QMJIP

Queen Mary Journal of Intellectual Property

Month: February, 2014

How Japanese IP Litigation Really Works – Event Review

by Olumayowa O. Adesanya

On the 19th of February 2014, the University College of London (UCL) hosted a special Institute of Brand and Innovation Law (IBIL) lecture titled ‘How Japanese IP Litigation Really Works’. Prof Sir Robin Jacob chaired this event with Chief Judge Toshiaki Iimura of the IP High Court, Tokyo as the speaker.

While introducing the speaker, Prof Sir Robin Jacob stated that Japan has arguably the best patent litigation system in the world. Toshiaki was appointed as the Chief Judge of the IP Court in 2012 after he joined the Court in 2006. He has been in active IP practice since 1983.

The lecture commenced on a light note with Toshiaki reeling off the long list [see here and here] he was expected to cover and mentioned it was practically impossible to cover it all given the time constraint. Nonetheless, the lecture provided a clear and detailed insight into the present situation of IP disputes in Japan.

Japan unlike a number of legal systems worldwide has a specialised IP Court, which deals with purely civil cases. Established on the 1st of April 2005, the Court hears appeals from the District Courts and suits against appeal/trial decisions by the Japan Patent Office (JPO). The shortcoming of the extant legal regime is that it produces parallel routes of patent invalidity judgment known as ‘double track’. The District Courts on the one hand are concerned with infringement cases while the JPO Appeal Board on the other hand holds trials for invalidation of patents. Toshiaki noted that so far, there has been no case of conflicting judgments from pursuing both options and in the event of such, the IP High Court aims to provide some form of uniformity by harmonising the double track system. The Supreme Court is the final arbiter of law as is the common practise and IP cases are no exceptions. The Japanese court hears cases that involve the exercise of a Japanese patent in Japan including manufacturing and sales.

With the aid of a diagram, the hierarchy of the courts was explained. IP Cases are grouped into two major categories: Technical cases (Patents/Utility Models) and Non-technical cases (Copyright, Design rights, Trademarks, Unfair Competition and other IPRs). In any given case, the District Court is the court of first instance. Of the 15 divisions, technical cases are the exclusive preserve of the Tokyo and Osaka divisions whilst any division including those of Tokyo and Osaka can hear non-technical cases.

This division is reflected at the appellate level as only non-technical cases handled by the District Courts under the jurisdiction of the Tokyo High Court proceed on appeal to the IP High Court including technical cases. Other non-technical cases heard by other divisions are on appeal heard by relevant High Courts with jurisdiction. It would thus seem that the concentration of the IP High Court is largely on patents when compared to other IPRs. This is reflected in the 2012 statistics of cases heard at the IP High Court. Of the total 146 infringement cases heard, 39.7% were on patents followed by cases on copyright and unfair competition. From the JPO, a total number of 457 cases were heard on appeal at the IP High Court with 74.8% on patent matters. The IP High Court has four divisions with 18 judges who are expected to have a legal background and are assisted on technical matters by the 11 Research officials of the Court. The Court also has an Expert Adviser System in place as well as an Expert Witness System. Where the Court so determines, it may set up a Grand Panel System consisting of five Judges to hear cases that contain important legal issues as is currently in place for the Apple and Samsung case. So far, the Grand Panel has heard nine cases.

The defendant is at liberty to raise the invalidity defence in infringement cases, which the District Court has jurisdiction to determine. Prior to 2005, before the Patent Act was revised, the plaintiff could not ask the defendant for any information under the principle of discovery as is practised in the United States. However, the revision introduced a Disclosure and Protective Order System. The two orders serve to balance each other, as the latter is likely to cause irreparable harm to the defendant by the revelation of his technological secrets.

The ultimate result of any legal action is remedies. This is provided in the form of Preliminary Injunctions and Damages. Preliminary injunctions are geared towards providing a speedy solution for the parties involved and are not heard in open court with separate hearings for the parties. To forestall any great harm a non-infringement finding would wreck on the defendant, the standard of proof required is the same as that in actual litigation. Damages are calculated under either the Code of Civil Procedure or the Patent Act. The Code of Civil Procedure calculation provided for in Article 709 is based on lost profit using the ‘but for …’ test. There must be at least a casual relationship between the defendant’s infringing act and the plaintiff’s damages. The Patent Act provides for three options: presumption of damages [Article 102(2)], based on the defendant’s profit [Article 102(3)] and the amount equivalent of royalty [Article 102(1)].

The Chief Judge went on to state that the average time between filing and decision of a patent infringement case is a year with low costs when compared to other jurisdictions. The filing fee is about 0.3% of the amount claimed and the attorney’s fee is largely reduced in the absence of discovery. Other fees such as investigation and expert fees are dependent on the nature of the case.

Depending on what the judge considers the likely outcome of the case, he may suggest settlement discussions between the parties at Preliminary Injunction hearings or during court proceedings. Settlement at either stage is largely similar and the judge is involved from the onset of the matter until a decision is reached. Working in concert with judicial proceedings is the Arbitration Centre, which handles ADRs related to IPRs. Mediation is the preferred mechanism where a minor infringement has occurred with the possibility of major damages as well as when there is a high requirement for confidentiality. Although mediators are expected to have high IP/Technical knowledge, they often cannot handle complex cases. The court is efficient, however, and recourse is not often had to mediation.

The lecture concluded with a question and answer session. Most importantly, Toshiaki noted that regarding the Apple and Samsung dispute, this was the first time Japan had requested for amicus briefs [see here] giving the global nature of the case and drawing from France and Germany. He also noted the possibility of its application to future pharmaceutical cases.

Olumayowa O. Adesanya is an LLM (IP) Candidate at Queen Mary, University of London and an Assistant Editor of the Queen Mary Journal of Intellectual Property Law.

Are Moral Rights Human Rights? Event review – Part II

by Josh Jaskiewicz

The second speaker at the “Are Moral Rights Human Rights?” event was Graham Smith, partner at Bird & Bird and IT/ IP specialist. Following on from Eleonora Rosati’s black letter analysis of the factors that precluded moral rights as human rights, Graham Smith took the stand on how moral rights could be construed as a convention right. Interestingly, his presentation started with the added question “does it matter?“. This certainly alluded to some of the difficulties in applying a black letter approach, as the question prompts a wider appreciation of factors concerning moral rights as a human right.

