Should the UDRP be reformed? Don't go there, says WIPO

The Uniform Dispute Resolution Policy (UDRP) of ICANN, which is binding for all registrars and, by virtue of being incorporated into the domain name registration agreement, on anyone registering a domain name in a generic top level domain (notably .com, .net and .org, the others play a small role), provides since 1999 for a dispute resolution process if a trade mark owner feels that a domain name infringes his rights. Assuming IPKat readers will be roughly familiar with the policy, I shall spare you the details (some background here).

ICANN is cautiously posing the question whether the UDRP should be reformed, and has received a resounding "NO, PLEASE DON'T" from WIPO. The main arguments of WIPO, as summarized in a Webinar held on 10 May 2011, are the following:

• The UDRP has been offering an effective solution for trademark owners, domain name registrants, and registration authorities.
• By accommodating evolving norms and practices, the UDRP has proven to be a flexible and fair dispute resolution system.
• With vast DNS growth around the corner and untested new RPMs in development, the time is wrong to revise the UDRP.
• Institutionally stacked, an ICANN revision process would likely end up overburdening and diluting the UDRP.
• Fundamental questions about the business and DNS beneficiaries of cybersquatting must be addressed before targeting the very mechanism intended to address this practice.

Instead of allowing the UDRP to be placed in the dock, ICANN should first fairly address the following issues:

• the relationship between cybersquatting and the activities, revenues and budgets of DNS actors; the incidence of UDRP cybersquatting findings in relation to wider trademark abuse in the DNS overall, with filed UDRP cases merely representing the tip of the iceberg; and
• the degree of proportionality between trademark rights enforcement and domain name registration opportunities in the DNS.

From the user's side, Aimee Gessner, Senior Trademark Counsel at the BMW Group, adds:

• The real problem is not the UDRP: Other practices since the launch of the UDRP in 1999 have contributed largely in encouraging cybersquatting:
• Domain name tasting
• Increasing domain parking sites / pay per click sites
• Drop-catching
• Use of privacy registration services to hide identities of cybersquatters
• Establishment of bogus “registrars” that have no purpose other than to cybersquat

Summary:
• The UDRP is working fairly and efficiently for its intended purpose
• There are many other causes today for the steady increase in cybersquatting which ICANN should rather review
• Brand owners are concerned at this time with what the expansion of the DNS will cause in terms of cybersquatting and other forms of rights infringement system at such a critical time
• Unwise to review and possibly compromise UDRP system at such a critical time

Attorneys acting for complainants point out that the trade mark owners bear the entire cost of the UDRP system and suggest that a "loser pays" system may be fairer. Respondents warn against further streamlining a system that may cease to be considered fair.

The registrars have some technical issues with the UDRP, notably

• The meaning of “Maintaining the Status Quo” in Section 7 is not clear: No explanation of “Legal Lock” mechanisms and when they go into effect or when they should be removed.
• Policy does not provide guidance on what a registrar is to do if a claim is stayed or suspended: Is the legal lock to be removed or remain in place?
• Policy does not address Privacy and Proxy Registrations or require complaining party to amend complaint once infringing party identified.
• No explanation on what a registrar should do when a UDRP decision conflicts with an injunctive order issued by a of local jurisdiction.

It should be possible to implement these rather technical issues without breaking the system, this Kat thinks. As far as the message of WIPO is concerned, it couldn't be clearer: don't go there (they literally state this in an open letter to ICANN).

Pop the champagne: today is World IP Day

In case you wonder why the masses are dancing in the street: today is World Intellectual Property day! This being the age of social media, there is of course also a World IP day Facebook page.

The moto of this year's celebrations is "designing the future", hoping to raise awareness that besides patents, trademark and copyright, there is that other intellectual property right, the registered design. The UK IPO celebrates the day with a special website.

The Nigerian IPO, on the other hand, submitted a poster to WIPO (depicted), but still does not have a website. Other examples of publicity material from various countries can be found on WIPO's website and provide an interesting glimpse into different cultures. Contrast Kenya's entry from 2002 with Korea 2006, and you get an impression of what I mean. Kenya's Intellectual Property Office, btw, officially has a website, but it seems unavailable. No points for guessing that the website of South Korea's IPO is not only up and running, but looking very professional and automatically redirecting users with English set as default browser language to the English language version of the page.

WIPO v WIPD: some good news at last

The auditors did warn WIPO that its building budget
was going to be at the expense of its ageing rapid
response Central Europe dot.biz tank squad

Some dedicated readers -- almost all, judging by the IPKat's mailbox -- have been following the saga of WIPO v WIPD (see earlier posts here, here and here) and who have been wondering what, if anything, the World Intellectual Property Organization has been doing to snuff out the imitation website of the World Intellectual Property Database.  For these dedicated souls, the Kat can report that some positive tidings have drifted over the tops of breeze-ruffled palms of Lac Léman, framed by the splendour of the snow-garnished Alps.   At last the truth is out: WIPO is not sleeping on the job.  The IPKat has been in communion with a very helpful WIPO spokesperson who had contacted him in order to set the record straight. From this unrivalled source the Kat has gleaned the following information:

• “Wipd.biz” is not just a tiny two-bit fly-by-night internet nasty but a highly organized and persistent fraud operation, against which the WIPO Secretariat has been engaging its efforts as soon as the problem came to WIPO's attention in the autumn of 2010;
• Initial actions included sending cease and desist letters -- but, as we now know, WIPD neither ceased nor desisted;
• WIPO has also alerted the users of its international filing and registration services, who are the intended targets of the fraud (the organization routinely warns users of its international filing and registration services against scams and frauds and, as the Kat has previously noted, it does keep and update information about fee-request scams on its website.  It also warns folk about recruitment scams -- something the Kat didn't know about;

WIPO's Swiss Guards train for the invasion of Czech cyberspace

• Simultaneously with these other measures, the WIPO Secretariat has initiated consultations with the national authorities of the Czech Republic, where the site is hosted.  The Kat guesses that the Czechs, being good, sweet folk who like a decent beer as much as he does, must be quite uncomfortable about all this, since they also host EURid's dispute resolution body -- which can deal with .eu problems but not .biz

• WIPO is cuurrently "pursuing further legal options" to end the fraud;
• The WIPO spokesperson emphasised that the organisation was very concerned to reassure stakeholders and the whole IP community that WIPO takes this – and any other identity theft or action that deceives or misleads its stakeholders – extremely seriously, and that it was and continues to remain highly active in dealing with this crafty and sophisticated foe;
• The WIPO Secretariat is ready to use the full extent of any legal system to protect its stakeholders and its reputation. The previous comparable case was in 2009, when WIPO cooperated with the Florida authorities in a successful legal action against a Florida-based company which was sending out by mass mail misleading “invoices” to patent and trade mark applicants—including users of WIPO’s Patent Cooperation Treaty. The company was found to have violated the state's Deceptive and Unfair Trade Practices Act.

Speaking strictly off the record, the spokesperson expressed regret that WIPO had been slow to comment on the IPKat's posts on this matter, but "this should by no means be misinterpreted as a lack of concern or inaction".  Sources close to the top have let it slip that there is a delicate protocol issue to overcome. WIPO has a big book that tells its top brass how to address diplomats, ambassadors and members of the Royal Family, but there is no formal precedent that deals with the right way to address an email to a fictional cat.  Now that this issue has been cunningly side-stepped by use of the telephone, diplomatic relations have been informally established and the security guards have been instructed to leave a bowl of milk at the front door in case the Kat should spring a surprise visit to Geneva ...

Merpel adds, let's all get behind WIPO and cheer them on in this battle.  It's not often that I cheer the big guy on in a tussle against a smaller foe, but I'm making an exception this time.

Will WIPO wither and die on the choking vine of ... development?

A new lobbying tactic from the
pro-patent group in WIPO?

One of the keenest observers of the international IP scene is Intellectual Property Watch's William New.  In "US Ambassador: Over-Focus On Development “Will Kill” WIPO", which he posted here last Friday, William gave an account of the strikingly outspoken statement by United States Ambassador to the United Nations Betty King [full text here] that the World Intellectual Property Organization (WIPO) "is headed in a controversial direction", warning that "a focus on development at the expense of protection of intellectual property rights will mean the end of the agency".  She is quoted as saying

"If we get to a system where the protections of patents are abrogated in the name of development, then we certainly will kill that organization. So I worry very much about that”.

The remark, the author gently suggest is possibly a reflection that the 2007 WIPO Development Agenda intended to ensure WIPO is development-friendly, is having the more profound effect on the United Nations body’s activities sought by the Agenda’s proponents. King is said to have taken aim particularly at the recently formed Development Agenda Group, which includes the fast-growing [and IP-agnostic, queries Merpel?] economies of  Brazil, Egypt, India, Indonesia and South Africa.

Says the Kat, don't worry Betty, no-one has to sign up to anything they don't want to, and patent protection will only be abrogated if you want it to be. All WIPO treaties remain consensual.  When developing nations try to get the upper hand, for example in the Washington Treaty on Intellectual Property in Respect of Integrated Circuits when the developing nations rather liked the idea of compulsory licensing of chip topographies, the result is that nothing happens.  The same was the case with the attempts to put forward the UNCTAD Code on the Transfer of Technology in the 1980s, in which a large body of developing countries wanted advantageous terms such as the unbundling of licensed technology and warranties that it actually worked.  And when IP-rich countries don't feel that the existing international order is capable of supporting their requirements, they are perfectly capable of going off and doing an ACTA.   More to the point, if patent-rich countries can't come to the table and argue persuasively that their view is preferable to the more unpalatable bits of the development agenda, they have only themselves to blame.

Betty King International Diplomat here
Betty King International Ministries here
The goose that laid the golden eggs here

Facts, Figures, Tools and Widgets

It seems that September is rapidly turning into the month of facts, figures, tools and assorted widgets. Last week the Kat reported on WIPO’s publication of their World Intellectual Property Indicators 2010. Earlier, he brought you the United States Patent and Trademark Office’s enthralling Data Visualization Center, and the World Economic Forum's titillating “Global Competitiveness Report”.

Now the Kat brings news of another webtool that is so good it required two press releases this morning. Thus, WIPO has today announced the launch of WIPO Lex, described as:

"an on-line global intellectual property (IP) reference resource which provides up-to-date information on national IP laws and treaties. This centralized search facility, which offers a user-friendly interface and functionalities, is in line with one of the Organization’s strategic goals, namely to serve as a world reference source for IP information and analysis."

