Can There Be an E-Book Library?

The recent demise of the Borders book chain reminded this Kat once again of the ambivalent position of the consumer within the ecosystem of the book and magazine industries. Popular wisdom holds that the Borders chain failed because it did not adjust to changing reading (or non-reading) habits and the migration from physical books to the e-book platform. Whether Borders was simply a book company that lost its way (unlike, say, Barnes & Noble), or whether it is the canary in the coal mine of the ultimate demise of the physical book store business, is still being played out. The Nook e-book reader here has at least bought Barnes & Noble more time to test the ultimate answer to this question.

So how does the consumer of books fit into this? I was a Borders loyalist (I largely eschewed Amazon, since I hate to pay the delivery charges). This meant that, whenever I came to the U.S., I made a special effort to find the local Borders store in whichever city I found myself. I reckon that I purchased 5-10 books a year on that basis, although I admit that my usual pattern in the store was first to find the Specials tables and only thereafter to consider full-priced titles. In so doing, was I good for Borders and/or the book publishing industry? Did Borders fail because of, or rather, despite me?

Be that as it may, I like to think that, as a reader, this Kat is unequivocally in favour of supporting the content-creating industry. Aren't we taught that copyright is principally about providing incentives for the creation of more and more contents. But that is the rub--contents for whom, and at what price? As a consumer of contents, I want to obtain books as cheaply as possible, subject only to the unqualifiable psychic benefit that I may derive by walking throuogh a book store.

But I am also an author, and not a mass-market one to boot. Wearing that hat, I have both my own interests as an author and those of my publisher at heart. As such, the person I least want to meet is my cash-conscious alter ego as he careful paces along the aisles of Borders and its ilk. Say what you want to say, this is hardly a full allignment of interests between all of the relevant actors in the physical book ecosystem.

These ambiguities were brought home again by a recent report that appeared in The Wall Street Journal (September 12th) entitled "Amazon in Talks with Publishers Over Fee-Based Digital Book Services." The gist of the report is that Amazon is considering the launch of a service (described as "Netflix Inc.-like") whereby customers will pay an annual fee for access to online contents. Based on the report, Amazon would offer publishers "a substantial fee" for signing up to the program, which is described as "a library of content". Amazon may limit the number of titles that it will for free via the service.

As reported, however, publishers "aren't enthusiastic about the idea because they believe it could lower the value of books and because it could strain their relationships with other retailers that sell their books." The article goes on: "Publishing executives would rather have people buy their books, and they are concerned that particpating in the program could create the impression among consumres that books have little inherent value."


Public libraries may be great in providing access to books (and thereby encourge reading and create a more knowledgable citizenry) for a token modest charge. However, a private form of online lending library, where the delivery platform is a source of revenue for the platform that has the affect of crowding out potential purchasers of the book themselves, seems to be less desirable, at least for the content owners.

Looking at this as a consumer, the plan seems attractive. After all, provided that the fee is not prohibitively expensive, it would seem to offer access to contents without having to engage in the repeated purchase of individual titles. For at least certain kinds of subjects, it is the contents and not the books per se that are of interest, and the plan seems to offer a nifty way of accessing such contents in a manner that favourably resonates with my experiences with libraries over the years.

But this distinction between contents and books must certainly be a nightmare scenario for publishers. It is not enough that they must contend with the challenge of finding a workable pricing model for e-books here. Now they face the threat that, for certain categories of titles, providing access to contents in the form of online lending, rather than ouright purchase of the book for display on an e-reader, will be the norm. Can the parties find a pricing model that satisfies all parties involved -- publisher, online distributor, and consumer? Stay tuned.

More on Borders here.
More on Netflix here.

The altar of expediency

Before Europe's patent practitioners burn the old books
on patent litigation, let's all be sure that we are happy
with the contents of the new ones ...

