For the half-year to 31 December 2015, the IPKat's regular team is supplemented by contributions from guest bloggers Jani Ihalainen, Nikos Prentoulis and Mark Schweizer.

Birgit Clark is on Sabbatical till the end of the year

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

Tuesday, 24 November 2015

No safe harbour for PORT CHARLOTTE trade mark registration, as GI storm brews

From Katfriend Nuno Sousa e Silva who teaches in the Law School of the Portuguese Catholic University, Porto (Portugal), comes an analysis of an issue that is not only sensitive within Europe in general but which may divide the Portuguese from the Scots: the interaction of Europe's laws on the protection of geographical indications with those which allow for the registration of trade marks.  Nuno writes as follows:

National GIs for wines can be invoked to invalidate trade marks; OHIM must change its practice.

Geographical Indications (GIs) are often regarded as an enigmatic, rural, and rather bizarre intellectual property rights.  Art. 22(1) TRIPS defines them as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. However, GIs do not need be geographical in name (FETA and BASMATI are two notable examples).

In the EU the rules on GIs are spread across three different Regulations:

Regulation 1151/2012 concerning certain foodstuffs and certain non-food agricultural products (the ‘Foodstuffs Regulation’);

Regulation 1308/2013 concerning wines and sparkling wines (this extensive piece of legislation establishes a common organisation of the markets in agricultural products.  The part concerning GIs is found on Arts 93–111);

Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks.

These regulations, which are actually quite alike, were preceded by several other Regulations with similar content.

One should also bear in mind the Rules on labelling and presentation for aromatised wines (Regulation 1601/91) and the ongoing debate about the possibility of extending the EU system of GI protection to non-agricultural GIs.

Under EU Law GIs are protected against:
  • consumer deception (Arts 13(c) and (d) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
  • commercial use in comparable products (Art 13(a) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
  • commercial use exploiting reputation (Art 13(a) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
  • misuse, imitation or evocation (Art 13(b) of the Foodstuffs Regulation and corresponding provisions in the other regulations)
GIs cannot become generic (Art 13(2) of the Foodstuffs Regulation and corresponding provisions in the other regulations)

The co-existence of national systems of protection for GIs with protection existing at EU level has been controversial. In 2009 the CJEU confirmed in Case C-478/07 Budĕjovický Budvar (the BUD case) at para 114 that the aim of Regulation 510/2006 [replaced by Regulation 1151/2012]
“is not to establish, alongside national rules which may continue to exist, an additional system of protection for qualified geographical indications, like, for example, that … on the Community trade mark … but to provide a uniform and exhaustive system of protection for such indications” (emphasis added).
It was however unclear whether this reasoning extended to EU-level protection of GIs for wines and for spirits. On 18 November the General Court issued a decision which shows that it does not: at least for wine, GIs national rules apply and must be taken into account by OHIM.

Background to the dispute

In October 2006, Bruichladdich Distillery Co. applied to register the words PORT CHARLOTTE as a trade mark for “alcoholic beverages” (class 33), later restricted to “whisky”. In 2011 Instituto dos Vinhos do Douro e do Porto, IP (IVDP) — a public body responsible for the protection of the GI PORTO/PORT — filed an application for invalidity under Art 8(4)of the Community Trade Mark Regulation (CTMR) based on EU law and Portuguese law.

Under Art 312(4) of the Portuguese Industrial Property Code:
“The use of an appellation of origin or geographical indication with a reputation in Portugal, or in the European Community, in products that are not identical or similar, whenever its use aims at, without due cause, exploiting the distinctive character or reputation of the appellation of origin or might harm them [the distinctive character or reputation] is forbidden.”
This provision mirrors the protection against dilution established for trade marks, applying without regard to the principle of speciality. There is a considerable amount of case law that protects the Appellation of Origin PORTO under Art 312(4) of the Portuguese Industrial Property Code.  To give but a few examples: PORTO7 for cinemas, shows & exhibitions, PORTO BRASA for restaurants, GPORT for meat, fruits, and olive oil, and PORTO ORIENTE for tapestry were all refused in 2014 under this Article.

IVDP argued that the trade mark PORT CHARLOTTE would not be admissible under the provision of Portuguese law cited above should therefore be invalidated under Article 53(2)(c) CTMR.

It is clear that the OHIM must take into account GI protection (Art 14 of the Foodstuffs Regulation and corresponding provisions in the other Regulations). As the General Court held in Case T-291/03 Grana Biraghi §55-56:
“...OHIM is bound to apply [the CTMR] in such a way as not to affect the protection granted to PDOs .... Consequently, OHIM must refuse to register any mark which is covered by one of the situations described in Article 13 [now Reglation 1151/2012]... and if the mark has already been registered, must declare that registration to be invalid.”
However, up until now, following the BUD decision mentioned above, OHIM considered that the wine and spirit regulations established a uniform and exhaustive system of protection and that, therefore, national laws on GIs could not be invoked against a trade mark registration. That principle is found on p.11 of this section of the official guidelines.

The Board of Appeal (Case R 946/2013-4) followed this understanding and rejected the application for invalidity.  IVDP then appealed to the General Court on several grounds.

