Wednesday Whiskers

Miracles do happen, it seems. Despite several hurdles and a legislative calendar that was drowning in debt-related issues, the long-awaited US patent reform legislation passed the Senate vote on Monday. The Leahy-Smith America Invents Act (AIA) was passed unamended by the US Senate with a 89-9 vote (see previous AmeriKat and IPKat posts here). Once signed into law by President Obama, the bill will introduce several changes to the US patent system including harmonizing its first-to-invent system to a first-to-file system and ending fee diversion. AIA has been criticized by many as being overly burdensome to small independent inventors, will increase the number of provisional applications being made to the USPTO and would allow the Appropriations Committee to unduly control the fees generated by the USPTO. USPTO Director David Kappos heralded the passage of the bill, claiming that it will "...drive down the backlog of patent applications, and expedite the issuance of high quality patents - all without adding a dime to the deficit." Director Kappos proceeded to then walk on water.... Joking aside, the AmeriKat is excited about this new act and will be back on Sunday to report on the fall-out and commentary surrounding its passage.



The Rolls Building is nearing its opening day. For those IP litigators, like this Kat, the new £300 million Rolls Building will soon become a home-away-from-home as the Patents Court moves from the resplendent Royal Courts of Justice to its new home. You needn't spend long in the RCJ chambers and filing offices to hear comments about the new building - a mixture of views mostly punctuated by comments of how small the court rooms are, how some are being dragged across to Fetter Lane kicking and screaming and how no one will know where anything is [cue wandering judges and barristers looking for their lost court rooms, Merpel remarks cattily]. Then there is the elevator problem - only 3 public lifts (i.e. fitting only one clerk with the first set of disclosure bundles for your standard Chancery case - promises of e-filing be damned). The AmeriKat is more worried that, as with many new buildings, the air conditioning system will be out of control and set on a level that only pacing barristers can endure. There are rumors floating around about who will be the first IP case to grace the Rolls Building, but no concrete word until the doors first open this fall. The IPKat says that whoever gets there first should give the rest of us tips about managing the new building - flaws, free wi-fi, and all!


8+3 =11 big problems for HathiTurst, a partnership of research libraries and universities, including the University of Michigan . On Monday, the 11 strong contingent of authors' groups and individual authors including the Authors Guild filed a copyright infringement suit in the Southern District of New York against the libraries and universities claiming that their initiative to digitize millions of books without authorization constituted copyright infringement and posting the books online. The claim also objects to the partnership self-designating works as "orphan works" and thus self-permitting the digitization and use of those works. So far 9.5 million books and journals have already been digitized with around 30% of those works being in the public domain. The twist in the story is that the executive director of the partnership, John Wilkin, stated that the digitized works were provided by Google. IPKat readers will remember that last March, Judge Denny Chin rejected the proposed settlement in the Google Books litigation (more here) in a similar dispute. A hearing is schedule for tomorrow in the Google Books case.


On Tuesday, IPR2, better known as the EU-China Project for the Protection of Intellectual Property Rights, between the European Commission, EPO, OHIM and the Ambassador of the People's Republic of China to the EU formally came to a close. The closing ceremony of IPR2 comes at the end of a four-year 16 million Euro joint project. Under IPR2 European and Chinese officials, judges, legislators, experts and academics implemented technical assistance and training activities across China. The parties have agreed to continue their cooperation [what else would you expect?, says Merpel] Would you like to see the what 4 years and 16 million Euros can get you? Well you can't, at least not yet... But while the database is being built, there is a collection of a hodge-podge of documents from the project here.

Many of the IPKat's beloved readers will be in or journeying to Baveno, Italy for this year's annual MARQUES conference (Kat Jeremy is currently stalking the Italian venue.) Today's MARQUES conference agenda, for those Kats and readers who are not so lucky to travel to Italy this week, is premised on "Reality Checks" - reality check on costs, reality check on trends and reality checks on function. The last check is a topic being discussed after lunch entitled "Reality Function" and is promoted as an "update on legal analysis on the trade mark function." For those attendees whose brain activity does not decrescendo following a hearty pasta and foccacia lunch, please let the Kat know what panel suggest is "the trade mark function" in European trade mark law.

