QMJIP

Queen Mary Journal of Intellectual Property

Here we laugh again! The eternal controversy over parody scope in Copyright law

by federicapezza

Remix, mash-up, fan fictions and “other strange animals”:  welcome all to the taking from-era.The eternal tension between original creator property rights and guarantee of social interests in Copyright law, is becoming even more crucial nowadays, due to the increasingly common practice of elaborating and reinterpreting copyrighted material.

One of the latest issues comes from the US.

Again, a balance is required. This time, however, the bone of contention lies in the drawings of comic books. Here we go again my dear copyright lawyer! Well, here we laugh again, to be fair.

But first things first. Let’s have a look at the facts.

Comixmix has been sued by Dr Seuss Enterprises(DSE), the estate of late children’s author and illustrator Theodor Seuss Geisel, for trying to sell a book called Oh, The Places You’ll Boldly Go!, proposed on Kickstarter as a “mash-up” of Dr. Seuss and Star Trek. In particular, the plaintiff, in its formal complaint, alleges that the unauthorized publication of the book,” by using innumerable copyrighted elements” of the original and iconic Dr Seuss “Oh the Place You’ll Go” , presents a clear infringement of his copyright under the US Copyright Act s. 106. Further, it would also amount to a trademark infringement under the Lanham Act, due to the distinctiveness of Dr Seuss marks[1]. On the other side, the creators, although totally aware of the risks connected to their work, rely on the fair use defence under s. 107 of the US Copyright Act. [2]

Quite interestingly, the lawsuit follows another complaint, based on the same reasons, which has been filed by CBS and Paramount Pictures over another crowd-funded project — a professional-quality “fan film” titled Axanar[3].

But there is more.

What makes the dispute even more intriguing to the non-geeks is the fact that the plaintiff, Dr Seuss, had already been involved, a few years ago, in one of the US leading cases on Copyright Law and Fair Dealing. [4]In that instance the US Court, having to decide whether the “Cat NOT in the Hat “by Dr Juice constituted an infringing copy of Dr Seuss book “The Cat in the Hat”, found for the plaintiff, ruling out the justifiability of the work under the US fair use doctrine. In that occasion the court adopted a narrow[5] interpretation of parody notion, which excluded the applicability of the exception any time the new work, rather than targeting the previous one(target parody),made use of it as a weapon against society.

Thus, how can one draw the line between authorised fan fiction and infringing copy?        As always, when talking about copyright, the answer is not a straightforward one.Law changes, society evolves, judicial interpretation is subjective…

So keep calm and go back to your Marvel Comics, my dear copyright lawyer.  That’s the daily lesson: he who laughs last, laughs best.

Federica Pezza

Assistant Editor, QMJIP


 

[1] https://www.documentcloud.org/documents/3219155-Seuss-Suit.html

[2] Noticeably, on their webpage, anticipating the lawsuit, they already proclaimed While we firmly believe that our parody, created with love and affection, fully falls within the boundary of fair use, there may be some people who believe that this might be in violation of their intellectual property rights. And we may have to spend time and money proving it to people in black robes. And we may even lose that.”

[3] https://www.documentcloud.org/documents/2660454-Startreklawsuit.html

[4] DR SEUSS ENTERPRISES v. PENGUIN BOOKS USA INC http://caselaw.findlaw.com/us-9th-circuit/1384979.html

[5] For the developmets on the fair use defence in US look at Cariou v Prince where a broader notion of fair use based on the transformativeness of the work has been elaborated.

Bogus Buys: Trade marks and Counterfeiting

by Lisa D. Rhooms

Counterfeiting comes in many forms, and is nothing new in business or in the law of Intellectual Property. However, where counterfeit goods are becoming nearly imperceptible, they pose a real risk to the owners of the goods being “knocked off”, and the buyers who believe they are getting the real thing. In a recent press release from the Organization for Economic Cooperation and Development[1] about their new report[2], they found that:

“nearly one in five mobile phones and one in four video game consoles shipped internationally is fake, as the growing trade in counterfeit IT and communications hardware weigh on consumers, manufacturers and public finances…”[3]

Counterfeiting however, does not begin or end with IT or communications goods, as nearly every good can, and probably has been counterfeited.

Counterfeiting and the Trade mark- Confusion and Passing Off

Whether under United States (US), United Kingdom (UK) or European law, counterfeiting of a mark, particularly a famous trade mark, affects the mark, though the degree or harm may vary. The case of Hermes Intern v Lederer de Paris Fifth Avenue., Inc.[4] spells out skillfully, the harms that can arise where there is confusion because of the similarity of marks and goods, one counterfeit and one real. The judgment states:

“a loss occurs where a sophisticated buyer purchases a knock off and passes it off to the public as the genuine article, thereby confusing the viewing public and achieving the status of owning the genuine article at a knock off price… the creation of confusion in the post sale context can be harmful in that if there are too many knockoffs in the market, sales of the original may declines because the public is fearful that what there are purchasing may not be an original… the purchaser of an original is harmed by the widespread existence of knockoffs because the high  value of originals, which derives in part from their scarcity, is lessened.”[5]

This case looks at the harm in a post sale context, including the harm to owner of the mark, in terms of reduced sales, the fear of the prospective consumers that the goods they may be purchasing are fake, and the actual loss to owners of the goods due to a lack of scarcity. This case helps to illustrate the multifaceted harm counterfeiting can cause.

In the United Kingdom, even an unregistered trade mark is protected against counterfeiting by the law of passing off because of the harm it can cause to a trader. This is demonstrated in the case of Reddaway v Banham[6], where the judgement made clear that “nobody has any right to represent his goods as the goods of somebody else”[7]which is a clear shot at counterfeiting, as where there is passing off, there is harm, and when a trader commits passing off, he for all intents and purposes steals another trade’s patron and his reputation.

Counterfeiting and the Trade mark- Dilution

Another problem with counterfeiting is that it may cause dilution, which is a concept found in the US, UK, Europe and elsewhere. In the US, sections 43(c)(2)(b) and 43(c)(2)(c) of the Lanham Act relate to dilution by blurring, and dilution by tarnishment respectively. Dilution is a concept in respect of a famous trade mark, and dilution by blurring arises where the marks are so similar that the distinctiveness of the famous mark is impaired by the other mark. Cases such as Levi Strauss & Co v Abercrombie & Fitch Trading Co.[8] have determined that there need not even be an identity or substantial similarity of marks for there to be blurring, so a counterfeit item, intended to be a replica, would almost certainly cause dilution by blurring. Dilution by tarnishment arises where there is a similarity of the marks which gives rise to an association between the marks, and which harms the reputation of the famous mark. Thus, in the case of V Secret Catalogue inc, v Mosely[9], the court found that there was a rebuttable presumption of tarnishment where the famous mark was connected with sex products. Another scenario where tarnishment is possible is where the product, similar to one bearing the famous mark, is of poorer quality. Counterfeits are generally cheaper and of poorer quality than famous more expensive brands, and thus, a counterfeit good could very easily cause dilution by tarnishment. Again, in the UK, unregistered marks are protected by passing off, and dilution is a category of harm under passing off.

Conclusion

Counterfeiting is a sin against a genuine good as it can steal, kill and destroy. A counterfeit good can steal a customer from a trademarked brand, kill its reputation and destroy the business of the holder of the trade mark. Intellectual Property law, trade mark law in particular must therefore take serious steps in addressing counterfeiting through the policing of brands, bringing action against counterfeiters, and imposing other sanctions including heavy fine, and imprisonment. Trade mark law must be very careful, but also unyielding in disallowing bogus buys from hindering genuine products, and the resources which have gone into engineering them.