The decision

In Case T‑659/14 IVDP v OHIM (PORT CHARLOTTE) General Court held:
“…it is clear that neither the provisions of Regulation No 491/2009, nor those of Regulation No 207/2009, state that the protection under the former must be construed as being exhaustive in the sense that that protection cannot be supplemented, beyond its particular scope, by another system of protection. On the contrary, it follows from the unequivocal wording of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and from that of Article 53(2)(d) of that regulation, that the grounds for invalidity may be based, individually or cumulatively, on earlier rights ‘under the [EU] legislation or national law governing [their] protection’. It follows that the protection conferred on (protected) designations of origin and geographical indications under Regulation No 491/2009, provided that they are ‘earlier rights’ within the meaning of the abovementioned provisions of Regulation No 207/2009, may be supplemented by the relevant national law granting additional protection.” (para 44).  
That means:
“…The question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law. In this connection, account must be taken, in particular, of the national legislation relied on and the judicial decisions delivered in the Member State concerned….”(para 47).
“...the Board of Appeal was not entitled to dismiss that evidence and fail to apply the Portuguese legislation in question, on the ground that the protection of those designations of origin or geographical indications fell within Regulation No 491/2009 exclusively, and indeed the exclusive competence of the European Union” (para 48) … “Consequently, the Board of Appeal’s approach proceeds from a manifest misinterpretation of the scope of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and of Article 53(2)(d) of that regulation, which vitiates the legality of the contested decision” (para 49).
The second part of the decision analysed the claimed violation of Art 118m(2) of Regulation 491/2009 (now Art 103/2 Regulation 1308/2013) and found that the trade mark PORT CHARLOTTE neither used nor evoked the GI PORTO/ PORT.

The Court also rejected the absolute grounds of Arts 7(1)(c) and 7(1)(g), invoked under Arts 52(1)(a) CTMR. It did not consider the trade mark descriptive nor deceptive.

What does this mean?

Unless reversed on appeal, this decision is a departure from established practice and means that national laws on GIs can make a significant difference in the possibility to register some CTMs. The possibility of extended protection against dilution for famous GIs can be regarded as justified or as an undue burden on free commerce. That is up for debate.
This Kat agrees that national laws can't be ignored or swept under the carpet unless there is some explicit legal statement -- or an extremely strong implication -- that can serve to disapply them.  Merpel however wonders what good can come from this decision. As a seasoned drinker, she struggles to see how her drinks cabinet could not be cosmopolitan enough to hold both PORTO wine and PORT CHARLOTTE whisky.  What, from PORTO's point of view, is there to be lost or needs to be protected?  Both Kats fancy that there will be an appeal ...

How to pronounce Bruichladdich here and here

Before you circumvent, circumspect! Nintendo TPM triumphs in Italy

This Kat is from a bygone generation in which games and playing were rarely associated with anything electrical. Crossword puzzles, chess, bridge, football, tennis -- all of these were "contact sports" in the sense that some form of human contact (including asking a friend for advice when stuck for a cryptic crossword clue) was generally required. Special treats, like battery-operated cars, were only treats for as long as the batteries lasted -- which in his case was not usually very long.  He therefore marvels not only at the sophistication and excellent graphic quality of video games but also at the ability of people who are approximately one-tenth his age to master them so speedily and with to acquire such proficiency in beating him at them.

Be this as it may, here's a guest post from Katfriends Ray Black and Mary Guinness (Mishcon de Reya) which touches not only the profile of the lucrative game market today but also on the outcome of an exciting piece of Italian litigation involving game-related technology. This is what they tell us:

Nintendo wins Italian case against mod chip seller after CJEU’s ruling on security in its consoles and games

Nintendo has recently obtained a positive ruling from the Italian courts, in relation to PC Box's sale of mod chips and game copier devices that are capable of being used to circumvent the technological protection measures (TPMs) on Nintendo's DS and Wii Consoles and authentic video games.  This decision was keenly-awaited since it was the first interpretation of the CJEU's ruling in January 2014 in Case C-355-12 Nintendo v PC Box [on which see Katpost here and links to earlier comments; one R Black appeared for Nintendo in this reference ...] on the effectiveness of TPMs and enforceability of rights against those who seek to circumvent them. 


Piracy is a major threat to the videogame industry, costing hundreds of millions of euros in lost sales every year.  One of the tools the video game industry can deploy to protect its games against the threat of piracy is to implement TPMs which prevent unauthorised copies predominantly downloaded from the internet by consumer from being played on a genuine video games console.  Article 6 of Directive 2001/29 (the InfoSoc Directive) gives rights holders the right to take action against the circumvention of any effective TPMs.

Nintendo had implemented a system of TPMs on its products to prevent the play of unauthorised copies of Nintendo video games developed by Nintendo and third parties (SEGA, Ubisoft etc.). PC Box were selling 'mod chips' and game copier devices which, once installed on the respective console, circumvented this protection system. Nintendo commenced proceedings under Article 102c of Law No 633 as amended by Legislative Decree No 68 which transposes the InfoSoc Directive into Italian law and gives rights holders the ability to take action against any person manufacturing and/or distributing equipment which circumvents TPMs. 

PC Box claimed that Nintendo were not entitled to challenge their circumvention of Nintendo's TPMs for a number of reasons. In particular:

·        Nintendo had not only implemented the TPM in the product protected as a copyright work (i.e. the game itself) but also in the games console. This meant that it not only prevented use of pirated video games but also prevented the use of any legitimate third party games from operating on Nintendo's consoles. On this basis the TPM went beyond merely preventing the use of unauthorised copies; and
·         The PC Box equipment had a legitimate commercial use, in that it enabled the use of 'homebrew' – applications from independent manufacturers created specifically to be used on Nintendo's consoles. 

The Italian Court sought a preliminary ruling from the CJEU on the interpretation of Article 6 of the InfoSoc Directive.    

The Law

Article 6 of the InfoSoc Directive states:

Obligations as to technological measures

1. Member States shall provide adequate legal protection against the circumvention of any effective technological measures, which the person concerned carries out in the knowledge, or with reasonable grounds to know, that he or she is pursuing that objective.