Letter from AmeriKat I: Good Day Sunshine (TMs and ©)

The AmeriKat has been watching the English public embrace the change of the season this week. On Friday she slinked outside for her midday patrol and perched on a bench in Gray's Inn, with the new Vogue in paw. (picture, left - the AmeriKat taking a much needed lunchtime Kat nap) Like spring flowers, once the temperature rises above a certain level the English bloom onto any stretch of grass available to them. A sea of students, solicitors, lawyers and miscellaneous office workers were scattered about in the sections of Gray's Inn grass that was unspoilt by any appearance of shade. Once modest workwear suits, worn by males and females alike, were stripped of any sweaters, cufflinks and buttons to expose as much square footage of skin as possible, laughter was echoing off the Inn's buildings, people were chatting with their neighbors, and a general feeling of calm settled throughout. The AmeriKat even spied some IP barristers from 11 South Square joining in on the emergence of spring. There is something about warmer weather in England that makes the general public a little less guarded than normal, in both physical appearance and mentality, which can only ever be welcome.

Louboutin sees red with Yves Saint Laurent

Someone who has seemed to let their guard down, in least where trade mark infringement claims are concerned, is Yves Saint Laurent who last Thursday was sued in Manhattan federal court by the one and only Christian Louboutin. Louboutin is famous for his footwear recognizable by the casual observer by its trade mark red sole. The story goes that one of Louboutin's customers was wearing an amazing red nail polish on her nails which Louboutin adored. She had the coveted nail color in her bag, took it out and Louboutin painted his first sole with the red nail polish. The violent red-lacquered sole would later become his signature maker's mark and would be granted a US trade mark in 2008 (picture, right - Louboutin's famous heel).

Louboutin is now alleging that since January Yves Saint Laurent America, a subsidiary of the Gucci Group, is selling their shoes with the same red sole in store throughout Manhattan. Louboutin's complaint argues that Yves Saint Laurent's use of the red sole is "likely to cause and is causing confusion, mistake and deception among the relevant purchasing public." Louboutin is claiming for $1 million in damages and an injunction to stop Yves Saint Laurent (picture, left) from manufacturing the shoes. Interestingly, Louboutin apprenticed with Yves Saint Laurent in the late 1980s before setting up his own brand.

The AmeriKat is curious, as any Kat should be, to know what evidence of actual confusion (as stated by the complaint to be occurring) Louboutin has. Unlike in the UK, under section 1114 of the Lanham Act US trade mark owners have to prove that the defendant's use of their mark confused consumers. In the Second Circuit, which includes New York, the factors for the test for confusion is that as laid down in the Polaroid Corp v Polarad Elecs. Corp (1961) case. The AmeriKat sets out these factors below with some comments in the IPKat's signature comment red:

1. The strength of the mark, i.e. the red soles - It is somewhat undeniable that Louboutin's red soles have indeed become well-recognized as a trade mark for his shoes in the market.
2. The degree of similarity between the two marks - Identical - in so far as they are both red outersoles
3. The proximity of the products and services - Identical - they are both shoes, being sold in the same stores, probably right next to or near each other
4. The likelihood that the senior user will "bridge the gap" into the junior user's product service line - if there even is a 'gap' it is very likely because they are competitors
5. Evidence of actual confusion between the marks - Always hard to come by, but perhaps Louboutin has some faithful customers who will be able to attest to some initial interest confusion?
6. Whether the Yves Saint Laurent adopted the mark in good faith
7. The quality of the Yves Saint Laurent's products - the AmeriKat would love to see Louboutin allege that YSL's products are of a lesser quality, but the fact that they are not and are side-by-side competitors actually makes it more difficult for YSL to squirm out of this one because there is more chance of there being actual, likely or initial-interest confusion.
8. The sophistication of the parties customers -If someone is in the market for $400-$4,000 shoes, one would think you would pay particular attention in knowing what shoe and from whom you were buying, however again, initial interest confusion may be the savior in this confusion battle.