Lisa Diana Rhooms

Assistant Editor, QMJIP

[1] http://www.oecd.org/gov/trade-in-counterfeit-ict-goods-9789264270848-en.htm

[2] OECD (2017), Trade in Counterfeit ICT Goods, OECD Publishing, Paris.
DOI: http://dx.doi.org/10.1787/9789264270848-en

[3] Ibid 1

[4] 55 U.S. P.Q 2d 1360 (2nd Cir. 2000)

[5] ibid

[6] [1896] AC 199

[7] ibid

[8] 633 F.3 1158 (9th Cir. 2011)

[9] 605 F.3 382 (6th Cir. 2010)

May 2017 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in May 2017. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

UNITED KINGDOM & IRELAND

  • 3 May – London – BLACA – The scope of “communication to the public” under EU law: is there still a borderline with indirect liability? Link.
  • 4 May – Glasgow – AIPLA – Women in IP Law EventLink.
  • 4-5 May – Glasgow – CREATe – Early Career Researcher Camp – Link.
  • 6 May – London – IAL – Study Forum in London – Link.
  • 8 May – Cambridge – CIPIL – Book Launch: Henning Grosse Ruse-Khan “The Protection of Intellectual Property in International Law”Link.
  • 9 May – London – CIPA & CITMA – Canadian IP and Patent Practice CPD Seminar – Link.
  • 9 May – Leamington Spa – LES Britain & Ireland – IP Strategy at Critical Points in the Life of a BusinessLink.
  • 9-10 May – London – Management Forum – The Formal Requirements of the European Patent SystemLink.
  • 10 May – Bournemouth – CIPPM – The Doctrine of Implied Licence and Copyright Balance Link.
  • 10 May – London – SCL – Big Data, AI, technology and the lawLink.
  • 10 May – London – IPSoc – Latest Developments in Copyright – Link.
  • 11 May – London – CITMA – IP Inclusive Afternoon Seminar – Link.
  • 11 May – Newport – CITMA – IP Inclusive Afternoon Seminar – Link.
  • 11 May – Edinburgh – MBL – Due Diligence on Intellectual Property – Link.
  • 11 May – Edinburgh – MBL – Intellectual Property in R&D Collaborations Link.
  • 11 May – London – QMUL – CCLS – The Intellectual Property CovenantLink.
  • 15 May – London – MBL – Copyright – Advanced Aspects Explored – Link.
  • 15 May – London – SCL – Renegotiation and DisputesLink.
  • 15 May – Bristol – MBL – All you need to know about the UK Patent BoxLink.
  • 16 May – Manchester – MBL – All you need to know about the UK Patent BoxLink.
  • 16 May – Oxford – FLJS – Free Speech: Ten Principles for a Connected World – Link.
  • 16 May – Oxford – Oxford University Intellectual Property Research Centre – Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016Link.
  • 16 May – London – IPR – Data Risk Management in Financial Services Summit – Link.
  • 16 May – London – CITMA – Copyright Law refresher – Link.
  • 16 May – London – Management Forum – The Impact of Patent Construction – How to Prove Infringement and ValidityLink.
  • 17 May – London – ALPSP – Understanding Copyright – Link.
  • 17 May – London – Bird&Bird – The Unified Patent Court Breakfast Seminar Series Link.
  • 17 May – Cambridge – CILIP – Getting to grips with Copyright and Open Access – Link.
  • 17-18 May – London – Management Forum – How to Avoid Common Pitfalls in Combined EU/US Patent ApplicationsLink.
  • 18 May – London – MBL – Taking Security over Intellectual Property – Link.
  • 18 May – Cambridge – CIPIL – ‘Behind the Steele Curtain: An Empirical Study of Trademark Conflicts Law, 1952-2016 Link.
  • 18 May – Glasgow – CIPA – The Scotland Meeting 2017 – Link.
  • 18 May – London – Osborne Clark – Copyright in the digital environmentLink.
  • 18 May – Oxford – Oxford University Intellectual Property Research Centre – Trademarks and private governance – Link.
  • 22 May – Cambridge – MBL – All you need to know about the UK Patent BoxLink.
  • 22 May – Oxford – Assimilate IP – Freedom to Operate Link.
  • 22 May – Oxford – Assimilate IP – Introduction to Intellectual Property Link.
  • 23 May – Bristol – MBL – A practical guide to draft IT Contracts – Link.
  • 23 May – Manchester – MBL – Intellectual Property Law Update – Link.
  • 23-24 May – London – IQPC – Information Governance and eDiscovery SummitLink.
  • 26 May – Glasgow – CREATe – Copyright Innovation Network (CIN) LaunchLink.
  • 30 May – London – UCL – IP Licensing: An Advanced Level Drafting Workshop – Link.
  • 30 May – Bristol – MBL – Valuation of IP Rights, Intangible Assets & Goodwill Link.
  • 30 May – Oxford – Oxford University Intellectual Property Research Centre –Implied Licences in Copyright Law – Link.

CONTINENTAL EUROPE

  • 3 May – Paris, France – APEB – Tables Rondes Commission Innovation & RechercheLink.
  • 3-4 May – Munich, Germany – EPO – PATLIB 2017 Link.
  • 4 May – Porto, Portugal – SME IPR Helpdesk – The importance of IP in internationalization strategies: the case of Latin America Link.
  • 4 May – Strasbourg, France – CEIPI – Propriété intellectuelle et numérisation- Quels enjeux pour le management de la propriété intellectuelle?Link.
  • 4-5 May – Munster, Germany – Munster University – Trading Data in the Digital Economy: Legal Concepts and ToolsLink.
  • 5 May – Milan, Italy – Università Bocconi – Second-hand Markets for Digital Copies – An EU copyright chimera? – Link.
  • 5 May – Strasbourg, France – CEIPI – La jurisprudence européenne en propriété intellectuelle Link.
  • 7-9 May – Cascais, Portugal – ACC Europe – ACC Europe Annual Conference – Link.
  • 9 May – Basel, Switzerland – FORUM – FTO in Practice: Life Sciences & PharmaceuticalsLink.
  • 9-10 May – Munich, Germany – Pharmaceutical Patent Term ExtensionsLink.
  • 9-10 May – Luxembourg, Luxembourg – ICT – ICT Spring Europe 2017 – Link.
  • 9-10 May – Bucharest, Romania – WIPO – Sub-regional Seminar on Teaching Intellectual Property to the YouthLink.
  • 11 May – Strasbourg, France – CEIPI – Séminaire de préparation à l’examen français de qualification spécialisation «brevets d’invention» Link.
  • 11 May – Amsterdam, the Netherlands – Symposium on Copyright and Culture – Link.
  • 11-12 May – Munich, Germany – EPLIT – EPLIT’s 4th Annual MeetingLink.
  • 12 May – Paris, France – Sciences Po – Building a EU Unitary Copyright– Link.
  • 16 May – Paris, France – IRPI – Droit d’auteur et droits voisins – Link.
  • 16 May – Paris, France – LES France & YMC – La révolution ‘blockchain’ Link.
  • 16-17 May – Berlin, Germany – Marcus Evans – IT Governance Risk Compliance – Link.
  • 17 May – Paris, France – IRPI – Droit des marques et autres signes distinctifs – Link.
  • 16-18 May – Brussels, Belgium – Informa – EU Pharmaceutical Law Forum Link.
  • 17-19 May – Barcelona, Spain – IACC – IACC 2017 Annual Spring Conference – Link.
  • 17-19 May – Tilburg, the Netherlands – Tilburg University – Regulating a connected world – Link.
  • 17-20 May – Copenhagen, Denmark – ALAI – Copyright: to be or not to be?Link.
  • 18 May – Madrid, Spain – LES Spain – Caso práctico sobre protección y comercialización de secretos industriales y comerciales Link.
  • 18 May – Bern, Switzerland – AIPPI – AIPPI General Assembly and Swiss Day Link.
  • 18-19 May – Trier, Germany – ERA – Intellectual Property Enforcement and the Fight against Counterfeit Goods in the EULink.
  • 20-24 May – Barcelona, Spain – INTA – INTA 139th Annual Meeting – Link.
  • 22 May – Barcelona – EUIPO – TM5 Mid Term MeetingLink.
  • 25 May – Budapest, Hungary – Dentons – IP breakfast seminar on the present and future of collective rights managers Link.
  • 25 May – Bucharest, Romania – WIPO – National Seminar on Intellectual Property Protection and Enforcement Relating to the Automotive Spare PartsLink.
  • 30 May – Madrid, Spain – FIDE – Sociedad Digital- “Modelos de negocio digitales del siglo XXI regulados por marcos normativos analógicos del siglo XX – Link.
  • 30 May – Paris, France – FORUM – Gestion Stratégique de la Propriété Intellectuelle Link.
  • 31 May – Amsterdam, the Netherlands – FORUM – Quo Vadis, SPC? Link.
  • 31 May-1 June – Munich, Germany – EPO – Examination Matters 2017 – Link.
  • 31 May – Aci Castello, Italy – Union IP – Union Congress 2017 – Link.

