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.

Wednesday, 29 July 2015

Do you need permission to link to freely accessible content? The 2015 Toronto Games website appears to think so

Do you need permission from the relevant copyright owner to link to his/her content?

This question has been haunting European (to say the least) minds - and possibly also hearts - at least since the Court of Justice of the European Union (CJEU) issued its 2014 decision in Svensson [Katposts here], in which it held that:

"[T]he provision on a website on a website of clickable links to works freely available on another website does not constitute an ‘act of communication to the public’ as referred to in [Article 3(1) of the InfoSoc Directive]".

This is so because such an act, whilst being an act of communication, would not be also an act of communication to a 'new public', ie "a public that was not taken into account by the copyright holders when they authorised the initial communication to the public". 

As such, it would not satisfy both conditions required under Article 3(1) of the InfoSoc Directive.

There is probably no need to recall that the notion of 'new public' has generated a fairly heated debate in the aftermath of Svensson, with the Association Littéraire et Artistique Internationale (ALAI) holding the view that such criterion would be contrary to international law and scholars like Prof Jan Rosen (Stockholm University) suggesting that national judges should disregard it [here]

In all this, following Svensson the CJEU issued two further decisions on the topic of linking and copyright, these being BestWater [here, concerning framing of videos] and C More Entertainment [here, on linking by means of paywall circumvention], whilst a third case is currently pending. This is the so called GS Media case [or, suspecting that it might prove slightly more popular, Playboy case], concerning whether linking to a source that is freely available on a website but which communicates to the public without the consent of the copyright holder should be qualified as an act of communication within Article 3(1) of the InfoSoc Directive.

Whilst waiting for the outcome of the latter, via Katfriend Norman Siebrasse (University of New Brunswick) comes the news of a fairly interesting approach recently taken in Canada by the Toronto 2015 Pan Am and Parapan Am Games.

Until very recently the Terms of Use of the Toronto Games website stated in fact the following:

"Links to this Site are not permitted except with the written consent of TO2015™. If you wish to link to the Site, you must submit a written request to TO2015™ to do so. Requests for written consent can be sent to branduse@toronto2015.org. TO2015™ reserves the right to withhold its consent to link, such right to be exercised in its sole and unfettered discretion."

Now the Terms appear to have changed [possibly following some online mocking?], in the sense that they state the following:

"Other sites may link to the Site with or without our authorization, and we may block any links to or from the Site. Your use of third party websites and resources is at your own risk.
The use of or embedding of content from this Site is not permitted except with the written consent of TO2015™. Requests for written consent can be sent to brandapprovals@toronto2015.org. TO2015™ reserves the right to withhold such consent, such right to be exercised in its sole and unfettered discretion."
Whilst any insights from Canadian readers would be very welcome as to the correct approach under Canadian law, do these Terms make sense from a EU/post-Svensson perspective?
Readers might remember that one of the episodes of the Post-Svensson Stress Disorder Katseries produced with fellow blogger Alberto was indeed devoted to discussing whether non-compliance with the terms of use of a certain website by means of linking to relevant content could constitute an act of communication within Article 3(1) of the InfoSoc Directive, on consideration that such content could not be 'freely accessible'. 
Katexclusive: here's one of the pictures
leaked in the Playboy case
At that time we concluded in the negative on this point (whilst also expressing the view that a future CJEU decision should clarify this very issue). Relying especially on paras 26 to 28 of the Svensson judgment, contractual restrictions relate to uses that follow the moment of the initial communication. The public targeted by the initial communication would consist of all potential visitors to a certain site that does not adopt any restrictive measures. As such, the 'new public' requirement would not be likely met and hyperlinks to that site, whilst being acts of communication, would not be to a new public.
It would appear that the 2015 Toronto Games site has adopted a different view and, although the language of its Terms has changed, the substance has remained pretty much the same, especially considering that links to the site may still be blocked. In fact how can the latter be enforced if not on copyright grounds and by means of relevant takedown requests to be submitted to the likes of Google, Facebook, Twitter, etc?
Similarly to embedding, also mere linking to content on the Toronto Games website appears to be considered something subject to the exclusive control of the relevant copyright owner. But is it so simply because the terms of use require one to seek and obtain permission first?
Hopefully when the CJEU decides the Playboy case it will shed some light on the important issue of whether contractual restrictions may determine whether a certain act falls within our outside the scope of Article 3(1) of the InfoSoc Directive. 
Hopefully the Court - unlike SvenssonBestWater and C More Entertainment - will also seek the Opinion of an Advocate General first. 
Hopefully, hopefully ... Too much hope?

