Fordham footnotes

After several hours of listening to Lady Gaga,
some Kats are subject to personality changes ...

Within the context of third party liability and the extent, if any, to which internet service providers and hosts should bear responsibility for intellectual property infringements which they host or facilitate, fellow blogger Howard Knopf posed a question in Friday morning's session on "Rule of Law on the Internet: Feasible or Fantasy?" which raised a few eyebrows: "What do you call a website where you key in 'Lady Gaga' and 'bittorrent' and get taken straight to a site where you can download her songs free of charge?" No-one offered an answer, so Howard supplied it: "Google", he said.  This was not an exercise in blaming Google for all the ills of cyberspace; rather it was an highly effective means of drawing attention to the definitional problems that face policymakers and legislators in seeking to separate out the good from the bad -- or at least the morally neutral to the culpable: we don't want to see Google banned or sued; but nor do we feel comfortable with the wholesale capture of the hard work, the effort and the creativity of others without any reasonable prospect of remuneration. The IPKat, who was pleased to have caught several snippets of post-session conversation that turned on this issue, casts no aspersions on Howard's musical preferences ...

Eurotopia ...

At the same Fordham session, IPKat team member Jeremy gave an eight-minute presentation which was intended to stir up a little debate.  His theme was that public sector intellectual property enforcement was often poorly coordinated, poorly resourced, over-burdened with parallel non-IP responsibilities and generally disincentivised. A possible solution was for a government -- in this case the government of the mythical country of Eurotopia -- to sell licences to private sector enforcement firms who would be empowered to investigate and prosecute criminal infringers on an 'eat-what-you-kill' basis, retaining or being paid either a portion of the street value of infringing goods or the amount recouped by customs and taxation authorities.  The revenue derived from issuing licences to these firms could pay for the establishment of the office that would oversee and regulate their activity.  You can take a peep at Jeremy's PowerPoints here.


The big problem with Fordham is that, apart from the plenary sessions and the evening receptions, everything else is divided into streams.  This meant that, this time round, Jeremy had no chance of getting to any of the patent sessions.  If anyone who was at any of the patent sessions took decent notes which he or she would like to turn into something postable, all the Kats will be thrilled to hear from them.

For earlier IPKat posts on the Fordham Intellectual Property Conference 2011 click here, here, here, here, here and here

Fordham IP Conference 2011: part 6

 Victoria calls for "actual cooperation, not just
fluffy conversation at the top level"

The IPKat's final report on the Fordham IP Conference brings you news of the keynote address of Victoria Espinel, the White House Intellectual Property Enforcement Coordinator (IPEC). "What a difference a year makes", she said as she compared her somewhat sparse message at the conference a year ago with the cornucopia of exciting news that she conferred upon the corresponding audience this lunchtime.

Having compressed her one-year allocated for crafting a strategic plan into just six months, Victoria told us how much effort has gone into seeking consensus -- an effort which has borne fruit in uniting business and labour, Democrats and Republicans and all sorts of other warring factions in support of a vigorous pro-IP policy at home and abroad.  Dialogue, not consultation, is her aim, and she maintains it with the Department of Justice, the Department of Commerce, Immigration and Customs Enforcement and other concerned bodies (a total of 17,000 Federal employees are apparently involved in IP enforcement issues of one sort or another).

A rare sight at Fordham: Hugh Hansen unable
to interrupt a speaker. What might be be thinking ...?

Asserting that the US must lead by example, Victoria declared that the best place to start is at home, making sure that Federal procurement involves only lawful product and proper software licences, keeping all infringing goods out of the Federal supply chain.  She also emphasised the need to help US businesses overseas by deploying personnel on foreign soil, notably China -- where many US businesses require guidance and assistance in seeking to protect and enforce their IP rights.  Other activity she mentioned included the proposal for raising the penalty for trade secrets theft via a new industrial espionage bill, and the In Our Sites initiative which is said to be achieving highly positive results in its early stages, with four crackdowns on rogue websites resulting in the seizure of 100 or so domain names.