USA & CANADA

  • 3 May – Seattle, WA, USA – Centerforce – IP Strategy – Link.
  • 4 May – Detroit, MI, USA – Global Business Media – IP In the Auto Industry Link.
  • 4 May – Sacramento, CA, USA – CLA – Common Trademark Issues Every Client Faces Link.
  • 5 May – Houston, TX, USA – USPTO – Lone Star Strategies for IP in China Link.
  • 5 May – L’Auberge del Mar, CA, USA – LAIPLA – LAIPLA Spring Seminar – Link.
  • 5 May – Chicago, IL, USA – John Marshall Law School – Ethics in the practice of Intellectual Property Law – Link.
  • 8 May – Stanford, CA, USA – Stanford Law School – The Unregulated Certification Mark(et)Link.
  • 8 May – Detroit, MI, USA – USPTO – Developments in trade secret protection – Link.
  • 8-9 May – Washington DC, USA – LES USA & Canada – Best Practices in Licensing: Developing, Negotiating & Executing Transactions Link.
  • 9 May – Boston, MA, USA – Dennemyer – The future of IP and Technology Law Forum – Link.
  • 9-12 May – Washington DC, USA – LES USA & Canada – LES Spring MeetingLink.
  • 10 May – Berkeley, CA, USA – CLA – Protecting Intellectual Property Rights in a Work-Made-for-Hire Economy – Link.
  • 10 May – Boston, MA, USA – Centerforce – IP Defense – Link.
  • 10-12 May – Palo Alto, CA, USA – IP Counsel Cafe – Where Are We in Eradicating Weak Patents? – Link.
  • 11 May – New York, NY, USA – Dennemyer – The future of IP and Technology Law Forum – Link.
  • 11 May – Vancouver, BC, Canada – LES USA & Canada – The European Unified Patent Court and Unitary Patent – What to ExpectLink.
  • 15 May – Ithaca, NY, USA – How to avoid pitfalls in IP deal making – Link.
  • 15 May – New York, NY, USA – CSUSA – Computing Machines Creating Protectable Works: The Future of Copyright?Link.
  • 16 May – Washington DC, USA – George Washington Law School – 2017 GW IP Law Symposium – Link.
  • 16 May – New York, NY, USA – Managing IP – PTAB Forum 2017 Link.
  • 17 May – Chicago, IL, USA – Centerforce – IP Defense – Link.
  • 17 May – Palo Alto, CA, USA – LES USA & Canada – Penny or a Pound: Apportioning Damages in Patent CasesLink.
  • 17 May – Montgomery, AL, USA – USPTO – Alabama Digital Governance Summit Link.
  • 17-18 May – Michigan, MI, USA – Michigan State University – The Ninth Annual Junior Scholars in Intellectual Property (JSIP) Workshop – Link.
  • 17-19 May – San Diego, CA, USA – AIPLA – AIPLA Spring Meeting 2017 Link.
  • 18 May – San Francisco, CA, USA – Global Business Media – The Software IP Summit – Link.
  • 18 May – San Jose, CA, USA – USPTO – Patent Brown BagLink.
  • 18-19 May – Mountain View, CA, USA – Berkeley Centre for Law and Technology & MLRC – Legal Frontiers in Digital Media 2017 Link.
  • 20-25 May – Atlanta, GA, USA – PIUG – PIUG 2017 Annual Conference – Link.
  • 23 May – Sacramento, CA, USA – CLA – Contract Basics for Creative Artists – Link.
  • 23 May – Chicago, IL, USA – CSUSA – Picture This: The “Monkey Selfie” and Granting Copyrights to Nonhuman Animals Link.
  • 23 May – San Jose, CA, USA – USPTO – Design Patent Brown BagLink.
  • 25 May – Stanford, CA, USA – Global Competition Review – GCR Live IP & Antitrust California – Link.

LATIN, CENTRAL & SOUTH AMERICA

  • 11 May – Sao Paulo, Brazil – ASPI – O Novo Cpc Em Seu Primeiro Ano De Vigência E A Propriedade IntelectualLink.
  • 17-19 May – Sao Paulo, Brazil – IBA – IBA 5th Biennial Technology Law Conference – Link.
  • 18-19 May – Sao Paulo, Brazil – SCL – Technology beyond the bounds: enterprise benefits and social and regulatory limitsLink.
  • 31 May – 2 June – Buenos Aires, Argentina – WIPO – Segundo Taller de Entrenamiento de la OMPI sobre información y búsqueda de patentes y la prestación de servicios de información de valor añadido para el personal de la Red Nacional de Centros de Apoyo a la Tecnología y la Innovación (CATI) de Argentina Link.

AFRICA, ASIA & OCEANIA

  • 4 May – Melbourne, VIC, Australia – ACC – Drafting IP Clauses: tips and tricks for in-house lawyersLink.
  • 9 May – Melbourne, VIC, Australia – IP Australia – Patent 101 for Startups – Link.
  • 9-12 May – Melbourne, VIC, Australia – LES Australia & New Zealand – 7th LES Asia Pacific conferenceLink.
  • 11 May – Melbourne, VIC, Australia – ACC – Protecting your brand in an online worldLink.
  • 17-18 May – Khartoum, Sudan – WIPO – National Seminar on Intellectual Property Policies for Universities and Research InstitutionsLink.
  • 25 May – Sydney, NSW, Australia – IP Australia – Patent 101 for StartupsLink.
  • 31 May-7 June – Nairobi, Kenya – ICANN – Africa Internet SummitLink.

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

Right (not) to be forgotten in the companies register – an update from the CJEU

by Alina Trapova

Although strictly speaking not an IP matter, the right to be forgotten has entertained IP “cousin” blogs, journals and academics. Hence, a little update from the data protection sector would not harm.

Mr Salvatore Manni (IT) was the sole director of the company Italiana Costruzioni Srl, responsible for the construction of a tourist complex in Italy. He brought an action against the Lecce Chamber of Commerce since the companies register revealed that he had been the administrator of another company (Immobiliare e Finanziaria Salentina Srl) which went bankrupt back in 1992. Mr Manni believed that this publicly available information was the reason why properties in the newly built tourist complex were not selling. Therefore, it should be deleted, anonymised or blocked from the register.

Basis for his claim was the so-called Google Spain case [1], which in essence says that individuals have the right under certain conditions to request search engines to remove links with personal information about them. For the right to be forgotten to kick in, that information should be inaccurate, inadequate, irrelevant or excessive, which was the case of Mr González where press articles discussed debt recovery proceedings in which he had been involved 16 years ago. Nevertheless, the right to be forgotten is far from absolute – it must be appropriately balanced with other fundamental interests such as freedom of speech. Inevitably, each case is assessed on its own merits.

Mr Manni was successful before the Court of Lecce (Tribunale di Lecce), which ordered the said information to be anonymised and compensation for the damage to be paid. The Lecce Chamber of Commerce was however unhappy with this outcome and appealed the case before the Court of Cassation (Corte suprema di cassazione), which in turn referred several questions to the CJEU. In essence it asked whether the Directive on protection of personal data [2] and the Directive on disclosure of company documents [3] preclude the public from accessing, without any time limit, data relating to natural persons set out in the companies register.

In a judgment of 9 March 2017 (C-987/15) the CJEU was less sympathetic to Mr Manni than the Tribunale di Lecce. It outlined the important role of the public companies register, i.e. safeguarding interests of third parties in relation to joint stock companies and limited liability companies. The Court also emphasised that it was not possible to specify the period after which the retention of this personal information would no longer be necessary.

