The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Monday, 29 May 2017

‘Display At Your Own Risk’: A Tour into ‘Copyright Surrogacy’

'DAYOR' exhibition  - Glasgow 2017
(...and Kats wondering which they prefer, Mona or 'surrogate' Mona)
Over the last year, Display At Your Own Risk’ (DAYOR) has made a buzz in the cultural, museum and legal sectors, touring London, New Orleans, Leicester, Hamburg and Milan. DAYOR is an exhibition of digitized reproductions of well-known public domain works commenting on cultural institutions' management of copyright With the next dates of the tour coming up soon (in Birmingham at Vivid Projects 6-23 September as part of exhibition curated by Antonio Roberts called ‘No Copyright Infringement Intended’), it also offers us the opportunity to discuss the newly-coined concept of ‘copyright surrogacy.' The topic appears to be catching on in the ‘GLAM’ (Gallery, Library, Archive and Museum) sector. 

Another 'GLAM' Cat
(Photo by Ree Drummond /
 The Pioneer Woman)
Display At Your Own Risk: The Exhibition
‘Display at Your Own Risk’ is an exhibition featuring digital surrogates of public domain works produced by cultural institutions, which were printed to work’s original size (read more about the exhibition methodology here). The ‘experimental exhibition’ includes no less than one hundred hand-picked surrogates of public domain works created from 196 BC to the 20th century. Confused? Fear not, ‘Display At Your Own Risk’ comes with an illustrated note of the exhibition’s process and purpose on its website.

The aim of the exhibition, put on by designer-turned-intellectual-property-law-researcher Andrea Wallace and copyright expert Prof. Ronan Deazley, is to explore “the meaning of concepts such as access, transparency and user engagement in an age where digital collections are becoming increasingly relevant” and envisage the “tensions inherent in the ownership and use of cultural heritage, as well as the validity of the authorial claims that institutions assert over these digital surrogates – surrogates that are often viewed as new and independent assets.” (More on the exhibition can be found here and here.)
Surrogates or not: Kats cant touch!
(DAYOR exhibition - Glasgow 2017)

‘Display At Your Own Risk’: The Debate on ‘Copyright/IP surrogacy’
The crux of the debate exposed by ‘Display At Your Own Risk’ is one of ownership, access and re-use. Can or should cultural institutions, collection owners, galleries, etc. claim copyright ownership in the digital copies of out-of-protection works? How does the practice of claiming ownership in digital surrogates impact the way we, as users and potential creators of derivative works, engage with works of art in the public domain? This is especially relevant as one is now more likely to cross paths with the Mona Lisa online than in the Louvre.

The exhibition re-opens a discussion that lawyers working away from the turmoil (and joys) of the GLAM sector might have thought was settled in the UK following the 2015 notice issued by the UKIPO (herefor those who missed the episode, you can catch-up online here.) What DAYOR makes clear is that the issue is still far from seeing any resolution both in the UK and worldwide.
Studying policies (all day long), terms and conditions 
(bring it on) ....but metadata : no can do.
(DAYOR exhibition - Glasgow 2017)

DAYOR illustrates in laymen’s terms what remains common practice in the cultural sector, i.e., the claiming of copyright via institutional policies, in the terms & conditions of institutions’ websites or, sometimes, directly in the metadata of the surrogates themselves. According to Andrea, this practice, which begins with the (welcome) production of digital reproductions of works, is now resulting in the generation of ‘surrogate IP rights’ when the copyright protection originally vested in the work has expired but is yet re-claimed in the digital format through ‘soft law’ (all beautifully illustrated in this infographic).

Good news for the public domain activists amongst us: Andrea and Ronan’s creative ‘poke’ at some of the most eminent of our GLAM institutions has been picked up and is catching on. The MKG Hamburg museum, which had released its digital surrogates to the public domain has since then updated its policy in line with the DAYOR team’s recommendations. The museum’s policy and practices are being now put forward as a model example to follow by none other than the EU Commission itself (here, p. 7, 22). And the OpenGLAM debate is continuing to catch on with the Met’s recent release of 375,000 digital surrogates to the public domain. 

This is a welcome victory for public domain advocates after the recent blow delivered to their campaign by the EFTA Court’s Municipality of Oslo decision last April (see here and here). In this decision, the EFTA Court confirmed that  public domain works could be registered as trade marks, without falling foul of the 'public policy' or 'morality' exclusions provided by the Trade Mark Directive (Article 3(1)(f)). Some may fear that this interpretation will allow the creation of new "copyright mutants"[1], or indeed, encourage cultural institutions to secure unlimited "surrogate IP rights" by using trade mark rights to reclaim out-of-protection works from the public domain. 