WIPO Lex claims one-stop access to all of the IP legal texts for over 60 countries (67 by this Kat's count) with substantial coverage for a further 100 legal systems. WIPO explains:

"WIPO Lex will be integrated into WIPO GOLD which was launched earlier this year and provides quick and easy on-line access to a broad collection of searchable IP data and tools relating to, for example, technology, brands, designs, statistics, WIPO standards, and IP classification systems."

A dip into WIPO Lex will be sure to fulfil the IP desires of even the most fact obsessed. Tidbits from the toolshed include the fact that Greece apparently has the most national IP laws of any of the 67 countries for which a complete listing is available, with a whopping 230 in total (most are ministerial decisions relating to geographical indications). The UK is next with 150, followed by China (135) and Ireland (134). However, if you have a burning desire to find out what it is about the laws of Puerto Rico that caused it to appear at number 8 in the World Economic Forum's "Global Competitiveness Report" ranking of the states offering the best IP protection, then you will be sorely disappointed, as it does not appear as a separate entity in WIPO's database and instead falls under the United States' mighty umbrella.

The Kat also brings news of the EPO's publication last week of the regional breakdown of the origin of the European applications filed in 2009 for the EPC contracting states and other major countries. The file arrives in a modest 230(ish)KB Excel spreadsheet, optimised for offline digital manipulation, and is available here.

The remainder of the statistics for 2009 are to be found here.

Earlier this month, the UKIPO also released a web-based tool to assist applicants in assessing the likely timeframe in which they can expect to receive an examination report.

Noting that “we are acutely aware that our levels of unprocessed patent examinations are higher than they should be”, the IPO offers a tool that operates along vaguely the same lines as the USPTO’s patent dashboard (although it must be said that it suffers from classic British understatement when compared to the USPTO’s rather jazzier offering). The IPO explains that: “The calculator … gives an indication of when you might expect to receive your first examination report. Information is available only for applications where examination has been requested (Form 10 filed) and the application has been published. Applicants requiring information about unpublished applications should contact the IPO.”

So the wait to find out how long you might reasonably be expected to wait before wondering whether you have been waiting for too long, is finally over…

Find the tool here

PCT applications fall 2009, Chinese PCT applications soar

International patent filings under the Patent Cooperation Treaty (PCT) fell by 4.5% in 2009 with sharper than average declines experienced by some industrialized countries and growth in a number of East Asian countries, the WIPO announced today. Provisional data indicates that 155,900 international patent applications were filed in 2009 as compared to the nearly 164,000 applications filed in 2008.

The drop-off in Germany and the USA was about 11%, while PCT filings from China increased by nearly 30%. China became the fifth largest PCT user.

The USA maintained its top ranking, filing just under a third of all international applications in 2009 (45,790), followed by Japan (+3.6%, 29,827 applications), Germany (-11.2% or 16,736 applications), South Korea (+2.1%, 8,066 applications), and China (29.7%, 7,946 applications).

The IPKat is now going back to study.

WIPO press release here.

Image by Felipe Navarro, Creative Commons licensed.

WIPO takes on the world's climate

Not content with solving all known legal, economic, social and cultural issues arising out of intellectual property rights, the World Intellectual Property Organization (WIPO) is now tackling climate change. According to today's press release ("WIPO Outlines How It Can Help Meet the Challenges of Climate Change"):

"WIPO Director General Francis Gurry participated on December 16, 2009 in a series of events related to international climate talks in Copenhagen and outlined how WIPO can contribute to international efforts to mitigate climate change. Mr Gurry underlined that policies that stimulate the creation and diffusion of technology are key elements in developing an effective and practical global response to the threats posed by climate change [This statement is true, but in a way so is its opposite. The same policies have stimulated the technologies that caused the threats in the first place]. He said judicious use of the intellectual property (IP) system can make a positive contribution in crafting the many and diverse technological solutions needed to attenuate the impacts of climate change [so long as those solutions aren't business methods or other excluded patentable subject matter ...].

Speaking at a side event on the theme “International Cooperation on Technology Transfer: Time for Action,” Mr. Gurry said achieving a transformation from a carbon-based society to a carbon-free one is a complex and unprecedented task that will require innovative and complementary approaches to technology policy [WIPO has already implemented a shift to a less carbon-dependent policy, by cutting Merpel off its list of Christmas card recipients].

Intellectual property (IP), he said, has an important role to play in technology policy - encouraging investment in the creation of environment-friendly technologies and their rapid dissemination are major policy objectives to which priority must be given. In both cases, the IP system, and in particular patents, are fundamentally important in that they provide a stimulus for investment in green innovation and contribute to a rapid – and global – diffusion of new technologies and knowledge [This is important: the impending death of a planet is a stimulus to survive through change, but IP is a stimulus to invest while there's still time].

Green innovation requires significant private investment. An effective patent system provides an incentive for businesses to make such an investment by making an invention a tradable good which can be licensed or assigned creating opportunities for technology partnerships and commercial return. Effective patent protection can thus spur international technology transfer from the private sector [The IPKat remains amazed at how poor, overall, has been the apparent record of the public sector in investing in the critical technologies over the years].