In order to understand to what extent moral rights may be construed as a human right, Smith started by looking at some of the sources of human rights legislation, both binding and non-binding[1]. Unlike Rosati’s analysis of the substantive elements of human rights, Smith focused on the obligations imposed by human rights. These are: 1. To abstain from acts of interference 2. Impose an obligation to act between the state and individual and 3. Impose an obligation to act to secure rights as between individuals.

From the moment an author or artist creates a work he or she has various rights in it under traditional property law and intellectual property[2]. The control over the work is normally lost or diminished after it is sold[3], however. Moral rights protect the work even after it is sold namely through the rights of attribution, integrity, divulgation and modification. Under this premise, Smith pointed out that this relationship might allow for moral rights to be construed as a ‘possession’ for the purposes of protection under Article 1 Protocol 1 of the of the ECHR[4]. This was supported by reference to a case concerning a photograph which had been used by the state as a background to when issuing national identity cards without the permission of the photographer. The court held that the photographer had possession of the photograph within the meaning of Article 1 Protocol 1 and thus such use by the state amounted to an infringement[5]. In this scenario the function of the moral right of the author could be construed to have a negative obligation to abstain from interference.

Smith pointed out that similar obligations arise under the prescription of Article 8 ECHR – the right to private and family life. Under this provision, it was noted that although the objective of Article 8 was to protect the individual from arbitrary interference[6], a positive obligation may be implied to protect a person’s right to reputation[7]. At this point, the speaker took the opportunity to compare the language employed between the meaning of reputation with respect to the expanding nature of Article 8 and moral interest in regard to ICESR 15.1(c), highlighting the noticeable similarities[8].

Additionally, with regard to the Article 10 ECHR – the right to freedom of expression, Smith referred to a scenario where an author’s moral right might also impose a positive horizontal obligation to protect from interference with expression. This was supported by reference to the case of Özgür Gündem[9], where certain editions of a newspaper, and consequently the moral rights of the journalist had been unlawfully restricted by virtue of article 10 ECHR.

It follows that the moral rights of authors, in these circumstances, have imposed the same obligations as required by human rights conventions. However, does this then qualify them as a human right? Smith’s response was that all roads lead to Article 10 ECHR. He explained this in the following manner:

  • In so far that the protection of moral and material interests are required by Article 15.1.C ICESCR[10];
  • and the protection against unlawful attack on honour and reputation are required by Article 17 of the ICCPR[11] ;
  • which is also reflected by virtue of Article 8 ECHR[12];
  • that is balanced with Article 10 ECHR[13];
  • then to the extent that moral rights are required by the Berne Convention[14] the conclusion is that there is no such conflicting interpretation as to why moral rights cannot be construed as a human right.

Smith concluded by making reference to the seminal cases Ashdown v Telelgraph Group Ltd[15] and Ashby[16] saying that we could no longer ignore freedom of expression in Europe, and perhaps this is also applies to the status of moral rights either. Whilst we may not be able to call moral rights human rights per se, thanks to Graham Smith’s presentation, it is certainly possible to construe moral rights of the author as an underlying human right present in the work, or better yet a quasi-human right.

The event finished with a good Q&A session followed by a drinks and canapé reception. Altogether a very interesting evening to say the least, both speakers offered great insight and certainly clarified what is otherwise quite a difficult question, on that note, I dare to ask what a quasi-human right is.

Joshua Jaskiewicz is an LLM Candidate at Queen Mary, University of London, Student Fellow of the Queen Mary Intellectual Property Research Institute and Assistant Editor, Queen Mary Journal of Intellectual Property.


[1] For the purposes of this presentation, the speaker looked at: The Universal Declaration of Human Right 1948; European Convention on Human Rights 1952; International Covenant on Civil and Political Rights 1966; International Covenant on Economic, Social and Cultural Rights 1966; EU Charter of Fundamental Rights 2009.

[2] Moral Rights and Real Obligations: A Property-Law Framework for the Protection of Author’s Moral Rights, Dane S. Ciolino, March 1995, 69. Tul. L. Rev. 935

[3] See Generally, A.M. Honore, Ownership, in Oxford Essays in Jurisprudence 107(A.G. Guest ed., 1961) – on rights comprising owner

[4] Article 1 Protocol 1 prescribes that (1) Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law.

(2) The preceding provisions shall not, however, in any way impair the right of a state to enforce such laws as it deems necessary to control the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties.

[5] Balan v Moldova, application number. 19247/03

[6] Mosely v UK [2011] 53 E.H.R.R. 30

[7] Pfeifer v. Austria, applicaton number 12556/03 – reputation is encompassed by article 8 as being part of the right to respect for private life.

[8] Words like personality, reputation, respect for private life were in Pfeirfer are resonant with personal character, personality of their creator, moral interest in General Comment 17 on ICESR 15.1(c).

[9] Özgür Gündem v. Turkey, application number 23144/93

[10] General comment 17 reflects Berne Convention considered that moral interests under art. 15.1(c) included the right to be recognised, right to object, inter alia, to derogatory action, which would be prejudicial to their honour and reputation.

[11] “No one shall be subjected to… unlawful attacks on his honour and reputation. Everyone has the right to the protection of the law against such interference or attacks.

[12] “Everyone has the right to respect for his private and family life, his home and his correspondence”

[13] “Everyone has the right to freedom of expression…”

[14] Article 6bis. “…right to claim authorship, object to distortion, modification of, or other derogatory action which would be prejudicial to the author’s honour or reputation”.