This debate reveals that the relationship between the public domain and intellectual property rights remains difficult to disentangle - even in cases involving traditional forms of artistic expressions like visual artworks. It will be interesting to see how national governing bodies and leading cultural institutions choose to adapt their policies going forward. 

[1] Dastar v. Twentieth Century Fox, 539 U.S. 23 (2003) ; European Copyright Society, Trade mark protection of public domain works: A comment on the request for an advisory opinion of the EFTA Court (1 November 2016) 7.

Sunday, 28 May 2017

Judge Alsup driving forward Uber-Waymo trade secret dispute amongst "red flag" disclosure hearings

On this Memorial Day Weekend, the AmeriKat's friend Chi has
better things to do then ponder trade secrets  and interim hearing strategy
- like sitting on a hot tub roof
(with thanks to Kat friends Jim Pooley & Laura-Jean Anderson)

As the AmeriKat reported a several weeks ago, the driverless car legal battle between Uber and Alphabet's Waymo is heating up.   Readers may recall that the dispute, commenced in February, centers on Waymo's accusation that a key engineer and ex-Google employee, Anthony Levandowski, had misappropriated its trade secrets in the LiDAR technology (by way of some 14,000 documents - see previous Kat post here) bringing them to his start-up autonomous truck company, Otto, before joining Uber.  Uber dispute this, claiming that its own Carnegie Mellon poached LiDAR experts independently developed its technology before the arrival of Levandowski (who is not a named defendant), as well as using pre-purchased technology from Velodyne.

Since the Kat last reported on the trade secret and patent dispute two months ago, the following has transpired:
  • Levandowski asserts his Fifth Amendment rights against self-incrimination and then later steps down as head of Advanced Technologies.   
  • Warnings (and an order) from US District Judge Alsup is given over excessive redactions in the proceedings.  Pleading the Fifth also potentially impedes Uber's ability to advance discovery documents that serve as its defence (as opposed to Levandowski's defence).  
  • Judge Alsup therefore orders Levandowski to provide information or logs setting out documents over which he claims privilege and which he asserts should not be disclosed in the proceedings.  The due diligence report was ordered to be included in this log.  Judge Alsup wrote that:  
"At the risk of repetition, the very purpose of a privilege log is to allow a fair way to test a claim of privilege. That traditional privilege log requirements should be verboten merely because they might connect the dots back to a non-party in a possible criminal investigation is a sweeping proposition under which all manner of mischief could be concealed."
  • Uber's request to have the dispute decided in arbitration is rejected on the basis that there was not enough "intertwining" between the claims in the trade secret dispute and the arbitration clauses that were made between Levandowski and Google as part of his employment agreements. 
  • Waymo is partially granted their preliminary injunction motion (sealed order due to confidential information).  
  • Judge Alsup refers case to US Attorney for investigation of the possible theft of trade secrets. This in no way guarantees that the US Attorney's Office will in fact open a criminal investigation.  
  • Uber  reportedly warns Levandowski to comply with its court orders or risk being fired.
  • Uber files notice that it will appeal the arbitration ruling.  
  • On Wednesday, the Court orders Levandowski to do better on his privilege logs by Friday.  
  • On Thursday, US Magistrate Judge Corley says Uber's disclosure (or non-disclosure) of key documents (including due diligence report - argued to be protected by attorney-client privilege - and term sheet) "raised a giant red flag".  Orders the unredacted term sheet be disclosed. 
  • Trial has been set for October 2017.  
Like most cases concerning patent and trade secret infringement disclosure is key.  With a key individual refusing to testify this is even more so in this case.  Obtaining key documents relating to the acquisition of Levandowski's Otto by Uber will be crucial for Waymo especially given the almost $700 million price tag.  Although it is rare to have a smoking gun document in litigation (as much as litigators dream of one), even if the documents do not contain any killer information, refusing to disclose them and cloaking them in mystery before the Court may not be the best tactic.  The Court's interest level has been raised and now, by refusing to voluntarily disclosure documents, any information contained in them that could have otherwise been explained could now look particularly damaging.  As someone once told the AmeriKat, perception can be all important even if it turns out to be based on incorrect information.  

Merpel believes that when judges start banding around the words "red flags" and "obuscation" in court, it is time to find the nearest desk to hide under.  Further, Merpel muses, it is all making sense why Uber wants this dispute to go behind the closed doors of arbitration and is therefore appealing Judge Alsup's decision on this point.

The IPKat will keep readers updated as the case progresses.    In the meantime, the AmeriKat recommends reading this Recode article given it pre-dates the dispute and, with the benefit of hindsight, makes the Otto-Uber deal and resulting dispute click into place.  