Gama v Pal: those wipes -- and a sidebar poll

Yesterday morning the IPKat posted this item on a procedural issue relating to amendment of pleadings in a passing-off action, Gama Healthcare Ltd v Pal International Ltd.  The blogpost featured a couple of illustrations that were not featured in the Lawtel note from which this Kat sourced his blogpost.  At the bottom of the post, the Kats explained:

The ... the illustrations ... were the closest to similar packaging that this Kat could lay his paws on via a Google Image search. If anyone has more confusingly similar images, do please share them.
The Kats have since received, via an anonymous benefactor, the following illustrations. The one on shown above, right, is the packaging of the claimant, Gama; on the left is the packaging of the defendant Pal. Might you be confused into picking the package on the right, mistaking it for the package on the left if you didn't have them both in front of you?  Whether you are a hospital or health authority purchasing officer, a private purchaser or a person being wet-wiped, the Kats are running a sidebar poll which will enable you to answer this question.

Caveat: this poll is conducted purely for the amusement of readers of this weblog. It is not mandated by the trial judge or commissioned by either party; it is not based on any methodology and it is not intended to have any evidential value at all. 

Tuesday, 28 July 2015

Lifting jokes on Twitter: no laughing matter?

Following a breaking news tweet by Plagiarism is Bad (@PlagiarismBad), over the past couple of days several media have reported [eg hereherehere ...] that Twitter has begun to comply with DMCA takedown requests relating to tweets, notably jokes, lifted in their entirety from someone's own account and re-tweeted without any attribution as to their original author. 

An example is a tweet by freelance writer Olga Lexell (whose Twitter account is now private) - "saw someone spill their high end juice cleanse all over the sidewalk and now I know god is on my side" - which a number of Twitter users have republished without any attribution to her as the author of the original tweet. 

Ms Lexell decided to submit a DMCA takedown request. Apparently not just God, but also Twitter was on her side. The micro-blogging platform decided in fact to withhold the allegedly infringing tweets. However (and incidentally), as IPKat readers can see here there is still a number of tweets that reproduce her joke in its entirety.

Is there anything to be surprised about Twitter honouring this type of takedown requests? Possibly not. 

Not in Europe

From a EU perspective, a 140-character phrase may well be considered sufficiently original to be eligible for copyright protection [see here for a fairly recent controversy in France]

In its landmark decision in Infopaq [here] the Court of Justice of the European Union (CJEU) held in fact that a work or a part thereof (in the background proceedings before Danish courts what was at stake was an 11-word newspaper article extract) may be protected by copyright pursuant to the InfoSoc Directive provided that it is original, ie it is its author's own intellectual creation. 

The CJEU further elaborated upon the notion of 'author's own intellectual creation' in its subsequent decisions in BSA [here], FAPL [here], Painer [here], Football Dataco [here], and SAS [here]. Originality under EU law is thus to be understood as involving 'creative freedom' (FAPL), a 'personal touch' (Painer), and 'free and creative choices' (Football Dataco). 

Yes, also cats can tweet
Not in the US (?)

Things may prima facie appear more complex under US law [as was also discussed in a previous Katpost], on consideration that 37 CFR §202.1(a) among other things states that "short phrases such as names, titles, and slogans" are not eligible for copyright protection, "even if ... the short phrase is novel or distinctive or lends itself to a play on words." [see here at §313.4(C)]. However, as discussed here, there is case law that supports the view that statements which rely on brevity and simplicity, eg jokes (even those on Twitter), may well meet the required level of originality and (to borrow from the language used in the Compendium of US Copyright Offices practices) authorship, and be thus protected by copyright. 

Defences and moral rights

So, similarly to the EU context, also under US law the question about lifting a joke on Twitter would then become whether any defences could be available to alleged infringers. Would the fair use doctrine apply in such a context, considering that some of the Twitter accounts that engage systematically in tweet lifting do so for commercial reasons?

In any case, it is worth highlighting how, differently from the EU, under US law unattributed reproduction of a tweet would not raise any particular moral rights issues, either by means of potential infringement of the rights of attribution or (should a tweet be reproduced in an altered, derogatory version) integrity. 

Although Article 6bis of the Berne Convention mandates (some) moral rights protection and it may be arguable that attribution and integrity are protected in this country through a mix of federal and state laws (eg derivative rights, defamation, unfair competition, privacy), under US copyright law protection is in fact limited to "certain authors", as per §106A of the US Copyright Act. 