It acknowledged that such retention of personal information long after the dissolution of a company interferes with fundamental rights, i.e. the respect for private life and the right to protection of personal data, both enshrined in the Charter of Fundamental Rights of the European Union. Yet such interference is not disproportionate as only limited data is entered on the company register and is nevertheless justified since natural persons who choose to set up joint stock company or limited liability company are to disclose data relating to their identity and functions within that entity.

However, there is a caveat – in specific situations after a sufficiently long period following the dissolution of the company in question there might be overriding and legitimate reasons justifying the limitation of access to that personal data (of course, relating to the specific case at hand). As usual, this limitation is applied on a case-by-case approach and it is up to each Member State to decide whether to adopt it.

In the present case, the legitimate interest of third parties in having access to the information in the companies register was vital and the mere fact that properties of a tourist complex do not sell as potential purchasers have access to Mr Manni’s data in the companies register was insufficient to outweigh it.

 Comment

Italy is a beautiful country (proof here, here, here, etc.), so the blame-shifting attempt about not selling the properties did not play to Mr Manni’s benefit on this occasion. Every time expressions such as “balancing against other fundamental rights”, “a case-by-case assessment” and “specific situations” crop up, one has the feeling that legal certainty quietly leaves the room. Well, it is safe to say that in the 65 paragraphs of this CJEU preliminary ruling no such ambiguity was left. After all, the companies register is not equivalent to Google Search.

Full judgment can be found here.

Alina Trapova LL.M. (QMUL)

[1] Google Spain SL, Google Inc. v Agencia Española de Protección de Datos, Mario Costeja González, Case C-131/12.

[2] Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data (OJ 1995, L 281, p.31).

[3] First Council Directive 68/151/EEC of 9 March 1968 (OJ 1968, L 65, p.8), as amended by Directive 2003/58/EC of the European Parliament and the Council of 15 July 2003 (OJ 2003, L 221, p. 13).

An apple a day…keeps competitors away

by Alina Trapova

Pear Technologies Limited applied to register  Pear Technologies as an EUTM for computers, software, maintenance of computer software, etc. in Classes 9, 35 and 42. Apple Inc. opposed the application based on, inter alia, EUTM No. 9 784 299 Apple , registered for the unsurprisingly long list of goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45. Importantly, reputation was claimed for, among others, goods/services in the here contested Classes 9, 35 and 42. The grounds of opposition were those laid down in Articles 8(1)(b), 8(4) and 8(5) EUTMR, whereby Article 8(5) was the focal point of analysis for both EUIPO instances.

EUIPO’s Opposition Division upheld the opposition based on Article 8(5) EUTMR. Apple’s reputation, the identity/similarity of the goods and services and the potential harm in the form of unfair advantage were far from problematic to prove here. What is more intriguing is the signs’ comparison analysis.

comparison of signs

One must be recalled that for an Article 8(5) reputation-based opposition the threshold for signs’ similarity is lower than the one required for confusing similarity oppositions under Article 8(1)(b). In the present case, similarity leading to association is sufficient. In those lines, according to the Opposition Division, the signs were similar for the purpose of Article 8(5) as “the figurative element of the pear in the contested sign has graphical features which are similar to those of the earlier mark, and it will be associated with the concept of a pear, which is related to the concept of an apple.”

The 5th Board of Appeal in a decision of 18 January 2017 (R 860/2016-5) was not sympathetic to Pear Technology Limited and dismissed its appeal action. Apple’s overwhelming reputation is indisputable, so the numerous exhibits substantiating its strong market position are rather uninteresting from a trade mark perspective. The same goes for the comparison of the goods and services as it was rather straightforward for the Board to establish identity/similarity.

It was the comparison of signs which was rather more noteworthy.

Having reinstated the principles related to Article 8(5) the Board emphasised once more that “where there is no similarity between the marks at issue, the reputation or recognition enjoyed by the earlier mark and the fact that the goods or services concerned are identical or similar are not sufficient grounds for finding that there is a likelihood of confusion between the marks at issue or that the relevant public will make a link between them”. So, key here was to determine whether some similarity existed between the two signs.

In the Board’s view, visually the two signs depict a piece of fruit including a stalk/leaf. The differences are acknowledged, namely the word ‘PEAR’, the missing ‘bite’ taken out of the contested sign and the various black rectangular shapes within the contested sign. However, the following similarities hinted to the outcome the Board was headed for:

  • A leaf, even though different in shape, is placed in a similar position on both signs and is in fact in both signs oriented right at 45% and clearly detached from the fruit.
  • The figurative elements in the contested sign, positioned centrally, are dominant as the word “PEAR” is smaller, in a faded font and therefore considered secondary. Besides, it reinforces the figurative elements and creates a semantic unit.
  • Both signs depict sleek rounded silhouettes of a fruit, whereby “the abstract stylisations of the silhouettes are similar.”

Conceptually, a pear and an apple even though two distinguishable fruits, will be associated to one another.

Eventually, the Board acknowledged that the marks are only slightly similar and that “admittedly, there are some mental steps involved in the perception of the consumer”, but “because of the uniqueness and high reputation of the earlier mark the contested sign’s allusive, somewhat mocking image of the ‘pear’ will trigger and establish a mental ‘link’ with the earlier ‘Apple’ logo”

As a result, the contested sign can be associated with the earlier mark and in view of the identity of the goods and services it is capable of taking unfair advantage of Apple’s well-established reputation and the considerable investment undertaken by Apple to achieve that reputation.

Comment

Reputation, reputation, reputation. These are the words that echo even when one reads parts of the decision on entirely different norms, such as the comparison of signs. The decision should be approached with caution and in that sense looked at with the following peculiarity in mind – the opponent was not just anyone, but Apple Inc. and that should not be taken lightly by competitors.

Alina Trapova LL.M. (QMUL)

QMJIP – Volume 7 – Issue 1 (April 2017)

by Giancarlo Moretti

The last issue of QMJIP has been released (Volume 7 – Issue 1). The table of content reads as follows:

  • Editorial – J Gibson
  • Making patents work: of IP duties and deficient disclosures – S Basheer
  • Whither China’s protection of geographical indications? A case study of Qinzhouhuang Millet – Z Xiaoping
  • Protection of ‘handicraft’ as geographical indications under municipal law, TRIPS and BTAs vis-à-vis CETA: ‘Bangladeshi Jamdani’ as case study – M A Karim & M E Karim
  • Control or promote? China’s cultural censorship system and its influence on copyright protection – T He
  • Minutes of Evidence of the Select Committee on the Letters Patent for Invention Act 1835 – P Johnson
  • Metall auf Metall’ – the German Federal Constitutional Court discusses the permissibility of sampling music tracks Bunderverfassungsgericht BVerfG 1 BvR 1585/13 – ‘Metall auf Metall’ – M D Mimler
  • Book Review – M Iljadica
  • Book Review – R Sciaudone

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

April 2017 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in April 2017. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

