The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Tuesday, 30 June 2015

Tuesday tiddlywinks

The advantage of a furry face:
no-one can see you blush
Justia Blawgsearch. Via a post on the excellent Copyright Litigation blog ("All practice, no theory") this Kat read with happiness, excitement and not a little embarrassment that the IPKat weblog has come top in the Justia Blawgsearch list of the "25 Top Copyright Blogs of All Time".  

Once again the IPKat, Merpel and all the blog's contributors take the opportunity to say a big thank-you to their readers and information-providers and to the litigants, legislators, judges and consumers who have combined to make copyright what it is today ...

Matters arising 1. Earlier this month, thanks to Axel Paul Ringelhann, the IPKat announced the reference to the Court of Justice of the European Union of some Community trade mark questions relating to phonetic similarities between marks in Case C-223/15 Combit Software. The official English translation of those questions is now available and the UK Intellectual Property Office invites comments by 10 July 2015 which might persuade the UK government to make representations of its own. Details can be found here.

Matters arising 2. Yesterday morning the IPKat posted a guest article by Revital Cohen, "Is UberPOP a transport service? A new reference to the CJEU". Frustratingly the version of the article that was originally posted managed to de-format itself and almost all the hyperlinks vanished.  The article has since been repaired and the hyperlinks restored. You can now read it here while clicking to your heart's content. Apologies to all our readers -- and of course to Revital.

At sea with Oracle? Better than a coracle
Matters arising 3. Way, way back in December of last year the Kats hosted a guest blogpost from Thomas Dubuisson, "Oracle v Google: are certain elements of the Java platform entitled to copyright protection?" The US Supreme Court has just refused to hear Google's appeal. As Thomas explains, iGoogle, Inc. v Oracle America, No. 14-410 a petition for a writ of certiorari was finally denied since Google failed to convince the US Supreme Court to hear the case. It is a big victory for Oracle! As a reminder, on 6 October 2014, Google filed a petition asking that court to review the Federal Circuit's appellate ruling holding Oracle's asserted Java API declaring code to be copyright-protected. This saga, which already started four years ago, is still not over. The case is now sending back to the District Court in CA for a retrial on API under 'fair use'.

Most events offer refreshments ...
Forthcoming events. The IPKat's calendar of Forthcoming Events can be checked out here -- and it has some recent additions, so do take a peep. Additionally, the July events diary of the Queen Mary Journal of Intellectual Property can be accessed here. One forthcoming event that this Kat is particularly excited about is the JIPLP-GRUR seminar on Tuesday 8 September on the enforcement of IP rights in the wake of the IP Enforcement Directive.  You can get all the relevant details by clicking here. It's free, it's fun and it's instructive. See you there?

Around the weblogs 1. The SiNApSE blog runs a "young intellectuals" feature, in which bright young IP talent is interviewed.  Six people have been interviewed so far, most recently Dominic D'souza. You can check the series out here.  Another blog which has recently come to this Kat's attention is Chillin' Competition, composed by Pablo Ibáñez Colomo -- it's well worth a look. Meanwhile, Mark Anderson, the doyen of IP transactional bloggers, expresses in IP Draughts his own perplexity at the increasingly execrated ruling of the US Supreme Court on post-expiry royalty payments in Kimble v  Marvel. Finally, from the European Commission's blog, keen holiday snappers can put their minds at rest after digesting the good news that "Europe is not banning tourist photos of the London Eye" (Katpat to Chris Torrero), a theme addressed by fellow Kat Eleonora earlier today. In short:
"Recent press reports may have left readers with the idea that the EU is about to legislate to “ban” or “censor” holiday snaps of famous monuments and art works and/or make it illegal to upload them to Facebook or Instagram. There is no such legal proposal on the table. Even if there were, it would require the agreement not only of MEPs but of a large majority of Member States, most of which, like the UK, currently apply “freedom of panorama”. That principle allows anyone to publish, even for commercial ends, images of public places, including the buildings and public art works permanently located in those places. Some other Member States, including France and Belgium, have laws which restrict – usually to non-commercial purposes – the use of such images without prior authorisation. But they do not seek to ban people from taking photos for their own pleasure. Neither is there any evidence that tourists are being dragged through French or Belgian courts simply for uploading holiday photos to their Facebook page, as the reports suggest would be the case if similar rules were extended EU-wide".