For those with Pacer accounts, the case is Waymo LLC v. Uber Technologies Inc., 17-00939, U.S. District Court, Northern District of California (San Francisco) 

The meaning of "red carpet" in two and three dimensions: from Ancient Greece to Cannes

A carpet is a carpet is a carpet--unless it is a “red carpet.”

The dictionary tells us that a “red-carpet” is a “long, red floor covering that is put down for an important guest to walk on when he or she visits somewhere and receives a special official welcome, or a special welcome of this type.“ With the Cannes Film Festival 2017 coming to an end, with its own “red carpet”, let's take a Kat pause to consider how the notion of the red carpet has come to be imbued with distinctive meaning, both in its two-dimensional and three-dimensional forms.

As described by Thomas Page on on May 26th, in his article—“Greek tragedy and railways: An unexpected history of the red carpet”, the “red carpet” has a history reaching back to ancient times.
“Arriving with a sting in its tail, the red carpet has deadly origins. But its modern day incarnation, synonymous with wealth, glamor and stardom, is about as far removed from its beginnings as you can imagine. So how did we get to here?”
The literary use of the term goes back to the Greek playwright Aeschylus, in his play, "Agamemnon", written around 458 BC. Page notes that Clytemnestra, Agamemnon's wife, talks about a "floor of crimson broideries to spread / For the King's path." The question is why the reference to the “floor of crimson broideries.” Page brings the view of Amy Henderson, historian emeritus at the National Portrait Gallery, Washington, who observes that --
"Agamemnon goes away to fight (in the Trojan Wars) and leaves his wife Clytemnestra at home. He's away for a long time, and they both find significant others. When he comes back he's in love with Cassandra and brings his concubine home with him."
While Clytemnestra has carried on her own acts of infidelity, she also has the burden of the memory that Agamemnon had sacrificed their 15-year-old daughter so, with the help of the gods, he could benefit from the winds necessary to sail. And so, Clytemnestra proclaims--
"Let all the ground be red / Where those feet pass; and Justice, dark of yore, / Home light him to the hearth he looks not for."
According to Henderson, Clytemnestra “rolls out the crimson carpet to convince him to walk into his death.” As Page sees it, “Clytemnestra had grim proof of concept that people will follow a red strip of textile.” The end reminds one of a Spaghetti Western—either Clytemnestra murders her husband, in the bath no less, or her lover kills Agamemnon. Whatever happened at the end, the first “red carpet” is a long way from the Academy Awards and the Cannes Film Festival.

We move forward over 2000 years. According to Henderson, there is documentary evidence that James Monroe, the fifth U.S. president, in the 1820’s, would disembark from a boat, presumably via a red carpet. Later, the carpet was tied to the railroads. As Henderson notes--
"In 1902, New York used plush crimson carpets to direct people boarding the trains."
While the red carpet itself does not appear to have been anything special as a matter of quality, nevertheless since it was used in connection with first class passengers, it came to be identified with high social status. This seems to have led to the use of the term-- "red carpet treatment". Hollywood soon followed, blending the sense of “the special” as embodied within the early 20th century meaning of the term with the actual use of a red carpet to promote the premiere of movies.

It was Sid Grauman who apparently first did so in 1922, in connection with the movie, “Robin Hood”. Down the red carpet at the theatre walked such superstars of the silent movie era as Douglas Fairbanks and Wallace Berry. The effect was almost instantaneous. Again, in Henderson’s words--
"the idea of glamour became instantly associated (with it). For the actors, it was all about you, and that of course is what Hollywood loves."
From movie launch, the red carpet then moved mainstream to the Academy Awards. In 1961, the Academy of Motion Picture Arts and Sciences incorporated a red carpet as part of its presentation format. Then, as now, format might be a difficult thing to protect by IP, but the red carpet was on its way to taking on a transcendent meaning. Henderson observes—
"Of course, it was black-and-white... (but) the process of the runway culture was more important than seeing it in red to begin with."
The broadcast of the Oscar ceremonies went color in 1965, and with it, the "red carpet" became mainstream among home viewers. The "red carpet" has become a staple of other events, perhaps most notably the Cannes Film Festival. So what do we make of the "red carpet" as a matter of IP? This Kat has three thoughts.

First is the fascination with the color red. Red, as the color of blood, related both to life and death, dates back thousands of years. More recently, psychologists, neuroscientists and the like have studied the hold that the color holds over us. Much of this is beyond this Kat's catnip grade, but Kat readers are encouraged to delve into the subject.

Second is the development of the physical object as a symbol of status. No trademark here, even of the three-dimensional kind. Still, the presence of the red carpet in various settings continues to connote glamour, irrespective of the quality of the carpet itself. Indeed, the red carpet used at the Oscar ceremonies is destroyed at the conclusion of the ceremony, while that used at Cannes is recycled as pellets for use in packaging. Accordingly, it differs from the luxury watch, whose allure is embodied in the affixed mark, or the diamond, whose value is largely measured by its price. Here, the concept of the red carpet merges with the object itself, at least for few hours; the notion that future red carpets, if used in the appropriate settings, will also connote glamor, is unimpaired.

