QMJIP

Queen Mary Journal of Intellectual Property

Month: April, 2014

April IP events

by Pedro Malaquias

In November 2013, QMJIP started to publicise IP Events across the world on its Twitter page (@QMJIP), using the hash tag #IPevents. Such information is also made available in the QMJIP blog. 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 #IPEvents and we can add it to our list.

Here are the events for April 2014:

UNITED KINGDOM:

  • On 1 April 2014, in London, IPKat organises the seminar ‘Online Copyright + Enforcement = Happiness?’. Click here for details and registration.
  • On 1 April 2014, in London, the Competition Law Association hosts the 16th Burrell Competition Lecture and Dinner. The lecture will discuss ‘Intellectual Property: European Tribunals & UK Courts’. The event flyer is available here.
  • On 2 April 2014, in London, the City Law School hosts the seminar ‘Hot off the press: the collective management directive’. More information here.
  • On 2 April 2014, in Birmingham, ITMA organises a seminar regarding Design Law. More details can be found here.
  • On 3 and 4 April 2014, in London, Management Forum organises the course ‘Practical Introduction to International Patent Law and Practice’.
  • Between 4 and 6 April 2014, QMIPRI will host the second part of the annual EIPIN congress. Congress details are available here.
  • On 7 April 2014, in London, CIPA organises the course ‘Computer Programs & Excluded Matter – an “inside” view from the IPO’.
  • On 8 April 2014, in London, CLT organises the course ‘Intellectual Property Law for Commercial Lawyers
  • On 9 April 2014, in London, CIPA will dedicate its London Happy Hour to an ‘Update on the Regulatory Landscape’.
  • On 10 April 2014, in Bournemouth, the Centre for Intellectual Property Policy and Management (CIPPM) of the Bournemouth University holds a full day symposium on ‘Digitization, Public Domain and Informational Monopolies’. Further details and registration are available here.
  • On 10 and 11 April 2014, in London, Management Forum organises the course ‘Basic PCT Formalities’.
  • On 11 April 2014, it is time for the CREATe Report Launch: ‘A review of the causes and impacts of unlawful file sharing’. The event will be held in London, Stationers’ Hall, 3-6pm. Further information here.
  • The Dickson Poon School of Law at King’s College London and Volterra Fietta announce that the 8th annual IGLRC will take place on April 14-15, 2014. Some IP topics are included: ‘The Console Modification Problem in the Video Game Industry – A Critical Examination of Access Rights under the Reformed Technological Protection Measure Provisions of the Australian Copyright Act 1968 (Cth.)’, ‘The TRIPS Agreement and access to pandemic influenza vaccines – is an alternative required?’, ‘Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled’ and ‘Justificatory Pluralism in EU Copyright Law’ Further details here.
  • On 14-16 April 2014, in Norwich, the University of East Anglia Law School will host the BILETA 29th Annual Conference. Further details (including a draft programme) can be found here.
  • On 23 April 2014, Bird & Bird will discuss the ‘Internet of Things’, in the British Library Conference Center (London). More information is available here.
  • On 24 April 2014, in Cambridge, CIPIL will host the seminar ‘IP issues with antibiotics’. Further details are available here.
  • On 25 April 2014, in Edinburgh, the Law Society of Scotland and the Faculty of Advocates will host their seventh annual World Intellectual Property Day event. More information about event will be available here.
  • On 29 April 2014, in London, ITMA will hold the meeting ‘OHIM & IPO Case Update’. Further details are available here.
  • On 29 April 2014, in London, CLT organises the course ‘IP and IT Law Update’.

CONTINENTAL EUROPE:

  • On 3 April 2014, in Amsterdam, Netherlands, INTA, Simmons & Simmons LLP and the Benelux-Association of Trade Mark and Design Law will host a roundtable on Trade Mark licensing. Additional details are available here.
  • On 3 April 2014, in Munich, Germany, INTA will host a roundtable on how to best protect trademarks of a suggestive nature. Additional details are available here.
  • On 3-4 April 2014, in The Hague, Netherlands, EPO will host the event ‘Search Matters 2014’. Further details here.
  • On 6 April 2014, in Paris, France, CCI Paris Ile-de-France will host a Conference on Trade Marks Law. Details here.
  • On 7-8 April 2014, in Madrid, Spain, OEPM and WIPO will host a Workshop on Mediation of IP Disputes. More details here. Further details here.
  • On 7-8 April 2014, in Istanbul, Turkey, AIPPI Turkey will hold the ‘3rd Intellectual Property Law Seminar 2014. Further details here.
  • On 10 April 2014, in Paris, France, Cabinet Jacobacci in association with the Direction du Développement International des Entreprises de la CCI Paris Ile-de-France will host the event ‘Marques et modèles : regards croisés Italie/Espagne/Portugal’. Programme and registration are available here.
  • On 10-11 April 2014, in Vienna, Austria, the EPO will host its annual forum on Asian patent information – ‘East meets West 2014’.
  • On 23 April 2014, in Aalborg, Denmark, IPR Nord celebrates the World IP Day with a symposium. Further details are available here.
  • On 24 April 2014, in Moscow, Russia, an international Conference devoted to the 150th Anniversary of the First Russian Design Law (‘Industrial designs: Past, Present and Future ‘) will be hosted. Further details are available here.
  • On 24 April 2014, in Luxembourg, Luxembourg, LES Benelux organises the conference ‘IP, Tax Optimisation and Monetisation in the European Union’. Event details can be found here.
  • On 25 April 2014, in Oslo, Norway, the Norwegian Industrial Property Office celebrates the International World Intellectual Property Day. Further information will be available on NIPO’s website.
  • On 29 April 2014, in Madrid, Spain, Hoffmann Eitle Madrid, with the support of LES España y Portugal, organises the conference ‘Draft of the Spanish Patent Law: another step towards a harmonization in Europe?’. Details here.

UNITED STATES OF AMERICA:

  • On 1 April 2014, in Alexandria, Virginia, the USPTO will host a public forum to discuss the first-inventor-to-file provisions of the America Invents Act (AIA). Additional information is available here.
  • The OnCopyright 2014 symposium will be organised by the Copyright Clearance Center on 2 April 2014, in New York. Further details are available here.
  • On 2-4 April 2014, in Arlington, Virginia, the American Bar Association – Section of Intellectual Property law hosts the ‘29th Annual Intellectual Property Law Conference’. More information is available here.
  • On 3-4 April 2014, in Berkeley, California, the Berkeley Center for Law and Technology will host the conference ‘The Next Great Copyright Act’. Check the details here.
  • On 4 April 2014, the Fashion Law Institute will organise the 4th annual Fashion Law Institute symposium, in which it will discuss ‘The Spectrum of Style’. Further details are available here.
  • On 8 April 2014, in Alexandria, Virginia, the USPTO and AIPLA will host the conference ‘Design of Things to Come’ in its 8th annual design day. Additional information is available here.
  • On 9 April 2014, in Berkeley, California, the Berkeley Center for Law and Technology will host the 7th Annual Privacy Lecture. This year lecture tittle is ‘Privacy versus Government Surveillance: Where Network Effects Meet Public Choice’. Check the details here.
  • On 9 April 2014, in Washington, the George Washington University will discuss ‘Intellectual Properties: A Case Study in Influenza’. Check the details here.
  • On 9 April 2014, in Alexandria, Virginia, the USPTO will host an Additive Manufacturing Partnership Meeting. Additional information is available here.
  • On 10 April 2014, in Indianapolis, Indiana, INTA and the United States Patent & Trademark Office will host a roundtable ‘to help the USPTO better understand the needs of those using its services and to offer insights into the USPTO operations’. Additional details are available here.
  • On 10 April 2014, in Alexandria, Virginia, the USPTO will host a ‘Roundtable on the Use of Crowdsourcing and Third-Party Preissuance Submissions to Identify Relevant Prior Art’. Additional information is available here.
  • On 11 April 2014, in Chicago, the John Marshall Law School organises the Second Annual Fashion and Design Law Symposium ‘Fashion Law Revolution’. Registration here.
  • On 11 April 2014, in Stanford, the Stanford Technology Law Review organises a symposium on ‘Privacy Challenges in the Internet Age’. Check the event page.
  • On 12 April 2014, in Detroit, Michigan, the USPTO will host its next Saturday Seminar. Additional information is available here.
  • On 21 April 2014, in Chicago, the Center for Intellectual Property Law of the John Marshall Law School will discuss ‘Past, Present and Future: The Exclusive Patent Jurisdiction of the Federal Circuit’. To register, follow the link.
  • On 23 April 2014, in Philadelphia, Pennsylvania, INTA and the United States Patent & Trademark Office will host a roundtable ‘to help the USPTO better understand the needs of those using its services and to offer insights into the USPTO operations’. Additional details are available here.
  • On 24 April 2014, in Chicago, the Center for Intellectual Property Law of the John Marshall Law School will discuss ‘Ethics in the Practice of Intellectual Property Law’. Programme agenda here.
  • The 22nd Annual Fordham intellectual Property Law and Policy Conference will be hosted in New York, on 24-25 April 2014. The event website is online here.
  • On 29 April 2014, in Redwood City, California, INTA and the United States Patent & Trademark Office will host a roundtable ‘to help the USPTO better understand the needs of those using its services and to offer insights into the USPTO operations’. Additional details are available here.