Tuesday tiddlywinks

Say what you like about
Huawei, it has a prettier
logo than ZTE


Hooray, hooray -- a rapid response for Huawei!  On 16 July the Court of Justice of the European Union (CJEU) delivered its judgment in Case C-170/13 Huawei Technologies Co. Ltd v ZTE Corp., ZTE Deutschland GmbH. a ruling which this Kat instantly dismissed as being no big event but which, other commentators have observed, has a deeper meaning to those whose fingers are placed firmly on the pulse of  standards-essential patent licensing [see eg Colm Ahern on IP Finance here; David Long on the Essential Patent Blog, here; Markus Gampp on DLA Piper's IPT Germany Blog here].  Now the big news is that tomorrow afternoon the AIPPI UK Group has organised a special rapid response event to discuss this ruling.  Here are the details:
CJEU in Huawei v ZTE  
Registration is now open for this rapid response event this Wednesday 29 July 2015 (5.30 for 6pm start).  
AIPPI UK is delighted to welcome at very short notice two speakers, Christian Harmsen (Bird & Bird, Germany) and Jemima Stratford QC (Brick Court Chambers), who will provide a fascinating insight into the recent decision of the CJEU in Huawei v ZTE which considered the circumstances in which injunctive relief could be awarded in patent disputes involving standards essential patents (SEPs).  Christian Harmsen acted for Huawei in Germany, while Jemima Stratford QC from the UK has an intimate knowledge of the competition-related aspects of FRAND disputes. 
 Christian will provide some background to the case and how it is being perceived from a German perspective; this will be particularly insightful in view of the past Orange Book decisions of the German courts.  Jemima will focus on the competition issues which were central to the case, and will also consider the possible impact on the UK courts.  
The organisers had to resort to desperate
measures in order to deliver the drinks
on time for the Rapid Response event ...
The London office of law firm Bird & Bird has kindly agreed to host this event (15 Fetter Lane, London, EC4A 1JP), and there will be drinks afterwards. Attendance is free for UK members and new applicants for membership, and £25 for non-members.  CPD 1.5hrs and BSB accredited course. To attend this event just register at http://cjeu-huawei-zte.eventbrite.co.uk  NB: At the time of registering if someone else (eg: your secretary or P.A.) registers on your behalf, please make sure that they book in your name, so that the name of the person who is attending -- and wants the CPDs –- is the name which makes it on to the attendee list. 

Better English. If you have nothing better to read this summer, why not dip into Better English, a most unusual book written by a most unusual author, octogenarian word-lover Harold Lewin.  As Harold explains:
The book Better English should be of interest to wordsmiths, those of us who would like to stretch our vocabulary, and also the creative writing enthusiasts. The contents embrace a whole galaxy of unusual words, including archaic, argot, cant, inkhorn, jargon, literary, loanwords, neologisms, nonce, patois, recherché, scientific/technical and slang. There are many singular words herein, singular in the sense of being strange, unusual, eccentric, or simply difficult. There is something here for everyone, from new readers to sophisticated word connoisseurs and crossword or word game aficionados.
This Kat, who has given the author some gentle guidance on copyright issues, warmly welcomes it, with the proviso that much of its content consists of words that he speedily edits out of articles, case notes, guest blogposts and the like, for fear that readers will not understand them. You can find it here.


Around the weblogs. If you're feeling cosmopolitan, or just like showing off that you can read French, here's Laure Marino's Le Blog de Laure Marino -- Droit IP/IT.  Looks like fun, say the Kats. Laure is a denizen of CEIPI, which is as good a pedigree as an IP blogger can hope for.  The 1709 Blog reports a sad tale of the copyright dispute over the unlicensed use of a portrait photograph of murdered Fusilier Lee Rigby on the UK Ministry of Defence's Roll of Honour. Scarcely less sad is the scrap over the annotated statute laws of the State of Georgia, recorded by Andy Johnstone on the same weblog.  Finally, here's a second mention of Colm Ahern in today's tiddlywinks: he guested this neat piece on PatLit which broke the news that the Spanish Supreme Court has decided that a patent's inventive step is not after all a question of fact but is instead a question of law.


UK government repeals its repeal. Many a sad student and frustrated practitioner has stared miserably at Section 52 of the UK's Copyright, Designs and Patents Act 1988 (CDPA), wondering first "what does it mean?" and secondly "why, oh why?"  The first bits of it read like this:
 52 Effect of exploitation of design derived from artistic work. 
(1) This section applies where an artistic work has been exploited, by or with the licence of the copyright owner, by— (a) making by an industrial process articles falling to be treated for the purposes of this Part as copies of the work, and (b) marketing such articles, in the United Kingdom or elsewhere.   
(2) After the end of the period of 25 years from the end of the calendar year in which such articles are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work.
There was much rejoicing in design circles when the UK government announced that it was to repeal this provision, but it now seems that the government has repealed its repeal. According to official sources:
In March 2015 the Government implemented a Commencement Order (Enterprise and Regulatory Reform Act 2013 (Commencement No.8 and Saving Provisions) Order 2015) which would implement the repeal of section 52 of the CDPA on 6 April 2020. Following the introduction of this Order, the Government received a claim for judicial review challenging its compatibility with EU law. Having considered the matter carefully, the Government has revoked the Commencement Order and will not continue with the current transitional arrangements. The revocation order can be viewed on the legislation.gov.uk website. The Government will launch a fresh consultation on revised transitional arrangements, including the date for implementing the repeal. A further announcement will be made when the new consultation is published.