Around the weblogs 2. The MARQUES Class 46 and Class 99 weblogs both invite their readers to participate in the organisation's "tell us who you are and what you want" survey, which offers a bottle of Luxembourg Cremant as a random prize to one lucky adult respondent.  Class 46 also carries Laetitia Lagarde's useful posts on proof of priority in Community trade mark (CTM) opposition proceedings and on the inevitable problems faced by anyone trying to register the word essence as a CTM for cosmetics. The jiplp weblog hosts a follow-up by Jakub Mrozowski and Michal Siciarek to Tomasz Rychlicki's earlier CTM piece on how to justify decisions while rejecting the evidence.

Looking for a job? The United Kingdom Intellectual Property Office is currently advertising for a new, London-based press officer. The particulars can be accessed and read here. Being a media relations officer is not apparently for the faint-hearted, the position being "highly rewarding" [not that these words refer to the remuneration ...] and, in words that could have been specially selected by the Delphic Oracle, an "active job which you will be hard pressed to match".  

Are EU policy-makers fighting the right copyright battles?

Amidst all these polite conversations
around EU copyright reform ...
Debate is currently being undertaken at the level of EU institutions as to whether the existing legislative framework in the area of copyright should be updated. 

In May 2015 the EU Commission issued its Digital Single Market (DSM) Strategy [here]. As far as copyright is concerned, despite earlier statements by Commissioners Ansip (from @Ansip: “We are reforming & modernising #copyright rules to get rid of pointless barriers on transfer & access to digital content” (23 February 2015); “#copyright rules fit for digital age? I don’t think so” (19 March 2015)) and Oettinger (from @GOettingerEU: “Modern #copyright rules … are the key goals for 2015” (6 January 2015)), the DSM Strategy does not contain much. 

Policy action is in fact only likely to occur in relation to three issues: (1) (lack of) cross-border access to content and its portability; (2) text and data mining for non-commercial and commercial purposes alike; and (3) discussion around civil enforcement and the role of internet service providers. 

In addition to the very narrow focus of proposed interventions, the DSM Strategy does not clarify what legal instruments (if any) would be adopted to undertake reform in the proposed areas.

In parallel to initiatives on the side of the Commission, also the European Parliament has engaged in the copyright reform debate. Pirate Party member and MEP, Julia Reda, was tasked with drafting a Report on the implementation of Directive 2001/29/EC (‘the InfoSoc Directive’). The original version [here] contained a number of ambitious proposals to reform EU copyright. Following its publication in early 2015, numerous amendments were however presented, so that the text approved by the Legal Committee of the European Parliament in mid-2015 represents a significantly watered-down version of the original Report [a final vote in the plenary of the Parliament is due to take place in early July].

Among the things that have generated a heated debate there is the so called freedom of panorama [here]. Article 5(3)(h) of the InfoSoc Directive allows Member States to introduce into their own national copyright laws an exception or limitation to copyright exclusive rights to allow "use of works, such as works of architecture or sculpture, made to be located permanently in public places". 

... Is it really worth fighting
against freedom of panorama?
Due to the optional (with the sole exclusion of the temporary copies exemption) nature of exceptions and limitations in Article 5 of the Directive, there is a number of Member States, eg France and Italy, that have decided not to transpose Article 5(3)(h) into their own copyright laws.

In the Report as originally enacted, among other things Ms Reda recommended that freedom of panorama be made mandatory (rather than merely optional) for Member States to implement into their own legal regimes. 

The amended version of the Report (as approved by the Legal Committee) includes a recommendation that "the commercial use of photographs, video footage or other images of works which are permanently located in physical public places should always be subject to prior authorisation from the authors or any proxy acting for them".