ASIA:

  • On 4 April 2014, in Singapore, INTA will host a roundtable on creating and managing the trademark reputation of non-profit brands. Additional details are available here.
  • On 10 April 2014, in Hanoi, Vietnam, INTA and Bross & Partners will host a roundtable ‘on how to protect local and foreign 3D marks, industrial designs and copyright’. Additional details are available here
  • On 10-12 April 2014, in Kyoto, Japan, FICPI Japan and JPAA will organise the symposium ‘Comparison and Trends in Patent, Trademark and Design Systems and IP Court Systems among Japan, US , EP, China, Korea and WIPO’. See the event leaflet here.
  • On 17 April 2014, in Shangai, P.R. China, INTA and King & Wood Mallesons will host a roundtable ‘on how to best protect your trademarks on the Internet’. Additional details are available here.
  • On 18 April 2014, in Beijing, P.R. China, INTA and Unitalen Attorneys at Law will host a roundtable on ‘Issues Concerning the Authorization and Determination of Trademark Rights Under the Newly Amended Trademark Law in China’. Additional details are available here.
  • On 25 April 2014, in Singapore, the IP Academy will host the event ‘Harnessing the Value of Your Intellectual Property’. Details here.

AFRICA:

  • On 26 April 2014, in Nairobi, Kenya, the Strathmore University’s Centre for Intellectual Property and Information Technology Law (CIPIT) and the Kikao IP Forum will host a conference in celebration of the World Intellectual Property Day. Further details and registration here.
  • The ‘South African Intellectual Property Conference 2014’ will be hosted on 3-4 April 2014, in Pretoria, South Africa. The event leaflet is available online.

CENTRAL AND SOUTH AMERICA:

  • On 8 and 9 April 2014, in Belo Horizonte, Brazil, the Intellectual Property Brasilian Association (APBI) will organise the 1st French-Brasilian International Congress ‘The Intellectual Property Rights Functions in the 21st Century’ . Details here.
  • On 24 April 2014, in Honduras (Facultad de Química y Farmacia – UNAH), the Dirección General de Propiedad Intelectual de Honduras organises a conference in celebration of the World Intellectual Property Day.
  • On 25 April 2014, in Mendoza, Argentina, UTAPI (Unidad Técnico Académica de Propiedad Intelectual) organises the event ‘II Jornadas Universitarias sobre Propiedad Intelectual’. Additional details can be found here.

ADDITIONAL INFORMATION

The 26th of April is the World Intellectual Property Day. As a result, several events will be held in celebration. Information about those events can be found in WIPO’s World Events Map and on the World IP Day Facebook Page.

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

Review of Centre for Commercial Law Studies at Queen Mary University of London’s conference on the European Patent System versus European Patent System

by Julius Berg Kaasin

This article is written by Maria Paola Mulè, María Victoria Rivas Llanos and Julius Berg Kaasin, all L.LM. 2013/2014 candidates at Queen Mary University of London, Student Research Fellows at Queen Mary Intellectual Property Research Institute (QMIPRI), and Assistant Editors of the Queen Mary Journal of Intellectual Property (QMJIP)

From 18th to 20th of March the Centre for Commercial Law Studies of Queen Mary University of London hosted a special three-day conference titled “European Union Patent system v European patent system: Past, present and future of patent protection and patent litigation in Europe”. The conference was aimed at law students, but also other delegates with a more scientific background participated.

The conference was chaired by Manuel Desantes Real (Professor of Law, University of Alicante; Of Counsel, ELZABURU; Former Vice-President, EPO). Further speakers were Aurelio López-Tarruella (Associate Professor of law, University of Alicante; Of Counsel, Ferrandis) and Dr Dieter Stauder (Former Director, International section, CEIPI; Former member, EPO). The extensive academic and practical experience of the speakers in international patent law brought interesting perspectives to the debate.