That Unified Patent Court which has so divided opinion in Europe has been very much in the IPKat's mind in recent days.  The problem is that, while most people are either enthusiastic or at least accepting of the idea of having a Unified Patent Court for the European Union's 27 Member States, many experts are anxious about the actual details and a simple Kat could be forgiven that everyone seems to want a different one.

Anyway, the Draft agreement on a Unified Patent Court and draft Statute of 14 June 2011 has now been examined, weighed, measured, pondered, praised, criticised, printed out and converted into fleets of paper darts -- and there is no doubt that there are some serious problems which remain to be resolved.

Here in the United Kingdom, the grandly-named EU Patent Reform Consultation Group (concerning which see CIPA, August 2011, pages 488-490) formed a sub-group to examine the Draft Agreement.  The sub-group did not consist of a bunch of conscripts who had been dragged from the drinking houses of Holborn, sobered up and then instructed to moan about the Draft Agreement; rather, it was a select gathering of some of the finest patent experts on this part of the planet -- academics, practitioners, patent owners and even a blogger -- most of whom are, it may gratifyingly be said, friends of the IPKat even if, as indicated, none of them has [recently, says Merpel] been dragged from any of the drinking houses of Holborn.

What points have been troubling the sub-group? Here are some of them, in no particular order (though you can read them all for yourself in full in the sub-group's Concerns of Principle paper, here):

• Momentum towards political adoption this year is dangerous. It appears that the Commission and the Presidency of the European Union expect to secure adoption of the Draft in political terms by the end  of 2011 [that's 100 days from now] and hope for a diplomatic conference to get it signed up under the Danish Presidency during the first six months of 2012 [the London Olympics start on 27 July ...]. This isn't a huge amount of time, given the number of weekends and holidays between now and then and the fact that the various problems posed by the task of creating a workable Unified Patent Court system have to be solved by people, not by calendars.

• There is clearly still much that is unsatisfactory about the substance of the proposal as it stands. Annoyingly for the practitioners who will have to work with the system if it is to confer any genuine benefit and not be a disaster, some of the substantive points which trouble them relate to matters that have already been agreed at political level, of which the most significant in this Kat's opinion is the requirement to have two national judges in the proposed local divisions. Given that this has been agreed at the political level, it will be a difficult subject to revisit -- but it's easier to revisit it now than to live with it until the end of time, which may be the earliest that the proposed system can expect to be changed once it has been put into operation. Other substantive points are more technical, as enthusiastic readers will see if they care to peruse Sections 15 and 17 of the Concerns of Principle paper.  

• The drafting of the Draft is none too felicitous, since many bits of it are in need of clarification. The sub-group's marked-up copy testifies to this, since it bears over 100 corrections or amendments: a sure indication of the fact that there is still a lot to do.
  
  
• Costs, costs, costs ... Those silly litigants will keep ask about them.  Does it really matter to them? Surely not. Can't they see that it doesn't matter how much it will cost them, so long as they remember that the Unified Patent Court is the most politically expedient compromise that money can buy? On a less emotive note, a complaint that is made about many national systems, including that of England and Wales, is that patent litigation is too expensive. A related complaint is that it is often difficult to gain a reliable notion of how much it is likely to cost.. Patent litigation is an exercise in risk management, and this requires more guidance about the likely cost, but there is frustratingly little clarity on this topic. While it might be unrealistic to start with a consideration of what litigants are prepared to spend and then work backwards towards a system that literally fits the bill, the exercise would help draw attention to the importance of adequate provisions for costs.
  
  
• The provisions giving the Unified Patent Court exclusive jurisdiction over European patents, which you will find in Articles 3 and 58, have struck fear into the heart of many a robust corporation. Not every litigant is happy to risk its very existence in an untried and untested court, untrammeled by practice and precedent, and the case in favour of extending the ability to opt out is strong.  Also, there is an old saying that the proof of the pudding is in the eating.  If the court is good, it will be used. If it is not, one should not be forced to use it -- a point made in Section 5 of the Concerns of Principle.