To translate the latter proposal to reality it would be necessary to amend the InfoSoc Directive. However, at the moment re-opening the InfoSoc Directive does not seem to feature high in the agenda of the Commission (although it is unclear how text and data mining for commercial and non-commercial purposes alike would be achieved).

Is it smart?
In any case, besides legal technicalities the current approach to (lack of) freedom of panorama has generated (outraged) headlines. These have ranged from ‘How the absurd EU copyright law threatens to censor holiday snaps’ of The Times (24 June 2015) to ‘Why the EU wants to stop you posting your vacation photos online’ of Forbes (25 June 2015), and ‘Freedom of panorama: EU proposal could mean holiday snaps breach copyright’ of The Telegraph (25 June 2015). 

Such reactions suggest a complete lack of support on the side of the public opinion. Thus the question that arises is whether relevant EU policy-makers have chosen the right battle to fight: is it so vital to restrict freedom of panorama at the EU level?     

Paucity of case law even in those Member States that do not acknowledge freedom of panorama may suggest that this is not really an issue about which relevant rightholders are so passionate that they cannot stand the idea of not suing alleged infringers. 

All in all, the main message that is being conveyed and perceived by the general public is that copyright imposes unreasonable restrictions and is, ultimately, a ridiculous set of norms. 

Is this good for creators, copyright owners, and users of copyright-protected works alike? Not really.

(This is the text of a forthcoming Editorial in the Journal of Intellectual Property Law & Practice)

Patent Déjà vu - Hospira v Genentech and another patent dies

There has been a superabundant deluge of patent cases last week, with two decisions from the Court of Appeal and two from the Patents Court.  So it is with slight delay that the IPKat comes to the latest decision in the apparently endless Hospira v Genentech saga.  Hospira is seeking to invalidate all of Genentech's secondary patents relating to the cancer drug trastuzumab (Herceptin) so that it can market a generic version now that the SPC for the basic patent has expired.

Two patents were killed off in the first action (reported here and confirmed on appeal here).  Another two were killed off as reported here (some claims survived in one patent, but these are apparently not of concern to Hospira); this is currently under appeal.

The present case Hospira UK Ltd v Genentech Inc [2015] EWHC 1796 (Pat) concerns EP (UK) 1037926, which concerns a combination of trastuzumab with another favourite of pharmaceutical litigation, taxol (and other taxanes).  The unbrief main Swiss claim (there was also a claim in the EPC 2000 format) as granted reads (with the integer numbering adopted by the Court):

[1] Use of an anti-ErbB2 antibody in the preparation of a medicament
[2] for treatment to provide clinical benefit as measured by increased time to disease progression of malignant breast cancer characterised by overexpression of ErbB2 in a human patient,
[3] wherein said antibody binds to epitope 4D5 within the ErbB2 extracellular domain sequence as determined by a cross-blocking assay using said antibody and antibody 4D5 obtainable from deposit ATCC CRL 10463,
[4] and wherein the method comprises combined administration of the antibody with a chemotherapeutic agent which is a taxoid and not in combination with an anthracycline derivative,
[5] wherein the combined administration has:

[a] clinical efficacy as measured by determining time to disease progression and

[b] reduced myocardial dysfunction compared with combined administration of the antibody and anthracycline derivatives.

Mr Justice Arnold construed the claim as requiring by integer [2] that it is known to, or reasonably foreseeable by, the manufacturer of the medicament that the antibody will be intentionally administered in combination with a taxane for the relevant therapeutic purpose.  He also construed that integer as requiring that the combination of antibody and taxane be more effective than the taxane alone, resulting in an increased time to disease progression (abbreviated as TTP).

There was only one piece of prior art to consider -  Baselga et al, "HER2 Overexpression and Paclitaxel Sensitivity in Breast Cancer: Therapeutic Implications", Oncology, 11, Supp. 2, 43-48 (March 1997) ("Baselga 97").  This describes, among other things, a Phase III trial of trastuzumab in combinations with paclitaxel and other agents, but does not disclose any results from that trial, but it does disclose the results from the Phase I and II studies.