Third is the use of term in a two-dimensional manner. There are two aspects here. First, consider the dictionary understanding of "red-carpet treatment", namely, "very special treatment; royal treatment.” Obviously, this meaning is connected with the significance that has already been attached to the three-dimensional object. As such, it has become part of our modern lexicon.

But having come to take on such a laudatory connotation, one wonders how use of the term "red carpet" has fared as a trademark. After all, given its laudatory meaning, one might expect that it will be viewed as lacking distinctiveness. This Kat was therefore surprised to find that on the U.S. Trademark Office database, there are 299 entries for marks comprised or consisting of "red carpet." Slightly more than half of these marks are now inactive, but compare it with "green carpet" (31), "blue carpet" (10), and "brown carpet" (0!). Despite the fact that "red carpet" carries with it a potentially non-distinctive trademark meaning, it has fared much better as a mark than other forms of descriptive use of the name of a color together with the word "carpet."

A carpet is a carpet is a carpet--unless it is the unique story of the "red carpet".

Photo on lower left by Ovedc

Appointed Person issues first appeal decision in a design case

Union Jack Kat
Readers with an interest in UK design law will remember that the Intellectual Property Act 2014 introduced a new appeal regime for designs. 

The system of appeals to an Appointed Person, as an alternative to the route of appealing to the High Court in heavier and more complex cases, was intended to mirror the longstanding system of appeals to an Appointed Person (AP) in trade mark appeals. In fact, the relevant rules for design appeals are modelled on those for trade mark cases.

Readers will also remember that Sir Richard Arnold had advocated the extension of the Appointed Person appeal route for registered designs instead of the appeal route to the Patents County Court, which was enacted but never brought into force in place of the Registered Designs Appeal Tribunal.

Now via Sir Richard Arnold comes the news that last week Martin Howe QC issued the first decision of an AP in a registered design (Appeal O/253/17).

The appeal concerned a request to invalidate two registered designs (both consisting of a garment on the chest of which a somewhat modified Union Jack flag) on the ground that they lacked novelty or individual character under section 1B(1) of the Registered Designs Act 1949, as amended. 

Valid design?
The argument was that similar designs have been sold in the London souvenir market for many years prior to the application dates for the concerned designs and, as a result, their owner "had registered existing generic designs, hijacking the London souvenir market." 

Despite the lack of systematic evidence, the Hearing Officer relied on two (a photograph published on Facebook and two witness statements) of the many items produced to conclude that - on the balance of probabilities - these had been made available to the public prior to the concerned designs. Following a comparison of the designs at hand, she concluded that those registered were invalid.  

The decision was appealed to the AP together with a request to introduce additional materials, as well as allegation of fraud and forgery against the publication date of the Facebook photograph. 

Martin Howe QC dismissed such requests, and upheld the Hearing Officer’s findings on the evidence that the Facebook photograph and the garment identified in the two witness statements were prior art as against the two registered designs in suit. 

However, the AP found that the Hearing Officer’s comparison of the designs in suit to the prior art had incorrectly characterised the features of the designs in suit. Nonetheless, having carried out the comparison myself, the AP came to the same conclusion that the two registered designs lack individual character in the light of the above prior art. As a result, he dismissed the appeal.

Friday, 26 May 2017

Friday Fantasies

ICC Intellectual Property Roadmap 2017 | Now available

The 2017 edition of the ICC Intellectual Property Roadmap is available now!

ICC’s flagship IP publication, launched on World Intellectual Property Day, provides a comprehensive and concise overview of key intellectual property policy issues today.

The result of collaboration between over eighty IP experts from around the globe, the 2017 edition reflects the most pressing issues that have been reshaping intellectual property in recent years.

Issues covered include the interaction between IP and climate change, innovation, competition, digitisation and the data-driven economy, as well as developments in patents, trade secrets, IP valuation, standards, designs, copyright, trade marks, domain names, plant varieties, and other areas.

Access the 2017 IP Roadmap hereFor more news on the 2017 IP Roadmap, see here, as well as Twitter, Facebook and LinkedIn.


On June 7, Professor Bankole Sodipo, who is a preeminent IP scholar in Nigeria, will give a lecture at the CCLS Lincoln's Inn Fields campus on "FDI and Nigeria's IP Landscape". Further details of the lecture can be found on this Eventbrite platform, with free registration for everyone. Here is also a flyer for the event.