UNITED KINGDOM & IRELAND

  • 6-7 April – London – QMUL – CCLS – More than just a Game – Link.
  • 3-7 April – London – UCL IBIL – IP Transactions – Link.
  • 5 April – London – Osborne Clarke – Digital disruptors: the latest developments in digital media – Link.
  • 6 April – Bournemouth – CIPPM – Carlos Correa: The TRIPS Agreement: what impact after 20 years of adoption? Link.
  • 6 April – London – Competition Law Association – How should “geo-blocking” practices be assessed from a Competition law and IP perspective in light of the European Commission’s e-commerce sector inquiry and Paramount Studios commitments decision, and what are the proposals for reform? Link.
  • 6 April – York – CIPA – York Meeting Link.
  • 6 April – London – LES Britain & Ireland – IP Strategy & Management in Healthcare – Link.
  • 6 April – Birningham – CITMA – Recent developments in design law and the impact Brexit may have on design protection and enforcement Link.
  • 7 April – London – CILIP – CILIP Copyright Conference – Link.
  • 11 April – London – MBL – Intellectual Property Rights in Software – Link.
  • 12 April – London – QMUL CCLS – UPC Event Link.
  • 20 April – London – MBL – A to Z of Intellectual Property Rights – Link.
  • 21 April – London – MBL – Taking Security over Intellectual Property – Link.
  • 24 April – Southampton – iCLIC – Copyright, linking and the CJEU decision in GS Media, C-160/15 Link.
  • 24 April – London – SCL – Software Patent Disputes: what can be protected and what are the challenges in enforcement Link.
  • 25 April – London – Bird&Bird – The Unified Patent Court Breakfast Seminar Series – Link.
  • 25 April – London – Competition Law Association – Trade marks and Designs – where next when the UK leaves the EU Link.
  • 25 April – Rotherham – IPO – Everyone Owns IP….What do you own? Link.
  • 25 April – London – CITMA –Parallel Imports – now and in a Post Brexit World – Link.
  • 25 April – London – KCL – Art and Law Seminar with David Tovey – Link.
  • 25-27 April – London – IPO – IP Masterclass – Link.
  • 26 April – London – MIP – MIP IP Strategy Forum 2017 Link.
  • 26-27 April – Manchester – MBL – A to Z of Negotiating & Drafting IT ContractsLink.
  • 27 April – London – MBL – IP Licensing & Competition Law – A Workshop – Link.
  • 27 April – London – Osborne Clarke – IP key issues and practical tips for protection and exploitation – Link.
  • 27 April – London – SCL – Big Data and IoT Link.
  • 27 April – Manchester – MBL – Intellectual Property Law Update – Link.
  • 27 April – Oxford – University of Oxford – The Judicial Expansion of Trade Mark Tarnishment in IndiaLink.
  • 28 April – London – Fashion Law & Business – Fashion Law Masterclass – Link.

 

CONTINENTAL EUROPE

  • 4-5 April – Budapest, Hungary – WIPO – Subregional on Copyright in the Digital Age Link.
  • 4-5 April – Amsterdam, the Netherlands – FORUM – IP Agreements – Link.
  • 5 April – Alicante, Spain – ICALI – Aspectos Prácticos de la entrada en vigor de la nueva Ley de Patentes Link.
  • 5 April – Alicante, Spain – EUIPO – IP in eduction – Link.
  • 5 April – Madrid – LES Espana & Portugal – Preparación de un litigio por infracción de patente: las diligencias de comprobación de hechos Link.
  • 6 April – Paris, France – QMUL – CCLS – Brexit and the UPC – Link.
  • 6 April – Alicante, Spain – Magister Lucentinus- Alicante – New Patent Law 24/2015 Seminar – Link.
  • 6-7 April – Vienna, Austria – EPO – East meets West 2017 Link.
  • 7 April – Eindhoven, the Netherlands – The Netherlands Institute of Patent Attorneys – The Netherlands Institute of Patent Attorneys Annual Conference – Link.
  • 7 April – Milano, Italy – Ordine Consulenti Proprietá Industriale – Domini: Diritto e pratica – Link.
  • 11-12 April – Copenaghen, Denmark – IQTC – Nordic IPR Conference Link.
  • 11-13 April – Jurmala, Latvia – AIPPI – 12th AIPPI Baltic Conference – Link.
  • 18 April – Milan, Italy – INTA – Five Years of Opposition Proceedings in Italy: Developments, Differences, and Alignment to EU Practice and Case Law Link.
  • 20 April – Madrid, Spain – FIDE – La objetividad y veracidad de la publicidad comparativa Link.
  • 20 April – Helsinki, Finland – IPR University Centre – Exclusive rights and liability of internet platforms. Dead end or key to a fair balance? – Link.
  • 23-25 April – Paris, France – LES International – LESI International Annual Conference 2017 Link.
  • 25 April – Munich, Germany – MARQUES – Mastering the Hague Agreement: From Asia to the USA, through the EU Link.
  • 24-26 April – Alicante, Spain – EUIPO – IP Course for Paralegal – Link.
  • 25-26 April – Alicante, Spain – EUIPO – 17 LM Trade Marks – Link.
  • 26-28 April – Nice, France – Management Forum – Biotechnology for the Non-BiotechnologistLink.
  • 27 – 28 April – Prague, Czech Republic – NCP – NCP Academy Training on Intellectual Property Rights Academy – Link.
  • 28-29 April – Firenze, Italy – European University Institute – European Copyright – Quo Vadis Link.
  • 28 April – Geneva, Switzerland – WIPO – International Conference on Artist’s Resale Right Link.

 

USA & CANADA

  • 3 April – New York, NY, USA – Columbia Law School – Toward a Global Copyright Law? Link.
  • 4-6 April – Arlington, VA, USA – ABA – 32nd Annual Intellectual Property Law Conference Link.
  • 5 April – Chicago, IL, USA – DePaul University – 2017 Edward D. Manzo Scholars in Patent Law Series IV: Erik Hovenkamp – Link.
  • 6 April – Chicago, IL, USA – DePaul University – IP Theory and Practice – Session 6 Patent II Link.
  • 6 April – Berkeley, CA, USA – CLA – Legal Issues for the Sale and Use of Photography Link.
  • 6 April – New York, NY, USA – MIP – MIP Luxury Brand and Retail Forum 2017 Link.
  • 6 April – Seattle, WA, USA – Copyright Society USA – The Entrenched Irrationality of Statutory Damages in Copyright Law – Link.
  • 7 April – Toronto, ON, Canada – LES USA & Canada – IP & Licensing Basics – Link.
  • 7 April – San Jose, CA, USA – USPTO – Trademark Basics: What Every Small Business Should Know Now, Not Later – Link.
  • 8-9 April – Boston, MA, USA – Boston College Law School – PATCON Link.
  • 10-12 April – St Louis, MO, USA – NTCA – IP Vision – Link.
  • 12 April – Dallas, TX, USA – Dentons – Best Practices in Battling the New IPR Trolls Link.
  • 13 April – Boston, MA, USA – Copyright Society USA – Mind The Gap: IP Protection for Software After Alice Corp. v. CLS Bank InternationalLink.
  • 13 April – Washington DC, USA – George Washington University School of Law – IP Speaker series: Patent Clutter Link.
  • 18 April – Alexandria, VA, USA – USPTO – Consumer Messaging in Connection with Online Transactions Involving Copyrighted Works Link.
  • 18 April – Los Angeles, CA, USA – LAIPLA – LAIPLA Annual Meeting and Patent Litigation Dinner & Young Lawyers Event – Link.
  • 19 April – Sacramento, CA, USA – CLA – Getting Out There: Promote, develop, and market your art and your brand Link.
  • 19 April – Toronto, ON, Canada – LES USA & Canada – Navigating your IP in the United StatesLink.
  • 20 April – Alexandra, VA, USA – AIPLA – AIPLA Law Students Committee Program – Link.
  • 20-21 April – New York, NY, USA – Fordham University – 25th Annual Fordham IP Conference Link.
  • 20-21 April – Berkeley, CA, USA – University of Berkeley – The 21st Annual BCLT/BTLJ Symposium – Link.
  • 20-21 April – St Paul, MN, USA – Mitchell Hamline School of Law – The New Era of Trade Secret Law: The DTSA and other Developments Link.
  • 21 April – Los Angeles, CA, USA – LAIPLA – LAIPLA Digital Piracy LuncheonLink.
  • 24 April – New York, NY, USA – Copyright Society USA – Copyright, Dance & Choreography – Link.
  • 25 April – Palo Alto, CA, USA – MIP – MIP Global Patent Roadshow 2017 – Link.
  • 26 April – Palo Alto, CA, USA – LES USA & Canada – Do Patents still matter? Link.
  • 27 April – New York, NY, USA – Centerforce – IP Defence Summit – Link.
  • 27 April – Chicago, IL, USA – MIP – MIP Global Patent Roadshow 2017 – Link.
  • 27 April – San Jose, CA, USA – USPTO – Hands-of Patent Search Workshop – Link.
  • 29 April – Venice, CA, USA – CLA – Entertainment & The Law: The Stairway Into a Blurry 2017Link.

