Saturday Sundries

Another day , another consultation or so it appears - this time from the UK IPO concerning a potential modernisation and simplification of the Copyright Tribunal's rules of procedure. The IPKat has not had time time to review the 37 pages consultation document, which the interested reader can access by clicking here (PDF). Comments can be submitted until 1 July 2009. More details can be found on the IPO's website here.


This Kat is wondering what gems might be hidden in the 37 page consultation document (Jamie Edwards' painting can be bought here).


After several months of secrecy surrounding the Anti-Counterfeiting Trade Agreement (ACTA) negotiations and increasing demands for more transparency and access to the negotiation documents from civil rights groups as well as the European Parliament (see the IPKat's post here), the Office of the United States Trade Representative has this week published a six page document setting out a Summary of Key Elements Under Discussion in relation to the ACTA. Information relating to ACTA had previously been classified by the US government.

Thanks go to the IPKat's friend Louise O'Callaghan (Pupil at Hardwicke Building) for alerting the IPKat to this topic.


Finally, Reuters reports that the French luxury goods producer Hermes has won a record sum of 7.5 million US Dollars in damages in a trade mark infringement case brought against a former employee who had sold four counterfeit handbags. According to Taiwan News the court also ordered the infringer, a former Hermes saleswoman, to publish the verdict and an apology in two local newspapers. AFP explains that under the Taiwan trade mark act, infringers can be "subject to a fine (damages?) between 500 to 1,500 times of the price of the original product".

Two new IPREG consultations

The IPKat has learned that the Intellectual Property Regulation Board (IPREG) has published two consultations on new continued professional development (CPD) regulations and individual qualification requirements for UK Patent and Trade Mark attorneys.



This kat has been busy collections CPD points (picture taken from www.cherylrainfield.com)

Details of the consultations can be viewed by clicking here.


Anyone can respond to IPREG individually, if they are so inclined and the following sentence on the IPREG's website assures us that: "... [the] views of the general public on these issues are also welcome."

Further details can be found on the IPREG's website.

New Oxford IP Professor; IPO fees reduction on the cards?

New Oxford IP professor

Oxford University has officially announced the appointment of Graeme Dinwoodie as Professor of Intellectual Property and Information Technology Law at Oxford University. He will take up his appointment in June.

The IPKat wishes Graeme the best of luck in his new position.

Full press release here.


Fees consultation

The Intellectual Property Office (which the IPKat wouldn't dare call the Patent Office, or even the UK-IPO) has launched a consultation on fees and services.

The aims are to ensure that the registration of national trade marks is a viable option, to ensure that businesses continue to protect their IP during the economic downturn and to encourage e-business.

Amongst the proposals are an early assistance scheme for trade mark applications, a 50% fee reduction for e- filing of trade marks and a lesser reduction for patents, the abolition of series registrations for trade marks, the scrapping of the fast track trade mark registration procedure (because the normal procedure is just as fast) and the reduction of trade mark tribunal fees.

Responses are due by 1 June.

The IPKat notes that most of the proposals are aimed at trade marks. This could be because of the need to compete with OHIM, but perhaps businesses are more willing to put less money into protecting their trade marks than their patents when the going gets tough.

UK Copyright 'debate' kicked off

Some stuff came out of the IPO today about copyright: here and here.  The UK government's current temporary IP stand-in, David Lammy (pictured right, and apparently in some pain; did someone electrify the lectern?), wants to have a "debate" about where copyright is going by issuing a "wide ranging consultation [...] on the future of copyright".  The consultation document, available here (pdf), makes for some quite dull reading (although it is mercifully brief), as it doesn't really say anything of substance.  What it does say is the usual guff about "creative industries" being important to the UK economy in the 21st century.  What it doesn't say is why these creative industries need copyright terms that will, in many cases, last well into the 22nd century.

Responses to the consultation are due by 6 February 2009.  The IPKat urges all those having an interest to let their views be known, but suggests that there would appear to be very little point in doing so, given recent news.  Mind you, Andrew Gowers is not impressed by recent government ejaculations, which is at least something.