Calling for an IP tutorial support at City

We want you.
Is there a PhD candidate, a recently qualified practitioner, or graduate who is keen to get a foot into the door of IP teaching, and who is able to step in and assist on the Intellectual Property Management module at Cass Business School, City University of London? The IPM module is delivered to 2nd year BSc business and management students. Growing student numbers means extra tutorial groups (groups attend tutorials 1 hour every other week over 11 weeks duration of the module) for which assistance is sought, and paid for. There is also paid marking of coursework and exam papers. If you can think of anyone who has the necessary knowledge, attitude, aptitude and time to fit the bill, a message of interest would be most appreciated. 

If any reader thinks that he or she might be the right person, can that person please email Tian Lu at with the subject line City-CassIP.

Please note the closing date for receipt of applications: 2nd June, 2017.

The successful applicant will be the second postholder. The first postholder, on retiring after two years, writes:

"As a young(ish) patent attorney with an ambition to learn and broaden my commercial horizons, the opportunity to assist in delivering on the Intellectual Property Management (IPM) module at the Cass Business School, City University of London has been a great helping hand. The opportunity has allowed me to explore areas of IP that had been little experienced through my past working environments. It has also been a great networking experience, having met various IP professionals from diverse backgrounds (IP valuers, eminent inventors, IP Directors, etc.) who provided eye-opening lectures in their specialist subject areas. I particularly had fun in assessing student courseworks and presentations where the students were required to make IP assessments of a chosen company and provide their recommendations (which involved analysing IP portfolios, exploitation, management, due diligence, prominent court cases, and so forth). This experience has certainly helped me to think at a higher level in the various roles I've held and I daresay that such thinking has helped my career advancement. I'm now Head of IP for my present employer and am delighted to be able to use what I've learned to further the ambitions of my company. I'm gutted that I am unable to continue this role and wish the best of luck to all applicants! Thanks Cass for the great opportunity!""

Courtesy of Kim de Beer for the "Kat Boss" picture.

Thursday, 25 May 2017

Life as an IP Lawyer: Singapore

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...


Aaron Thng
For the fifth in the series, we travel over 6,700 miles south east to Singapore where Aaron Thng at Amica Law grapples with with cross-border enforcement, a paperless law firm and the dream of taking Chief Judge Kozinski out for lunch.

What can you see from your office window right now?

Ventilation shafts, someone else’s roof garden, and if I crane my neck, a bit of the Singapore river.

When did you know that you wanted to pursue a career in IP?

It’s always been something I was interested in, because of its connection with art and design. Also, the concept of being able to own, and extract value from, something intangible is something I find fascinating.

Walk us through a typical day... 

I get up at 8, and try to get in a bit of reading before work. Once at the office, its coffee, news from NextDraft (Dave Pell’s review of the day past) and then, work proper.

What are the key differences in your system that client/other lawyers from outside the jurisdiction find surprising or strange?

Because Singapore is tiny, our courts are not divided into federal or state courts. There is the Supreme Court, which consists of a High Court and a Court of Appeal, and then the State Court, which handles most first instance cases of lower value.

That, and our long judgments. A short judgment here usually weighs in at around 50 pages.

As the IPKat's readers are likely eating their lunch while reading this, what is a typical lunch for you?  

Frog leg porridge. It’s a rice porridge with braised frogs, usually cooked in a clay pot.

What are the challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

With so many businesses, especially internet start-ups, being able to operate so easily across borders, the concept of "jurisdictions" has become a lot more dynamic. A holistic enforcement of IP rights now usually requires coordination between multiple parties and multiple sets of lawyers, across jurisdictions.

What are the misnomers that people have about IP practice in your jurisdiction?

Most people don’t immediately see the value of IP until they run into problems with it. This is an oversight I try to disabuse my clients of.

If you could change one thing about IP practice in your jurisdiction, what would it be? 

I’d want to streamline the discovery process. In a lot of IP cases, parties refuse to disclose documents because they claim them to be confidential. As a result, many cases become bogged down at the discovery stage.

What advice do you give clients when they are looking to protect or enforce IP rights in your jurisdiction?

That based on how open markets have become, it is seldom sufficient to simply apply for protection in one jurisdiction, but not the next. This applies especially if your business is internet-based.

What gives you the biggest thrill in your job? 

Defending people and businesses against over-zealous enforcement of IP rights, and leaving work with nothing left in my in-tray.

View from Aaron's office
What are the top trends or cases that we should be looking out for in your jurisdiction in 2016?

Hollywood studios are starting to take action against illegal downloaders in Singapore. It started with the rights holders behind the Dallas Buyers Club movie, and now a few more studios have entered the fray. It remains to be seen how successful they will be, though.

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs? 

An interest in everything. IP law percolates through every industry.

What other jurisdictions do you work with the most in your practice?