2. Member States shall provide adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services which: 
(a) are promoted, advertised or marketed for the purpose of circumvention of, or
(b) have only a limited commercially significant purpose or use other than to circumvent, or 
(c) are primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, any effective technological measures.

Article 6 must be read in the context of the recitals to the InfoSoc Directive, which state:

(47) Technological development will allow rightholders to make use of technological measures designed to prevent or restrict acts not authorised by the rightholders of any copyright, rights related to copyright or the sui generis right in databases. The danger, however, exists that illegal activities might be carried out in order to enable or facilitate the circumvention of the technical protection provided by these measures. In order to avoid fragmented legal approaches that could potentially hinder the functioning of the internal market, there is a need to provide for harmonised legal protection against circumvention of effective technological measures and against provision of devices and products or services to this effect.

The IPKat's favourite PC
Box ("public call box") ...
(48) Such legal protection should be provided in respect of technological measures that effectively restrict acts not authorised by the rightholders of any copyright, rights related to copyright or the sui generis right in databases without, however, preventing the normal operation of electronic equipment and its technological development. Such legal protection implies no obligation to design devices, products, components or services to correspond to technological measures, so long as such device, product, component or service does not otherwise fall under the prohibition of Article 6. Such legal protection should respect proportionality and should not prohibit those devices or activities which have a commercially significant purpose or use other than to circumvent the technical protection. In particular, this protection should not hinder research into cryptography.

(49) The legal protection of technological measures is without prejudice to the application of any national provisions which may prohibit the private possession of devices, products or components for the circumvention of technological measures.

... though other PC Boxes
are more functional
(50) Such a harmonised legal protection does not affect the specific provisions on protection provided for by Directive 91/250/EEC. In particular, it should not apply to the protection of technological measures used in connection with computer programs, which is exclusively addressed in that Directive. It should neither inhibit nor prevent the development or use of any means of circumventing a technological measure that is necessary to enable acts to be undertaken in accordance with the terms of Article 5(3) or Article 6 of Directive 91/250/EEC. Articles 5 and 6 of that Directive exclusively determine exceptions to the exclusive rights applicable to computer programs.

Preliminary ruling of the CJEU

In January 2014, the CJEU ruled that:

(1) a video game is not just a computer program but includes other creative elements and so falls under the scope of InfoSoc Directive and is not excluded from protection under that Directive by virtue of the Software Directive 2009/24.  
(2) Protection granted to TPMs under Article 6 of the Directive include measures which are incorporated partly in the video game itself and partly in the console, and which interact to allow a videogame to be played on the console.    
(3) In order to be entitled to protection under the InfoSoc Directive, the TPM must be proportionate and suitable for the achieving the objective of protecting copyright works.  They must not go beyond what is necessary to achieve that objective.  
(4) it is for the national court to determine whether the TPM are proportionate and this should involve the examination of:

(i) the actual use of the circumvention devices – to see how often they are in fact used to allow unauthorised copies of video games and how often they are used for purposes which do not infringe copyright; 
(ii) whether other measures or measures which are not installed in consoles could cause less interference with the activities of third parties, while still providing comparable level of protection of the rights holder's rights; and 
(iii) the relative costs of different types of TPMs, and the technological and practical aspects of their implementation.

The Italian decision

So what about the decision of the First Instance Tribunal of Milan [it’s No. 12508/2015, published on Nov. 6, 2015 - General Case Roll No. 11739/2009, in case you were wondering]?

Following the CJEU ruling, the Italian court first addressed the CJEU's finding that videogames were indeed more than just computer programs and ruled that Nintendo's video games fell within the scope of protection provided by the InfoSoc Directive.   

The Court then considered whether Nintendo's TPMs were in fact proportionate, taking into account the factors identified by the CJEU.  Nintendo had filed an expert report specifically dealing with the technical description of its TPMs, illustrating the advantages in terms of costs, ease of use and security.  The expert report also compared the TPMs with the known alternatives. With respect to the actual uses of the circumvention devices sold by PC Box, again Nintendo filed evidence. 

The Court made it clear that it was for the defendant (ie PC Box) to bear the burden of proof in establishing whether TPMs could have been deployed which could cause less interference while providing comparable protection was placed on the defendant; the same applied to proof of the actual uses of the circumvention devices.  Since, PC Box filed no evidence and raised no adequate arguments to counter these points, the Court accepted the evidence on its face value and concluded that PC Box breached the lawful TPMs installed on Nintendo's devices.   As well as orders for destruction of the PC Box equipment, the Court awarded significant damages to Nintendo together with reimbursement of its costs of the proceedings. 

No window for Box

While for many, after the CJEU decision, the Italian Court's judgment will not come as a surprise, some commentators had felt that the CJEU had left a window open for PC Box and similar suppliers of circumvention measures where there is legitimate non-infringing commercial use of their equipment. 

We now have our first indication of how national courts will be interpreting this decision and this is in line with previous decisions before the High Court, England and Wales (e.g. Nintendo v Playables [2010] EWHC 1932 (Ch) [noted by the IPKat here]).
Thanks for this update, says the IPKat!

Monday, 23 November 2015

Monday miscellany

In "Jumpin' through hoops? A copyright claim that never got off the ground", this Kat hosted a guest contribution from Kevin Winters on a copyright infringement action brought by Jacobus Rentmeester against Nike on the basis that its iconic Michael Jordan "Jumpman" logo (left) infringed his copyright. Now there is a sequel. This Kat has been advised that the trade mark on the right, owned by Oxfordshire-based Orthomobility Ltd -- a company that makes prosthetic devices -- has been registered in Germany.  Thank you Edward Humphrey-Evans (Katpat!) for keeping us informed.