For anyone still interested, the consultation identifies four areas for debate:

1. Access to works: Is the current system too complex, in particular in relation to the licensing of rights, rights clearance and copyright exceptions? [IPKat answer: a very big YES; just look at the state of the CDPA 1988] Does the legal enforcement framework work in the digital age? [IPKat answer: oh yes: just ask Davenport Lyons; the correct question should instead be whether this is a good thing]

2. Incentivising investment and creativity: Does the current copyright system provide the right incentives to sustain investment and support creativity? [IPKat answer: incentives, yes; the right incentives: no] Is this true for both creative artists and commercial rights holders? [IPKat answer: creative artists are always expoited by commercial rights holders, who always get the better deal; changing copyright law is not going to change this commercial reality] Is this true for physical and online exploitation? Are those who gain value from content paying for it? [How does one 'gain value from content'? Was this inserted by the BPI?]

3. Recognising creative input: Does the current system provide the right balance between commercial certainty and the rights of creators and creative artist[s]?[IPKat answer: no, obviously]  Are creative artists sufficiently rewarded/ protected through their existing rights? [IPKat answer: some are, some aren't; why should copyright law care? Why would any more rights affect this?] 

4. Authenticating works: What action, if any, is needed to address issues related to authentication? [IPKat comment: eh?] In considering the rights of creative artists and other rights holders is there a case for differentiation? [IPKat comment: what is this nonsense about?]

Go ahead and speak your brains, if you must. This Kat is going to have a lie down...

First catch your copyright criminal ...

Last week the UK Intellectual Property Office posted news of a fresh consultation exercise, this time in respect of penalties for copyright infringement. As the UK-IPO's website observes:

"Currently the maximum fine that Magistrates' Courts [IPKat note: these are the entry-level criminal courts in England and Wales, largely staffed by amateurs] can award for online copyright infringement is £5,000. To reflect the commercial damage that large scale copyright infringement causes, the UK-IPO is consulting on increasing the level of fine handed down by a Magistrates’ Court to a maximum of £50,000.

This consultation takes forward Gowers Review recommendation 36, which recommended matching penalties for online and physical copyright infringement by increasing sanctions for online infringements.

Further to this in February this year "Creative Britain: New Talents for the New Economy" was published by the Departments for Culture, Media and Sports (DCMS), Business, Enterprise and Regulatory Reform (BERR), and Innovation, Universities and Skills (DIUS). It included a commitment to consult on increasing the fines available in the Magistrates’ Court from the current £5,000 limit to a maximum of £50,000 for online copyright infringement.

Scotland does not have Magistrates’ Courts; therefore the consultation considers introducing maximum levels of fines for Scottish summary courts that deal with equivalent cases in Scotland".

The interesting bit of this paper, the IPKat says, is the bit that deals with the Proceeds of Crime Act 2002 (POCA) and the mechanisms for depriving criminals of their ill-gotten gains. In the light of POCA's current provisions, does the law need any real changes at all? Sadly, says Merpel, POCA is only as good as you can make it: but you can't deprive criminals of their illegal profits until you convict them, and you can't convict them till you've got the evidence against them, and you can't pin the evidence on them till you can find them in the first place -- and the criminal copyright sector appears to be far bigger and better motivated than the bit of the criminal enforcement sector that can be allocated to deal with this issue.

PDF version of the consultation document (28 pages) here (you can also get it in Word from the link at the top of the page, if you want to cut-and-paste it ...)
The closing date for making your comments is 31 October 2008.

News from the UK IPO

Research exception consultation

The UK IPO has launched an informal consultation on the research exception to patent infringement, following criticism of the clarity of the exception in the Gowers Review. The purpose of the consultation is to measure the extent of stakeholder concerns (the topic didn't provoke much comment during the process of compiling the Gowers Review) so that, where there are concerns, steps can be taken to resolve them appropriately.

Stakeholders are being asked the following questions:

• Is the research exception in need of clarification? Do you have any evidence to support your view?
• If you consider that the research exception does need clarification, how would you like to see this done?
• Do you have any evidence of research being hindered by patents on research tools, or of the current law
working effectively?
• If you consider that research has been hindered by patents on research tools, how do you think this could best
be overcome, or has research been able to continue?