Malaysia (naturally), Japan, and the US.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

Paperless law firms, with many processes automated, and with skeletal staffing. I’m curious to see how AI robots, like ROSS, will improve the profession.

If you could practice IP law anywhere else in the world for a year, where would that be and why? 

Silicon Valley, because that place, more so than anywhere else, drives innovation and disruptive technologies.

If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be?

I would want to chill with Chief Judge Alex Kozinski of the US 9th Circuit. He can choose whatever he wants for breakfast, but I’d want to pick his brain on the theory of intellectual property, and of law in general. I’d also want to pick up some writing tips.

What is the best piece of advice you have ever been given?

That litigation is actually a lot like tennis - they’re really all about angles. Also, in both, the players hold themselves to a strict codes of ethics, there is no room for brazen aggression or cheap shots, and sometimes, a delicate touch is all you need.

If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?

1. Coney Island, in the north-east of Singapore, because it is the one place here that approximates ethereal beauty. Also, there are many nice birds.

2. The Singapore Zoo (one of the best rainforest zoos in the world) is always good. I visit it regularly.

3. Kway Chap, which is a dish of flat, broad rice sheets in a soup made with dark soy sauce, and served with pig offal, braised duck meat, bean-curd, salted vegetables, and hard-boiled eggs. I doubt it’s for everybody, but at just $3, there’s nothing better.

Wednesday, 24 May 2017

Big Data, products & processes: being a German patentee in the era of the Rezeptortyrosinkinase decisions

The IPKat trying to put his paw on which of the data
may or may not be infringing....
Here is a pretty uncontroversial prediction - we are going to see more infringement cases concerning products obtained directly from a patented process where the product ends up being data, for example from test results that are used as the basis for diagnosis or treatment.  But with data entering a jurisdiction from a processes occurring abroad, what is a poor patentee to do (especially when fighting with the loss of identity test in Pioneer v Warner)?

Kat friend and cross-border colleague Jérôme Kommer in the Mannheim office of Quinn Emanuel reports on the current position in Germany following recent Supreme Court decisions.  Over to Jérôme:
"No doubt about it, we are living in the era of Big Data solutions used for generating and discovering information that has been previously unavailable or prohibitively difficult to obtain.  With the merging of data analysis and other technologies, such as gene sequencing and diagnostics, where does that leave litigants, especially in cases in which the information as such may have its own, potentially considerable, value?  
Last year, the German Supreme Court had the chance to address these questions in two decisions involving the same patent, EP 0 959 132 B1.  The '132 patent covered a nucleic acid molecule encoding a receptor protein kinase (“fms-like tyrosine kinase 3” or “FLT3 gene”, in particular) and a method for detecting the claimed nucleic acid molecule. The detection can be used to diagnose leukemia, for example.
In the first decision (Rezeptortyrosinkinase I of January 19, 2016), the Supreme Court found the subject matter of the claims directed at the nucleic acid molecule patentable subject matter.  This was despite the fact that the claims did not contain any language indicating that the nucleic acid molecule needed to be isolated or created by a particular technical process. In the Supreme Court’s opinion it was sufficient that product claims necessarily (and inherently) require that the product is provided by a technical process (para. 51). In addition, it was not necessary to identify an “inventive concept” to distinguish patentable subject matter from unpatentable discoveries (para. 50, distinguishing German and European patent law from the US Supreme Court’s Mayo v. Prometheus, 566 U.S. __ (2012)). Because it referred to these product claims, the method was also patentable (para. 53).
The importance of the second decision (Rezeptortyrosinkinase II of September 27, 2016) in the parallel infringement case goes far beyond the already important issues of patentability surrounding gene sequencing and its use to diagnose diseases of the first decision.  Because the defendants practiced the protected method outside of Germany and just sent the results of the diagnosis back to their German customers, the defendants could only infringe the German part of EP 0 959 132 B1 if these results constituted a product directly produced by the protected process (“unmittelbares Verfahrenserzeugnis”, § 9 No. 3 German Patent Act).
The Supreme Court denied infringement and held that:
(1) the results, as a sequence of data, could only be a product directly produced by a protected process if the sequence of data has product-like technical characteristics provided by the process such that it could be subject to a product claim, and
(2) the presentation of the results and any findings based on the process are not a product according to § 9 No. 3 German Patent Act because it is just presentation of information that is excluded from patentable subject matter, § 1 (3) no. 4 German Patent Act, Art. 52 (2)(d) EPC.
The reference by the Supreme Court to and affirmation of its earlier decision in MPEG-2-Videosignalcodierung (a case about video images encoded by a patented encoding method that were stored on DVDs) shows that the new decision is technologically neutral.  The decision not only applies to test results obtained through genetic tests, but equally to other processes producing data and, thus, information.
The Supreme Court successfully walks the line between providing protection for a technical teaching protected by the respective process claim and not “excluding the exclusion” from patentability for the untechnical mere presentation of information. For this purpose, the Supreme Court distinguishes the data structure from the information contained within the data (para. 21 of the decision). The data structure which results from the patented process can be patentable, just like a method about how to display moving images on a TV set is patentable. On the other hand, the information itself, i.e. the specific moving image, e.g. a video of a horse race, cannot be patented because it is not technical (cf. para. 22, 24 of the decision).
Applied to the nucleic acid molecule detection method, this meant that the only “product” of the method was a biochemical result about the presence or absence of a specific mutation indicating leukemia or not (para. 19 of the decision). Only that result - presence of leukemia or not - together with some supporting information and not the original data sequence were sent to the German customers. Because there was no specific (and even a less technical) way of presenting this information or any other characteristics obtained from the information obtained form the patented method, these findings did not amount to a use of the patented invention (para. 24 of the decision). Therefore, the Supreme Court denied protection under § 9 No. 3 German Patent Act.