The judge considered that Baselga 97 did not enable the clinical benefit claimed in the Patent to be directly and unambiguously derived, and therefore that the claim was novel.

Turning to inventive step, Arnold J set out that the authorities required "a reasonable or fair expectation of success" for a claim to be obvious.  Thus he considered the issue to be whether the skilled person would have a fair expectation of success, meaning a fair expectation of increased efficacy as measured by TTP of the combination compared to taxane alone, if he were to undertake the phase III trial.  Even though the results of the trial were not disclosed in Baselga 97, because it was ongoing, the judge found that the results that were in the document, in particular that the results of the Phase II trials and the xenograft studies were described as "positive" and "encouraging", would cause the skilled person to have had a reasonable expectation of success in the Phase III trial.

Therefore he found the claim to be obvious.

A relatively brief decision merits a relatively brief report.  One thing that does strike this Kat is that in the first of this series of cases, EP 1 210 115, directed towards a dosage regime of trastuzumab, was held to be invalid on the basis that the skilled person would attempt a trial of the claimed regime; there was no need for a fair expectation of a positive outcome of the trial - only sufficient expectation to actually conduct it.  As far as this Kat can tell, this is because in that case the claim did not recite any clinical benefit, so there was no need for the skilled person to expect one for the claim to be obvious.  But the IPKat would be interested in readers' views.

Letter from AmeriKat: Spiderman's web ensnares the US Supreme Court in Kimble v Marvel

Try as she might, the AmeriKat is
no Spiderman...
It was a busy week for the US Supreme Court last week, as it delivered blockbuster judgments on Obamacare and same-sex marriage rights.  No surprise that the Supreme Court's decision in Kimble v Marvel may have been missed by all but a few keen IP legal eagles. But not to fear, in superhero spirit the AmeriKat has come to the rescue...


Back when the AmeriKat was only a kitten, Stephen Kimble obtained a patent for a toy (US Patent No 5,072,856).  The toy allowed children to role-play as a "spider person" by shooting webs "from the palm of [the] hand" by way of pressurized foam string.  The patent was filed on 25 May 1990.

Kimble then met with the president of Marvel, the maker of Spider-Man products (among other super hero comic book characters), with the view to sell or licence his patent.  Soon afterward, Marvel started selling a toy dubbed the "Web Blaster" - a toy which encompassed a polyester glove and a canister of foam that when deployed would mimic the infamous Spider Man's web.  In 1997, Kimble sued Marvel for patent infringement (among other claims).  The litigation settled and Marvel agreed to purchase Kimble's patent in exchange for about $500,000 and a 3% royalty on Marvel's future sales of the Web Blaster. The royalty payments were not subject to an end date.  In the words of the court, the parties apparently contemplated that the royalties would "continue for as long as kids wanted to imitate Spider-Man (by doing whatever a spider can)."

Everything was going along fine until Marvel stumbled across Brulotte v Thys (1964).  In this case the US Supreme Court held that a patent holder cannot charge royalties for the use of his invention after its patent term has expired.  This would have the effect of sunsetting the royalty payments under the Kimble/Marvel agreement.  But at the time of negotiating the settlement, neither party was aware of the case.  Nevertheless, Marvel sought declaratory judgment that the licence payments could stop.  The federal district court and, then, the Court of Appeals for the Ninth Circuit agreed (although begrudgingly on the basis that Brulotte was "counter-intuitive" and "unconvincing").  Despite the Brulotte decision, Kimble sought the help of the Supreme Court asking it to depart from the rule in favor of a "flexible, case-by-case analysis...under the rule of reason" under anti-trust law.  This rule requires that the courts analyze a practice's effect on competition (i..e whether a patentee is curtailing competition).

Justice Kagan, adding the
"super" to the Supreme Court
The Question for the Court

Should the US Supreme Court overrule Brulotte?

The Answer

No.  Adhering to the principles of stare decisis (i.e. the notion that today's Court should stand by yesterday's decision), the US Supreme Court refused to overrule Brulotte.  Although they recognized there are critics of the Brulotte rule (which included the dissent), those critics "must seek relief not from this Court but from Congress".