Confusion, as any trade mark lawyer knows in the US and the UK, is notoriously difficult to prove. However, in the US and now thanks to Arnold J in the UK, initial interest confusion is probably the saving grace for Louboutin. Given that the price points of parties' products are so high and the sophistication of the intended consumers is so developed, any confusion present regarding the origin of the shoes on behalf of the consumer is likely to be remedied prior to purchase. What do readers think? Is this an easy fight for Louboutin or does Yves Saint Laurent have it in the (Neiman Marcus) bag?

Need for Congress to address issues with Google Books lawsuit, Pallante says

The AmeriKat has been quiet about the Google Books Settlement, which some may find unusual considering how much she followed and wrote about the litigation (see previous reports here). In fact she even predicted when District Judge Denny Chin (picture, left) was going to issue his damning judgment (just ask @garethdickson). There is little she wishes to say right now about Judge Chin's judgment other than, in her opinion, it was the correct determination given that the revised settlement seemed even worse than the first and again did not adequately address the issue of orphan works, and Google could have saved itself a lot of bother had it been an "opt-in" class than an "opt-out" (albeit probably not as profitable). However, the issue spotlighted how important the issue of digitization of works is in copyright, be it literary or artistic.

Maria Pallante (picture, right), acting Register of Copyrights, feels the same. Last week she told an event hosted by the US Chamber of Commerce that lawmakers need to address the issue of whether the digitization of literary works should be a benefit for the public or become a profit-making endeavour. As reported by the Dow Jones Newswire, Pallante stated that

"The first issue is really, is mass digitization a national goal that Congress feels legislation is warranted for, and if so, for what beneficiaries."

She also stated that

"It isn't that universal libraries aren't important, but there's a difference between universal libraries and universal bookstores."

With orphan works are back where we started, says the AmeriKat, why can't the US government just once and for all pass a bill like the Shawn Bentley Bill? It would allow for digitization of orphan works, but if and when the owner came forward a reasonable royalty would be payable under statute provided the user undertook a reasonable search. Does it need to be more complicated than this? Of course, the problem encountered is that once that copy is digitized the person who digitized it can arguably exclude other digitized copies of the same book being made - thus some of the arguments against Google in the Google Books case. As long as it is clear that the mere digitization of a literary or artistic orphan work does not mean that the digitizer can exclude others from making their own digitized versions of the work, then such problems should not be encountered. But then again, how can this be done but by legislation?

More in Part II.

Letter from AmeriKat I - Class Action Strikes Again for Google Books

Last week while the AmeriKat was despairing over Parliament's passing of the misinformed Digital Economy Bill - a piece of legislation that makes the US's Digital Millennium Copyright Act (DMCA) look as fierce as a fluffy kitten - she was also battling with the recent rash of sunshine spilling onto her desk. This put her in a dilemma of either closing the blinds and falling back into the dreary darkness of the winter months or squinting with joy in the afternoon sunbeam. She chose the latter, unfortunately. By Friday, albeit beaming with hours of sun exposure and Vitamin D, the afternoons of squinting had produced an absolutely phenomenal headache. A lesson that if one enjoys too much of a good thing, there is always a price to pay.

(Picture above - having not seen the sun for the past few months, the AmeriKat tentatively tests out the sunbeam with her paw)

"Don't forget us!" - Photographers and illustrators demand an audience with the Google Book Settlement

This is a lesson that Google is learning the hard way, with another class action lawsuit being filed against them as a result of the Google Books project. Last week, a group of photographers and illustrators including the American Society of Media Photographers (ASMP) and the Graphic Artist Guild filed a copyright infringement claim in New York federal court claiming that Google should compensate them for violating their copyright. They contend that although Google has made deals with literary authors and publishers to scan their books as part of the Google Books project, Google never asked for consent from artistic (photographers and illustrators) authors whose works were contained in the scanned books. The lawsuit alleges that by scanning, storing and disseminating the books which contained visual works Google has infringed and threatens to continue infringing the authors' copyright in the photographs and illustrations.