The two Rezeptortyrosinkinase decisions clarify the answers to the questions mentioned at the beginning, contain specific guidance for the protection of test results based on gene sequencing, and strike a balance between the accessibility of patent protection for such methods while excluding resulting mere information from patent protection.
Beyond these two decisions, it will be interesting to see the further development of the Supreme Court’s general acknowledgement of the patentability of data sequences. That data sequences need to be able to be used an arbitrary number of times just like physical products and can constitute commercial goods, which is generally the case if they can be reproduced on physical data carriers and/or transmitted via the Internet (MPEG-2-Videosignalcodierung, para. 22, 23), is not much of a hurdle. The more interesting and decisive test for the scope of product-by-process claims and patentability of data generating methods relates to the technical nature of the respective claim’s subject matter."
Is the message to patentees to patent a data sequence or structure containing the abbreviated results? Would that have saved the patentee? Jérôme responds:
"If there was a data sequence with sufficient technical characteristics that could have been made subject of a claim (e.g. with a data structure or “syntax” that at least contributes to the solution of a technical problem), that could have been a way to (also) protect the commercially valuable information contained within the data sequence. Of course, the data sequence as the protected product would have to be novel and inventive, too. However, it is unlikely that that would have been possible in the case decided by the Supreme Court. And even though the information as such might have its own (considerable) commercial value, patent protection should be limited to the novel and inventive technical teaching provided by the patentee. Here, this was the method of identifying the claimed nucleic acid molecule, which could have been protected outside Germany if the patentee had applied for patent protection in the country in which the method was practiced."
The AmeriKat also understands that there was a case heard last week before the Supreme Court in Germany about the liability for patent infringement in Germany if the infringer "only" delivers infringing products to customers outside Germany which then might end up in Germany.  The case no is X ZR 120/15.  Watch the IPKat for future updates.

Is there copyright in the taste of a cheese? Sensory copyright finally makes its way to CJEU

Readers with an interest for copyright in unusual or, rather, less conventional 'objects' [I will explain below why the word 'works' might not be appropriate] will know that for quite some time it has been disputed whether IP protection - particularly in the form of copyright - is available to, say, perfumes or culinary creations.

So far proponents of sensory copyright have not been really met with widespread approval [for the sake of a debate organised in London a while ago by IPKat founder Jeremy Phillips and BLACA, I supported the motion that there is indeed such thing as sensory copyright - my slides are available here; Jeremy's report can be read here].

Not long time ago, contrary to some lower instances' decisions, the French Supreme Court dismissed for instance the idea that copyright could subsist in a perfume [herehere for a Dutch take on the matter], and in 2015 a Dutch court (Gelderland District Court) refused to acknowledge that copyright would subsist in the taste of a cheese, Heks'nkaas [see here and here].

Speaking of cheese, the Dutch saga of Heks'nkaas is - thankfully - not over.

The case is in fact making its way to the Court of Justice of the European Union (CJEU) for guidance on whether EU law allows copyright protection in taste (in this case, the taste of a cheese). 

Despite its subject-matter this new reference is anything but cheesy. 

The content of the CJEU reference

As explained by Amsterdam-based Syb Terpstra (De Brauw Blackstone Westbroek N.V), counsel to one of the parties in the Heks'nkaas case, yesterday the Arnhem-Leeuwarden Court of Appeal issued an interim decision, in which it held that guidance from the CJEU is needed to determine:

  1. Whether EU law [read: the InfoSoc Directiveallows copyright protection in taste;
  2. If so, what requirements must be met in order to determine subsistence of copyright protection? 

The actual questions are available (in Dutch) here [thanks to @TreatyNotifier for providing the link].