The IPKat is convinced that the sub-group's work proves convincingly that a large number of issues need to be addressed and reiterates that the mere fact that this means reopening issues that many would see as agreed is no reason for not addressing them.  To do so otherwise would be analogous to refusing to check the map when you're heading in the wrong direction because you've achieved prior consensus as to which was the right road to take.  Merpel bets that there must be other countries whose patent experts are having, or have had, similar thoughts, and she hopes that they will make their anxieties and their preferences known too.

The IPKat's favourite means of resolving disputes:
much cheaper than litigation; much quicker too --
and a lot more fun! (Photo by Cathcat).

While some folk may maintain that the occasionally irreverent and sometimes humorous comments made by a pair of fictional Kats do not deserve to be taken seriously, this blog urges readers not to confuse the medium with the message.  The Unified Patent Court is an important project with potentially almost unimaginably important consequences for Europe's hard-pressed economies, innovative industries and manufacturing sectors.  It has taken Europe several centuries of organic evolution to develop the system which we have today, centuries of trial and error, experiment and improvement, measured and deliberate thought and a shared sense of what it is we are trying to achieve. Let us not throw it all away in a matter of months for the sake of speed, a frail, vulnerable and beautiful ideal sacrificed on the altar of expediency.

Autumn a golden season for Interflora

Pumpkin by Flowers by Walter

As summer gives way to autumn and the golden leaves tumble, the prettiest flowers are those that come the florists -- which brings the IPKat on to today's decision in Case C-323/09 Interflora Inc and Interflora British Unit v Marks & Spencer plc and Flowers Direct Online Limited, a reference to the Court of the European Union (ECJ) for a preliminary ruling from the High Court of Justice of England and Wales.

Essentially, the problem here was that Marks & Spencer bought the word 'interflora' as a keyword for Google's AdWord paid referencing service, so that people who were looking for the world-famous Interflora flower delivery service would find an advertisement for Marks & Spencer's rival service at the top of the non-organic, paid-for search results. This did not make Interflora very happy since (i) they were proprietors of the hugely famous INTERFLORA trade mark, (ii) internet users who keyed in "interflora" as a search term were obviously looking for their website and not Marks & Spencer and (iii) worst of all, this was just before the onset of St Valentine's Day, which is one of the biggest events of the year for the flower trade. This just had to be trade mark infringement, said Interflora. The ECJ's ruling in Google France that neither the sale nor the use of terms protected by trade marks as keywords constituted a per se trade mark infringement didn't help them -- but that was a "5(1)(a)" case, where same goods/same mark (double identity) infringement was alleged. Here Interflora had a '5(2)' argument, based on a use which allegedly damaged the mark's reputation or distinctive character without due cause.

The trial judge, Mr Justice Arnold, painstakingly analysed both the relevant law and the facts, before referring a raft of ten questions for preliminary rulings. Following some helpful correspondence between the referring judge and the ECJ's registry, the ten questions were pruned down and clarified to a miserly four.

Today the Court of Justice ruled as follows:

"1. Article 5(1)(a) of ... Council Directive 89/104 ... and Article 9(1)(a) of Council Regulation ... 40/94 ... must be interpreted as meaning that the proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions [which raises the interesting question of how many functions a trade mark has. The Court has identified four by name, but it was reported last week in the MARQUES conference that up to 17 have been identified] of the trade mark. Such use:

– adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party;

– does not adversely affect, in the context of an internet referencing service having the characteristics of the service at issue in the main proceedings, the trade mark’s advertising function; and

– adversely affects the trade mark’s investment function if it substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.

2. Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94 must be interpreted as meaning that the proprietor of a trade mark with a reputation is entitled to prevent a competitor from advertising on the basis of a keyword corresponding to that trade mark, which the competitor has, without the proprietor’s consent, selected in an internet referencing service, where the competitor thereby takes unfair advantage of the distinctive character or repute of the trade mark (free-riding) or where the advertising is detrimental to that distinctive character (dilution) or to that repute (tarnishment).[this looks like good news for Interflora ...]