 

AFRICA, ASIA & OCEANIA

  • 4 April – Melbourne, VIC, Australia – IP Australia – Trade marks 101 for start-ups – Melbourne CBD – Link.
  • 6 April – Sydney, NSW, Australia – IP Australia – Trade marks 101 for start-ups – Melbourne CBD – Link.
  • 12 April – Melbourne, VIC, Australia – University of Melbourne – Website blocking injunctions: lessons from the UK and EU – Link.
  • 12-20 April – Tokyo, Japan – WIPO – Training Course on the Enforcement of Intellectual Property RightsLink
  • 21-23 April – Manila, Philippine – Asean IP Association – 21st ASEAN Intellectual Property Association Annual Meeting & ConferenceLink.
  • 24-25 April –Manila, Philippine – WIPO – Workshop on Collective Management of Related RightsLink.
  • 24-26 April – Matsapha, Swaziland – SATA – Annual Conference Link.
  • 25 April – Beijing, China – IAM – IPBC – Maximising IP Value in China – Link.
  • 25 April – Brisbane, QLD, Australia – IP Australia – Patents 101 for start-ups – Melbourne CBD – Link.
  • 25-28 April – Jakarta, Indonesia – WIPO – Workshop on Access to Technology for Innovation and Establishing a Technology and Innovation Support Center (TISC)Link.
  • 26-28 April – Bengaluru, India – World Intellectual Property Forum – World Intellectual Property Forum 2017 Link.
  • 27 April – Melbourne, VIC, Australia – ACC Australia – IT contracting trends and challenges in the age of disruption – Link.
  • 27 April – Kuala Lumpur, Malaysia – INTA – Trademark Administrators Mini-Seminar in Malaysia Link.
  • 28 April – Seoul, South Korea – IPBC Korea – Corporate IP Best Practice – Link.
  • 29 April – Perth, WA, Australia – IPTA – IPTA 2017 Annual conference – Link.
  • 29 April – 1 May – Tel Aviv, Israel – AIPPI – 3rd International Convention on the Economy of Innovation – Link.

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

 

Latest news from WTO: amendment on TRIPS patent compulsory licensing finally entered into force

by Giancarlo Moretti

On Monday 23 January, after more than a 11-year waiting, the amendment on the current regime on patent compulsory licensing eventually entered into force. The protocol amending the Agreement has required the acceptance of two third of WTO member countries before taking effect. As remarked by the official statement, this process has been boosted during the last two years, with the deposit of instruments of acceptance by 37% of the members. The contracting parties that have not accepted the amendment yet are still bound to the waiver decided in 2003.

As for the substance, new Article 31bis allows now compulsory licenses for pharmaceutical products to be exported to countries with insufficient or no manufacturing capacity. This provision derogates the requirement of Article 31(f) of the TRIPS Agreement[1], according to which the issuing of a compulsory licensing ‘shall be authorized predominantly for the supply of the domestic market of the Member authorizing such use’.

The discussion about Article 31 (f) and the connected limitation for developing and least-developed countries emerged during the Doha Round. The ‘Declaration on the TRIPS agreement and public health’ recognised the difficulties related to the exploitation of this TRIPS flexibility. In order to tackle this issue, before the amendment signature in 2005, a waiver allowing compulsory licensing for exportation of drugs was adopted in 2003. So far, it has been applied just in one case, with Canada issuing a compulsory licensing in favour of Rwanda for the exportation of anti-retroviral drugs for AIDS.[2]

Despite the discussions occurred last year at UN[3] and WTO,[4] the new amendment could be considered a major step ahead in assuring access to essential medicines to countries with no manufacturing capacity. Indeed, setting up and developing infrastructures that could be able to produce generic drugs may require a long period of time. The new instrument waive Article 31(f) as for the requirement of production for domestic market, but at the same time it provides for adequate remuneration to be be paid to patent holders in accordance with Article 31(h). Except paragraph (f), all the other parts of Article 31 are applicable, in order to try to struck a balance between the interests of the different actors involved.

Eventually, given the partial failure of 2003 waiver, it cannot be predicted if this amendment will be able to provide an efficient tool for addressing the issue of access to medicine. The results will be clearer in the upcoming years. In any case, it can be considered a partial victory for developing and least-developed countries, that could rely on a further flexibility in order to grant effective access to essential life-saving drugs.


 

[1] WTO Agreement on Trade-Related Aspects of Intellectual Property Rights.

[2] For a comment see J. Gibson, Intellectual Property, Medicine and Health Current Debates (Ashgate 2009) 154-156.

[3]See  http://www.unsgaccessmeds.org/#homepage-1.

[4] See https://www.wto.org/english/news_e/news16_e/trip_08nov16_e.htm.

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

February 2017 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in February 2017. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

UNITED KINGDOM & IRELAND

  • 2 February – London – CIPA – The future for the UK’s Patent Framework Link.
  • 2 February – Leeds – SCL – Annual IT Contracts Update – Link.
  • 2 February – London – PLS – Introduction to Collective Licensing – Link.
  • 3 February – London – City University of London – The Rise of Web Blocking Orders in the UK: Empirical Evidence Perspectives Link.
  • 6 February – London – University of Westminster – Current issues in entertainment law: an intellectual property perspectiveLink.
  • 6 February – London – MIB ­– Taxation of Intellectual Property – Link.
  • 6 February – Sheffield – CIPA/CITMA – CITMA/CIPA Best practices for filing design applications – Link.
  • 7 February – London – ALPSP – The General Data Protection Regulation (GDPR): What you need to know – and do – about it Link.
  • 7 February – London – INTA – Is Alternative Dispute Resolution a realistic option in IP disputes? Link.
  • 7-8 February – London – Management Forum – Patentability and State of the Art Searching Link.
  • 8 February – Leeds – SCL – Annual IT Contracts Update – Link.
  • 8 February – London – City University of London – Analysing the Impact of Brexit on Patent Law and UK-EU relations – what future for the Unified Patent Court?Link.
  • 8 February – London – UCL – Copyright and Freedom of Speech Link.
  • 8 February – London – MIB – All you need to know about the UK Patent Box – Link.
  • 9 February – London – Lewis Silkin – Brand Academy 2017 Link.
  • 9 February – London – Management Forum – Freedom to operate searching Link.
  • 9 February – London – Managing IP – MIP International Women’s Leadership Forum 2017 Link.
  • 9 February – Bournemouth – CIPPM – Damages for Intellectual Property Infringement under EU Law Link.
  • 9 February – London – MIB – Trade Marks- Advanced Law Link.
  • 14 February – London – UCL – Drafting and Negotiating IP Terms in Research Contracts – Link.
  • 14 February – Newport – IPO – Intellectual Property Clinics Link.
  • 14 February – Glasgow – CREATe – Public Lecture Series 2017 (Prof. Dr. Thomas Höppner) Link.
  • 15 February – London – CITMA – BSB Workshop: CPD 2017 – Understanding the new regime – Link.
  • 16 February – London – CCLS-QMUL – From TRIPS to FTAs and back: the role of a multilateral IP Framework in a TRIPS-plus world – Link.
  • 16 February – London – Osborne Clarke – Annual IP Law Update – Link.
  • 16 February – Oxford – OIPRC – “One contract to rule them all”? – The hidden battle between contract and copyright law in the Digital Single Market Strategy Link.
  • 16 February – Sutton Scotney – CIPA – The South of England Seminar Link.
  • 20 February – London – Assimilate IP – Building, Managing and Monetizing Your IP PortfolioLink.
  • 20 February – London – SCL – Content licensing: recent trends and virtual worlds Link.
  • 21 February – London – CITMA – Trade marks in the digital domain’s workLink.
  • 21 February – Oxford – OIPRC – Brexit and the Unified Patent Court – Link.
  • 21 February – London – UCL – IP Licensing: an Advanced Legal Drafting CourseLink.
  • 21 February – Manchester – MIB- Taking Security over Intellectual Property –
  • 22 February – Bournemouth – CIPPM – Beyond IP – The Cost of Free Link.
  • 22 February – London – CIPA – Intellectual Property Enterprise Court – Use your rights! And learn skills for the UPCLink.
  • 22 February – London – MIB –The Law of Passing Off – Link.
  • 23 February – London – JA Kemp – Intellectual Property, Funding and Commercial Legal Issues for Startups Link.
  • 27 February – London – Assimilate IP – IP for the Life Science and Pharmaceutical IndustriesLink.
  • 27-28 February – London – UCL – Post Mortem Auctoris: Copyright and Estate PlanningLink.
  • 28 February – Birmingham – MIB – IP for Commercial Lawyers – A practical guide – Link.