[15] “…copyright is antithetical to freedom of expression. It prevents all, save the owner of the copyright, from expressing information of the literary work protected by the copyright” – Lord Phillips at the Court of Appeal, [2001] EWCA Civ 1142; [2001] 4All ER 666; [2001] 3 WLR

[16] Conviction for copyright infringement held to be an interference with freedom of expression. Ashby Donald and Others v. France 3676/08

Are moral rights human rights? Event Review – Part I

by Pedro Malaquias

Last Wednesday, 12 February 2014, at Bird & Bird offices, BLACA (the UK national group of the ALAI) and IPkat held a special joint meeting over the topic ‘Are moral rights human rights?’. The seminar was chaired by Sir Colin Birss, judge of the High Court of Justice of England and Wales and had as its speakers Eleonora Rosati and Graham Smith. This post deals in particular with Rosati’s excellent presentation.

After the customary introductions by the chair, Rosati posed three main questions: What are human rights? Why might moral rights be human rights? Why might that not be the case?

In reply to the question “What are human rights?” Rosati started by provocatively saying that nowadays everything is a human right. On the same point, she resorted to the famous expression used by Justice Potter Stewart in Jacobellis v. Ohio[1] to describe his threshold test for obscenity (later used by McCarthy on Trademarks and Unfair Competition): “I know it when I see it”. However, would that really be the case? Referring to photographs available at The Old Pornographer[2], the speaker demonstrated to us that views about pornography have developed throughout the years and that the same might have happened (or is happening) in relation to what is to be considered as a human right. Straightforward conclusions should, therefore, be made with care. In any case, a starting point to the question could be found in human rights principles, which understand these rights as universal and inalienable, indivisible, interdependent and interrelated[3].

In addressing the second of the posed questions, Rosati made reference to the importance of intellectual property justifications to finding an adequate answer. In fact, under Kantian justifications, it is easier to characterize intellectual property rights as human rights, as the work is seen as an extension of the author’s inner personality. After dealing with justifications, the speaker proceeded by making reference to Article 27(2) of The Universal Declaration of Human Rights, which provides that “Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author[4], noting that such provision was attached to the right to cultural participation and that, despite the efforts of the French delegation, no reference to perpetual moral rights was included in it. She further discussed the status of the 1996 ICESCR, which, under article 15(1)(c) recognizes the right of everyone to “benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author[5]. Rosati concluded with the analysis of the provision in article 6bis of the Berne Convention[6] and article 5 of the WPPT[7].

In answering the third question, Rosati noted the lack of two of the characteristics usually associated with human rights (universality and inalienability) and referred, in particular, to the possibility of refusing protection ex vi article 9(1) TRIPS[8] to the USA and UK (the need to assert moral rights) and to the recent developments brought by The Orphan Works Directive[9] and the Enterprise and Regulatory Reform Act[10]. Special reference was also made to the rights of employees; considering sections 79(3) and 82(2) CDPA[11], were employees less human than other mortals?

In conclusion, Rosati’s discussion returned to The Old Pornographer and left the audience with some further questions. Could this be a third generation human right, 66 years old? Is copyright itself (in its economic dimension as well) a human right (“we may know the answer, but still”)? Does it make a difference? In concluding this excellent presentation, Rosati gave us a quote from Batman Begins: “It’s Not Who I Am Underneath, But What I Do That Defines Me”.

Pedro Malaquias is a Portuguese Qualified lawyer. Currently, he is a LL.M. candidate at Queen Mary, University of London and works as a Student Research Fellow at Queen Mary Intellectual Property Research Institute (QMIPRI) and as Assistant Editor at Queen Mary Journal of Intellectual Property (QMJIP). @PedroMMalaquias


[1] Jacobellis v Ohio, 378 US 184, 12 L. Ed. 2d. 793, 84 S. Ct. 1676 (1964)

[4] Article 27(2) of The Universal Declaration of Human Rights.

[5] Article 15(1)(c) of the International Covenant on Economic, Social and Cultural Rights.

[6] Berne Convention for the Protection of Literary and Artistic Works, of September 9, 1886, completed at PARIS on May 4, 1896, revised at BERLIN on November 13, 1908, completed at BERNE on March 20, 1914, revised at ROME on June 2, 1928, at BRUSSELS on June 26, 1948, at STOCKHOLM on July 14, 1967, and at PARIS on July 24, 1971, and amended on September 28, 1979

[7] WIPO Performances and Phonograms Treaty, adopted in Geneva on December 20, 1996

[8] The Agreement on Trade Related Aspects of Intellectual Property Rights, Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994.

[9] Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works

[10] Enterprise and Regulatory Reform Act 2013.

[11] Copyright, Designs and Patents Act 1988.

IP and the Retail Sector: event review

by Carolina Pina

IP and the Retail Sector was the subject of a conference organized by CLT that took place yesterday at the Holborn Bars, an amazing venue in central London. The event was chaired by the IP guru Jeremy Phillips.

Barrister Jacqueline Reid (11 South Square) started the best way, giving us a clear idea of the characteristics a good trade name should have (such as being distinctive, suggestive, not offensive and having positive connotations), illustrating it with some examples. In order to come up with a good name it is essential to know the relevant market in question and especially the target customers, as some of these characteristics (particularly being offensive or not) are very subjective and vary according to the type of consumer of the brand. Positive connotations also depend on these factors; for example, CostCutter would not have a positive connotation if in a higher quality market. It is equally important to be aware of the consumers’ expectations. A good example of this is the pharmaceutical market, where the consumer is usually expecting more technical trade marks and does not trust simpler ones. Besides, retailers should consider some geographical limitations when deciding on a name, as it may have an offensive meaning in other languages, requiring them to change it when entering specific markets. We were also reminded of the particularities of using your own name, such as what happens when you sell the business? Can you prevent others from using your name? Elizabeth Emanuel did not succeed in the ECJ.[i]

Another topic approached by Jacqueline Reid was shop layouts. Although brand aura is a very actual question, there is not yet an effective way to protect it. Design right might seem obvious but it is not able to protect all the necessary features. While copyright could be an option, considering the definition of “building” (S.4 CDPA 1988) we can conclude that a shop layout is not always a “fixed structured”. So this leaves us with trade marks. The problem is that trade marks are not supposed to protect shop layouts. Anyway, Apple has already successfully registered its shop layouts in the US and is currently waiting for a decision on its application for international registration. The main difficulty here should be the precision requirement from Sieckmann[ii]. For now we will have to wait for more developments on this.