Advertising on the basis of such a keyword is detrimental to the distinctive character of a trade mark with a reputation (dilution) if, for example, it contributes to turning that trade mark into a generic term.["for example"opens the door to a large categories of actually or arguably genericising uses. This will be a litigation growth area, predicts Merpel]

By contrast, the proprietor of a trade mark with a reputation is not entitled to prevent, inter alia, advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation – an alternative to the goods or services of the proprietor of that mark". [while this is expressed as a general principle, the Kat thinks that, in practice, it will become a narrow exception].

This IPKat team member is going to give this some further thought to this ruling and test it out a bit over a refreshing pint of Badger when the opportunity arises. In the meantime, he's quite struck with the relatively intelligible mode of expression of the Court's ruling which seems to him, prima facie, to be about as good as we can hope for when applying twentieth-century pre-internet trade mark legislation to a set of facts that is not provided for by the Directive and Regulation and which is scarcely within the radar of the Recitals.

That Dirty Trick: the ECJ says "no!"

Can you really magic away
someone else's trade mark? No!

Today the Court of Justice of the European Union succeeded in magicking away the horrid spectre of an injustice which, the IPKat feared, was in danger of being perpetrated following the mammoth Opinion of Advocate General Trstenjak in Case C‑482/09 Budějovický Budvar, národní podnik v Anheuser-Busch, Inc., on a reference from the Chancery Division, England and Wales.

The facts in the case leading to this reference for a preliminary ruling can be found here, in an earlier IPKat post. The casus belli is a dirty trick played by brewer Anheuser-Busch on fellow brewer Budějovický Budvar, národní podnik, applying for a declaration of invalidity of the latter's mark, which was concurrently valid with its own, just one day before the expiry of the five-year period of acquiescence and when Budějovický Budvar had no opportunity to respond to it.

The questions relate to the issue of whether the trick in question was legal under the harmonised European Union trade mark law, not whether it was dirty, and turned mainly on the interpretation of the words of Articles 4(1)(a) and 9(1) of the Council Directive 89/104 on the approximation of trade mark laws. By Article 4(1)

"‘1. A trade mark shall not be registered or, if registered, shall be liable to be declared invalid:

(a) if it is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected; ...".

As for Article 9(1), it provided that

"‘1. Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith".

The questions posed were as follows:

"‘(1) What is meant by “acquiesced” in Article 9(1) of Directive 89/104 and in particular:

(a) is “acquiesced” a Community law concept or is it open to the national court to apply national rules as to acquiescence (including delay or long-established honest concurrent use)?

(b) if “acquiesced” is a Community law concept can the proprietor of a trade mark be held to have acquiesced in a long and well‑established honest use of an identical mark by another when he has long known of that use but has been unable to prevent it?

(c) in any case, is it necessary that the proprietor of a trade mark should have his trade mark registered before he can begin to “acquiesce” in the use by another of (i) an identical or (ii) a confusingly similar mark?

(2) When does the period of “five successive years” commence and in particular, can it commence (and if so can it expire) before the proprietor of the earlier trade mark obtains actual registration of his mark; and if so what conditions are necessary to set time running?

(3) Does Article 4(1)(a) of Directive 89/104 apply so as to enable the proprietor of an earlier mark to prevail even where there has been a long period of honest concurrent use of two identical trade marks for identical goods so that the guarantee of origin of the earlier mark does not mean the mark signifies the goods of the proprietor of the earlier and none other but instead signifies his goods or the goods of the other user?’".

The Advocate General has advised the Court that it didn't need to answer the questions, since neither the retroactive application of Article 4(1)(a) nor its application from the date of entry into force of the directive are possible in the main proceedings. Accordingly,

"... in a case such as that at issue in the main proceedings, it must be decided in accordance with national law [and not Article 4(1)(a)] whether the proprietor of an earlier trade mark may apply for a mark to be refused registration or, if registered, to be declared invalid even where there has been long-established honest concurrent use of those marks for identical goods". [This is the Europeanese for "Good luck, boys, from now you're on your own!"]