Merpel is excited to find out whether the government will decide that the March 2015 Order was okay after all and then repeal the repeal of its repeal ...

Letter from AmeriKat: Samsung's Silicon friends, Nintendo triumph, Jay-Z copyright battle & Oracle's Google request

The AmeriKat: lost in a Norwegian Wood
As the court term draws to a close and trial bundles are put away, the AmeriKat has taken the opportunity to revisit some old loves - sleep, cooking, painting and music.  A dinner conversation last week reminded the AmeriKat that her first musical obsession took the form of The Beatles.  When she was only a very tiny kitten, the AmeriKat memorized the lyrics of every song on her overplayed cassette tape of Rubber Soul.  While cleaning up her post-trial Kat basket at the weekend she revisited the sixth studio album of the Fab Four.  As George's mystical chords echoed through the speakers and Paul and John's vocals jostled for attention, the AmeriKat was transported to conversations with her boy-band obsessed peers who would only stare blankly at the AmeriKat when she raised her equally fanatic love of The Beatles.  This all changed in 2004 when DJ Danger Mouse created The Grey Album - a mash-up between Jay-Z's The Black Album and The Beatles' The White Album which needless to say caused EMI some copyright consternation.  With 35 years between the two albums, the collision of four lads from Liverpool with a popular rapper from the Brooklyn made the music that the AmeriKat had loved suddenly relevant for her age group.  The Grey Album also came at the height of the copyright wars that a few years earlier had diverted the AmeriKat from a career in medicine to intellectual property.  The title of the stories from the AmeriKat this week are a tribute to these early loves.


With a little help from my friends (click here):  A gaggle of Silicon Valley goliaths including Facebook, Google, HP and Dell have filed an amici brief with the US Federal Circuit Court of Appeals (CAFC) in support of Samsung urging the court to grant an en banc hearing in order to reverse the court's panel's damages decision which held that Samsung had to pay Apple almost $550 million.  Why the concern about the damages award?  Because Samsung's infringement concerned only three of Apple's design patents which accounted for a small proportion of the entire Samsung phone. The filing stated that if allowed to stand such a decision would lead to "absurd results and have a devastating impact on companies, including the amici, who spend billions of dollars annually on research and development."   The filing continued:
"A design patent may cover the appearance of a single feature of a graphical user interface, such as the shape of an icon. That feature—a result of a few lines out of millions of code—may appear only during a particular use of the product, on one screen display among hundreds. But the panel’s decision could allow the owner of the design patent to receive all profits generated by the product or platform, even if the infringing element was largely insignificant to the user and it was the thousands of other features, implemented across the remainder of the software, that drove the demand generating those profits."
Apple's response was that Google, in any event, had strong personal motives for joining the amici given that its Android operating system runs on Samsung's Galaxy phones.  Given its commercial interest, it is understood that Apple will be urging the court to ignore Google's amicus brief otherwise the court would be permitting Samsung to expand its "word limit under the guise of an amicus brief".


Get back to where you once belonged (click here):  Last week, California federal court Judge Saundra Armstrong held that eight of Nintendo's hand-held systems, including the Nintendo 3DS, DSi, DS and Game Boy Advance systems, did not infringe patents asserted by Quintal Research Group, a company that some reports have dubbed a patent assertion entity.  Quintal's alleged status was somewhat alluded to in a statement by Nintendo America's general counsel, Devon Pritchard who declared that "[t]he result in this case continues to prove that Nintendo will vigorously defend its innovations against patent lawsuits and will not pay to settle cases simply to avoid litigation.  Nintendo continues to support patent reform efforts that reduce the unnecessary and inefficient burden cases like this one place on technology companies in the United States."


99 problems, but a judge ain't one (click here)  Last Friday, US Magistrate Judge Ronald Ellis in Manhattan refused to recuse himself from the $7 million copyright lawsuit brought against Jay-Z  by Bronx clothing designer Dwayne Walker over his Roc-A-Fella Records logo.  A piece of work design by Walker in 1995 became the basis for Roc-A-Fella logo.  Walker accused Magistrate Judge Ellis of issuing inconsistent rulings favoring Jay-Z, including one such order that was purportedly founded on a private call with the defense team's lawyers.  In dismissing the motion, Magistrate Judge Ellis held that there was no evidence that he demonstrated "deep-seated favoritism or antagonism".   The latest motion in this case comes after Judge Schofield awarded Jay-Z and Roc-A-Fella Records approximately $253,000 in attorney fees in a different case brought against the rap mogul by sound engineer, Cauncey Mahan.  Mahan unsuccessfully claimed he was the joint author and co-owner of copyright in Jay-Z's songs from 1999 and 2000 but is appealing the decision.