The Reasoning

The Supreme Court's decision, lead by Justice Kagan, can be boiled down into three maxims:

Maxim #1:  All good things come to an end, even patents.
As Justice Kagan put it:  "Patents endow their holders with certain super powers, but only for a limited time".  This was the balance struck by Congress to incentivze innovation but to ensure access to discoveries in a "post-expiration public domain".  The balance is struck by way of the 20 year duration of a patent which runs from the day the application was filed.  Once expired, then the patentee's ability to control the use of the patent expires.  The US Supreme Court has carefully guarded this cut-off in a series of cases of which Brulotte was one of them.  In that case by an 8-1 vote, the US Supreme Court held that a licence agreement was unenforceable in so far as it provided for the payment of royalties after the last of the patents incorporated into a hop-picking machine had expired.  The court cited the decision of Scott Paper holding that any attempt to limit what a licensee can do with an invention following expiration of the patent would run "counter to the policy and purpose of the patent laws."  To hold otherwise, would allow the patent monopoly to continue beyond the patent period (although it would only be the licensee who would be impacted and not the entire world).
Maxim #2:  If it ain't broke, don't reverse it.
Kimble's now infamous
sticky spiderweb string patent
In a few pages of exquisite explanation, the Court held that to do so would cut across the principle of stare decisis.  Although stare decisis is not an "inexorable command" it is nevertheless the desirable course as it promotes the predictable and consistent development of law (Payne v Tennessee) and avoids the expensive reopening of litigation.  However, the Court noted that respecting the principle can mean "sticking to some wrong decisions".  Nevertheless, when there are critics of a decision, the opponents have the opportunity to take their complain "across the street, and Congress can correct any mistake it sees". But, continued Justice Kagan, in this case Congress has refused several opportunities to revisit Brulotte namely when it has revised/re-examined the period of protection for patents (see for example, the Uruguay Round Agreements Act).  Congress has also rejected proposed legislation that would have replaced the Brulotte rule with Kimble's anti-trust style analysis.  Congress' reluctant to meddle with the law strengthened the application of stare decisis especially in case like this one where statutory IP law and contractual law intersected. 
Reversing Brulotte had to be for a "superspecial justification" which could not be found in Kimble's argument.  First, there was no justification in the statutory and doctrinal underpinnings of the Brulotte rule (i.e. a patent's duration) as neither had changed over time.   Second, Brulotte is not unworkable; it is simple to apply.  All that needs to be asked is whether a licence agreement provides royalties for the use of a patent post-expiry.  If it does not, then Brulotte does not apply.  Kimble's anti-trust rule of reason, in comparison, is far more unwieldy and would, in the Court's opinion, produce "notoriously high litigation costs and unpredictable results".  
Maxim #3:  Complain to Congress, not the Court.
Please file your complaints with
the US Congress
Kimble's reasoning that Brulotte rests on a mistaken view of the competitive effects of post-expiration royalties and suppresses technological innovation  may give Congress a reason to legislate the Brulotte rule, but did not justify the Court doing so.  Kimble argued that the Brulotte rule assumed that post-patent royalty arrangements are anti-competitive but that was not the case; more often than not they increase competition on the basis that a longer payment period is generally a lower one leading to lower consumer pries.  Although the Court did not take issue with Kimble's economic reasoning, they nevertheless considered that if such economic misjudgement existed it was the job of Congress to fix it.  Unlike antitrust law via the Sherman Act, patent laws "do not turn over exceptional law-shaping authority to the courts.  Accordingly, statutory stare decisis...retains it's usual strong force".  In any event, the Court did not consider that Brulotte was premised on a misunderstanding of the economic concepts at play.  Competition considerations did not have a role to play in Brulotte as patent law does "not aim to maximize competition (to a large extent, the opposite.)"  The patent term is also a "bright-line rule" that does not call for "practice-specific analysis" as demanded under the anti-trust rule of reason principle.  Taken together, economic policy had no role to play in Brulotte.  Kimble's real complaint likely boiled down to the merits of such a patent policy, but again the Court said that was a complaint for Congress not them.  
In conclusion, the Court held:
"What we can decide, we can undecide. But stare decisis teaches that we should exercise that authority sparingly. Cf. S. Lee and S. Ditko, Amazing Fantasy No. 15: “SpiderMan,” p. 13 (1962) (“[I]n this world, with great power there must also come—great responsibility”). Finding many reasons for staying the stare decisis course and no “special justification” for departing from it, we decline Kimble’s invitation to overrule Brulotte."