In this morning's ruling, the Court ruled as follows:

"1. Acquiescence, within the meaning of Article 9(1) of ... Council Directive 89/104 ... is a concept of European Union law [and isn't just a matter for national legislation and courts to determine on the basis of their own preferences] and the proprietor of an earlier trade mark cannot be held to have acquiesced in the long and well-established honest use, of which he has long been aware, by a third party of a later trade mark which is identical with that of the proprietor if that proprietor was not in any position to oppose that use [i.e. no naughty tricks!].

2. Registration of the earlier trade mark in the Member State concerned does not constitute a prerequisite for the running of the period of limitation in consequence of acquiescence prescribed in Article 9(1) of Directive 89/104. The prerequisites for the running of that period of limitation, which it is for the national court to determine, are, first, registration of the later trade mark in the Member State concerned, second, the application for registration of that mark being made in good faith, third, use of the later trade mark by its proprietor in the Member State where it has been registered and, fourth, knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration.

3. Article 4(1)(a) of Directive 89/104 must be interpreted as meaning that the proprietor of an earlier trade mark cannot obtain the cancellation of an identical later trade mark designating identical goods where there has been a long period of honest concurrent use of those two trade marks where, in circumstances such as those in the main proceedings, that use neither has nor is liable to have an adverse effect on the essential function of the trade mark which is to guarantee to consumers the origin of the goods or services".

The IPKat thinks that the Court has got it just right.

Wednesday whimsies

The IPKat's friend, Glasto Guru and 1709 Blogger Ben Challis, kindly drew his attention to this little snippet from the CMU Daily:

"Sony changes network terms to prevent future class actions 

State-of-the-art Play Station in the analogue era ...

Sony Corp is facing another tricky PR challenge as tech blogs and news sites around the world note a change to the terms of service attached to the electronic and entertainment giant's PlayStation Network and Sony Entertainment Network, the latter the new name for the recently rebranded Qriocity service. 

Under the new terms, users must commit to not participate in any class action lawsuits regarding any future security breaches on the Sony network. As users have to accept the new terms in order to log on to the Sony system, and given that many will do so without even reading the new conditions, some have criticised the change [Some courts have held that terms which no-one can be reasonably expected to read don't form part of the contract: see eg McCutcheon v MacBrayne]. Though given that one class action lawsuit launched in the US earlier this year, after that very high profile data spill on the Sony network, could cost the firm billions, some bad press now to reduce the impact of future action is probably worth it [Is there any suggestion that the bad press might affect goodwill in the Sony brand and the popularity of its products? Merpel doubts it]. 

Under the new terms, if users felt they had suffered damage due to a future security lapse on the Sony network, they would have to pursue their own individual case against the electronics firm - initially via a Sony selected arbitrator - rather than relying on others to launch a so called class action suit where they too could win compensation if the litigation is successful, even though they are not directly participating in the legal case. The new terms will mainly affect users in America, where class actions are most common, though similar collective action systems do exist in some other jurisdictions, including some in mainland Europe. 

Users can actually opt out of the new anti-collective-action term, though to do so they must send a letter (not an email) to Sony Entertainment's LA headquarters. And critics say that most users won't be bothered to that, or even get as far as reading the small print in the new user agreement that details the opt out option. 

According to the BBC, a class action lawsuit filed against Sony in the US in April relating to the big data spill could cost the firm billions, despite the company having already offered compensation packages to the 100 million plus users worldwide whose personal information was leaked during one of several hacking attacks on the company's servers [Here's an advantage of facing a class action, surely: a one-size-fits-every-class-member compensation payment, instead of bespoke loss-related awards?]. The most severe attack ... led to the PlayStation Network being offline for 40 days. At the time Sony was criticised for how long it took to admit that so much personal data had been leaked".