Then it was time for Nigel Parker (Allen & Overy) to talk about turning successful retail business models into money. He focused on Amazon’s Kindle to help us better understand a retail supply chain. Kindle is sold both through different retailers (where Amazon acts as a distributor) and online on Amazon itself. Licensing and securitisation were also discussed, as well as some pros and cons of franchising, which is still the most important model in the retail sector. Franchising implies a collaborative relationship. However, the franchisor very often exerts a strong power on the franchisee, imposing many restrictions.

Next to speak was Robert Cumming (Appleyard Lees), who discussed online retailing. One of the questions raised at this point was the relevance of domain names nowadays, since most of us just type the subject of the research in one of the many search engines available. Hence, companies want to have their name on the first results that the customer has contact with, paying a large amount of money per click just to be on the first page, without any guarantee of success. As Robert Cumming said: “if you’re not on the first page of Google you might as well be on Mars!”. Generally people tend to dislike advertisements, both on TV and online. So, in the search results, although advertisements come on top they are still usually ignored. The concept of “black hat” search engine optimization (SEO) was then considered, by exploring some examples of these unethical techniques to get higher search rankings (e.g. commenting on someone’s blog post addressing to a certain website). To finish, Cumming analysed some case law, the main case here being Interflora v Marks & Spencer[iii], which followed the Google France cases.

Antony Gold (HGF Law LLP) started the afternoon part of the conference with “Specsavers v ASDA”[iv], where all the issues, from the colour to the slogan (“Be a real spec saver at ASDA”), passing through the wordless logo (which was actually never used by itself by Specsavers and is currently waiting to be readmitted to the trade mark register in UK), were covered. The notion of confusion in trade mark infringement and the so called “living dangerously” doctrine (which did not apply in this case because Asda was intending to compare instead of confuse) were other topics approached. Moreover, to make this presentation more practical, Antony provided some extracts from Asda’s marketing campaigns and some lessons from which we can conclude that “even with a brainy judge, litigation is still a gamble”.

Later in the afternoon, Cristopher Stothers (Arnold & Porter (UK) LLP) considered “The importation and sale of third party brands: Issues involving grey goods” from a EU Competition Law perspective, focusing on the perfume industry, as in this industry exclusivity is such an important factor. We analyzed the differences between parallel trade of grey goods and counterfeiting, as these are in fact different realities, although brand owners sometimes like to treat them the same way. Finally Christopher went through some CJEU case law such as L’Oreal v eBay[v], concluding with some advice to brand owners in order to prevent parallel trade. Due diligence is important; in this case confirming the origin of the products and keeping records of all transactions are the most relevant ways to do it.

To finish this CLT Conference, Alexander Carter-Silk (Speechly Bircham LLP) addressed confusion, heuristics and the consumer in a very dynamic way. Carter-Silk explained us the concept of confusion very effectively through the idea of association. When he asked us to think of an airline and the colour red the unanimous answer was immediately Virgin. This is a heuristic trigger (in this case we were educated by the brand) and is exactly what happens when we go to a supermarket and look for a specific product. “How do you prove infringement?” is definitely the million pound question. Very few judgements actually rely on witnesses for this and judges tend not to like surveys as they consider they might have been artificially decided. Carter-Silk suggested that, at the end of the day, judges end up deciding for themselves, based on their own cognitive bias (which we all have) and this can be a problem as they might not be the informed consumer for the case in question. For the future he left us with some advice: have better witnesses, more presentations and show the judge you are actually suffering damage.

Carolina Pina is an LLM (IP) candidate at Queen Mary University of London and Assistant Editor of the Queen Mary Journal of Intellectual Property


[i] Elizabeth Florence Emanuel v Continental Shelf 128 Ltd. (Case C‑259/04)

[ii] Sieckmann v German Patent Office (Case C-273/00)

[iii] Interflora Inc v Marks & Spencer Plc (C-323/09)

[iv] Specsavers International Healthcare Ltd and others v Asda Stores Ltd (Case C-252/12)

[v] L’Oreal v eBay (Case C-324/09)

Finland extends the right to show films in public with its unique licensing regime without infringing copyright

by Miina Viitala

From 2014 onwards, it has been possible in Finland for other than educational institutions to obtain permission to show film in public without infringing copyright interest of the rightowner. In the first phase, this is covering non-profit organizations, such as churches. From February, 2014 extension covers also hobby-clubs. This extension currently applies only for domestic films but at educational institutions (nurseries, schools) also foreign films can be presented to the public without copyright infringement. The system is unique and doesn’t as such exist in other jurisdictions.

Under Finnish Copyright Law, Article 1 film is an artistic work covered with copyright protection. Among other things, Article 2 provides that the copyright owner has the right to control the communication to the public of his film. Finland allows showing movies for teaching purposes at schools as part of media education. It is argued, that films offering educational content teach students how to evaluate the media critically.

In Finland, collective licensing for showing films at schools is covered by one collective society for audiovisual producers for which the Government has given a contract license mandate.[1] It represents over 200 independent Finnish film and audiovisual producers and through the reciprocal agreement signed with AGICOA it also covers and protects over 10,000 foreign rightowners’ rights on audiovisual works in Finland. AGICOA takes care of Finnish rightowners’ rights abroad. Besides negotiations, the Finnish collecting society collects and distributes copyright royalties for producers. Usually the royalties are distributed from three sources: retransmission; TV-program recording for distributional purposes; and private copy levies. Permission to use is obtained from the Producer Company. Commune can obtain a common use of permission and distribute it for schools in its area or each school can obtain their own permission. An annual fee is directly proportional to the number of students and is currently 2 Euros (approximately £1.65) per student per one year. After paying the fee and getting permission to use, the number of uses is unlimited. This so-called ‘teaching licence’ can be obtained by completing an application form and sending it to the collecting society. Individual display licences also exist if the institution wishes not to pursue an annual teaching licence. For foreign films, the permission to use is obtained with a movie licence.