As I write this letter, send my request to you (click here):  Last Wednesday, following the US Supreme Court's refusal to hear its Java copyright challenge against Google (see post from AmeriKat here), Oracle has asked for permission to file a request to amend its complaint to include claims that Google continues to infringe its copyright in updated versions of Android and a nice jury story about Google's continuing market dominance, which is assisted by its use of the Java platform.  In a letter to Judge William Alsup, Oracle stated that since the complaint was filed in 2010:
"Google has released six major versions of Android encompassing at least forty total releases. In the last three years, Android has come to permeate the fabric of our society: it is in 80% of smartphones,in tablets, in televisions, on wearables, and even in cars. Google continues to infringe Oracle’s copyrights with these new versions. Android now has a billion users; Google reaps untold profits from these users through a variety of means. At the same time that Android has become truly ubiquitous, the Java platform has suffered more than ever. And, meanwhile, Google itself has adopted an express anti-fragmentation strategy, implicitly conceding what Sun and later Oracle long contended were necessary aspects of maintaining a vibrant development platform. 
The record of the first trial does not reflect any of these developments in the market, including Google's dramatically enhanced market position in search engine advertising and the overall financial results from its continuing and expanded infringement."
The following day, both parties filed the joint status report setting out the issues and timeline for the matters (i.e. fair use) that have been remanded back to the court following the Supreme Court's refusal.  The parties have not agreed on a trial date yet, but it is likely to be in Spring 2016.

Gama v Pal: court disposes of wet wipe application

Gama Healthcare Ltd v Pal International Ltd, an extempore decision last Friday from Judge Richard Hacon in the Intellectual Property Enterprise Court (IPEC), England and Wales, and noted only on the subscription-only Lawtel service, is one of those small and -- to some -- insignificant -- procedural cases that form part of the very fabric of judicial dispute resolution. At the heart of it was Gama's application to amend its particulars of claim in an action for passing off in relation to its packaging for clinical wet wipes used in the healthcare industry.

Gama produces the Clinell range of wipes
Gama, who alleged passing off in relation to the similarity between its packaging and that used by Pal for its wet wipe products, wanted to amend its particulars of claim in order to allege that there would be post-sale confusion when its products were reordered and that, given the visual similarity of the products, Pal's product code would be mistakenly taken for its own, or mistakenly taken from Pal's marketing materials, by consumers who intended to order Gama's product. On that basis, Gama argued, Pal's products were instruments of deception calculated to deceive end users, giving rise to damage to its product range.

A selection of Pal products
Said Gama, the amendments were no more than particulars of arguments that had already been raised. They required no further evidence or disclosure from it, and only a limited disclosure from Pal --who would still have plenty of time to deal with the new arguments before trial, one of which was the alleged misapplication of Pal's wet wipe training guidance to its own products. Not fair, said Pal: there's a costs cap in the IPEC and its costs were unlikely to be recovered; the cost-benefit test applicable in the IPEC weighed against amendment and there were no exceptional circumstances to permit amendment under the Civil Procedure Rules, CPR r.63.23(2) [Katnote: Part 63 of the CPR deals with intellectual property claims].

Judge Hacon gave a thoughtful appraisal of the issues involved and, on balance, allowed the amendments to the particulars of claim.

* Part.63 of the CPR had three aims: (i) to require the parties to work out the totality of the case by the time of the case management conference at the latest; (ii) the provision of all evidence for a full understanding of the case by the time of the exchange of evidence at the case management conference in order to promote settlement before trial and accurate offers to settle under Part 36 of the CPR, and (iii) to minimise applications between the case management conference and trial prompted by late ideas of what might be argued at trial.

* Rule 63.23(2) of the CPR provided that "save in exceptional circumstances, the court will not permit a party to submit material in addition" to that ordered following the case management conference. While amendments to pleadings did not constitute additional "material", they would not be allowed if they required the submission of further evidence -- which was only permitted in exceptional circumstances.

* In the IPEC [being a relatively cheap, cheerful and informal forum for the determination of IP claims] it was always to a degree a judgment call whether particular aspects of an argument should be in a pleading, or whether it was sufficient to leave those to be dealt with in evidence or in the parties' skeleton arguments.