News from the blogosphere.  German patent practitioner, enthusiast and GermanIP blogger Michael Thesen has joined the PatLit patent litigation blogging team.  A patent attorney with Beetz & Partner, Munich, he also has a very sweet smile (left). Kenya has a new IP blog, IPKenya, not to be confused with IP-Kenya.  The IPKat's old friend Owen Dean has just started an IP blog under the name of The Anton Mostert Chair in Intellectual Property, which Owen holds at the University of Stellenbosch, South Africa. Good luck, Owen, we look forward to following your thoughts. Congratulations are due to the MARQUES Class 46 European trade mark weblog, which has now notched up its 2,300th email subscriber.

Recently posted. From the jiplp weblog come two Current Intelligence notes that are destined for publication in the Journal of Intellectual Property Law & Practice (JIPLP): the European Patent Office's very own David Rogers writes about those endearing little creatures we know and love as pharmaceutically active polymorphs, while Darren Meale, now with SRN Denton, looks at the exciting prospects for legal relief against internet service providers following the Newzbin2 litigation. The seventh in the series of articles for IP Finance by Keith Mallinson (WiseHarbor) argues powerfully in favour of IP protection for software patent here.  Afro-IP has a poll at the top of its home page side bar on South Africa's proposed legislation on traditional knowledge (click here for some background). Afro Leo urges you to vote, regardless of the outcome. Over in the Land of Fairness Compensation, Monika Bross (1709 Blog) reviews the prospects for success of the late Elvis Presley's daughter and Elvis Presley Enterprises LLC in their current German compensation claim.

Venue needed.  The IPKat's annual IP Publishers' and Editors' buffet, which will now be held on Wednesday 7 December [please note change of date, if this concerns you!], is in need of a generously donated Central London venue and hospitality.  The buffet meeting, which is free to attend, brings together around 45 to 50 often competing publishers, editors and media contributors within the field of intellectual property hard-copy and online publishing.  Previous meetings have been attended by participants from Germany, the Netherlands, Switzerland and even Japan, and guest speakers have included Judge Fysh QC, Tibor Gold MBE and Christopher Morcom QC.  If you'd like to host this meeting, please email IPKat team member Jeremy here, though it may take him a day or two to get back to you.

Ahoy there! Pirates going legit

The German Pirate Party has won 14 of the 130 available seats in the recent local parliament elections (see link). Normally the IPKat wouldn’t be reporting German elections, but the interest lies in the manifesto of the Pirate Party. These modern progressive Pirates are not interested in pillaging, plundering and keeping all the booty for themselves. Rather, they want everyone to share their ill-gotten profits: more Robin Hood than Long John Silver. Their manifesto is along the same lines as the UK Pirate Party, previously reported by the IPKat here and available here and includes the abolition of pharmaceutical patents and reduction of copyright protection to ten years. Ignoring whether the Pirate Party could make these changes (which would presumably require Germany to resign from a number of international treaties and organisations) how would Germany look if the Pirate Party gets its way?

Immediate thoughts are that no innovator pharmaceutical company would want to sell their products there, but of course this wouldn’t really matter to Germany because any generic company could set up shop and manufacture and sell their own versions. So the health of the population may not necessarily suffer, quite the reverse: the availability of cheap drugs could make Germany a go-to medical destination. Would pharmaceutical research departments and innovator companies move out of Germany? If they were still able to file for European Patents designated for other countries at the EPO then presumably there would be no mass exodus of R&D. Just a lot of healthy researchers filing GB etc designated patents.

Cultural life? Music, films and books are all easily transferred across the border on the internet and in print, so I don’t suppose the German people would lack for material being imported.