Under Finnish copyright law, showing private film to others is communication to the public and violates the copyright in the film. Permission is always needed in order to communicate the film to public. With the general permission on movie license one can access thousands of films from rightowners. Individual permission to display can also be acquired; the permission gives right to show the specified film in a separately specified space or place approximately 3-4 times per year. Movie licences are obtained by application form and prices vary according to the institute. General movie licence permission costs 3,50 Euros (approximately £2.90) per student per year plus VAT (24 %).

The Finnish Ministry of Education and copyright management organizations have agreed to have certain TV- and radio-programs available for educational purposes. Under this regime, it is permissible to record educational programs and store them on a permanent basis and record and store other programs for a period of two years respectively. This excludes foreign TV-shows (e.g. soap operas), domestic or foreign movies and commercials. It should be noted that only a few TV channels are within the scope of this agreement and the foreign commercial ones are largely left out. It will be seen in the future whether foreign players are also coming within the exception. As the permission to show films in public is extending for different institutions, it will remain to be seen how far the system suffices to stretch before possible international discussion takes place.

Miina Viitala is LLM Candidate at Queen Mary University of London and is working as a Queen Mary Intellectual Property Research Institute (QMIPRI) Student Research Fellow and Assistant Editor of Queen Mary Journal of Intellectual Property (QMJIP)


[1]
Collective Society For Audiovisual Producers:
http://tuotos.fi/index.php?id=488

Case C-466/12 Svensson – CJEU saves the Internet

by Pedro Malaquias

On 13 February 2014, the Court of Justice of the European Union (CJEU) issued its strongly expected decision in Svenson (Case C‑466/12 Svensson and Others v Retriever Sverige AB), in which it dealt with one of the most pressing topics in European copyright law: hyperlinking (the CJEU Press Release can be read here; for the full judgement, visit the Curia’s website). Briefly, the Court held that “[t]he owner of a website may, without the authorisation of the copyright holders, redirect internet users, via hyperlinks, to protected works available on a freely accessible basis on another site“.

The main facts of the underlining case seem to be simple. Press articles written by Swedish journalists were published on a freely accessible basis on Göteborgs-Posten newspaper’s website. Retriever Sverige, the defendant in the main proceedings, operates a website that provides to its clients hyperlinks to articles published on other websites, including the ones on Göteborgs-Posten. The applicants in the main proceedings – Nils Svensson, Sten Sjögren, Madelaine Sahlman and Pia Gadd – brought an action against Retriever Sverige before the Stockholm District Court claiming that the company had infringed their exclusive right to make their respective works available to the public, in that as a result of the services offered on its website. In defence, Retriever Sverige argued that the provision of lists of Internet links to works communicated to the public on other websites does not constitute an act liable to affect the copyright in those works and that it did not carry out any transmission of any protected work.

On 11 June 2010, the Stockholm District Court rejected the journalists’ application. The applicants in the main proceedings appealed such decision to the Svea Court of Appeal. On 18 October 2012, the Svea Court of Appeal lodged a a reference for a preliminary ruling,
asking the following:

  1. If anyone other than the holder of copyright in a certain work supplies a clickable link to the work on his website, does that constitute communication to the public within the meaning of Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society?
  2. Is the assessment under question 1 affected if the work to which the link refers is on a website on the Internet which can be accessed by anyone without restrictions or if access is restricted in some way?
  3. When making the assessment under question 1, should any distinction be drawn between a case where the work, after the user has clicked on the link, is shown on another website and one where the work, after the user has clicked on the link, is shown in such a way as to give the impression that it is appearing on the same website?
  4. Is it possible for a Member State to give wider protection to authors’ exclusive right by enabling ‘communication to the public’ to cover a greater range of acts than provided for in Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the
    harmonisation of certain aspects of copyright and related rights in the information society?

On a very short judgement (solely 42 paragraphs), and without seeking the opinion from one of the Advocates General, the court provided its answers. Although the CJEU dealt together with the first three questions, this writer find it logical (and easier) to analyse them separately. In relation to the first of the questions, the Court clarified that, under article 3(1) of the InfoSoc Directive, every act of communication of a work to the public has to be authorised by the copyright holder. Elaborating on this matter and by reference to Case C‑607/11 ITV Broadcasting and Others, the Court said that the concept of ‘communication to the public’ includes two essential requisites: that there is (1) an act of communication and (2) that such communication is made to a public. As it results from Joined Cases C‑403/08 and C‑429/08 Football Association Premier League and Others, the existence of an ‘act of communication’ must be construed broadly. As a result, and interpreting the circumstances of the case, the Court (not surprisingly) held that ‘the provision of clickable links to protected works must be considered to be ‘making available’ and, therefore, an ‘act of communication’, within the meaning of that provision‘ (para. 20). As for the second of the requisites, the Court found that it was not fulfilled in the present case. At this purpose, the Court started by reaffirming its prior decisions (on Case C‑306/05 SGAE and Case C‑607/11 ITV Broadcasting and Others) that ‘public’ for the purposes of article 3(1) InfoSoc should be interpreted as an indeterminate number of potential recipients and implied a fairly large number of persons, something that easily occurred through linking in an online environment. The most relevant part of this judgement is, however, found in paragraphs 24 to 28. In such paragraphs, the Court recalls its decisions on SGAE, ITV Broadcasting and in Case C‑136/09 Organismos Sillogikis Diacheirisis
Dimiourgon Theatrikon kai Optikoakoustikon Ergon and the importance of the existence of a new public:

[A]ccording to settled case-law, in order to be covered by the concept of ‘communication to the public’, within the meaning of Article 3(1) of Directive 2001/29, a communication, such as that at issue in the main proceedings, concerning the same works as those covered by the initial communication and made, as in the case of the initial communication, on the Internet, and therefore by the same technical means, must also be directed at a new public, that is to say, at a public that was not taken into account by the copyright holders when they authorised the initial communication to the
public
” (Paragraph 24)

As in the present case, the works on the Göteborgs-Posten were published on a freely basis and were accessible to the general public, there was no communication to a new public and, consequently, no (new) authorisations from the copyright holders were required. As for thesecond question (does it make a difference if the link allows to circumvent restrictions put in place by the site owner?), the CJEU, in Paragraphs 31, held that such would indeed result in a different situation. In fact, the provision of links which would bypass any paywall or similar systems would result in communication of the work to a public that was not taken into account by the copyright holder when it authorised the initial communication and, as such, authorisation was required.