Hmm.The Kats are not amused ...
* The amendments Gama sought here passed the test in r.63.23(2), but also needed to meet the cost-benefit test in the IPEC. None of the amendments were key or central matters that were self-evidently going to be highly material at trial. In relation to one proposed amendment, the matters had already been dealt with in Gama's evidence and substantially dealt with by Pal: if that amendment were allowed, not much would be generated in additional costs. However, if Pal had to deal with the issue of training in relation to the wet wipes, that issue could lead to more substantial evidence or cross-examination at trial and its effect on the trial outcome could not now be known.

* On balance, the amendments were permitted, subject to one aspect of alleged post-sale confusion -- that alleged deficiencies in Pal's product would be attributed to Gama -- a point that had been taken at the case management conference and could not be raised again.

* Pal was permitted to adduce evidence in relation to wet wipe training in National Health Service hospitals and any further evidence thought appropriate, and, after trial, might want to make further submissions in relation to costs incurred by that evidence.

This Kat thinks the decision must be right. It's not as if the amendments would introduce some completely fresh issue or send Pal scurrying off in all directions in search of relevant material of its own in order to defend some previously uncontemplated claim.  Merpel agrees, but with this caveat: amendments of this sort are more likely to be sought and granted, she thinks, in respect of a tort such as passing off, since this is a legal wrong with an open weave, in which the manifestation of the tort can often be characterised in so many different ways.  If the action were for trade mark or patent infringement, she thinks the chances of getting away with post-case-management amendments miht be slimmer.

(Non) disposal of wet wipes here, here and here

The Lawtel note does not show the parties' respective wipe packaging and the illustrations above were the closest to similar packaging that this Kat could lay his paws on via a Google Image search. If anyone has more confusingly similar images, do please share them.

Monday, 27 July 2015

Kimble v Marvel Entertainment: when post-expiry patent royalties meet stare decisis

This Kat for a number of years taught a course on legal aspects of IP transactions. Consistently, the most challenging case to convey to students was the U.S. Supreme Court decision of Brulotte v Thys Co. (379 U.S. 29 (1964)), which fixed a bright-line rule that a patentee cannot charge royalties for the use of its invention after the expiry of the patent. The Court held that because such an agreement had the effect of extending "the patent liability beyond the period", such an agreement was held "unlawful per se". I always found this decision difficult to explain, because it straddled in an unsatisfying way a consideration of patents as an IP right, competition law concerns regarding the potentially anticompetitive effects of exercising a patent and commercial arrangements for the pricing and timing of royalty payments. Against this backdrop and after the passing of a half century, this Kat hoped that the U.S. Supreme Court, in revisiting the issue in the case of Kimble v Marvel Entertainment, LLC (as reported by AmeriKat on June 30th), would provide some clarity. Alas, it did not. In so not doing, permit this Kat some further thoughts on this most frustrating of Supreme Court IP-related rules.

To recall, the Kimble court, in considering the ongoing obligation of Marvel to a royalty with respect to the Spider-Man toy, chose not to abandon the bright-line rule fixed in Brulotte in favour of a case-by-case analysis based on the "rule of reason" approach used in antitrust (what the Americans call competition law) cases. In a 6-3 decision, the majority opinion, authored by Justice Kagan, framed the case as a question of stare decisis, namely the principle "that today's Court should stand by yesterday's decisions" unless there is "a special justification—over and above the belief 'that the case was wrongly decided'." The opinion quoted the oft-noted words of Justice Brandeis, written in a dissenting opinion no less, that is usually "important that the applicable rule of law be settled than it be settled right." The upshot of the majority ruling is to leave the Brulotte rule in place.

To which Justice Alito, for the dissent, wrote a stinging rebuke:

"[The Brulotte] decision was not based on anything that can plausibly be regarded as an interpretation of the terms of the Patents Act. It was based on an economic theory—and one that has been debunked. The decision interferes with the ability of parties to negotiate licensing agreements that reflect the true value of a patent, and it disrupts contractual expectations. Stare decisis does not require us to retain this baseless and damaging precedent."
He continued:
"Brulotte was thus a bald act of policymaking. It was not simply a case of incorrect statutory interpretation. It was not really statutory interpretation at all." "Not only was Brulotte based on policymaking, it was based on a policy that is difficult to defend. Indeed, in the intervening 50 years, its reasoning has been soundly refuted."
What comes to mind to this Kat in reading the majority and dissenting opinions in the Kimble case is the image of judicial ships passing at night, so much so that one has to remind himself that both are addressing the same case. Partially because this Kat is sympathetic to the position articulated by the dissent, partially because he recalls his frustration in seeking to explain the Brulotte decision to students (and clients), he is especially disappointed with the majority opinion. In a word, this Kat has the sense that no set of facts or arguments could have constituted the "special circumstances" required to overcome stare decisis in this situation. Consider the main points in their decision.
1. The Court should be especially wary in overturning a precedent when the precedent is based on construing a statute; there always exists the possibility to take one's objections to Congress.
2. Indeed, Congress has rebuffed several opportunities to overturn Brulotte.
3. Since property and contract issues are also implicated, there is even a greater reluctance to overturn a precedent, given reliance on the principle in day-by-day affairs.
4. There has been no change to the patent laws with respect to the issue under consideration.
5. The Brulotte rule is simple to understand and easy to apply.
6. Since this case is about the patent laws and not the antitrust laws, even if the Brulotte case relied on misconceived economics (especially anti-competitive tying arrangements), it is for Congress to rectify it.
7. Moreover, Kimble's arguments that the Brulotte decision is bad policy, suppresses technological innovation and harms parties from reaching agreements that best enable them to commercialize their inventions, are not supported by empirical evidence and, in any event, are the purview of Congress and not the Court.
Kat readers are invited to read the opinion and reach their own conclusions—this Kat standing behind his impression that nothing could have changed the mind of the majority, despite the wide dissatisfaction with both the rationale and implementation of the Brulotte rule. And so the question is how do we account for this? Perhaps some insight can be gotten from a consideration of the unusual composition of the majority opinion, comprised of the four so-called liberal Justices, Breyer, Ginsburg, Sotomayor and Kagan, joined by arch-conservative Justice Scalia and perennial swing vote Justice Kennedy. In considering this composition, it seems to this Kat that three different considerations were at work. For the four liberal justices, their position can be understood as giving expression to the longstanding liberal fear of "over-extending" IP rights, especially patents, given the anticompetitive effects that in their view lurk in the exercise of patent rights. Indeed, the Brulotte decision, with its strong strand of antitrust-like considerations, reflected this approach back in 1964. While the hostility to patents that characterized the Warren Court of those days has subsided, it has not disappeared and the concern over patent trolls has reinvigorated this tendency. Cutting back on Brulotte would have run counter to this orientation.

As for the position of (this Kat's law professor of a time long ago) Justice Scalia, the impetus seems to derive from Justice Scalia's deeply rooted judicial conservatism rather than any concern with the scope of IP rights and their exploitation (or how the Brulotte rule has worked in practice). What is interesting is how he split ranks from the other three so-called conservative justices, Chief Justice Roberts, and Justices Thomas and Alito, who focused on what they viewed as the deeply flawed and anachronistic foundations that undergird the Brulotte decision. Justice Scalia seems to ignore these factors in favour of doctrinal considerations, which brought him to the same result as his liberal colleagues. Justice Kennedy has been distinguished by his relative lack of ideology as the guiding principle in his decision-making. On this basis, it would seem that he was simply convinced, under the facts of the case, that there was no compelling reason to overturn the Brulotte rule.

Thus not only does the Kimble majority make for strange judicial bedfellows, but it points to the role of ideology when the matter at issue goes beyond the traditional realm of patent law and seeks to embrace concerns such antitrust and contract law as well. To the extent that future patent cases before the Supreme Court will increasingly implicate such additional legal matters, we can expect further split decisions resting on strong differences in underlying orientation, leading to constant shifts in the composition of the majority and minority opinions.

Never too late: if you missed the IPKat last week ...

Here once again, Katfriend Alberto Bellan has delicately selected and summarised last week's substantive Katposts for the benefit of anyone who missed the action last week through holidays or pressure of work and/or who now needs a quick catch-up.  The popularity of this feature during the summer vacation season cannot be underestimated: last week, with the holiday season in full swing, well over a thousand good souls visited Alberto's Never Too Late summary, a substantial hike over visits during the more serious, less holiday-prone months.  Anyway this, Alberto's 56th weekly summary, reads as follows:
A few weeks ago Green J issued a judgment concerning the recently-introduced UK exception for personal copies for private use, concluding that it does not currently envisage a fair compensation requirement [here]. Now he issues the follow-up order commented in this post, addressing the effects of his judgment and the chance of a new reference to the Court of Justice of the European Union (CJEU). Eleonora explains.

* Letter from AmeriKat: US patent litigation boom, Netflix's Rovi win, Triumphant Tory and Ford trade secrets

Record numbers of US patent actions, an update on Netflix v Rovi, and a millionaire's compensation awarded to fashion designer Tory Burch are just some of the issues addressed in this letter from Annsley.

* Read the fine print: IP Statistics

“IP statistics are thrown about on a regular basis without sufficient caveats, out of context and, in some cases, stats are so poorly calculated they should never leave the back of the envelope”, says Nicola. How come?