Around the weblogs 1.  One of the most entertaining items to appear on the copyright-focused 1709 Blog for a while is quite an unexpected one: Amanda Harcourt's review of Matthew Billy's podcast about ASCAP, the BMI and Sharkey the seal.  The same weblog carries an obituary for the United Kingdom's private copying exception, solemnly penned by Andy Johnstone.  IP Draughts' Mark Anderson voices some well-aimed criticism at a futile appeal in respect of an agreement governing a selection of Bob Marley works including No Woman, No Cry: "the court at first instance and the Court of Appeal had a relatively straightforward task to interpret the 1992 agreement, and they performed it well. No new point of law arises from the case. There is no guidance that needs to be given to drafters in light of the case. It is an illustration of how far a party is prepared to go to try to protect its business interests, by pursuing a dud case all the way to the Court of Appeal".

Around the weblogs 2. On the Class 46 European trade mark blog, Laetitia Lagarde writes up a neat little decision of the General Court to the effect that earlier MUSTANG word and figurative (right)marks for clothing would not be tarnished by the negative association of a later figurative mark containing the word MUSTANG for cigarettes. The Selvam and Selvam blog has drawn attention to the intention of the Indian Government to amend the Trade Mark Rules 2002 via  the Trade Mark Amendment Rules 2015. These propose, inter alia, to hike filing and prosecution fees by 100% and to empower the Registrar to determine certain marks as being well-known trade marks. Raja Selvam's post is here: objections and suggestions should be sent to the Additional Secretary to the Government of India at sahni.palka at by 18 December 2015.

UCL, on the road again ...
Homeless faculty teaches copyright, offers 29 CPD points.   Convened by the ever-excellent Amanda Harcourt, "Copyright Law: Meeting the Legal Needs of the Creative Industries in the 21st Century" is the title of a forthcoming course at University College London (UCL). Running from Monday 18 to Friday 22 January 2016, its aim is to help young practitioners, advising in accordance with current statutes and existing contracts, to look to the future and explore copyright and related laws in a digital context together with imminent legal developments. The Faculty includes fellow Kat Eleonora, 1709 Blogger John Enser (Olswang LLP), not to mention a healthy pawful of Katfriends.  Indeed, this Kat can vouch for the fact that the other speakers in this stellar faculty are very much worth hearing, too.  There's just one detail to bear in mind: if you are going to commit yourself, it's best not to delay too long since there's a deadline for registration. As the college explains:
As the UCL Law Faculty is currently virtually “homeless” because of building works, the Faculty will be securing an outside venue for this conference. Choice of venue will, naturally, be dependent upon numbers. As a consequence applications for entry from attendees will close on Wednesday 16 December 2015.
You can read more about the course content and download the brochure by simply clicking here.