Gadgets, tools and machinery? Would Mercedes, Porsche and BMW continue to push the boundaries of automotive design and invention? The same logic as for pharmaceutical patents applies – companies could continue to be based in Germany (availing themselves of the cheap pharmaceuticals) and file non-DE designated EPs. In any event, the Pirate Party is not advocating the abolition of all patents, only threatening to roll back the “ever-growing tide of trivial, incomprehensible, overreaching patents”. They will do this by:

(1) “raising the bar on how innovative an idea has to be before it can be patented” [Merpel thought absolute novelty was already required…]
(2) “prohibiting patents on software, business methods, concepts, colours and smells.” [Good idea, says Merpel, but she is sure she’s seen rules like that before…]
(3) “We will require a working model to be provided to the patent office before a patent is granted” [Merpel thinks it will be a lucky business that wins the warehousing contract for the patent office]
(4) “we will strictly enforce the current rule that patents are invalid if they are "obvious to someone skilled in the art". [Merpel recommends revoking the patent]
(5) “We will allow more competition in the manufacture of patented devices by introducing a system of compulsory patent licensing, and we will provide exemptions to patent law for non-commercial use, personal study and academic research.” [Good idea, says Merpel, but she is sure she’s seen rules like that before…]

Interestingly, there is no talk of how the Pirate Party would handle infringement of IP rights - perhaps the easiest way to achieve their aims would be to disband the IP courts (come the revolution, the Dusseldorf court would surely be first up against the wall! See here)

So Germany might be a land of cheap generic drugs, counterfeit fashion goods, low quality electronic goods, familiar-looking restaurants serving food tasting not quite as anticipated…. hang on – I know a country like that! As China drags its IP laws and practice into the 21st century, Germany is on course to take its place.

We should note that the international Pirate Party is a moderate force in the world of anti-copyright activists, recently calling for members of Operation Payback to cease their attacks.

IPKat threatens European and judicial serenity

Convinced that "IP TRANSLATOR" was not descriptive of "education; providing of training; entertainment; sporting and cultural activities" in Class 41, the crazed mob advanced upon
the Court of Justice, intent on shattering the fabled serenity of Luxembourg

The IPKat has expressed his concern in recent times about the lack of transparency that appears to attend the making of references to the Court of Justice of the European Union for a preliminary ruling on a point of intellectual property law (see here and here). Equally, it is no secret that the Kat has taken an interest in the current reference for a preliminary ruling in Case C-307/10 Chartered Institute of Patent Attorneys (the "IP TRANSLATOR" case: click here for background and links to earlier posts). This case, incidentally, does not involve life-and-death matters, even for IP attorneys and their clients. No kingdoms will be lost on the basis of the outcome; the scribes and commentators of the future decades will not be saying "this is the case that changed the face of Europe as we know it". The questions referred are these:

"Is it:

• necessary for the various goods or services covered by a trade mark application to be identified with any and if so what particular degree of clarity and precision? 

• permissible to use the general words of the Class Headings of the International Classification of Goods and Services established under the Nice Agreement ... for the purpose of identifying the various goods or services covered by a trade mark application? 

• necessary or permissible for such use of the general words of the Class Headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication No. 4/03 of the President of the Office for Harmonisation in the Internal Market of 16 June 2003 (OJ OHIM 2003 p.1647)?".

If you really want the gory details, the case is all about whether the words IP TRANSLATOR are registrable as a UK trade mark for "education; providing of training; entertainment; sporting and cultural activities" in Class 41, given that none of those words is remotely connected with IP translation but that those same words are a class heading for services which include "translation".

Last month the IPKat made a formal application to the European Commission in order to request a copy of the Commission's submission to the Court in this case, this being 'Written Observations to Court of Justice of the European Union dated 11 October 2010 with reference "sj.a(2010)740874/FWB/hb" regarding Case C-307/10".  This application was made in accordance with Regulation 1049/2001 regarding public access to European Parliament, Council and Commission documents and the IPKat was entitled to receive a response within 15 working days. On the 15th such day the Kat received the following response:

"I would like to inform you that the European Commission's Legal Service is dealing with your requests as quickly as possible. However, because of a great number of documents requested recently from the Legal Service and also because of the current holiday period, we have to extend the period prescribed for our response by another of 15 working days. The new deadline expires on 12 September 2011" [How fortunate to be a public servant and be able to take one's holidays with impunity, notes this Kat. Many readers of this blog can only imagine what their clients might say if they were to write something like that to them].