Mr. Gurry said the patent system provides the most comprehensive public repository of information on the latest technologies – as all patent documents are published and freely available to the public [It's good to remind people of this]. This information contains knowledge that already exists and which can support the development of new technologies or help to identify technologies that are off-patent or no longer protected and therefore freely available for use or adaptation. It is necessary to ensure that this information is widely disseminated for instance through tools and services that enhance access to up-to-date information on relevant technologies through patent information resources. ...".

The IPKat is pleased to see WIPO taking the initiative and advocating the positive uses to which IP can be directed. This is much better than waiting to defend the usual assaults from well-meaning but often ill-informed critics who view the innovation process with a degree of hindsight that makes it difficult for them to see how risky it can be to develop any new product or process.

Left: With a warm feline on his lap, this elderly gentleman can dispense with his hot-water-bottle or reduce the level of his central heating

Merpel says, no-one fully appreciates the role played by cats in reducing carbon output, by acting as animate hot-water-bottles for chilly humans.

Cats and cold weather here
Cats and warm weather here
Cool for Cats here

I CAN HAS CHEEZBURGER wins against icanhashotdog.com

In a case of inherent interest to the IPKat, a WIPO panelist has transferred the domain name "icanhashotdog.com" to the proprietor of the trade mark I CAN HAS CHEEZBURGER?.

The proprietor of the trade mark I CAN HAS CHEEZBURGER?, claiming protection for “on-line forums for the transmission of images and messages among computer users concerning animals and humor" filed a URDP complaint against the registrant of the domain name icanhashotdog.com, used for, well, essentially the services claimed.

And won despite the fact that the complainant had registered its mark almost a year after the domain name icanhashotdog.com was registered (he did claim first use of the mark some months before the registration of the domain name). The panelist held that the complainant had met its burden of proof to demonstrate common law rights in the trade mark I CAN HAS CHEEZBURGER?:

"Relevantly, the Complainant’s evidence is essentially that:

- it used its I CAN HAS CHEEZBURGER? mark in a domain name from January 2007;
- it featured the mark on its website to which its domain name referred (as annexed to the Complaint, the Complainant’s homepage displays the mark once, in the upper left hand of the page);
- its website rapidly became popular;
- its website was the subject of a number of media articles (the Complaint attached copies of two).

The Panel considers that, on balance, this is enough to demonstrate that the Complainant had developed common law rights in its mark by the time that the domain name was registered in July 2007. The Complainant did not provide a substantial amount of evidence of common law rights, or explain the origin of its mark. The Complainant’s claim to the first use of its mark from January 2007 in its trademark registration also does not establish an evidentiary presumption to that effect. (See recently e.g. Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333 citing McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.)).

However the Panel considers that, in this case, the evidential burden on the Complainant to provide evidence of common law rights is relatively light. Principally, this is because its mark appears to the Panel to be an invented and arbitrary phrase, and therefore inherently distinctive in a trademark sense for the purpose of the Policy. What is “inherently distinctive” in this regard may not always be capable of a neat definition. However, it is at least to be contrasted with marks which are derived from common terms, or words which are descriptive or suggestive of certain goods and services. There is nothing in the Complainant’s mark which seems to this Panel to be descriptive or suggestive of the services which the Complainant provides. The phrase “I can has cheezburger?” appears to have no common meaning, or to be derived in whole or part from any phrase with a common meaning, including one associated with the Complainant’s services.

Since the Complainant’s mark is inherently distinctive, the Panel considers that the Complainant’s evidence is, in this case, sufficient to demonstrate that it had unregistered rights when the Respondent registered the disputed domain name. Here, the Complainant provided evidence of its close association with an inherently distinctive mark. There is no evidence in the case file that the Complainant’s mark had any other association. The Panel accordingly finds for the Complainant under the first element of the Policy."

Since the whole "lolcat" meme originated from 4chan (no, I won't link, but you all know how to find it), the IPKat wonders whether it is correct to monopolize the use of the phrase for commercial purposes by a single provider. And the IPKat is glad that he has been around since before January 2007 and is therefore much older - not necessarily more mature - than all the lolcats.

Case No. D2009-1003

How many ministers does it take to make a High Level Segment?

Someone is being paid to come up with all of this, and someone else is being paid to turn it into another World Intellectual Property Organization press release. Is it, though, a far-sighted move to keep intellectual property at the leading edge of global progress or a blistering vague and meaningless waste of money that could be spent on important things like improving the functionality and the content of national IP office websites, to make them more informative for ordinary users and less time-consuming for IP practitioners and their clients?

Right: some of the IPKat's favourite segments

This press release (PR/2009/607) is grandly entitled "Ministerial Segment Endorses WIPO’s Engagement with Global Challenges". Dated 23 September 2009 it reads:

"Government ministers [these are they] participating in the first-ever High Level Segment of the Assemblies of the member states of WIPO on September 22 and 23, 2009 [The what?], endorsed WIPO’s progress toward its strategic goals [it could hardly do otherwise: the 9 'strategic goals' are basically 'doing its job'], which they said marked a new era for the Organization and its ability to ensure that the intellectual property (IP) system helps meet an increasing number of global challenges [whatever happened to the old era and when did it end?]. They emphasized that IP is now widely perceived as a key policy tool to promote public interest, innovation and technological progress [but not that it's also perceived as a block on the sale of medicines, the spread of audio and video culture and the sale of genuine branded goods?].