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

Last week was another phenomenally busy one for the IPKat blogging team, a week in which we received over 60,000 casual visitors and a whole hatful of new email subscribers.  To help you help navigate the previous week's blogposts, here is the regular weekly summary which has again been artfully stitched together by Katfriend extraordinaire Alberto Bellan for your comfort and convenience. So, if you missed the action on this weblog last week, here is Round-up 73:
* Night Watch, Why Not? The art of trade markapplication
Everyone who filed a Benelux trade mark application between 13 September and 14 November was promised a gift in the form of a painting of their new trade mark by the lovely Benelux PTO. Katfriend Bas Kist (partner in Dutch trade mark and branding practice Chiever) takes up the tale. 
* The European Patent Office
Merpel had been receiving a number of alarming emails about something big going on at the European Patent Office (EPO). None of them came from the EPO itself, though. 
* Eponia: Land of Suspense and Suspensions
And here’s what all those emails were about! The European Patent Office (EPO) has been in some turmoil this week following the suspension of several union officials. Events have moved quicker than Merpel’s typing paws. 
* Former judge says actions of AC and Battistelli"devoid of any legal basis"
Prof Dr Siegfried Broß is a highly respected former judge, who sat for 12 years on the Patent Division of the Federal Court of Justice and for a further 12 years on the Federal Constitutional Court.  Merpel has an English version of his interview by Juve, a German review for lawyers, translated into English.  
* Format fight brews as Barry refuses to be silencedover the Voice
Katfriend and occasional contributor Emma Perot writes up a Dutch dispute concerning a topic that leaps into the limelight for a short while and then vanishes for an age: the legal protection of TV show formats.   
* Plunging off the abyss -- or merely grinding to ahalt? More bad news from Eponia
“We have a patent application which has been sitting untouched on an examiner’s desk in the EPO for over 10 years”, writes a friend to Merpel. And this not the only malfunction affecting the EPO, Merpel observes.  
* Encouraging creativity and IP awareness: UK intensifies its Cracking Ideas programme
On Tuesday of last week, this Kat posted (second item down) a note on the UK Intellectual Property Office's intention to spreading the word about intellectual property to the wider community and its renewed commitment to its Cracking Ideas programme together with Wallace & Gromit. By way of a follow-up, here's a comment on Cracking Ideas from Katfriend Ronan Deazley, an IP professor at Queen's University Belfast. 
* Copyright term, authorship and moral rights: the intriguing tale of Anne Frank's Diary
Occasional contributor and scholar Mira T. Sundara Rajan discusses the copyright aspects of an intriguing, historically significant and sensitive topic, this being Anne Frank’s Diary. 
* By Juve! The EPO responds to Professor Broß
After hosting the strong criticism of the legal basis of certain decisions taken by the Administrative Council of the European Patent Organisation and the President of the EPO by a German former constitutional Judge (Katpost with English translation of that interview here), the respected German law publication Juve had just published a rebuttal, by EPO Vice-President Raimund Lutz.   
* Down the Tubes: will Chambers' efforts go unrewarded?Here’s a guest post from Katfriend and former Guest Kat Rebecca Gulbul on an attempt by a disappointed entrepreneur to leverage a spot of compensation from an organisation that is known to its users as a body which is far better at taking money than at giving it away, as any visitor to London will know to their cost -- Transport for London. 
* Why the Enlarged Board rejected the AC in September
Merpel has finally had sight of the written decision of the Enlarged Board of Appeal (EBA) in which it rejected the request made by the Administrative Council (AC) chairman, Mr Kongstad, seeking the dismissal of a Board Member for the events leading up to the House Ban. This is a first, high level post … 
* Read it for yourself: Enlarged Board decision Art 23 1/15
…  and here’s the decision proper. 
* When does a broadcasting organisation not communicate works to the public? CJEU has its say, speaking of "copyrighted" works but not much of "new" public
Eleonora gives an account of this brand-new decision by the Court of Justice of the European Union in SBS Belgium v SABAM Case C-325/14, which concerned the right of communication to the public within Article 3(1) of Directive 2001/29 as applied to TV programmes transmitted via direct injection. No idea what “direct injection is about”? Neither did I, before reading this post by eLAWonora! 
* The best coffee brand that you never heard of: COFIX as the brand of the year
Neil tells of his brand of the year, an Israeli company that started with selling coffee and ended up with becoming a true, fulfilling brand experience involving many other goods. 
* IP Enforcement and Anti-Counterfeiting in China: A‘Golden Era’ of Progress?
At the end of October, as part of the China state visit to the UK, the China-Britain Business Council and British Chamber of Commerce in China hosted the third UK-China Intellectual Property Symposium at The Royal Society. Katfriend Nick Buckland (Irwin Mitchell) reports. 
* Munch ado about nothing? Oslo City Council seeks iconic registrations
Thomas Hvammen Nicholson (Protector IP Consultants AS, Norway) writes about the trade mark registrability, or otherwise, of some iconic artwork in Norway. 
* Digital files "property", says court in "female patronage" case
From Katfriend Ken Moon (IP/IT consultant to AJ Park, Auckland, New Zealand) comes this most helpful analysis of Jonathan Dixon v The Queen [2015] NZSC 147,a New Zealand Supreme Court ruling that goes further than traditional British rulings by analogising digital files to "property". 
* Risotto ruling, or how our Italian friends enjoy themselves ...
From Katfriend Anna Maria Stein comes a report of a truly fun event, though it has a thoroughly serious dimension to it. This event, hosted in the Triennale Museum, Milan, was a mock trial of one of the most renowned creations by the Italian Chef Gualtiero Marchesi -- a risotto called “Riso oro e zafferano”. 
Never Too Late 72 [week ending on Sunday 15 November] –  Merck Sharp & Dohme v Ono Pharmaceutical | Warner-Lambert Co LLC v Sandoz GmbH, Sandoz Ltd and Lloyds Pharmcacy Ltd | Economics of internet trolls | UK IPO scammer scammed | Video conferencing at the EPO | Warner-Lambert v Pfizer in France | African Ministerial Conference in IP | Green claims and branding | CJEU in Case C‑572/13Hewlett-Packard Belgium SPRL v Reprobel SCRL | World IP Report | New reference on blocking injuctions reaches the CJEU | Helme & Others v Maher & Another | European fruit and vegetables threatened by patent | 
Never Too Late 71 [week ending on Sunday 8 November] –  Article 112a EPC 2000 in EPO BoA R 0016/13 and R0002/15 | US Court on copyright over a 3-word phrase | EPO pauses poisonous-priority proceedings | Spain and right to be forgotten | Scotland NTS and IP | The Tartan Army Limited v Sett Gmbh, Oliver Reifler, Iain Emerson and Alba Football Fans Limited | New EU copyright exclusive! | EPO BoA plays better in 10 men | Maps and databases in C-490/14 Verlag Esterbauer | Yoga and copyright | Reid Hoffman and networks | The Lyrica patent dispute | TPP backlash. 
Never Too Late 70 [week ending on Sunday 1 November] –  Case T-309/13 Enosi Mastichoparagogon Chiou v OHIM, Gaba International Holding GmbH | Sixteen millions IPKats | Tomaydo-Tomahhdo LLC v George Vozray et al | Lookalike packaging | Parasite copying | 3D printing | Labouring the point? EPO dispute culture festers. 
Never Too Late 69 [week ending on Sunday 25 October] –  The 10 Commandments of IP Dispute Resolution | Republic of Cyprus v OHIM on halloumi | Case C-20/14 BGW Marketing- & Management-Service GmbH v Bodo Scholz | Passing off at common law and statutory passing off | Coty v Stadtsparkasse, back to Germany | EU Trade Secrets Draft Directive | “GREASECUTTER” and General Court | IP in the Fashion Industry | AIPPI 46th World IP Congress.

When words mean what they say: Bob Marley copyrights stay where they are

Not so exciting ... BSI Enterprises Ltd & Another v Blue Mountain Music Ltd [2015] EWCA Civ 1151, a Court of Appeal, England and Wales, ruling of 18 November 2015, is one of those decisions that looks as though it ought to be quite exciting because of its celebrity content but which actually has little or nothing to entertain the reader. That doesn't mean, however, that decisions of this nature have nothing to offer the serious student of IP law and practice.  That this is the case is demonstrated by Katfriend and occasional contributor Dorothea Thompson, in this guest piece below:

The Court of Appeal (Lady Justice Arden, Lords Justices Kitchin and Lloyd Jones) has confirmed that a definition’s express wording cannot be displaced by language elsewhere in the contract. Although this the decision turned on its facts, it applied the principles of contractual interpretation in the context of a fairly complex music copyright assignment.