* India's claims to Traditional Knowledge washed up and spat out

Last week (and even before then, here and here), Darren has expressed concerns that many cited examples of alleged expropriation of Traditional Knowledge simply do not stand up to scrutiny.  As former Kat David Pearce (Tufty) explains in this post, another example has recently arisen: it concerns allegations of misuse of Traditional Knowledge from India relating to various herbs.

* Law Down Under: New Censorship Bill Passed in Australia

As Jani explains, the Australian Parliament has just passed the Copyright Amendment (Online Infringement) Bill 2015, which aims to give the Australian courts more tools to combat online copyright infringement. While the provisions owe something to the UK (and some other European) Copyright Laws, it goes well-beyond them.

* Gone with the wind: Wobben’s patent found invalid and not infringed

Darren writes up Wobben Properties GmbH v Siemens PLC & Others [2015] EWHC 2114 (Pat), a decision of Birss J concerning validity and infringement of a patent covering a “Method of Operating a Wind Power Station”.

* Hosepipe Ban to Continue - Blue Gentian patent upheld in appeal

And here’s Darren again, this time reporting on the Court of Appeal decision in Blue Gentian v Tristar Products (earlier covered on the IPKat here), which discusses, among other things, misconstruction of a prior art document.

* Copyright reform through competition law? The Commission’s statement of objections in the pay TV investigation

Is geo-blocking [here] really a copyright issue? Or is it rather a competition law one?  Following the EU Commission’s statement of objections to Sky UK and the ‘Big Six’ Hollywood majorsEleonora hosts this contribution by fellow blogger (Chillin' CompetitionPablo Ibanez-Colomo (London School of Economics), who explain what’s going on.

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PREVIOUSLY, ON NEVER TOO LATE 

Never too late 55 [week ending on Sunday 12 July] Traditional Knowledge and indigenous people | Traditional Knowledge in Canada | Traditional Knowledge and unbalanced dialogues | E-mail addresses as trade secrets | CJEU on essential patents in Case C-170/13 Huawei Technologies Co. Ltd v ZTE Corp., ZTE Deutschland GmbH | CJEU on disclosure of infringers’ bank data in Coty Germany GmbH v Stadtsparkasse Magdeburg Infocit - Prestação de Serviços, Comércio Geral e Indústria, Lda v OHIM | Moral ambiguity of trade secrets | CJEU on limits of TM exclusive right in TOP Logistics BV, Van Caem International BV v Bacardi & Company Ltd, Bacardi International Ltd | Non-traditional trade marks in Japan.

Never too late 54 [week ending on Sunday 5 July] - Google v Oracle and Microsoft/Kyocera settlement | GC and Nagoya | Life Science IP Summit 2015 | (Kat)onomics of patents | Case T-15/13 Group Nivelles v OHIM | Case T‑521/13 Alpinestars Research Srl v OHIM v Kean Tung Cho and Ling-Yuan Wang Yu | Smith & Nephew Plc v ConvaTec Technologies Inc | Multi Time Machine, Inc., v Amazon.com, Inc.; Amazon Services, LLC | EU reform on freedom of panorama and (Google) News ancillary right | 3-D Printing choked by IP? | Pro-Football Inc v Amanda Blackhorse et al. | Condoms made in Germany | the Beckhams’ IP.

Never too late 53 [week ending on Sunday 28 June] - EU trade marks in Arabic in Case C 147/14 | Is UberPop a transport service? The floor goes to the CJEU | Is Michael Jordan’s ”Jumpman” logo a copyright infringement? | Plant variety in Case C‑242/14 | US Supreme Court on Spiderman patent | Hospira v Genentech saga | Are EU policy-makers fighting the right copyright battles? | The IPKat and his friends | GO Outdoors Ltd v Skechers USA Inc II | Allfiled UK Ltd v Eltis & 16 Others | OAEE 'victims' mark in Greece | Icons, flags and the Hazzards of intellectual property toxicity | Why Finland is not Silicon Valley | The Sofa Workshop Ltd v Sofaworks Ltd The Ukulele Orchestra of Great Britain v Clausen & Another (t/a the United Kingdom Ukulele Orchestra) | Sony/ATV Music Publishing LLC & Another v WPMC Ltd & Another | The London Taxi Corporation Ltd v Frazer-Nash Research Ltd & Ecotive Ltd.

Never too late 52 [week ending on Sunday 21 June] - EU TM reform | Motivate Publishing FZ LLC and another v Hello Ltd | EPO’s Inventor of the Year: poll results | New network for new IP people | Delfi v Estonia | UPC fees | Smith & Nephew Plc v ConvaTec Technologies Inc Canary Wharf Group Ltd v Comptroller General of Patents, Designs and Trade Marks Actavis v Lilly | Council of Europe v EPO | Freedom of Panorama | TM reputation and brain scan | Case management decisions in the Lyrica case.

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