of both those enjoying/struggling with/hating their own PhD adventure (past or present) and those that have decided or even never considered [BREAKING: they do exist] doing a PhD.

Never too late! If you missed the IPKat last week ...

How swiftly time flies when you're up to your whiskers in intellectual property! Here's the seventh in the regular series of round-ups of the previous week's Katposts, admirably adumbrated for your absorption by recent guest Kat Alberto.  It remains a matter of great happiness to the IPKat and Merpel that these posts have been so well received. If you away last week, or too busy to take a look -- or if you are one of the fifty or so new email subscribers who have signed up in the past few days -- this is a handy way to see what has gone before without having to trawl through all the contents of your in-box.  Incidentally, Alberto will be on his travels for the next couple of Mondays so current guest Kat Rebecca will be kindly filling in for him. Thanks, Rebecca!

Anyway, without further ado, here's what you might just have missed last week:

Solicited by David and hosted by Darren, Katfriend Donal Kelly pens his pensées on the new Irish Intellectual Property (Miscellaneous Provisions) Bill 2014. Among other things, the Bill seeks to amend the Irish Patents Act by providing legal certainty in relation to Bolar-type exemptions, and this is what this post is pretty much about. Recalling an earlier post of his, Darren wonders how UPCA-enacting legislation may trump Bolar-wise national provisions.


Copyright Kat Eleonora gives us a tremendously useful recap of all the copyright cases pending before the Court of Justice of the European Union (‘CJEU’). Among them, what would be the one to look forward to the most after the summer break? Eleonora has no doubts: "it’s Case C-419/13 Art & Allposters!”, she replies, a case which touches pretty much all the hottest copyright topics, from exhaustion to the right of adaptation. The CJEU’s ruling is on its way, and there’s nothing better than this post if you want to get ready for it.


On 21 October 2013 the IPKat published here a guest post under the title “The new Community trade mark top-up: a call for debate”, in which Richard Ashmead called for a debate on the European Commission’s proposal in Article 28(8) of its draft Community Trade Mark Regulation (CTMR), providing for CTM class heading registrants to request a top-up of their list of goods beyond the literal meaning of their class heading wordings. Now Richard pops up with this top-up post to bring readers up-to-date upon the state of the new directive negotiations on Nice classification and the latest version of the EU IP trade mark system.


Last December the IPKat reported on Case C-535/13 Honda Giken Kogyo Kabushiki Kaisha v Maria Patmanidi SA, a request by the Greek Monomeles Protodikeio Athinon for a preliminary ruling concerning international exhaustion under the General Agreement on Tariffs and Trade (GATT), TRIPS, and competition law under Articles 101 and 102 of the Treaty on the Functioning of the European Union (TFEU). In this post, Jeremy leaves the floor to Katfriend and Greek attorney Maria Kilimiris (Patronos & Kilimiris, Athens), who tells readers about the reasoned order that the CJEU issued on 17 July in the very same case, giving its take on the relation between trade mark exhaustion and freedom of competition under the international agreements mentioned above. 


In 2008, Laura Matthews changed her name for a new one with “Skywalker” as her new middle name. When she applied to renew her passport, though, the UK Passport Office said they could not accept her application because ‘Skywalker’ was a registered trade mark and could form part of her passport signature. Rebecca reports this rather unreal story and this blogger is not enough a fan of Star Wars to close this sentence with a funny joke about “the force”, the Jedi or whatever. 


The regular guestpost contributor Suleman Ali, of boutique practice Holly IP, lets drop another of his highly readable posts, this time on the Discussion Document: the Publication of Patent Applications that the United Kingdom Intellectual Property Office has recently published with the purpose to ask for feedback on specific ideas it has had for changing the way patent applications are published. Like Suleman’s earlier ones, it is another worth-reading piece which attracted an impressive number of comments.


Rebecca reports on Manuel Noriega, the former dictator of Panama, complaining about a character of the notorious videogame Call of Duty bearing his name and likeness. Noriega said that the game portrayed him as a kidnapper, murderer and enemy of the state, and that it had damaged his reputation. What a shame!


Eleonora provides food for thought on relation between copyright and football games, investigating whether and how one can claim exclusive rights on videos and gifs reproducing goals -- this latter practice became popular during the recent World Cup. Is there copyright in an extract from a football match? And, if so, would the “news reporting” exception apply? Here’s what the copyright Kat thinks.


After wondering in his previous post whether the “lean start-up” approach to entrepreneurship might be a disincentive to inventive activity of the patent kind, Neil wonders whether emerging structures for creating more effective training environments for start-ups and their founders affect the traditional role that trade secrets play in the process of creation and innovation. This is a rather Freudian issue, Neil explains, as it goes at the heart of the relation between the start-ups’ mentors, the accelerator, and the knowledge heritage of the start-ups themselves.


Three urban artists have just brought copyright infringement suit in the Northern District Court of Illinois against movie director Terry Gilliam of Monty Python fame. The artists claim that Gilliam reproduced without permission their copyright work Castillo (Castle), a mural they collectively painted in 2010, in his movie The Zero Theorem, which will be released in the U.S. next month. Marie-Andrée reports the full story.


Last year Angelina Jolie faced a copyright infringement action for the film In The Land Of Blood And Honey, which she directed. James Braddock, a Croatian author and journalist, claimed copyright infringement on his work The Soul Shattering. In March 2013, the US District Court of California ruled that there was no copyright infringement. That might not be the last word of this tale, Rebecca reports.

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