The more than 40 ministers attending the High Level Segment shared the view that IP is a driving force in creating a positive environment for social, economic and cultural development [40 ministers? The IPKat assumes that they all travelled economy class, as he does, and that none of them held this positive view of IP until they reached Geneva ...]. Ministers welcomed the Organization’s commitment to delivering effective services under the Development Agenda [Merpel has a challenge here: can one reader who is not a WIPO employee name any effective services which have been delivered under the Development Agenda] and WIPO’s capacity building programs in general.

The meeting provided an opportunity for ministers to exchange experiences [we feared as much], share concerns and to express their respective national IP priorities [!]. It was also recognized as an important means of raising the profile of IP issues within senior policy making spheres at both the national and international levels [It's a little-known fact that Geneva is kept warm throughout the snowy winter by a system based on recycled hot air. Guess where it comes from ...].

At the opening of the High Level Segment, WIPO Director General Francis Gurry called on member states to work together to ensure that the IP system serves as a stimulus for developing solutions to the global challenges confronting policy makers across the world [Quite right. That's exactly what the World Trade Organization is for]. Many countries underlined the need for continued support in promoting innovation, technology transfer and IP public awareness to boost technological development and commerce, and to support the search for solutions to emerging problems [... and to think they managed this only 126 short years after the came together to sign the Paris Convention on the Protection of Industrial Property].

The need to find solutions to overcome the blockages in the Organization’s normative agenda was widely expressed [Did the expression of this need require 40 ministers to turn up?]. In this context, many ministers called for the renewal of the mandate of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) in a way that allows for concrete outcomes [But surely countries which are blocking the normative agenda will resist changes in these mandates if their effect is to free that agenda up. Or is the IPKat missing something very obvious].

Ministers commended Mr. Gurry’s leadership of the Organization and the progress made in the renewal and strategic realignment of operations [The IPKat thinks he's doing a great job, though wading knee-deep through all those routes to 'concrete outcomes' must take some doing]. They welcomed the Organization’s response to the challenges confronting the IP system [Such as? Merpel couldn't find anything on the WIPO website that looks like a response to the Pirate Party manifesto] and its engagement in global issues, including climate change, food security, public health and technology transfer".

Is IP causing global warming?

According to noises coming out of WIPO and other places in recent months (including the EPO President - see here, for example) IP, and patents in particular, have a role to play in how mankind is to deal with the apparent threat of global warming.

(right: is the solution to recycle IP? Source: jcdesignz)

According to a newsletter from law firm Sidley Austin (here), kindly forwarded to the IPKat by one of his regular readers, some possibilities for how IP rights could be affected seem to be quite radical and, to many IP owners, clearly potentially worrying. Proposals that have been put forward by China and India (among others) to the UN body UNFCCC include the following:

• Excluding "climate-friendly" technologies from patentability [clearly quite different from the 'Green Channel' now in action in the UK], including the possibility of revoking existing patents;
• Mandating technology pools for licensing green technology freely or cheaply [the IPKat fails to see how the free option is effectively any different from the first proposal];
• Mandating or encouraging compulsory licensing for particular green technologies;
• Reinterpreting international agreements on IP and climate change; and
• Establishing a new international body to address technology transfer, including IP issues.

All of the above proposals seem to assume that IP is somehow a barrier, rather than an incentive, to the introduction of technologies that can either mitigate or alleviate the effects of global warming (leaving aside the question of whether mankind has anything to do with causing global warming in the first place). To the IPKat's mind this implies that the questions being raised are to do with whether IP is going to be a cause of more global warming (if technologies are hindered) or the saviour of mankind (if it helps the right technologies to be implemented).

The IPKat would, however, like to offer a third view, which is one that appears to be shared at least in part by one commenter in this year's WIPO magazine special on climate change and IP (see here). This view is that IP has very little, or possibly absolutely nothing, to do with global warming, and (this is where the IPKat is taking the point to its logical conclusion) that any tinkering of the kind suggested by the proposals above is very likely to cause more harm than good. In this Kat's view, applicants should instead be left to get on with trying to patent what they see as important, and the market (perhaps with government assistance in deciding which technologies to help out) should be left to sort out which of these is actually important and will prosper. This is presumably not a view that would be shared by those at WIPO and the UNFCCC, who would have to find better things to do with their time than fly round the world (emitting lots of carbon dioxide in the process) to meet and discuss this apparently pressing issue.

The Sidley newsletter also expresses an opinion about this matter, which the IPKat would tend to agree with:

"These discussions [at WIPO, UNFCCC and elsewhere] are highly charged and may reconfigure the international legal framework in a way that undermines the vital intellectual property rights of innovative industries and puts jobs and investments at risk. Innovative companies with valuable intellectual property should work with governments, international organizations, and like-minded stakeholders to influence the outcome of these deliberations in an appropriate manner. Each of the meetings on the road to [the climate change conference in] Copenhagen offers an opportunity for building consensus and influencing the process. There is a need for solutions that can preserve valuable intellectual property, provide sustainable incentives for the development of climate-related technologies, and facilitate the diffusion of climate-related technologies around the world."