The third question(does it make a difference if the work is shown in a way as to give the impression that it is appearing in the new website?) was specially interesting as, in the underlining case, it was controversial if it was apparent to Retriever’s clients that by clicking in the links they were being redirected to other website. In Paragraphs 29 and 39, the Court held that such was irrelevant as, independently of the circumstances, the public to which the work was being communicated would not change and, therefore, according to the answer provided to question 1, one could not understand this to be making available to a new public. This answer will certainly have ramifications in the pending decisions of Cases C-279/13 C More Entertainment and C-348/13 BestWater, in which different types of link are going to be analysed.

Finally, in relation to the fourth question (can a Member State provide wider protection to copyright holders by laying down that the concept of communication to the public includes a wider range of activities than those referred to in Article 3(1) of the InfoSoc Directive?), the CJEU excluded the possibility of a wider protection. By reference to Recitals 1, 6 and 7 in the preamble to the InfoSoc Directive, the Court recalled the directives’ objectives of reducing the “legislative differences and legal uncertainty that exist in relation to copyright protection“, something that would be undermined by accepting that Member States could provide wider protection to copyright holders by laying down that the concept of communication to the public also includes activities other than those referred to in the applicable directive provision. At this point, the Court referred to its decision on Case C‑277/10 Luksan. The decision of the court seems to be a very balanced one. Rightholders’ protection is guaranteed by the answer given in relation to the second question. At the same time, it is assured that the way that the Internet works is not disrupted as a result of copyright laws. However, it should be noted that this decision does not clarify all doubts in relation to hyperlinking:

  • Sooner or later, the Court will certainly have to clarify if a different answer is to be given if the link directs a user to infringing content. Would such result in a communication to the public of such a content? Or, instead, the same rationale should be applied and communication to the public only occurs with the first upload? Could secondary / indirect infringement theories be used in such situations?
  • What should be understood by “circumvent restrictions”? What does a website manager need to do to restrict access to a website?
  • Do the terms and conditions of a website play in role in all of this?
  • Framing and embedding do not seem to assume any additional relevance in relation to communications to the public. However, to what extent (if any) can unfair competition/passing off and/or consumer laws be used to prevent some excesses?

  Pedro Malaquias is a Portuguese Qualified lawyer. Currently, he is a LL.M. candidate at Queen Mary, University of London and works as a Student Research Fellow at Queen Mary Intellectual Property Research Institute (QMIPRI) and as Assistant Editor at Queen Mary Journal of Intellectual Property (QMJIP). @PedroMMalaquias

February IP events

by Pedro Malaquias

On November 2013, QMJIP started to publicise IP Events in its Twitter page (@QMJIP), using the hash tag #IPevents. Since then, we have tried to promote as many IP events as possible, as we find such information of utmost relevance for the IP community. From now on, such information will also be made available in the QMJIP blog.

If you have know of or are organising any IP event not shown on the following list, we would be grateful if you let us know. Simply leave us a comment in here or tweet us @QMJIP #IPEvents and we will add it!

Here are the events for February 2014.

UNITED KINGDOM:

  • SMi Group’s 8th annual conference on Parallel Trade will be held 10 and 11 February 2014 in London. More information can be found here.
  • Are moral rights human rights? is the question posed in the special joint meeting held by BLACA and the IPKat, in 12 February 2014, London. Further details can be found here and here.
  • On the 13 February 2014, CLT will held in London the IP and Retail Conference 2014. Further information in CLT’s website.
  • Visiting Bangor? Following the recent decision of the Copyright Tribunal in the case of BBC and Eos, Bangor University will host, on 13 February 2014, the conference Collecting and Protecting: 21st century copyright and minority language music. More information can be found in the following link.
  • Interested on How Japanese IP Litigation Really Works? Check the UCL Institute of Brand and Innovation Law (IBIL) event next 17 February 2014, in London. More information can be found at IBIL’s website.
  • Also in London, Management Forum will held the two-day (19 and 20 February 2014) introductory course on IP commercialisation fundamentals, planning and execution. To register, visit the event page
  • In the following week (24 and 25 February 2014), Management Forum in association with IncreMental Advantage, will organize one more event – Institute for Patent Prosecution. Follow the link to the event website.
  • The UCL Institute of Brand and Innovation Law (IBIL) will held, in London, its Annual Brands Lecture on 26 February 2014. This year’s topic is “Trade Marks and Designs: the Designers’ Perspective”. More information can be found at IBIL’s website.
  • On 28 February 2014, the Westminster Media Forum will discuss Next steps for the UK music industry streaming services, social media and market consolidation. Check the agenda here.

CONTINENTAL EUROPE

  • On 14 February 2014, in Geneva, the Faculty of Law, University of Geneva in partnership with the International League of Competition Law (LIDC), will discuss Challenges of Unfair Competition Law. If you are interested, visit the following website.
  • In Munich, on 25 and 26 February 2014, IBC Legal will hold the The 22nd Annual Biotech & Pharmaceutical Patenting Conference 2014. More information can be found at the event page.
  • In Brussels, on 27 and 28 February 2014, the the Academy of European Law will organize its 2014 Annual Conference on EU Law in the Pharmaceutical Sector. Details can be accessed here.
  • In Munich, on 28 February 2014, UNION-IP in cooperation with WIPO will organise a half-day seminar on Arbitration of Patent Disputes. Visit the website for further details.

UNITED STATES OF AMERICA

  • On 17 and 18 February 2014, in San Francisco, the Global Outsourcing Association of Lawyers will hold the Global Intellectual Property Outsourcing Conference & Exhibition. Details can be found here.