According to the mere 22-page complaint, Google has conceded that it has already scanned over 12 million books in their entirety and has identified 174 million books that it may similarly reproduce and publicly display. These books and periodicals, allege the complaint, contain the works of photographers and illustrators represented by the class action. The complaint alleges in essence that the conduct of Google was wilful because they should have and would have known that the class member's consent was required. No surprise of course that the complaint is claiming statutory damages per wilful infringement. However, according to the Wall Street Journal, Google does not display images from books which are out of print and only displays images from in-print books if they have received the consent of the copyright holder.

ASMP says that it filed the suit after the court handling the Google Book Settlement dismissed its request to be included in the existing lawsuit with the original class action complainants. In November 2009 Judge Denny Chin considered that the settlement only covered textual-rights holders and to allow the addition of pictorial-rights holders would complicate matters and prejudice any progress that had already been made. ["What progress?", the AmeriKat asks.] Since last year, ASMP has been battling Google and the Settlement's blind eye to the rights of a

"vast majority of photographers and graphic artists, whose works have been and continue to be digitised by Google without authorisation, and who have been members of the plaintiffs' class since June 2006, would neither receive compensation for past infringement nor any benefit going forward."

According to Wired, Eugen Mopski (executive director of ASMP) said that "If there is going to be a system developed to manage the compensation for these types of books, we felt visual artists need to be represented. We have been totally excluded [from the Google Book settlement]. We want a seat at the table."

Graphic Artist Guild President John Schmelzer said in a press statement

"institutionalized copyright infringement from Google not only threatens the future of an $8 billion industry, it undermines the very fabric of American culture."

Google spokesperson, Gabriel Stricker, wrote in a e-mail statement to CNN that:

"We are confident that Google Books is fully compliant with U.S. and international copyright law. Google Books is an historic effort to make all of the knowledge contained within the world's books searchable online. It exposes readers to information they might not otherwise see, and it provides authors and publishers with a new way to be found."

The AmeriKat pities the Judge who has to handle this complaint in the shadow of the original Google Book Settlement. Judge Chin has yet to rule on the original class action Settlement following February's fairness hearing.

Click here for previous AmeriKat posts on the Google Book Settlement.

Letter from AmeriKat I - Google Book Fairness Hearing

Over the past month the AmeriKat has suffered through a toxic cocktail of work, revision and weekend exams. Now that the latest tranche of LPC exams are over until May, the AmeriKat spent this past week slowly returning to the land of the living. While she was suffering through this chaotic month, one of her good friends was halfway across the world enjoying three weeks of bombacious adventure and travel throughout Mexico (left). She was admittedly jealous of his adventure, but knowing his inevitable return to our rainy island coincided with his professional entry into the legal world of Magic Circle firms her green-eye of jealously was less severe. When she finally saw him this week, fresh from the Mexican sun, she thought she would be talking him down from the ledge of impending law firm doom. Instead, to him, the end of his travel only signalled a new and exciting beginning.

Cries of "It's not fair!" drown the final fairness hearing

Google may be also dreaming of a new, fresh beginning for themselves after enduring the past month. These past few weeks have witnessed, amongst others, the Google Book Settlement fairness hearing, a patent lawsuit, a class action privacy suit and three of their directors receiving suspended sentences in Italy. The AmeriKat, although critical of Google in the area of copyright law, is strangely beginning to feel slightly sorry for them. February also saw the European Commission commencing a preliminary anti-trust investigation into Google following three complaints made against them. Google stated that one of these complaints was from their rival, Microsoft.