CONTINENTAL EUROPE

  • 1 February – Sofia, Bulgaria –Marques – Co-existence Agreements Workshop – Link.
  • 2 February – Berlin, Germany – Dentons – Technology Meets Law – Link.
  • 2 February – Geneva, Switzerland – WIPO – In-House Counsel Seminar:
    Contracts and Disputes in MedTech and BioTech 
    – Problems and Solutions Link.
  • 7 February – Brussels, Belgium – Bird&Bird – R&D Seminar: The new Belgian “innovation box deduction” Link.
  • 9 February – Amsterdam, the Netherlands – Bird&Bird – Fourth Annual Unitary Patent Package Conference – Link.
  • 9 February – Stockholm, Sweden – FICPI – FICPI Sweden Open Seminar February 2017 Link.
  • 9 February – Amsterdam, the Netherlands – Tracking Walls, Take-It-Or-Leave-It Choices, and EU Data Privacy Law – Link.
  • 9-10 February – Paris, France – FORUM – Licensing Link.
  • 10 February – Amsterdam, the Netherlands – VvA – Extended Collective Licensing Under the Proposed DSM Directive Link.
  • 13 February – Helsinki, Finland – IPR – IPR-päivä Link.
  • 14 February – Paris, France – FORUM – Evaluation financière de la
    Propriété Intellectuelle –
    Link.
  • 15 February – Coimbra, Portugal – WIPO – Roving Seminar on WIPO Services and Initiatives – Link.
  • 16 February – Amsterdam, the Netherlands – FORUM – Patent Valuation Link.
  • 16 February – Amsterdam, the Netherlands – iVIR – Wat heeft waarheid in de publieke discussie nog te betekenen? – Link.
  • 16 February – Koln, Germany – Wolters Kluwer – Kölner Symposium 2017 Link.
  • 16-17 February – Barcelona, Spain – OEPM – XXXII Jornadas de Estudio sobre Propiedad Industrial e Intelectual – Link.
  • 17 February – Lisbon, Portugal – WIPO – Roving Seminar on WIPO Services and Initiatives – Link.
  • 21 February – Geneva, Switzerland – WIPO – IPC Workshop – Link.
  • 21 February – The Hague, The Netherlands – New Online Filing (CMS) workshop in The -HagueLink.
  • 23-24 February – Brussels, Belgium – Annual Conference on EU Law in the Pharmaceutical Sector 2017Link.
  • 24 February – Munich, Germany – UNION-IP – UNION-IP Round Table – Link.
  • 28 February – La Valletta, Malta – EUIPO – Public Sector Meeting Link.

USA & CANADA

  • 29 January – 1 February – Orlando, FL, USA – ACFC – 2017 ACFC Winter MeetingLink.
  • 1-3 February – Santa Monica, CA, USA – LAIPLA – 3rd IBA Silicon Beach Conference Link.
  • 1 -4 February – Fort Lauderdale, FL, USA – AIPLA – AIPLA Mid-Winter Institute Link.
  • 1-7 February – Miami, FL, USA – ABA – ABA Midyear Meeting Link.
  • 2 February – Chicago, IL, USA – Center for Intellectual Property Law & Information Technology – IP Theory and Practice – Session 1 – Trademarks – Link.
  • 2 February – Detroit, MI, USA – USPTO – Introduction to Intellectual Property and Midwest USPTO – Link.
  • 3 February – San Jose, CA, USA – USPTO – Silicon Valley USPTO Public Tour – Link.
  • 7 February – Seattle, WA, USA – WIPLA – Discover IP Japan Conference 2017 Link.
  • 7 February – New York, NY, USA – Columbia Law School – Recent development in Fair Use Link.
  • 9 February – Chicago, IL, USA – Center for Intellectual Property Law & Information Technology – IP Theory and Practice – Session 2 – Trademarks II – Link.
  • 9 February – San Pedro, CA, USA – CLA – Protecting Creativity: Collaboration Agreements Link.
  • 9-11 February – Napa Valley, CA, USA –Copyright Society of USA- Mid-Winter Meeting 2017 – Link.
  • 10 February – Portland, OR – Lewis & Clark Law School – Trademark as a property right – Link.
  • 13 -14 February – New York, NY, USA – BIO – BIO CEO Investor Conference – Link.
  • 14 February – New York, NY, USA – Columbia Law School – Cambridge University Press v. Patton: Fair Use and Course Websites Link.
  • 14 February – Ann Arbor, MI – USPTO – Seminar for Startups: Understanding Intellectual Property Link.
  • 15 February – Los Angeles, CA, USA – LAIPLA – TTAB comes to Los Angeles –
  • 16 February – Berkeley, CA, USA- BCLT – BCLT Tech Spring Tech Fair – Link.
  • 16 February – Washington DC, USA – George Washington University Law School – IP Networking Fair – Link.
  • 16 February – Washington DC, USA – Copyright Society of USA – Copyright and Fair Use – Link.
  • 20-21 February – San Diego, CA, USA – Devops – Industry of Things World USA – Link.
  • 21 February – San Diego, CA, USA – CLA – Legal Issues in Photography – Link.
  • 22 February – Los Angeles, CA, USA – CLA – What’s New in Copyright & Entertainment: A Review of Recent Case LawLink.
  • 22 February – Detroit, MI, USA – LES USA & Canada – Intellectual Property and Licensing Symposium Link.
  • 23 February – Orange County, CA, USA – Centerforce – The IP Strategy Summit Link.
  • 23 February – San Francisco, CA, USA – Legal & IP Confex – IP’s Emerging Role in Corporate Deal-MakingLink.
  • 23 February – Washington DC, USA – LES USA & Canada – Patent Damages Symposium Link.
  • 24 February – Houston, TX, USA – AIPLA – 2017 Chemical Practice Road ShowLink.
  • 27-28 February – Boston, MA, USA – PIUG – PIUG 2017 Technology Conference – Link.
  • 28 February – New York, NY, USA – Columbia Law School – Are the ASCAP and BMI Consent Decrees Effective in the Digital Environment? Link.
  • 28 February – Munich, Germany – Max Planck – Dual Trademark system in Europe – Link.

LATIN, CENTRAL & SOUTH AMERICA

  • 14 February – Sao Paulo, Brazil – Os Reflexos Jurídicos dos Sinais não Tradicionais Visualmente PerceptíveisLink.

AFRICA, ASIA & OCEANIA

  • 6-7 February – Hong Kong, China Anticounterfeiting Conference: Staying Ahead of the Curve – Link.
  • 8 February – Hong kong, China – Free Trade Zones: Commerce v Counterfeiting Link.
  • 8 February – Singapore, Singapore – Alternative Dispute Resolution for IP and Technology Disputes Recent DevelopmentsLink.
  • 9 February – Sydney, NSW, Australia – 2016’s Licensing Lesson – Link.
  • 16 February – Singapore, Singapore – Legal & IP Confex – Dispute Resolution Strategies for an Increasingly Litigious World; IP Risk, Security & Compliance – Are You In for the New Game?Link.
  • 16 February – Singapore, Singapore – IP Academy – IP Management Course & Toolkit for MOE Link.
  • 20 February – 2 March – Ho Chi Min City, Vietnam ICANN – Asia Pacific Internet Conference on Operational Technologies (APRICOT 2017) – Link.
  • 21-23 February – Dakar, Senegal – WIPO – Projet de l’OMPI sur l’établissement des Centres d’appui à la technologie et à l’innovation (CATI): Atelier sur le renforcement des capacités en matière de recherches d’informations techniques et scientifiques Link.
  • 23 February – Adelaide, SA, Australia – The new unfair contract provisions – how will your license (& other) agreements be affected? – Link.
  • 23 February – Melbourne, VIC, Australia – Access Barriers to Big Data Link.
  • 24 February – Beijinh, China – INTA – The Function and Use of Mediation in Intellectual Property Protection Link.
  • 24 February – Singapore, Singapore – IP Academy – IPM Course & Toolkit for Procurement Officers – Link.
  • 28 February – Mumbai, India – IPBC India – Corporate IP Best Practice – Link.