The first day started with an introduction to the international agreements for the creation of a unitary patent (UPA) and the Unified Patent Court (UPC) by Professor Desantes Real. He outlined the long lasting process that led to the agreements and analysed the reasons why EU Member States opted for an international agreement to reach a European goal. Almost all EU Member States have already signed the Convention except for Poland and Spain. However, before entering into force, the Convention still needs to be ratified by 13 Member States; including France, UK and Germany. So far, only Austria, France and Malta have ratified it.

The focal point stressed by Professor Desantes Real was how the UPC would constitute a unique example of a judicial organ called to decide on private issues. It will be the first ever court in history having exclusive competence to deal with questions of private law and sovereign rights, namely nullity and infringement of patents. Furthermore, it will have common procedural rules for all participating Member States, which represents a great step towards European harmonisation.

The second issue addressed by Professor Desantes Real was the difference between European patents with “unitary effect” and the European patents without this effect. Professor Desantes Real showed how the system works in practice and the implications the new system might have, both from the society and the EPO perspectives. It was also stressed how important it is for a company to bring an infringement action before the most efficient patent court, in terms of speed of the process and costs reduction.

Professor Desantes Real rightly stated that patents are the corner stone of the internal market. With this in mind, answering the question on whether or not we need the European Unitary patent appears to be straightforward. However, it is still unclear what the legal basis for the proposed Convention will be. Having said that, the solution proposed by Art. 118 TFEU seems to provide a plausible one.

On the second day of the conference, Professor López-Tarruella explained how patent litigation works in Europe through a set of case studies. The main provisions involved were the Brussel I Regulation (on jurisdictional matters) and Rome II Regulation (on applicable law). Professor López-Tarruella showed students the practical application of the aforementioned legislation in cases of cross-border litigation.

Professor López-Tarruella underlined the necessity of bringing proceedings before the most appropriate court in order to avoid wrong advice, that in the worst case scenario could lead to the insolvency of SMEs. Some ECJ pronouncements on “forum shopping” complicated the scenario, due to its conflicting nature with the principles of the internal market, in relation to the free movement of goods, services, people and capital.

By the end of the second day, the students had a good overall picture of the patent litigation system in Europe, as well as on further expected developments after the implementation of the Unified Patent Court.

The conference concluded third day with Dr Stauder’s speech on the interpretation and implementation of EPC Law into Member States’ national systems. Dr Stauder explained how European patents have the same effect in the EPC Member States as a national patent would have. In the same line of thoughts, regarding an action for patent revocation brought before a national court, the court will apply the EPC grounds for patentability as well as the precedent set by the EPC Member States in their national case law.

Concerning the interpretation of European patent claims, national courts should aim for a uniform application of the EPC Law by finding a balance between the strict literal meaning of the claim and the fair protection of the patentee. In this process of harmonisation, several national courts have recognised the value of foreign decisions and the doctrine set by foreign academic lawyers as a relevant persuasive tool (e.g. Lord Diplock in Fothergill v Monarch Airlines and Lord Justice Jacob in Actavis v Eli Lilly).

All in all, the speakers provided attendees with a dynamic and in-depth analysis of the current international patent system and the further developments about to take place. All the speakers were particularly successful in getting the public involved in the discussion, helping them to get a better picture of the current, and forthcoming, European patent system.

Maria Paola Mulè, María Victoria Rivas Llanos and Julius Berg Kaasin are all L.LM. 2013/2014 candidates at Queen Mary University of London, Student Research Fellows at Queen Mary Intellectual Property Research Institute (QMIPRI), and Assistant Editors of the Queen Mary Journal of Intellectual Property (QMJIP)

BLACA seminar on parody – event review

by cpocock

Thursday, 13 March, Berwin Leighton Painer hosted the Spring BLACA seminar which turned around parody. This event was most topical in the light of the legislative revisions to the draft legislation and the parliamentary question on its advancement earlier this month.

The panel was divided in two groups, on the one hand Prof Martin Kretschmer (Professor of Intellectual Property Law at Glasgow University and Director of CREATe), Dr. Kristofer Erickson (Lord Kelvin Adam Smith Fellow in Social Sciences; CREATe) and Dr. Dinusha Mendis (associate Professor in Law and Co-Director of the Centre for Intellectual Property Policy and Management CIPPM) advocating for a parody defence. And on the other hand Jaani Riordan (Barrister at 8 New Square) was set the task of arguing against implementing a specific parody defence.