Victoria's message was a positive and impressive one, quite at odds with some of the downbeat assessments privately expressed by some of the conference participants about having to learn to live with a level of infringement that we can't bring down.  It is a message which the IPKat will be taking back to England with him and which he looks forward to drawing to the attention of the All Party Parliamentary Intellectual Property Group (here) next month.

Fordham IP Conference Report: Part 5

Today's programme opened with a sunrise seminar at 7.30am on the subject "Rule of Law on the Internet: Feasible or Fantasy?", chaired by renowned IP scholar and jay-walking analyst Hugh Hansen. The keynote address was delivered by Richard Cotton (NBCUniversal Media), who listed five axiomatic propositions:

• There was a need to move forward in terms of internet rule of law, since we can't stay where we are;
• Any solution to current problems of content control must be rooted in the technology of the internet itself;
• Regard must be have for the ecosystem, particularly with regard to (i) the way law enforcement bodies work and (ii) the roles played by creators of the broadband internet infrastructure (here Richard drew an analogy with the role played by banks as conduits for money-laundering -- they had to be brought into the problem-solving process);
• Due regard must be had for competing interests and values, such as privacy, access to information and freedom of expression;
• It is unrealistic to talk of a 100% successful solution, and it is more important to identify a broadly workable one.

This sparked off a good deal of discussion from the large body of panellists, most notable of whom was Andrew P. Bridges (Winston & Strawn LLP).  Like Richard, Andrew also thinks in units of five.  He argued that the rule of law was based upon the pillars of consistency, universality, shared values, respect and fairness. Any solution to the problem of unrestricted copying of internet-accessed material which failed to meet those requirements was illegitimate and would be doomed to fail. 

Mr Justice Peter Charleton then reminded the session that, while much debate was centred on US law and practice, the European Union was also in existence -- with its own political and legal structures and its own debate.  He outlined the Advocate General's Opinion in the Court of Justice reference in Scarlet Extended (see note here), which appeared to favour the interests of anonymous internet users and internet service providers over copyright owners, and had some kind words for the approach at present adopted in the United Kingdom via the Digital Economy Act (on which see earlier IPKat post here).

IPKat team member Jeremy added a few words about Europe too. He mentioned the parallel existence of the European Court of Human Rights, which has recognised IP rights but has not asserted them ahead of rights of privacy or freedom of expression. He also explained how the Pirate Party now had two members of the European Parliament and that the debate over copyright on the internet was thus being engaged in a rather different manner from that of the United States. Finally he observed that, with the rise of the social media, many providers of user-generated internet content had something of a contradictory attitude towards copyright; they were happy to help themselves to the works of others, but expected their own photos, emails, tweets and other product to be safe from unauthorised use or distribution.

Fordham IP Conference 2011: part 4

After a panic-filled dash back to re-re-rewrite his paper tomorrow, IPKat team member Jeremy returned to the fray, coming in at the tail end of a fascinating session on initial interest confusion in trade mark law. The lively panel discussion, chaired by Professor Marshall Leaffer, turned on some of the most difficult areas: the nature and value of evidence of initial confusion, the extent -- if any -- to which proof of damage should be required, the degree of protection to which as-yet unused trade marks should be treated, the special position of initial interest confusion on the internet through the use of another's trade mark as a keyword. The IPKat looks very much forward to reading the earlier bits of this session when they're published.

With two brains working together,
Eric decided to tackle the deeper
meanings of EU TM law

This session led naturally to the final presentations of the day, by the Kat's old friend Trevor Cook (Bird & Bird) and Marshall Leaffer, when comparing the European and US approaches to protection of trade marks against dilution. Trevor expressed concern that, led by the Court of Justice of the European Union, Europe was making the law up as it went along. He echoed earlier anxieties concerning the over-intellectualisation of the formulation of trade mark concepts, as well as strong academic criticisms of the development of trade mark law, particularly where attempts have been made to claw back some of the arguably over-wide protection accorded to trade marks in some circumstances. The overlap of regular infringement and dilution is one such area of contention. Citing decisions such as L'Oréal v Bellure, Trevor observed that concepts like "unfair advantage" and "without due cause" -- which do exist in European statute law -- receive little attention, while terms that have no legal basis such as "parasitism and "riding on the coat-tails" do.