Pedro Malaquias is a Portuguese Qualified lawyer. Currently, he is an LL.M. candidate at Queen Mary, University of London and works as a Queen Mary Intellectual Property Research Institute (QMIPRI) Student Research Fellow and Queen Mary Journal of Intellectual Property (QMJIP) Assistant Editor.

ACCESS TO MEDICINE: THE DEBATE CONTINUES WITH GILEAD’S SOVALDI

by Olumayowa O. Adesanya

Given the failed attempts at developing a vaccine for vaccine Hepatitis C, a disease with a higher mortality rate compared to HIV/AIDS, the announcement of a cure was greeted with much fervour. On December 6, 2013, the United States Food and Drug Administration (FDA) approved Gilead Sciences’ Sovaldi (sofosbuvir). This drug is expected to treat people with genotypes 1 through 4 of hepatitis C virus (HCV), including those co-infected with HIV and those who have liver cancer and are waiting for a transplant.

There is a catch.

Wait for it.

The drug is set to cost $1,000 per day and a cumulative of $84,000 for the given 24-week treatment regimen.

HCV is said to be most prevalent in Egypt and other middle-income countries like China, India, and Russia, a country that has been plagued with political crises in recent years. This sparks a debate similar to earlier disputes over access to generic HIV/AIDS drugs.

The World Health Organisation (WHO), civil society groups and patients have been at the forefront in the international Campaign for Access to Essential Medicines particularly in terms of availability and pricing. Access to medicine is a pivotal issue in Intellectual Property discuss particularly as it relates to Patents. The grant of a patent results in a monopoly where the sole player dictates the price of its product(s). As such, Gilead’s pricing is consistent with the norm. Their pricing, according to them, is justified by the benefits of the drugs and the friendly dosing schedule when compared to similar drugs in the market.

According to WHO’s Fact sheet on HCV N°164 updated July 2013, about 150 million people are chronically infected with hepatitis C virus, and more than 350 000 people die every year from hepatitis C-related liver diseases. With these statistics, comes the argument that sold at a price affordable to these millions and their health providers/insurers, Gilead is bound to recoup its investment in a matter of time. It would seem though that there is bound to be competition before the monopoly ends as other manufacturers are working towards perfecting their treatment for HCV.

Already, insurance companies, patient advocates and health organisations have begun to push against what they consider as unfair pricing.  However, with the alternatives to Sovaldi not as effective, patients and doctors are bound to embrace it regardless of the cost. Notwithstanding, the clamour for compulsory licensing in order to produce generics at a lower price remains.[1] As it stands, a New York-based legal group Initiative for Medicines, Access, and Knowledge (I-MAK) has filed suit to allow patenting of Sovaldi in India, so that a cheaper generic form could be available.

While one ponders the pricing rationale considering Gilead’s historical co-operation with the Medicines Patent Pool and other agencies dedicated to guaranteeing access of HIV medicines in developing countries, Gilead has announced its initiative known as Support Path. This is to assist eligible hepatitis C patients in the United States who do not have insurance, are underinsured or who otherwise need financial assistance to gain coverage for or access to Sovaldi. What about other sufferers across the globe?

It is interesting to read this article in Forbes and the comment of Bayer AG CEO, Marijn Dekkers, who is reported to have said that Bayer didn’t develop its cancer drug, Nexavar (sorafenib) for India but for Western patients that can afford it.

Olumayowa O. Adesanya is an LLM (IP) Candidate at Queen Mary, University of London and an Assistant Editor of the Queen Mary Journal of Intellectual Property Law.


[1] This formed the basis of the DOHA Declaration of 2001. Since the passage of Canada’s Access to Medicines Regime (CARM) in 2004, only two orders of Antiretroviral drugs for HIV/AIDS patients in Rwanda have been exported. Although India and the European Union have similar legislations, no generic drugs have been produced under compulsory licences solely for export to countries without manufacturing capability.

CCLS Seminars: New Voices in Commercial Law ‘Security over IP rights’ – Paper presented by Dr Sean Thomas[1]

by Olumayowa O. Adesanya

As part of its ‘New Voices in Commercial Law’ seminar series, [2] which is in its second year, Dr Sean Thomas of the University of Leicester was invited to present a paper titled ‘Security over Intellectual Property Rights’ on the 6th day of February, 2014. The aim of the series is to provide a forum for debate and an opportunity for early career academics with outstanding potential to talk about their research in an intellectually stimulating, supportive and non-judgemental environment.

Using IP as an asset for secured financing is not a new phenomenon, however, the law remains largely underdeveloped with apparent conflicts that may require judicial intervention soon enough. Dr Thomas began with a disclaimer stating he was no expert in IP matters and was open to input and corrections in that regard.

His paper was predicated on the submission by Allen & Overy LLP to the Hargreaves Review on Intellectual Property concerning IPRs and security interests. Invariably, the paper focused on the United Kingdom’s regime with little reference made to the United States’ regime on the subject matter. The rights concerned with were copyright, designs, patents and trademarks. The possibility of trade secrets being used where secured financing is concerned remains a matter for another debate.

For the purpose of creating security interests, it is uncertain if IPRs[3] are chose in action. The Patents Act, however, clearly defines patents not to be a chose in action. With the multiple types of security interests available in England, selecting the most appropriate for IPRs proves a challenge. There is the problem of proving possession under mortgage as well as the fact that mortgages do not extend to future property. Pledges and liens are also besotted with the problem of possession. The most suitable instrument would be a floating charge as it is much more flexible and extends to future interests. However, it is less secure and there is the problem of identifying the particular assets covered. Although the relevant IP Acts make mention of mortgages and assignments, it is clear that the legislations did not envisage securitization of IPRs.

Using IP rights to secure financing is particularly convenient for Small and Medium Enterprises (SMEs) who have not grown to the point of owning significant tangible assets. For larger and well-established businesses, at some point, the tangible and intangible assets become so interspersed that the existence of one is dependent on the other.

The current regime for the creation of security over IPRs poses a number of difficulties for the parties involved such as registration. There is the problem of dual registration for registered IP rights where the debtor is an artificial person and the case of non-registration where the debtor is a natural person attempting to secure financing based on non-registered rights such as copyrights and unregistered trademarks.