The first half of the conversation focused on the results of the empirical study carried out by CREATe on Copyright and the Economic Effects of Parody. The panel first offered a comparative review of the requirements countries use to judge a parody, setting out a list of nine different criteria used to decide whether or not the parody is an authorized use (more details can be found in ‘Study II’). The list is as follows:

  • Factor 1: if it is non-commercial;
  • Factor 2: if it does not have an adverse effect on the market for the original;
  • Factor 3: if it does not use more of the original than necessary;
  • Factor 4: if it adds some significant new creation;
  • Factor 5: if it represents a humorous or critical intention;
  • Factor 6: if it is directed at the work used;
  • Factor 7: if it does not harm the rights of the creator of the original work;
  • Factor 8: if it is sanctioned under the rules of social custom;
  • Factor 9: if it acknowledges the source of original work.

The practical applicability of each criterion was illustrated by instances where they have been employed by the respective national courts (e.g.: factors 7 and 8 as understood in the Court of Appeal of Amsterdam in the ‘Miffy’ case: Mercis B.V. /Punt.nl B.V., decision 13 September 2011, LJN: BS7825).

Following this background, the panel then set forward a detailed analysis of the data, its collection and interpretation (for more information on this aspect of the study I would refer you to their findings which can be found here). Based on a time specific snapshot of the top one hundred charts and their respective parodies and, for our purposes here, this study concluded that:

  • ‘There is no evidence for economic damage to rights holders through substitution: The presence of parody content is correlated with, and predicts larger audiences for original music videos’; and
  • An increasing amount of parodies are of a high quality (quasi-professional videos) and very creative.

The potential consequences of this finding are two-fold. The lack of economic harm and ‘market substitution’ character of the parodic videos would mean that a majority of the videos would qualify for the defence. Further, the suggestion that the parodies in fact help increase the viewing rate/ numbers was very interesting. The second element of this finding is the creative aspect of the parodies: this would mean that if the UK did indeed adopt a requirement for the use to be transformative it is very likely that a majority of parodic videos available would qualify for this defence and further benefit of their own separate copyright protection.

It seemed fair to conclude that in the light of these findings, a specific defence of parody would be in line with much of the practice of making parodies and would not render most material infringing. This would also suggest that the implementation of this defence would not have a negative impact on freedom of speech limitations as a majority of parodies would be found to amount to ‘fair use’.

 

The floor was then left to a very eloquent Jaani Riordan who argued the case against legislating for a specific defence of parody. Opening his statement by highlighting the social value of parody and its strong history in the UK, Riordan also pointed out how it is gaining increasing importance through social media.

Riordan first referred to the Oxford Dictionary’s definition of parody (which has not been updated since 1933) and structured his argument around the inherent uncertainty stemming from the terminology used in approaching parody.

Riordan put forward how the division of the term parody into ‘pastiche’ and ‘caricature’ and their seemingly interchangeable use is of no assistance in defining the scope of this defence in law. Definitional concerns also touch upon the overlap with other sectors such trade mark law with concerns of dilution, commercial aspects of the parodies (stream of profitable business revenue; suing for account of profits) and other problems such as the role Moral Rights should play (namely that of acknowledgement) within the defence of parody. Making prolific use of the case law, Riordan also showed how judicial uncertainty around the issue is very problematic, highlighting for instance the failure of free speech arguments in Ashdown.

Another problem that Riordan pointed to was how this defence might require the judges hearing the cases to ‘delve into the work itself’ and potentially exercise meritorious judgements which, he argued should be avoided at all cost: their role being to provide judicial and not artistic appreciation.

Finally, after a very visual presentation making extensive use of illustrations (a personal favourite being a portrait of Johnny Vegas currently on show at the National Portrait Galery and previewed here), Riordan made an appeal for more clarity and the need for the creatives involved in the production of parodies to understand the laws regulating their practice. The danger of such a lack of clarity would be the stifling effect on this socially beneficially activity.

Concluding on a most interesting Q&A session, and after both sides of the panel had made a good case for and against specific legislation on parody, the guests were invited to discuss these matters more informally around an apéritif.

 

Catherine Pocock is Assistant Editor QMJIP and LLM Candidate in the Centre for Commercial Law Studies, Queen Mary, University of London