Another case of art imitating nature?* 
This dispute concerns ownership of copyrights in 13 songs written by reggae musician Bob Marley, including perhaps his most famous (and most covered?) song "No Woman, No Cry". Present ownership depended upon a purported transfer under a 1992 agreement between Island Logic Limited (‘ILL’), part of the Island group of companies founded by Chris Blackwell, "the single person most responsible for turning the world on to reggae music", and Cayman Music Inc (‘CMI’). This issue turned on whether the songs were included in the 1992 Agreement, despite Marley’s deliberate misattribution of the respective copyrights (the “Misattribution Ploy”).

It appears that, like a number of reggae artists at the time, Bob Marley may not have been fairly compensated by certain parties for his work, which included (he contended) not receiving royalties under two publishing agreements. As a result, in order to gain control of the copyrights and/or revenue streams, Marley deliberately misattributed songs to various associates. Reportedly, the songwriting credits for “No Woman, No Cry” for example, were given to a friend to use the subsequent royalties to run a soup kitchen in Trenchtown, Jamaica, where Marley grew up.

After Marley died intestate in 1981, Mr Blackwell and Island (working with his estate) sought to safeguard his legacy by acquiring the rights in his works. Accordingly, Island entered into the 1992 Agreement, which Mr Blackwell believed would give Island virtually complete control over Marley's creative output.


As noted by the trial judge (Richard Meade QC, sitting as a deputy judge at [2014] EWHC 1690 (Ch), the March 1992 Agreement is lengthy and was carefully negotiated with expert input; however, “it is, in some respects, rather scrappy”, and nowhere does it refer to the 13 compositions in question.

The appellants had argued that CMI and Island had agreed either not to address the songs that were the subject of the Misattribution Ploy, or to treat them as not belonging to CMI; but this was simply nowhere to be found in the language of the Agreement. The deputy judge said that, for the parties to leave out the songs without saying so, and so maximise future uncertainty, seemed “little short of ridiculous”.

The Court of Appeal affirmed that interpretation was a question of law: to determine what the parties meant by the language in the Agreement. This involved ascertaining the meaning in the context of the factual matrix, i.e. what would the language would convey to a reasonable person having all the background knowledge reasonably available to the parties at the time of the contract. There was no challenge to the judge's findings as to the factual matrix itself.


The Agreement defined the "Acquired Assets" as a series of music publishing interests including "Compositions", in turn defined under the heading ““Composition” and “Catalogue”” as:
...all presently-existing musical compositions, or portions thereof… written recorded by Robert N. Marley, Winston Peter McIntosh and/or Neville Livingstone …under their own names or under any pseudonyms, individually or as part of any collaboration between or among any of them or others…
The appellants accepted that the language provided a “sweep up”, but contended this only covered "lost" songs, and not those the subject of the Misattribution Ploy. But the Court of Appeal affirmed that there was nothing in the language to support such approach. The preamble to the definitions section made clear that certain terms would have the meanings given to them by the clause, and the definition clearly signified that musical compositions written and recorded by Bob Marley were "Compositions" for the purposes of the Agreement.

Attempts to find a definition of "Compositions" elsewhere in the Agreement failed:

* Preliminary statement

A ‘Preliminary Statement’ referred to the sale of "certain" publishing interests; but this meant the extent of the assets being sold was to be determined by reference to the terms of the Agreement (rather than otherwise narrowing the scope of the included assets).

* Warranties

A warranty provided that Schedule 2 contained "a complete and accurate list of all of the Compositions"; another provided that the Seller was to deliver originals of all songwriter agreements pertaining to the Compositions; but importantly, the warranties did not purport to be or provide definitions.

* List of works

The definition of “Compositions” specifically referred to Schedule 2 as providing a non-exhaustive list of the Compositions (by the words “included, but not by way of limitation, the catalogue listed on Schedule 2 attached”).

* Further documents

A further schedule referred to financial statements that CMI had presented to ILL which revenues earned in respect of the Acquired Assets; but this did not purport to limit the scope of the Compositions in any way.

The Court of Appeal upheld the decision of the High Court, that the songs fell within the scope of the definition of "Compositions". The other provisions of the Agreement could not displace the express wording of that definition, nor the fact that the 1992 Agreement did not expressly refer to those songs. As a result, the rights in the songs were transferred under the terms of the 1992 Agreement.
The moral of the story would appear to be that, all things being equal, the words with which the parties to a copyright-related agreements express themselves are more likely to be given their normal and natural meaning than to be reframed, recontextualised and then closely reinterpreted so as to mean something quite different.

The meaning of words here
The meaning(s) of Bob Marley's songs here

* Illustration from The Kitten Covers.

Sunday, 22 November 2015

Risotto ruling, or how our Italian friends enjoy themselves ...

From Katfriend Anna Maria Stein comes a report of a truly fun event, though it has a thoroughly serious dimension to it. This event, hosted in the Triennale Museum, Milan, was a mock trial of one of the most renowned creations by the Italian Chef Gualtiero Marchesi -- a risotto called “Riso oro e zafferano” (rice, gold and saffron: you can watch the maestro making it on YouTube here). Three judges presided: Marina Tavassi (President of the Company Division of the Court of Milan), Roberto Magnaghi (General Manager, Ente Nazionale Risi, the Italian Supervisory Board for Rice) and Anna Maria Stein herself, acting as Instructing Judge to introduce the matter to the audience.  