Marshall Leaffer then took the audience through some 9th Circuit dilution decisions, leading with Visa v JSL Corp 610 F3d 1088 (2010) which affirmed that dilution was a question of fact, not law, and that, where a strong mark such as VISA is at stake, summary judgment is highly appropriate.  Perhaps surprisingly the court accepted that establishing a likelihood of confusion didn't require a plaintiff to produce expert testimony or market surveys: the characteristics of the mark might be relied on by themselves. The parallel existence of the word "visa" as a regular noun with a dictionary meaning did not undermine the word's trade mark meaning: what was significant was the way it was used. Marshall also considered Levi Strauss v Abercrombie & Fitch and the degree of similarity which was needed in order to establish confusion.

Fordham IP Conference 2011: part 3

Following the two "meet the judges" sessions which concluded the morning programme, lunch was declared -- with David Kappos (US patent supremo and fellow blogger) as the guest speaker. David described patents as the premier currency of global trade; this currency must not be devalued by failure to keep it relevant. This meant cutting pendency times, reducing unnecessary duplication of office work and looking at the big picture rather than focusing on the minutiae [which, as Merpel sadly notes, is what many fine academics, practitioners, administrators and judges are paid to do].

David then reminded us of the need to take account of developing nations when considering substantive patent law. He gave Europe quite a pat on the back for its efforts in harmonising substantive patent law and confessed to a rapt audience that this really excited him. Refreshed by the gentle pitter-patter of raindrops to which many diners were treated in the Fordham atrium, but with the looming presence of Hugh Hansen making itself felt, David concluded with a message that we should all reach out, work together, rise to the challenge and generally feel good as we put the patent world to rights.

Following lunch, this Kat took himself off to the stream dealing with European trade marks and designs. First up was Annette Kur, an eminent scholar at the Max Planck Institute and a member of the team which authored the recent study on the European trade mark system for the European Commission. Annette explained the background to her study, which is now under consideration by the Commission (proposals, which may or not be based on the study, are expected this autumn or, more realistically, next spring). She also reminded us of the significance of the Community trade mark as a unitary right within the context of European borders and of the non-competitive relationship between OHIM and the national offices.Among the topics she fastened on was that of 'cluttering' of the register, something which many users of the system believe to exist but the existence of which is difficult to prove.

Annette was followed by Paul Maier (speaking for the second time today), who spoke on the problems raised by descriptive trade marks in a region which contains 23 official languages as well as many languages (Russian and Turkish among them) that are not official but are nonetheless spoken by many inhabitants of the region.  Paul reviewed the issue through the lens of the Matratzen litigation, concerning a word which was entirely descriptive of mattresses in German but was quite distinctive for mattresses in Spanish. The Court of Justice took a conservative line, affirming the distinction between the existence of a mark and its exercise: the mark should be registrable but purely descriptive uses would not infringe (Paul also mentioned the Omega 3 case). Paul felt that national offices should check descriptiveness in languages other than their own, to avoid the appearance that people are deliberately registering foreign descriptive words as trade marks.

Gordon Humphreys (OHIM Board of Appeal member) then spoke on registered Community designs. He reviewed four recent decisions: T-09/07 Metal Rappers, T-148/08 Instruments for Writing, T-153/08 Communications equipment and T-513/08 Ornamentation. These cases, the first and fourth of which are on appeal to the Court of Justice, were pretty depressing news for the audience.

The panel discussion focused first on the Max Planck study, which was by general assent well received and much appreciated. Enforcement within Europe, greater consistency as between and within offices and proof of acquired distinctiveness of non-traditional trade marks.

Fordham IP Conference 2011: part 2

The next segment of the Fordham programme was devoted to IP in Europe, staring with a presentation from Paul Maier (OHIM), who gave an up-to-the-minute account of the progress of trade mark grant and administration operations in his Office, magisterially dismissing Hugh Hansen's attempts to draw him into saying there was any competition between OHIM and trade mark-granting offices at national level.  Paul also vigorously asserted the need for trade mark examiners and Board of Appeal members to act within the framework of recognised legal guidelines when determining issues such as similarity of marks and likelihood of confusion, notwithstanding the opinion of certain fictional felines that those guidelines were hopelessly overintellectualised and were impossible to explain clearly to businessmen and law students.