The IPKat, who can see why such discussions would be highly charged given the combination of two currently highly contentious issues of global warming and IP, would like to suggest that now might be the time for those interested in developing patentable technologies that have anything to do with global warming start to make their voices heard.

PS: A discussion paper from an Indian thinktank on the issue can be read here. The IPKat thanks the author for informing him.

WIPO PCT stats for 2008: do they really reflect the downturn?

"Global Economic Slowdown Impacts 2008 International Patent Filings" is the depressing title of the Press Release from the World Intellectual Property Organization (WIPO) today (PR/2009/583).

Right: the IPKat is indignant to discover that 100% of PCT applications last year were not filed by cats.

According to the intro,

"International patent filings under WIPO’s Patent Cooperation Treaty (PCT) grew by 2.4% in 2008, to nearly 164,000 applications. While the rate of growth was modest, as compared to an average 9.3% rate of growth in the previous three years, the total number of applications for 2008 represents the highest number of applications received under the PCT in a single year. Continued use of the PCT, a cornerstone of the international patent system, indicates that companies recognize the importance of sustained investment in research, development and innovation to remain competitive even within challenging economic conditions. [In other words, don't worry too much about the rate of growth. If the IPKat starts with just 5 kittens at the beginning of the year but ends up with 10 kittens at the end of the year, that's 100% growth. If by the next year-end he has 17 kittens on his paws, that's a larger increase in numerical terms but the growth rate has slumped from 100% to 70%] .

Inventors from the Republic of Korea (+12.0%), China (+11.9%) and Sweden (+12.5%) enjoyed robust growth rates in their filing of PCT applications in 2008. The largest number of international PCT applications, just under a third of the total for 2008 (32.7% or 53,521 applications) were filed by inventors in the United States of America, maintaining a ranking that has spanned some thirty years.

... Inventors and corporations from Japan, with 17.5% (28,774) of all filings, clinched the number two spot in 2008, followed by Germany (18,428), Republic of Korea (7,908) France (6,867), China (6,089), United Kingdom (5,517), Netherlands (4,349), Sweden (4,114), Switzerland (3,832), Canada (2,966), Italy (2,939), Finland (2,119), Australia (2,028) and Israel (1,882). In 2008, China improved its ranking by one place, to become the sixth largest user of the PCT".

News from the developing countries is less encouraging. Once Korea and China -- if you regard them as developing countries -- have been taken into account, next come

".. India (766), Brazil (451), South Africa (382), Turkey (367), Mexico (210), and Malaysia (177).

Developing countries make up 78% of the membership of the PCT, representing 109 of the 139 countries that have signed up to the treaty to date".

Top filing company this time around was Huawei Technologies Co. Ltd, a major international telecommunications company based in Shenzhen, which notched up 1,737 PCT applications and just shaded Japan's Panasonic Corporation (1,729). A curious feature of the statistics is that, while the United Kingdom, Canada, Italy, Australia and Israel all feature in the top 15 filing countries, none of those nations has secured even a single entry in the list of Top 50 filing companies.

New PCT Supplementary Search

Charles Clark (no, not that one) has emailed the IPKat to inform him that WIPO has recently announced, in the December PCT Newsletter, that a new search service is due to be launched as from 1 January 2009.  This will be known as the Supplementary International Search, under new Rule 45bis PCT (hidden deep inside this pdf document).  The point of this, so WIPO says, is to allow applicants to have their international patent application more comprehensively searched in languages other than that in which the ISR is carried out.  When this service comes in, the languages that will also be searched, courtesy of the Nordic, Russian or Swedish searching authorities will include Russian, Swedish, Norwegian, Icelandic and Danish. 

Of course, all this extra searching will not be free of charge.  A supplementary search fee (payable to the IB, naturally) will cost the applicant between 455 and 2,826 Swiss Francs, depending on which institute is selected.  The applicant must also request any search no later than 19 months after the earliest priority date, but this should (in theory at least) allow the results to come in before a decision needs to be made on what to do in the national phase (at 30/31 months).  

The IPKat can see how this would be a good idea, but only for a very limited selection of applicants and if there is a concern that there might be killer prior art lurking somewhere in one of these languages that has not been translated into a more commonly searched language.  It might, however, become much more useful for applicants once Japan and China join the party, which seem to be the most obvious next candidates.  

Narnia domain name dispute concludes

The IPKat previously reported (here) the plight of a Scottish couple who had registered the domain name narnia.mobi, claiming that they had done this as a birthday present for their son. The proprietors of the various copyright works of the late CS Lewis, and the associated trade marks, were not impressed by this and began proceedings at the WIPO-run domain name dispute resolution service (link). The decision has now issued, and is available here.

The facts of the case, as summarised in the decision, immediately lead one to suspect that the motives of the respondents were not quite as they had alleged:

"The Complainant owns trademark, copyright and other proprietary rights in the literary works of C.S. Lewis. This includes valid and subsisting trademark registrations in various countries for the term “narnia” and other NARNIA-composite marks. “Narnia” is the name of a fictional country in C.S. Lewis’ “The Chronicles of Narnia”, a series of seven children’s books. The first book in this series was published in 1950, and the works since have been adapted for film at least twice - in the film “The Chronicles of Narnia: The Lion, The Witch and The Wardrobe,” and more recently in the film “The Chronicles of Narnia: Prince Caspian”. The Complainant also owns and operates web sites at narnia.com and narnia.co.uk, which provide information about the “The Chronicles of Narnia” books and the movies, their history and characters.