Secured transactions carried out by legal entities are to be registered at the Companies House within a period dependent on the asset in question. The essence of such registration is to put third parties on notice. An individual cannot avail of this provision under the Companies Act unlike the situation in the United States, which allows registration by both natural and artificial persons of secured transactions at the Secretary of State’s office under the Uniform Commercial Code. Registrations in the relevant IP offices in special registers are often not mandatory and only serve to indicate ownership. Where for instance, an individual uses his copyright in a work as collateral, there will be no registration from which third parties can be put on notice opening the possibility for fraud.

Flowing from the registration issue are two enforcement issues where bankruptcy or insolvency arises: establishing priority (in the case of dual registration) and the hyper-mobility of IPRs, which pose a problem in tying down the already intangible assets.

In resolving the current issues, Dr Thomas advocates for a new commercial law with a unified single register. Other approaches would include the use of Special Purpose Vehicles (SPV) or Purchase Money Security Interests (PMSIs), which have their drawbacks too. He noted that between the United States system and that of UNCITRAL[4], it would appear that the latter is the best legislation so far, although imperfect. He noted also that orphan works pose a challenge in securitization of IPRs.

A remark to round up the presentation was made about the attitude of IP lawyers to security interests and that of secured credit stakeholders to IP as the reason for the snail-paced approach in improving this area of law. Security of IPRs is covered neither in the Hargreaves’ Report nor in the IP Bill currently passing through Parliament. Notwithstanding, an increased use and recognition of IPRs as assets in secured financing will result in judicial intervention in the face of challenges arising from enforcement and ultimately in improved legislation.

 

 

Olumayowa O. Adesanya is an LLM (IP) Candidate at Queen Mary, University of London and an Assistant Editor of the Queen Mary Journal of Intellectual Property Law.


[1] Senior Lecturer in Commercial Law at the University of Leicester
LLB (Durham), PhD (Manchester), PG Cert (Anglia Ruskin), Fellow of the Higher Education Academy.  Sean is also a member of the Secured Transactions Law Reform Project.

[2] The Centre for Commercial Law Studies at Queen Mary, University of London

[3] Intellectual Property Rights

[4] United Nations Commission on International Trade Law

Review of Management Forum’s Conference on The Unitary Patent & Unified Court

by Julius Berg Kaasin

As a part of their 30th Anniversary Congress, Management Forum hosted a full day conference on the proposed European Unitary Patent and Unified Court. The unitary patent system aims at being a co-existing alternative to national and traditional European patents from 2015, offering unitary protection and litigation opportunities within the 25 participating EU member states. The conference was held 28 November 2013 at Millennium Gloucester Hotel in London, providing appropriate surroundings for both UK and other European professionals.

The unitary patent system is still incomplete and subject to intense debate. Therefore it constituted no easy starting point for speakers Ulrich Blumenröder and William Cook. Mr. Blumenröder is partner at German law firm Grünecker, Kinkeldey, Stockmair & Schwanhäusser in Munich, while Mr. Cook is a Solicitor (partner) at London based law firm Marks & Clerk Solicitors. They are both specialising within patent litigation.

The conference was divided in two halves. The first half consisted of a description of the unitary patent system. Although that information about the system is relatively accessible, Mr. Blumenroeder and Mr. Cook provided the audience with an in-depth description of the Unitary Patent Agreement and the Unified Patent Court. The review was particularly useful because of the comparison with the current nationally based European bundle patent, with speakers assessing the particularity of the unitary patent system’s non-national basis.

The second half after lunch was an analysing part with focus on future strategic options for protection of inventions in Europe. The speakers elaborated on the strategic implications of the new unitary patent system such as choice of tribunal and forum shopping. It seems likely that the new system’s co-existence with traditional patent systems will complicate further strategic options and challenges for businesses of various sizes when filing patent applications in Europe. For instance, there are initial concerns that businesses will stick to the current system, referred to by Sir Robin Jacob as the national “gap in protection” based European bundle patent issued by the EPO. This path seems to provide more flexibility and less risk compared to the unitary patent system’s “eggs in one basket” option with the possibility of unitary revocation. Moreover the uncertainty of costs within the new system, and with most applicants for European patents tending to validate on only a small amount of member states, has raised questions over whether the unitary patent system will be worthwhile.

With regulation of costs and risks still pending, such as the Rules of Procedure of the Unified Patent Court, the speakers moved to give their views on more practical issues such as the importance of choice of tribunal within the Unified Patent Court, linguistic challenges, the difficulties in terms of primary sources of law and the role of CJEU.

The conference was finished off with some case studies. Despite the significant uncertainty and the current lack of case law from the Unified Patent Court, these studies gave practical knowledge on the complexity of future strategic difficulties for patent advisors and their clients. By showing how choice of patent system can be affected by language, jurisdiction and industrial sector the speakers were able to illustrate some of the most probable strategic challenges mentioned above.

In addition to a carefully orchestrated presentation the hosts provided delegates with extensive materials and official texts. The service at the hotel was most accommodating and the speakers were open to answering questions in plenum, and to future dialogue.

As the speakers pointed out throughout the conference, it remains to be seen whether the unitary patent system will become correspondingly effective with its creators intentions. During the transitional period – and before getting substantial case law from the Unified Patent Court – we are likely to see businesses of all sizes taking a slightly cautious approach towards the new system, being reluctant to throw their valuable patent portfolios into the unitary patent bowl. If the new system should eventually fail, responsibility can surely not be assigned to neither the host nor the speakers of this conference. The only regret may be that delegates at the other conferences of the congress were unable to attend this very informative update of one of the most ambitious legal projects within the European Union.

Julius Berg Kaasin is a Queen Mary University of London LL.M. Candidate and works as a Queen Mary Intellectual Property Research Institute (QMIPRI) Student Research Fellow and Assistant Editor of Queen Mary Journal of Intellectual Property (QMJIP)

[1] Jacob, Sir R, Alexander QC, D, & Fisher, M (2013). Guidebook to Intellectual Property, 6th ed. Oxford : Hart Publishing, p. 32