Also speaking in this session -- and also taking advantage of the absence of European Commission heavyweights on the panel -- was Silke von Lewinski (Max Planck Institute for IP).  Mentioning the complexity of copyright as a subject, she articulated something which many of us had wondered, which was the observation that the Commission was perhaps less well-endowed with seasoned scholars of copyright law than it may have been in earlier times, and that could be argued that a measure of deep knowledge of the working of the subject might be viewed as an obstacle to progress rather than as a means of achieving it.

There being no patent people speaking, the task of reviewing patent law developments in the European Union was split between David Rosenberg (Glaxo SmithKline) and Tom Vinje (Clifford Chance). There was a consensus that the current failure to achieve a unitary patent litigation system was frustrating but that it was better to take longer and get a technically workable solution than jump ahead to a system which didn't work to optimum effect even if had the supreme advantage of being politically acceptable.

Following an unscheduled mid-session break, the speakers and panel covering IP issues in the US took the platform. The Kat, having been on the previous panel and then being serially detained by friends and questioners on his way to and from the coffee table, was delayed getting back to his coveted front-row seat. He did however have the joy of watching a thoroughly effective mini-movie, shown by John Morton (Director, Immigration and Customs Enforcement), on the all-too-rarely-perceived link in the minds of the US public between illegal copying and the loss of jobs among those working in the legitimate copyright-driven sectors.

This session led to a discussion of Google Book, the legitimacy of the project, whether it was good or bad, whether it was even capable of being stopped and whether anyone else was capable of competing against it. The question was also asked whether legislation, not settlement-plus-litigation, was the better way of sorting out conflicting claims of stakeholders. Panellist Paul Michel observed that there was a Congressional bottleneck here, while Professor Arti K. Rai characterised the ailment as Congressional incompetence.

Fordham IP Conference 2011: part 1

This is the first of a number of posts on this year's Fordham IP conference, which was opened as ever by Professor Hugh C. Hansen.

Antony Taubman (head of Global IP Issues, WTO) spoke first, asking what the trade-related aspects of TRIPS actually are. Tony reassured us all that TRIPS, post-Doha, was alive and well. Topics under the TRIPS microscope include the iPod economy and the iTunes economy, as well as the dispersion of chains of product creation, manufacture and distribution -- and even a spot of dispute resolution.

Tony was followed, almost as soon as he had started, by James Pooley (WIPO Deputy DG for patents), who affirmed that IP was just one of a number of trade issues, which meant that we have to speak to non-IP people too in order to identify and resolve modern trade issues. James explained some of the dynamics of multilateral and plurilateral discussions, and the problem of "lost voices" among players who have no opportunity to be heard. James contrasted the way negotiations on ACTA were conducted with the highly open operations of the IP Five, who now have their own website.

Stanford McCoy (Assistant US Trade Represenative for IP and Innovation) then reviewed regional, pluri-, multi- and bilateral IP talks from a national government's point of view. These options are not exclusive, he observed, and are all responses to questions raised.  Stanford praised ACTA for the very open manner in which it produced so many texts in such a short time, though this Kat can't recall hearing him make mention of the word "leaks" -- the means by which he, Merpel and their many friends discovered what was actually happening. In a beautiful metaphor, Stanford also described ACTA as a tree on which IP owners could hang their anxieties.

These speakers then gave way to the panellists, starting  with Mihaly Ficsor. Hugh Hansen asked if individuals can ever make a difference to IP policy any more. Mihaly said "yes", he had made an individual contribution, and so did Francis Gurry -- as his speech on the Future of Copyright showed (see here for the Gurry/WIPO position on copyright).

Amidst much talk of the need for flexibility, leaving doors open, the need for watchfulness and similarly grand propositions, the session came to a close.