The Respondent, together with his wife, runs the Saville-Ferguson media and PR agency. The Respondent registered the disputed domain name narnia.mobi on September 29, 2006, shortly after the dotMobi sunrise period for trademark owners had closed. The disputed domain name resolves to a parked web page provided by Sedo, containing “sponsored links” to commercial websites, including links to websites offering for sale merchandize and apparel related to “The Chronicles of Narnia” books and movies.

Between September 28 and 30, 2006, the Respondent also registered the following domain names: drwho.mobi, mi5.mobi, mi6.mobi, middleearth.mobi, spooks.mobi, tardis.mobi, ovaloffice.mobi, pentagon.mobi, primeminister.mobi, scottishparliament.mobi, thequeen.mobi, and uspresident.mobi. With the exception of middleearth.mobi, all of these domain names resolve to parked websites provided by Sedo.1

On June 17, 2008, two weeks after the filing of the instant Complaint with the Center, the Respondent registered the domain names freenarnia.com and freenarnia.mobi."

After hearing arguments from both sides, the panel was unconvinced by the respondent's claims that they had acted in good faith, and concluded as follows:

"The Panel cannot envision any plausible, good faith basis upon which the Respondent could have concluded that he was free to appropriate the Complainant’s distinctive and widely known NARNIA mark for use as a personal email address. The Respondent was well aware of the Complainant and the Complainant’s mark, and the Respondent clearly had notice that the Policy was applicable to domain name registrations in the dotMobi registry. Equally disturbing to the Panel at this point is the Respondent’s registration of the freenarnia.com and freenarnia.mobi domain names subsequent to the filing of the Complaint in this matter, and the implications these registrations hold both in terms of the good faith requirement implicit in paragraph 2 of the Policy and, ultimately, the Respondent’s motivation in registering not one but three domain names appropriating the Complainant’s mark."

Unsurprisingly, the panel ordered that the domain name narnia.mobi be transferred to the complainant.

The IPKat is not at all surprised by the decision, but is a little dismayed (and, perhaps naively, shocked) by the apparently blatant manipulation by the respondents of their story when it first appeared in the media a few weeks ago. It seems to the IPKat that they knew exactly what they were doing, and their actual motives had very little to do with simply getting a nice birthday present for their son. Instead, their acts of registering so many domain names now makes them appear like classic cybersquatters, but perhaps with a particular talent for tales of fantasy.

Never mind the IP, let's all become landscape gardeners

What is the World Intellectual Property Organization up to now? The IPKat has received a circular announcing WIPO's latest venture -- it's hosting a Symposium on IP and Multilateral Environmental Agreements in Geneva.

Right: in the Great IP Garden, trade marks are the perennials but you have to plant a load of patents in the hope that you'll get any flowering ones.

According to press circular 2008MA/2008/42,

"On August 26, 2008, ... WIPO is organizing under its Life Sciences Program a Symposium that will explore intellectual property (IP) rights and their role in the development and transfer of technologies within the context of Multilateral Environmental Agreements (MEAs). Many MEAs contain technology transfer provisions around which IP issues arise. The event will provide an opportunity for policy makers and other stakeholders to share their experiences and to explore the IP dimensions of technology transfer provisions contained in MEAs.

The development, application and transfer of technology are core elements in the implementation of MEAs. The Symposium aims to foster a better understanding of the types of IP issues that may arise in the context of the implementation of MEAs. It will further build on previous work on patent landscaping ... and highlight the use of patent information tools and their usefulness in identifying technological developments of relevance to the environment and in facilitating the transfer of appropriate technologies within the context of MEAs. The event aims to promote a better understanding of the potential benefits as well as the limitations of IP rights in supporting technology transfer under MEAs.

WIPO’s Symposia on Life Sciences and Intellectual Property Policy aim to enhance understanding of topical issues of concern to policymakers by providing a forum for stakeholders (including international policymakers, government agencies, legislators, delegates, civil society and the private sector) to exchange information and ideas on IP as it relates to the life sciences. They are designed to promote better understanding of the role and practical importance of the IP system to the life sciences and its potential in supporting the development of public policy within this rapidly evolving field".

You can get information on the full series of WIPO Life Sciences Symposia here. The event is open to the general public; admission is free of charge. Anyone interested in attending the meeting can do so by completing the online registration form.

The IPKat is delighted to see that WIPO is prepared to take the discussion of the merits of IP rights into the enemy heartlands, as it were, by engaging environmental lobbyists and others who are often automatically anti-IP because they see it as a politico-economic issue and as a means of exercising control over the poor and the oppressed. Merpel's applause is more muted: if you really want to open the debate, the idea's fine -- and so is the free admission -- but wouldn't it be great to hold this symposium in a place where it cost a little less to buy a cup of coffee?