Microsoft was also one of the numerous amicus curiae in opposition of the Google Book Settlement, who's final fairness hearing took place two weeks ago before Judge Denny Chin (see here for the transcript). Opponents to the settlement outnumbered those in support 3 to 1. The AmeriKat's baited breath was, unfortunately but not unexpectedly, stifled when Judge Denny Chin (right) told the packed courtroom that he was not going to rule on the settlement during at the end of the hearing or, indeed, any time in the very immediate future.

"To end the suspense, I'm not going to rule today. There's just too much to digest. And however I come out, I want an opinion that explains my reasoning."

With 28 parties appearing at the hearing, Judge Chin ran a tight courtroom schedule to which any soccer mom would have been proud. Judge Chin gave the parties five minutes to speak, including Microsoft and Amazon.com. Tom Rubin, Microsoft's chief intellectual property lawyer, argued that if the settlement was approved other companies would be penalized and put at a competitive disadvantage for following copyright law. Unlike Google, other companies had asked permission from authors and publishers prior to scanning works in similar projects. He stated

"Google by comparison took a short cut by copying anything and everything regardless of copyright status. They're like a trucking company that instructs its drivers to go 90 miles an hour. It's not surprsing that competing companies that obey the speed limit can't keep up."

As reported by the AmeriKat here, the DoJ's filing attempted to strike a balance between recognizing the benefit of the Google Book project with that of the serious copyright and competition concerns the Amended Settlement Agreement (ASA) presents. According to reports of the hearing, the DoJ's oral submissions, given by William Cavanaugh, were much more critical. The majority of the DoJ's submissions relied on the ASA being outside the scope of Rule 23. The DoJ cited the cases of Amchem and Firefighters in support of this contention and stated that the ASA went beyond the original pleadings, did not spring from the original dispute and is not consistent with underlying copyright law. The ASA, the DoJ contended, was a forward-looking commercial model and not a settlement that only went so far as was necessary to remedy the underlying dispute. Therefore, the DoJ submitted, the ASA was a misuse of Rule 23.

"These forward looking business transactions are not designed to remedy the alleged harm created by those, and it produces benefits to Google that Google could not achieve in the marketplace because of the existence of orphan works.. . The class representatives here, your Honor, have a relatively narrow focus and duty: To litigate the claims presented or settle the claims presented. Millions of authors and publishers around the world did not hire these class representatives to serve as their literary agents for purposes of their broad digital rights."

At the end of the hearing, Google's lawyers told Judge Chin that the settlement was not perfect but that it was fair. According to this report from CNET, Google made it clear that they were interested in obtaining the rights to use and profit from orphan works (see these AmeriKat articles here and here for more information). Google indicated that the money received from the orphan works would enable their digital library to be a feasible business. The AmeriKat is unsure why the illegal use of orphan works by Google is somehow remedied by the fact that such use would enable a feasible business model. Again, the AmeriKat is exasperated by this issue of orphan works and the Google Book Settlement. Their use is illegal, and absent any legislative measures or intervention by the US or EU, companies like Google will attempt to use them for profit which not only violates copyright law but will cause inevitable anti-competitive complaints being brought, like those by the DoJ and Microsoft.

In the AmeriKat's opinion, the court should not enable class action settlements to be used as a vehicle for a party's circumvention of national and international copyright law. The AmeriKat hopes that Judge Chin will take this opportunity to formally address the numerous problems with the ASA and reject the settlement in its current form. Until then, however, the "jury" is still out on this one and we will have to await Judge Denny Chin's verdict.

For a great summary of the oral arguments presented at the hearing see this link here.

Birmingham to protect the Balti?; Google Book antitrust probe

Will Brum GI plan curry favour?

The IPKat is a little puzzled to read the news on the BBC that Birmingham City Council is pondering whether to get protected geographical status for the name Balti. A Balti is a hybrid British-South Asian curry, which is said to have originated in Birmingham in the 1970s. Unlike other curry dishes, they are subjectecd to high temperatures for the final 10 minutes of cooking. They are served in restaurants across the UK, without rice, in a special metal dish. While their Pakistani predecessor would have been slow-cooked and served on the bone, the meat in a Balti is served off the bone. The proposal has been welcomed by curry aficionados, who have expressed concern that recently the dish has been served on plates.