Responses are due in by 7 November.


...and more from the IPO

Highlights from the decision of Richard Arnold QC, acting as Appointed Person, in Vibe's Application. The application was for a crackled effect in respect of a paint effect as applied to the surface of loudspeaker enclosures. Lots of juicy stuff in here about distinctiveness when two potential trade mark are beign used at the same time, and also how patient a trade mark examiner is expected to be (relatively, but only up to a point), but the standout issue is on the meaning of acquired distinctiveness. The Appointed Person was itching to refer to the ECJ the question of whether an applicant to a trade mark which he alleges has acquired distinctiveness must have promoted the sign as a trade mark (i.e. an indication of orign). He didn't though, because the applicant didn't want a reference, but he did accuse the ECJ of not answering the questions referred in Dyson.

Quoting from Kerly, he identified 3 propositions:

(1) mere association with a particular manufacturer is not enough;
(2) the use of the sign must establish, in the perception of the average consumer, that the product originates from a particular undertaking;
(3) that perception must result from the use of the sign as a trade mark – in other words, the proprietor must have done something in his use to identify the sign as a trade mark, and mere extensive use during a period of monopoly, without more, is most unlikely to have achieved this.

In his view, (1) and (2) were correct according to the law of the UK, but (3) was not necessarily true.

The IPKat reckons that, in principle, it's right that only (1) and (2) should be legal requirements, but as a factual matter, it's hard to see how save in the most exceptional cases, a sign which lacks distinctiveness will be magically transformed into a distinctive sign without (3).

Consultation on copyright exemptions launched

According to a UK-IPO press release issued today, a new consultation has been launched in respect of certain copyright exemptions applying to playing recorded music in public. More details, including some proposed changes to various sections of the (already much amended) CDPA 1988, are available from the UK-IPO here.

The UK-IPO say (with IPKat links added):

"The Government is aware that some exemptions in the Copyright Designs and Patents Act 1988 may not be working well in maintaining the correct balance between the interests of music rights holders and users [IPKat comment: i.e. music rights holders think they don't get paid enough, while users feel confused and ripped off]. The sections to be reviewed are sections 67 and 72(1B)(a) and paragraphs 15 and 18(1A)(a) of Schedule 2 to the Act. The Government also proposes to repeal sections 128A and 128B which relate to the operation of section 72.

The exemptions principally allow not-for-profit and charitable organisations, in certain specific circumstances [IPKat comment: i.e. hardly ever and, if the collecting societies get their way, never], to play copyright sound recordings in public without being required to pay a licence fee for use of those sound recordings or the performances they contain."

The consultation document itself details three proposals, summarised as follows:

"Option 1 will repeal the exemptions, giving right holders exclusive rights over the public playing of sound recordings in all the circumstances which are currently exempt.

Option 2 will narrow the scope of the exemptions so that they are only available to small charities. It will also extend the exemptions so that they apply to both the PRS licence and the PPL licence. The exemption from both licences may also be extended to some limited uses of recorded music by NHS trusts.

Option 3 will remove the exemptions but right holders will only be able to charge royalties at a rate which is considered to be fair to both them and the users. This is referred to as equitable remuneration.

We also propose to remove the mechanism, introduced in 2003, whereby the Secretary of State can refer PPL licences to the Copyright Tribunal for adjudication."

The IPKat notices that there is no option 0 for leaving the Act exactly as it is, nor is there an option 4 for making the exemptions more sensible and workable by (for example, and just off the top of his head) making them apply to the whole range of copyright works relevant to performances in public, rather than just a limited and confusing subset. Option 1 would obviously be going too far in the interests of the music industry, and option 3 would just be far too complicated and subjective to work in practice, even though academic-types might prefer it. Option 2 therefore looks like the one that will be actually implemented, and probably regardless of any submissions in response to the consultation. However, if you want to try your arm at engaging with the consultation anyway, you have until 31 October 2008 to do so.

More ways to waste your time here, here and here.

A consultation has also been launched on whether to extend the UK's derogation relating to the Artists' Resale Right, closing on 22 September 2008, but the IPKat suspects that hardly anyone will care.