Ever patient, the Kat waited till that date, on which he received a second epistle from the Commission which read:

"Article 4(2) second indent of [Regulation 1049/2001] states by way of exception that "[t]he institutions shall refuse access to a document where disclosure would undermine the protection of [...] court proceedings [...] unless there is an overriding public interest in disclosure". [This request is going to undermine the protection of court proceedings? And the Court of Justice talks about proportionality?]

1 regret to inform you that the Written Observations submitted to the Court of Justice by the European Commission in Case C-307/10 are covered by this exception and therefore cannot be made available to you. 

The purpose of this exception is to maintain the independence of the EU institutions in their dealings with the Court and to ensure the proper course of justice. In this regard, the Court of Justice has stated in its recent judgment in Joined Cases C-514/07P, C-528/07P and C-32/07P that "pleadings lodged before the Court of Justice in court proceedings are wholly specific since they are inherently more a part of the judicial activities of the Court [...]". It has also noted that "judicial activities are as such excluded from the scope of the right of access to documents" and that "the exclusion of judicial activities from the scope of the right of access to documents, without any distinction being drawn between the various procedural stages, is justified in the light of the need to ensure that, throughout the court proceedings, the exchange of arguments by the parties and the deliberations of the Court in the case before it take place in an atmosphere of total serenity". [This Kat is struggling to imagine what sort of arguments are likely to shatter the serenity of the court if a document, submitted by one set of bureaucrats -- the Commission -- with regard to the activities of other bureaucrats -- trade mark examiners -- is disclosed]

Refreshed by their summer break, though slightly surprised at how much grass had grown during two consecutive periods of 15 working days, the Commission's crack Red Tape brigade prepared to take on the advancing rioters ... 

In addition, the Court has recognized that "[i]t is therefore appropriate to allow a general presumption that disclosure of the pleadings lodged by one of the institutions in court proceedings would undermine the protection of those proceedings, [...], while those proceedings remain pending".  [If there is a blanket presumption of this nature, and everyone is on holiday or likely to be so at the Commission, wouldn't it be possible to stick a little line of rubric on to the document application form telling applicants not to bother applying in such a case, or have a standard form response that can be sent automatically to every application that falls within this category of apparently explosive documents?]

Since Case C-307/10 is fully ongoing [as distinct from partially ongoing?], I consider that the submissions to the Court of Justice are clearly covered by the exception provided for in article 4(2) second indent of the above mentioned Regulation and, consequently, cannot be disclosed at this stage of the proceedings ["at this stage" is an interesting expression. The hearing comes up soon and the Kat thinks he might just try his luck again ...]. 

Pursuant to Article 4(2) of Regulation 1049/2001, the exception to the right of access must be waived if there is an overriding public interest in disclosing the requested document. In order for an overriding public interest in disclosure to exist, this interest, firstly, has to be public and, secondly, overriding, i.e. in this case it must outweigh the interest protected under Article 4(2), second indent. [It's going to be tough to prove that there is an overriding public interest when there's scarcely any public interest in the case at all, comments Merpel]

In the present case, I see no elements capable of showing the existence of an overriding public interest in disclosure of the refused documents that would outweigh the public
interest in the protection of the court proceedings ...".

The IPKat is not happy about this.  The result is that we can't find out what submissions either the Commission or the national offices are making to the Court in this case, even though they are all public servants who are answerable to the Kats and others for their actions.  Despite this mammoth public interest in no-one knowing what submissions have been made, it does not appear to him that there is any rule that requires a submission to be kept under wraps by whoever makes it -- so what happens to the Court's serenity  if a submitting party chooses to publicise its submission?

La Serenissima here and here