Why this reference is important

This new case promises to be a very interesting and important one, if the CJEU deems it admissible. 

The reason is essentially that the CJEU will need to clarify at last what is meant by 'work', thus revisiting and elaborating further on its earlier case law, notably Infopaq and its progeny [particularly BSA and FAPL].

In that string of cases the CJEU held that under EU law copyright protection should arise any time a work is 'its author’s own intellectual creation', ie a work is sufficiently original. In FAPL, for instance, the CJEU had to determine whether football matches as such can be eligible for copyright protection. The court denied that that would be the case of football matches because they "cannot be classified as works. To be so classified, the subject-matter concerned would have to be original in the sense that it is its author’s own intellectual creation." [paras 96 and 97]

There is no legislative definition of 'work'. I argued elsewhere that CJEU case law appears to suggest that the notions of 'originality' and 'work' conflate, in the sense that the assessment of originality entails that of whether a certain 'object' is to be regarded as a 'work'. Possibly the reason for this is that in the Infopaq line of cases (and even in BSA), the focus of the questions referred to the CJEU was more on what originality means, rather than what a work is. In this sense, the Heks'nkaas case will be to some extent different [at least as long as the CJEU does stick to the text of the questions as referred, instead of re-writing them]. The focus will be primarily on defining the notion of 'work' and then perhaps re-visit the topic of originality.

Guidance as to what a 'work' is - at least in the context of the InfoSoc Directive - must be found outside the body of EU law, possibly in Article 2 of the Berne Convention. The InfoSoc Directive, in fact, implemented into the EU legal order the WIPO Internet Treaties; the WIPO Copyright Treaty mandates compliance with Articles 1 to 21 of the Berne Convention.

The Berne Convention adopts an open-ended definition of 'literary and artistic works'. Article 2(1) does not define the term ‘works’, although it clarifies that such expression “shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”. 

According to the 1978 WIPO Guide, from the general tone of the Convention it follows that “these must be intellectual creations (the words appear in paragraph (5) of Article 2).” The same Guide adds that “[f]or this reason many national laws … provide that, to enjoy protection, the works must be original in the sense that they possess creativity.” 

In general terms, it may be said that “[t]he term ‘production’ … only indicates that the protected object must have emerged from the mind of a person, left the sphere of the mind and become realized. This coincides with the term ‘expression’ also contained in the definition.” [§5.66]

Does the taste of a cheese fall within such definition of 'work'? 

'Say cheese'
Why this reference could have been is important for the UK

An additional profile of relevance of this new CJEU case is that there is the potential for the CJEU to hold - particularly, but not necessarily only, if it acknowledges the possibility of sensory copyright - that EU law envisages an open-ended subject-matter categorisation.

While this is already the case of continental copyright traditions (relevant statutes do not limit the types of works in which copyright can subsist), the same is not true for the UK.

The Copyright, Designs and Patents Act 1988, in fact, envisages a closed list of eligible copyright subject-matter [see also my guidance for students here]. As UK-based readers know, this has proved challenging for less conventional works, in the sense that not always a suitable category can be identified. This has resulted in denying copyright protection in, say, the assembly of a scene (Creation Records) or the Stormtrooper helmet (Lucasfilm).

In a piece published on GRURInt I argued that EU law - or, rather, CJEU case law - mandates the opening up of UK subject-matter list. Although 1709 Blog readers did not agree with this proposition, in his judgment in SAS v WPL, Arnold J [at para 27] held that: "In the light of a number of recent judgments of the CJEU, it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) of the Copyright, Designs and Patents 1988 and defined elsewhere in that Act." At the same paragraph, however, referring to Infopaq the learned judge added that: "it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention ... While the definition of "literary and artistic works" in Article 2(1) is expansive and open-ended, it is not unlimited."

With hard Brexit [ie a situation in which the UK will be no longer bound by EU law and CJEU judgments] on the horizon, some might think that the Heks'nkaas case will have a more limited relevance for the UK. However:

  • According to latest CJEU statistics [the average duration of CJEU proceedings in the context of references for a preliminary ruling is 14.7 months: see p. 28], when the Heks'nkaas case is decided the UK will be still part of the EU;
  • As clarified by UK Government in its White Paper accompanying the Great Repeal Bill, this bill "will provide that historic CJEU case law be given the same binding, or precedent, status in [UK] courts as decisions of [UK] Supreme Court" [p. 14].

In conclusion

The Heks'nkaas case is one to watch. Not only will it determine to what extent copyright protection can be stretched [let's not forget that since Sieckmann, trade mark protection has not been really available to sensory 'signs', and things will not really change in my view with the disappearance of the graphic representation requirement], but also what system of copyright categories EU law or, rather, the CJEU envisages.

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