The IPKat thinks this smacks of protectionism. It looks like an attempt to turn back the clock and exclude others who are using the method of cooking from identifying it as such.

Google Book Deal - antitrust investigation

The LA Times reports that the US Department of Justice has notified the judge overseeing the Google Book Deal case that it is investigating the Google Book Deal for potential antitrust violations. The concern arises over aspects of the agreement in relation to orphan works. It would see Google being uniquely entitled to scan and distribute out-of-print works, arguable giving Google a monopoly on such works, and excluding other companies from similar practices.

The IPKat doubts whether this will be an easy decision for the DOJ. While the agreement may raise monopolistic concerns, the Kat suspects that the creation of the resource is such a massive undertaking that it might only come into existence if exclusivity is given.

Will books become furniture? Wait another four months to find out ...

The IPKat's friend Annsley Merelle Ward (Gallant Macmillan LLP) has been busily composing some topical and pertinent thoughts on the latest developments in the Google Book Search saga. She writes:

"5 May 2009 had been fast approaching for many authors and publishers. It was to be the day that authors and publishers in the United States would have needed to decide whether to “opt in” or “opt out” of a compulsory licensing scheme with Google Inc as the main beneficiary – that is, of course, if authors and publishers could have been bothered to analyze the extensive 385 page Google settlement agreement first. This past Tuesday, however, saw a flurry of judicial and governmental intervention surrounding the controversial settlement agreement.

Five years ago, Google begun a project focusing on the digitization of the University of Michigan’s library. As a result, a class action lawsuit was brought by the Association of American Publishers, the Authors Guild, and other authors and publishers in 2005 alleging that Google’s scanning of their books from the library was an infringement of their copyright. In November 2008, an out-of-court settlement was reached between the parties. If approved by the federal court, the settlement would permit Google to digitize, for internet publication, out-of-print books for a multitude of permitted acts such as sales, advertising, reading, and third-party licensing. Revenue earned from these uses would be shared between the parties, with Google standing to earn millions (37% of all revenue earned). Google would become the exclusive licensor of millions of orphan works. I am sure that the proponents of the previously proposed Orphans Work Bill will be equally concerned by Google's unilaterally agreed monopoly over orphan works (Side note: I think Google was very cunning with regard to Orphan Works – it shows that where there are no legislative mechanisms for the use/licensing of orphan works, large corporations such as Google, are able to step in and act in place of legislative authority to the probable detriment of millions of orphan work users).

Authors and publishers not party to the original class action lawsuit, as well as the Internet Archive and Consumer Watchdog, heralded the outcome as inherently unfair, eliminating a system of individual bargaining power laid down by the U.S. Constitution in favor of a “single publisher monopoly power to herd all of us into its list”. (Lynn Chu of Writers Representatives writing in the Wall Street Journal).

On Tuesday it was announced that the Justice Department has begun an inquiry into the antitrust implications of the settlement after weeks of discussions between the aforementioned groups in opposition of the settlement. A Justice Department inquiry does not necessarily mean that the department will automatically oppose the settlement but it signifies to the parties of the agreement that there are genuine concerns to be investigated.

In an unrelated action also on Tuesday, Judge Denny Chin of Federal District Court (NY) who is supervising the settlement, extended the deadline for authors to “opt-in”/”opt-out” and for other parties to oppose the settlement or file briefs to 5 September 2009. This has had the effect of the original fairness hearing of the settlement on 11 June is to be extended until 7 October 2009 at 10:00 am (Courtroom 11A of the United States District Court for the Southern District of New York at 500 Pearl Street, NY, NY if anyone is interested in attending).

Publishers, authors, and copyright lawyers alike will be eagerly anticipating any official announcements from the Justice Department in the coming weeks". 

You can read Copyright, Content and Class Action Lawsuits: A Debate on the Google Book Search Settlement at the Library of Congress here