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti

December 2016 #IPEvents

by Giancarlo Moretti

Here is the list of Intellectual Property events occurring in December 2016. If you have knowledge of or are organising any IP event not shown on the list, we would be grateful if you would let us know. Simply leave us a comment or tweet us @QMJIP and we can add it to the list.

We also invite you to consult the IPKat’s list of forthcoming events, available here.

 

UNITED KINGDOM & IRELAND

  • 1 December – London – Queen Mary, CCLS – The Future of the European Concept of Trade Mark Functionality  Link.
  • 1 December – London – IBC – Internet & Media Law 2016Link.
  • 1 December – London – MBL – ‘Brexit’ – The Implications for European Trade Marks & Community Designs Link.
  • 1 December – Cambridge – CIPIL – Hyperlinking and website blocking injunctions: recent copyright case law from the European and English courts – Link.
  • 1-2 December – London – Premier Circle – IP Summit – Link.
  • 5 December – London – Assimilate IP – Building, Managing and Monetizing Your IP Portfolio Link.
  • 5 December – London – LES – Interesting IP Developments in the Past Year Link.
  • 5 December – London – MBL – Registered Designs & Design Right Litigation ExplainedLink.
  • 5 December – London – MBL – All You Need to Know About the UK Patent BoxLink.
  • 5-6 December – London – IBC – The 10th Annual Standards, Patents & Competition: Law & Litigation Link.
  • 5-6 December – London – Management Forum – US Patent Practice – Link.
  • 6 December – London – IP Union – British Group Dinner Meeting Link.
  • 6 December – Bristol – SCL – Key legal issues for tech-centric business in 2016: Office banter – the changing face of harassment and discrimination, reputation management, advertising and social media Link.
  • 7 December – London – Bond Dickson – Why were Trunki sent packing again? (and other recent developments in IP law) Link.
  • 7 December – London – iVIR – From Research to Market: Protect, Innovate and Prosper – Link.
  • 7 December – London – QMUL – qLegal – Be Forearmed – A Cyber Crime 101 for Startups – Link.
  • 8 December – Newcastle – Bond Dickson – Why were Trunki sent packing again? (and other recent developments in IP law) Link.
  • 8 December – London – Osborne Clarke – Interactive Entertainment Summit – Link.
  • 12 December – Edinburgh – MBL – Taxation of Intellectual Property – Link.
  • 12 December – London – MBL – Copyright Law & Practice in Just One Day Link.
  • 12-13 December – London – MBL – A to Z of Negotiating & Drafting IT Contracts – In 2 Days Link.
  • 13 December – Southampton – iCLIC – iCLIC Seminar: Guest Speaker Simon Morrison from Google Link.
  • 13 December – London – QMUL – qLegal – Getting Your Head Around Software PatentsLink.
  • 15 December – Queen Mary, CCLS – Intellectual Property in Business – Link.
  • 15 December – London – IALS – The Competence of the European Union in Copyright Lawmaking Link.
  • 16 December – London – Taylor & Wessing – IBA European Start Up Conference – Link.
  • 16 December – Birmingham – CITMA – TM protection for product attributes beyond brand names and logos – an update Link.

CONTINENTAL EUROPE

  • 1 December – Amsterdam, The Netherlands – FORUM – FTO in Practice: Life Sciences &
    Pharmaceuticals –
    Link.
  • 1 December – Munich, Germany – FORUM – 3D Printing & IP Rights – Link.
  • 1 December – Helsinki, Finland – IPR University Centre – Digital Rights, Markets and Innovation Link.
  • 1-2 December – Brussels, Belgium – INTA – Digital World Conference Link.
  • 1-2 December – Munich, Germany – FORUM – Licensing – Link.
  • 2 December – Grenoble, France – CUERPI – La Propriété intellectuelle en dehors de ses frontières – Link.
  • 2 December – Munich, Germany – FORUM – US Design Patents – Link.
  • 5 December – Milan, Italy – Milan Bar Association (Ordine Avvocati Milano) – Processo Simulato in Materia di Proprietà Industriale – Link.
  • 6 December – Munich, Germany – EPO – Guidelines2day and Article 84 EPC Link.
  • 8 December – Riga, Latvia – ECTA – The Implementation of Trade Mark Directive – Link.
  • 8 December – Paris, France – LES – Actualités du licensing 2016Link.
  • 9 December – Strasbourg, France – CEIPI – Quels défis internationaux pour la propriété intellectuelle Link.
  • 9 December – Munich, Germany – EPO – Industry 4.0 and its impact on the patent system Link.
  • 12 December – Madrid, Spain – FIDE – Balance de la actividad a nivel europeo en materia de propiedad intelectual durante el año 2016. La Propuesta de Directiva sobre los Derecho de autor en el mercado único digital y la jurisprudencia del TJUELink.

USA & CANADA

  • 1 December – Santa Monica, CA, USA – CLA – Copyright Basics – Link.
  • 1 December – Washington DC, USA – ALPSP – All things disruptive: surviving innovation – Link.
  • 2 December – New York, NY, USA – MIP – European Patent Reform Forum – Link.
  • 2 December – Los Angeles, CA, USA – LAIPLA – Effective Oral Advocacy in IP Cases – Link.
  • 5 December – Chicago, IL, USA – LES – What does fruit have to do with licensing? Link.
  • 5 December – Denver, CO, USA – USPTO – Intellectual Property Protection and Enforcement Abroad Link.
  • 6-7 December – Santa Monica, CA, USA – IPQC – Global IP Exchange US – Link.
  • 7 December – Chicago, IL, USA – IPLAC – The new TTAB Rules of Practice Link.
  • 7 December – Santa Monica, CA, USA – Internet and Social Media Legal Issues for Artists and Business OwnersLink.
  • 7-8 December – Palo Alto, CA, USA – Berkeley & Stanford Universities – 17th Stanford/Berkeley Advanced Patent Law Institute: Silicon Valley Link.
  • 9 December – Alexandria, VA, USA – USPTO – Public Meeting on Developing the Digital Marketplace for Copyrighted Works – Link.
  • 12 December – San Francisco, CA, USA – SIFPLA – How to Win a Trade Dress Case After Apple v. Samsung Link.
  • 16 December – New York, NY, USA – Copyright Society of the USA – The Copyrightability of Constructed Languages Link.

LATIN, CENTRAL & SOUTH AMERICA

AFRICA, ASIA & OCEANIA

  • 1 December – Sydney, NSW, Australia – ACC – Doing business in a digital era: where is the law up to? – Link.
  • 1 December – Melbourne, VIC, Australia – IP Australia – IP Management on a Lean Budget – Link.
  • 4-6 December – Shanghai, China – IPBC – Maximizing Corporate IP Value – Link.
  • 5 December – Tokyo, Japan – FICPI – FICPI Japan Seminar – Link.
  • 5-9 December – Seoul, South Korea – WIPO – Interregional Workshop on Copyright Enforcement – Link.
  • 6 December – Melbourne, VIC, Australia – LES – Agile IP Management – Link.
  • 13-14 December – Dushanbe, Tajikistan – WIPO – National Workshop on IP Valuation – Link.

 

Giancarlo Moretti LL.M. (QMUL), Ph.D. Candidate (QMUL) @GCarloMoretti