Advice for landscape gardeners here
The constant gardener here

Narnia domain name dispute

According to a report from Reuters (and noted in numerous other places including here, here and here), a Scottish couple is facing the wrath of the estate of CS Lewis, author of the Narnia series of books, for acquiring the domain name narnia.mobi. The domain name was apparently acquired so that the couple's son, who is a great fan of the books, could use it for his email address.

The couple now have less than a week to respond to the 128 page complaint, filed at the domain name dispute resolution service run by WIPO, after which a decision will be made on whether the domain should be transferred. They are quoted as saying, "We don't have the money to hire intellectual property lawyers, so we're saying 'help.' One thing for sure is that our response won't be 128 pages long, it will be more like 10 pages -- we're looking at quality rather than quantity".

The IPKat wonders if any of his readers would be interested in helping this couple out. On first sight the case seems fairly hopeless, but this particular Kat is by no means an expert on domain name disputes. He would, however, be interested to see how it turns out.

What's happening at WIPO?

The IPKat was intrigued to read earlier this week (see here, here and here) of mysterious goings-on at WIPO, involving the apparent removal of diplomatic immunity from a number of employees and police investigators entering WIPO headquarters in Geneva to take DNA samples.

All this apparently has something to do with an alleged smear campaign relating to the director general elect, Francis Gurry. Whether it also has anything to do with the various allegations (still unproven either way) against the current head Kamil Idris, is unknown. More than this, the IPKat would not like to comment. What he would, however, like to know is why Intellectual Property Watch, which is usually the closest to WIPO goings-on, has so far said nothing about it.

Mc's Back; the day is ended

Not so McSweet

King5 reports that McDonalds is opposing a US application to register McSweet as a trade mark for pickled garnishes such as onions. The application is in the name of one Jim McCaslin, who bought the business from a man named Leo McIntyre. McCaslin has said that McDonalds has indicated that it will allow him to use the name, as long as he drops the trade mark registration.

The IPKat can see why McDonald's might want to stop people taking advantage of its brand, but he's not convinced that going after a man called Mac, who bought his business from a man called Mac is the way to go, particularly in the light of the burger chain's reputation for seeking to "monopolise" the Mac prefix.

World IP Day

It was World Intellectual Property Day over the weekend, but since it was on a Saturday, the IPKat missed it. The IPKat reckons that if the annual IP fest is to be taken seriously, there should be some way to move it to the working week if it falls at the weekend.

The IPKat (right) missed the party

Virtual reality

The avatars fight back

The IPKat took a trip into a parallel universe with a visit to the Seventh Sun, which reports on a new campaign by a group of Second Life Avatars to raise awareness of the ‘theft’ of virtual items created by the avatars (or at least, their creators) and imported into Second Life, where they are sold. The campaign features various seemingly well know avatars au naturel with the slogan ‘Content theft steals the clothes off our backs’.

What stands out to the IPKat is that although the ‘theft’ is of computer code, the rhetoric sounds like it comes straight from the tangible world. According to the avatars, what is being stolen is ‘stuff’ – even though it’s electronic, it does represent clothes, jewellery etc. According to one avatar, who owns a Second Life clothing store: ‘We want residents to understand that, for many content creators, SL is their livelihood and theft here is no different from theft in the real world. Intellectual property theft is illegal and actionable in courts around the world regardless of whether it happens in real life or inside a ‘game.’


World IP Day is on the way

It’s just over a month to go until World Intellectual Property Day (26 April 2008). This year’s theme according to WIPO is ‘celebrating innovation and promoting respect for intellectual property’. The IPKat is puzzled. Celebrating innovation he can understand, but what does promoting respect for IP mean? He thought perhaps that this was politically correct speak for stronger enforcement mechanisms, but then he read WIPO DG Kamil Idris’s message for World IP Day. He rounds off by stating:

"And so, on World Intellectual Property Day, we pay tribute to the inventors and artists, great and small, who enrich our existence with the fruits of their innovative thoughts and creative vision. And we remember why it is that their intellectual property rights, the rights that they have earned through their individual and collective talents, deserve our admiration, our protection, and our respect".

It seems then that protecting IP is different from respecting it. What does respect mean then? Should the IPKat doff his cap each time an inventor walks past?

Candidates for WIPO Director General

On 13 and 14 May this year, the WIPO Coordinating Committee is to nominate person for appointment by the General Assembly as WIPO Director General. The nominations received so far (and biographical details) are now available on the WIPO website. They are:

• Mr. José Graça Aranha (Brazil)
• Mr. Enrique A. Manalo (the Philippines)
• Prof. James Otieno Odek (Kenya)
• Mr. José Delmer Urbizo Panting (Honduras)
• Mr. Yoshiyuki Takagi (Japan)
• Mr. Philippe Petit (France)

The IPKat hopes that the best man (for they are indeed all men) will get the job.

$300k to get rid of Kamil Idris

Thanks to Joff Wild of the IAM blog for pointing out the news (via the Herald Tribune) that Mr Idris is apparently due to be paid off to the tune of a year's salary and full pension rights, in return for getting shot of him a year earlier than he was due to leave his position as Director General of WIPO.

This Kat wonders whether he would have any chance of getting the job, since he has three genuine university degrees and proper professional IP qualifications, which is more than he is can say with any confidence about Mr Idris. Perhaps it would be worth putting in an application.

More money for nothing here and here.