Now Anna Maria takes over the narrative:
The facts 
World-famous Chef Gualtiero Marchesi opened several restaurants over the years. Many people have worked under his supervision and some of his most talented assistants managed to become famous chefs themselves. Among them, there is Guido Rossi [you won't find him in any of the Good Food Guides: he doesn't really exist ...], who worked along Chef Marchesi and had the opportunity to learn the recipes directly from the author. 
Cooperation between Rossi and Marchesi (left) ended following a discussion between them, and Rossi decided to open a restaurant on his own -- “All’ultimo risotto”. There the chef serves a dish that reproduces “Riso, oro e zafferano” under the name “Risotto oro e zafferano, omaggio a Marchesi” ("Rice, Gold and Saffron, A tribute to Marchesi"). The only difference lies in the type of rice used (Carnaroli in Marchesi’s risotto and Basmati for Rossi). The Basmati rice, though of good quality, is not suitable for risotto; moreover the Basmati used by Rossi of poor quality. The price of the dishis quoted as being the same  as at Gualtiero Marchesi’s restaurant. 
Marchesi, who holds a trade mark registration for the image of his risotto as well as a design registration, considers that his “dish” is also protected by copyright. His recipe has been published in books and magazines all over the world, and not only in relation to cuisine and restaurants. Accordingly Marchesi commences proceedings before Rossi before the Court of Milan.
The Instructing Judge appointed a Court Technical Expert, Cinzia Simonelli (Italian Supervisory Board for Rice), whose technical report explains that the rice used by Rossi does not have all the technical qualities for a good risotto and does not meet the minimum quality standards set by the Italian Law (being a rice of a very poor quality). 
Following the submission of this report, the lawyers of the parties -- Professor Mario Franzosi (for Marchesi) and Cristiano Bacchini (for Rossi) -- were invited to discuss the case before the Court.  
Discussion focused on the identification of the relevant consumer for trade marks and of the informed user for design. Some members of the public were involved by the two lawyers in support of their respective submissions.  During the discussion, two chefs were cooking the original dish as well the allegedly infringing dish for the benefit of the Court and the public, following which the Court rendered its decision.
The decision 
The Court 
(1) ascertained the validity of the registered trade mark as well as of the registered design of the dish “Riso, oro e Zafferano” by Marchesi;
(2) ascertained and declared the protection of the dish under the Italian Law on copyright;

(3) found that the defendant had infringed the registered trade mark, the registered design and the copyright of Marchesi, and also committed an act of unfair competition;

(4) issued an injunction against the defendant and ordered the publication of the decision in a magazine, on the websites of the Italian Supervisory Board for Rice and of the defendant;

(5) transmitted the file to the Criminal Public Prosecutor.
Input from third parties 
  • Gilberto Cavagna (Legal Affairs Department, Expo Milano 2015 SpA) provided a short overview on infringement cases related to Expo’s trade marks during the Exposition.
  • Luca Ponti, a criminal lawyer, discussed the possible criminal aspects of the present case.
  • Marina Lanfranconi and Elisabetta Mina, lawyers, provided an overview of the international situation in relation to the protection of “taste and smell” and copyright relating to food dishes.
  • Natalia Bobba provided with an explanation of the visual and smelling test of rice.
  • Anti-counterfeiting organisation Indicam provided a short overview of its activity to protect Italian food.
This Kat is sure that his Italian friends had a lot of fun doing all of this; it's certainly a good and memorable way to test the parameters of applicability of the relevant law.  Merpel wants to know what happened to all that risotto they were cooking ...

Digital files "property", says court in "female patronage" case

From Katfriend Ken Moon (IP/IT consultant to AJ Park, Auckland, New Zealand) comes this most helpful analysis of Jonathan Dixon v The Queen [2015] NZSC 147, New Zealand Supreme Court ruling that goes further than traditional British rulings by analogising digital files to "property". This is what Ken writes:
New Zealand Supreme Court holds digital files to be property

Might there now be property in computer software in addition to the subsistence of copyright?  Might copying digital files from a computer system constitute a crime as well as copyright infringement?  A somewhat bizarre, and some might think minor, criminal case has gone all the way to New Zealand’s Supreme Court.  Dixon was charged under section 249(1)(a) of the Crimes Act, one of the ‘computer misuse’ crimes, for accessing a computer system dishonestly to obtain property.  The alleged offence was committed during the 2011 Rugby World Cup in New Zealand.  
As a security guard at a bar in Queenstown, Dixon had made a copy on to a USB memory stick of digital files containing the bar’s CCTV footage of the then Vice Captain of the English rugby team, MikeTindall, when he was socialising with a female patron.  His intention was to sell the footage to English media, but when this was unsuccessful he posted it on a video-sharing site. 
The primary issue was whether digital footage stored on a computer system was ‘property’ as defined in the Crimes Act.  That definition states: 
“property” includes “real and personal property … and any other right or interest.”   
The Court of Appeal [2014] NZCA 329 in this case had decided that it was not.  It had pointed to the English criminal case of Oxford v Moss (1979) 68 Cr. App. R. 183 and the Canadian criminal case of Stewart v The Queen (1988) 1 SCR 963, which had both held that information, which had held that information, even confidential information, was not property, noting that this was consistent with the general approach taken in civil cases.  The Court of Appeal, in analysing whether digital footage might be distinguished from confidential information, concluded it could not – ‘bytes cannot meaningfully be distinguished from pure information’. 
After an intensive spell of IP blogging, many Kats find
rugby a restful and genteel pastime ...
On further appeal the Supreme Court disagreed, taking the view that digital files were more than pure information and that it could put aside the criminal and civil authorities which had held information was not property.  It also noted that the Court of Appeal for England and Wales in Your Response v Datateam Business Media [2014] EWCA Civ 281 had taken a contrary view in holding that digital files constituting a database were not property. 
Proceeding unencumbered by these authorities, the Court noted that the other computer misuse offences referred to software and data and that therefore a purposive construction of section 249(1)(a) suggested the reference to ‘property’ must include digital files. 
The Supreme Court also considered it was a fundamental characteristic of property that it was something capable of being owned and transferred.   The digital files taken by Dixon were capable of being sold and this was another indicator that they constituted property.  It observed that the Crimes Act definition of ‘document’ included an 'electronic file': surely a Microsoft Word document must be property and, if so, so must other forms of digital files. 
Finally, the Court noted that US courts were agreed software was property even if they did not agree on whether it was tangible or intangible. The Court particularly discussed the decision of the Supreme Court of Louisiana in South Central Bell Telephone Co v Barthelemy 643 So 2d 1240 (Lou 1994) which held software to be not only property, but tangible property.  The New Zealand court added that, even when software was considered to be intangible, US courts had held it to be capable of conversion, confirming its status as property.  It was recognised this was contrary to the House of Lords' view in OBG v Allan [2007] UKHL 21 [better known as Douglas and others v Hello!] where the majority held the tort of conversion applied only to chattels and not intangibles.  Having approved US law on software, the Supreme Court took the view that there was no reason not to accord digital files the same status as software in for the purposes of section 249 of the Crimes Act. 
This decision of the Supreme Court may have implications under the Crimes Act for other acts of ‘taking’.  For example, if someone without consent took a copy of a legally downloaded film from a friend’s computer it would seem that may now be a crime under section 249 (as well as copyright infringement).  It may also have implications for civil cases resulting in New Zealand courts confirming that software is personal property.  However, much as this writer has favoured software being confirmed as property and more particularly intangible property, it is unfortunate that the Supreme Court relied on South Central Bell.  That case was decided under the New Orleans City Code and in the context of civil law concepts derived from the French and Spanish codes.   
More controversially, does the decision mean that confidential information (and possibly any information that can be sold) now constitutes property in New Zealand, contrary to current UK and Australian law?  Unlike software, how can ‘digital files’ be distinguished from information?  Digital files are simply information that has been digitised and formatted and their physical storage medium is no more relevant than the physical sheets of exam paper were in Oxford v Moss.  Further, while software constitutes digital files it differs substantially from data files because it is more than just information.  It is created to control the operation of computers rather than for consumption by humans.
Thanks, Ken, for this analysis. This Kat bets that this decision will be subjected to some fairly close scrutiny before long, though he hopes that legislation will get there first and that this area of sensitive uncertainty will be left to a systematic law-making exercise rather than to the random factor of which appellate judges happen to be selected to hear the inevitable appeals.

Munch ado about nothing? Oslo City Council seeks iconic registrations

Last Monday, in "Night Watch, Why Not? The art of trade mark application", this weblog hosted an amusing guest piece by Bas Kist on his firm's decision to apply to register the Rembrandt masterpiece "The Night Watch" as a Benelux trade mark. A further guest post, "Copyright term, authorship and moral rights: the intriguing tale of Anne Frank's Diary", by Mira T. Sundara Rajan, discussed the efforts made by the Anne Frank Foundation to retain control of Anne Frank's Diary. There is now a sequel that brings together the themes of trade mark registration and keeping control of works in which the copyright expires.  This comes from Thomas Hvammen Nicholson (Protector IP Consultants AS, Norway), who writes about the trade mark registrability, or otherwise, of some iconic artwork:

As you may be aware, there is a portfolio of pending trade mark applications fororks of art in Norway. The copyright terms for the works of the artist Edvard Munch [died 1944] and the sculptor Gustav Vigeland [died 1943] have recently expired.   Oslo Kommune (Oslo City Council), as a benefactor of both estates, would like to continue to control the use of their works. They have therefore filed more than 100 trade mark applications in Norway relating to the artists [to check them out, just search under applicant name “Oslo Kommune” on TMview]. Several of these applications have been extended to the EU, China and the US.

The applications consists of names, signatures, drawings, paintings and pictures of sculptures. It almost seems as if they have filed for the whole Vigeland sculpture park in Oslo.

So, how to examine these applications consistently? The Norwegian Intellectual Property Office decided to refuse seven applications, including depictions of the famous sculpture Sinnataggen (above, right), a layout of the Vigeland park and pictures of some of the gates in the park. Examination of the remaining applications has been suspended.

Some of the applications, including that relating to Munch’s Scream and Madonna and a picture of Vigeland’s sculptures Sinnataggen and Monolitten have been extended to the EU, US and China. The marks have been registered in OHIM, but not in the US (inter alia “ornamental refusal”) or in China (“the mark is likely to produce undesirable social consequence”!).

In Norway, all of the seven applications were refused on the basis of lack of distinctiveness. Further, the Norwegian IPO found that some of the marks were descriptive for jewellery in class 14 and monuments in class 19. They also found that for goods in classes 14 and 19, the mark merely consisted of a shape which confers substantial value on the goods. The applicant has appealed to the Boards of Appeal, who in turn are about to or have already taken the unusual step of referring the case to the EFTA Court for a preliminary judgment. The idea being that this is the EFTA equivalent of the CJEU I guess.  Unlike the CJEU, the EFTA has not previously dealt with many trade mark cases, and to my knowledge none regarding distinctiveness, so this could be quite interesting …
This Kat wonders why it was thought necessary to seek an opinion from the EFA Court, which basically applies the rulings of the Court of Justice of the European Union unless there is a gap in CJEU law that it being asked to plug.  Maybe the form of the questions put to the EFTA Court will contain some novelty. We look forward to learning more!

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