What does this mean?

Not everyone is happy in the Supreme Court
following the decision in Kimble
The Brulotte rule and the "bright-line rule" of patent duration remain steadfast.  Patentees can continue to licence their patent rights but only until the expiry of the patent.  Once the patent term expires, that contract is invalid under the Brulotte rule (subject to the contractual caveats outlined in the decision). The Court has also distinguished the role of the courts in developing anti-trust law with that of the statutory provisions in patent law, with the former permitting increased judicial involvement.

Although Kimble lost, he will have taken some solace in the vocal dissent from Justice Alito, joined by Chief Justice Roberts and Justice Thomas, who declared the Brulotte decision as a "bald act of policy making" and one that:
",..interferes with the ability of parties to negotiate licensing agreements that reflect the true value of a patent, and it disrupts contractual expectations. Stare decisis does not require us to retain this baseless and damaging precedent."
In a final damning conclusion, Justice Alito states
"In the end, Brulotte’s only virtue is that we decided it. But that does not render it invincible. Stare decisis is important to the rule of law, but so are correct judicial decisions." 
Time to walk across the street and knock on Congress' door....

Payment for use of protected barley seeds: when prospects for dodging payment recede ...

Case C‑242/14 Saatgut-Treuhandverwaltungs GmbH v Gerhard und Jürgen Vogel GbR, Jürgen Vogel, Gerhard Vogel is a request for a preliminary ruling from the Court of Justice of the European Union (CJEU) made by the Landgericht Mannheim (Germany), on a Community plant variety matter. Credit must go to the CJEU for dealing with this reference so speedily. The request was only received at the CJEU on 19 May 2014 and we have a ruling within just 14 months -- a sure sign that (i) the court is getting better at dealing with these references (which can provide a lengthy break in the national litigation that generates them) or that the questions, or (ii) the questions are getting easier.

So what led to this reference in the first place? Saatgut-Treuhandverwaltungs (STV), an association of plant variety right holders, managed the rights of the holder of the Finita winter barley variety, which was protected under Regulation 2100/94 [on Community plant variety rights]. STV published an online list setting out all the protected plant varieties the rights to the administration of which it has been granted in the course of various marketing years, as well as the planting fees payable for those varieties. Each year STV would then ask farmers, without specifying a particular variety, to provide information on any planting of protected plant varieties for which they managed the rights, sending to them planting declaration forms for that purpose, together with a guide listing all the protected varieties for which they administered the rights in the relevant marketing year, together with the corresponding right holders and persons enjoying rights of exploitation.

The Vogels, who had no contractual relations with STV, did not respond to those requests for information. However, in December 2011 STV became aware that in the marketing year 2010/11 the Vogels had arranged for 35 quintals of Finita seed to be processed. STV wrote to the Vogels, asking them to verify this information and to send it information concerning that planting by 20 June 2012 at the latest. Again, the Vogels did not reply. In July 2012 STV claimed payment from the Vogels of 262.50 euro, this being the full 'C-Licence' fee that would be due for licensed use of Finita seeds, as compensation for the damage suffered as a result of the undisclosed planting of that protected variety. No payment was forthcoming, so STV sued for it under Articles 94(1) and (2) of the Regulation.

The worst bit about bringing in the barley was
helping George find his lost contact lens ...
Said STV, the Vogels are obliged to pay to it reasonable compensation in an amount equivalent to the full C-Licence fee, under Article 94(1), because they carried out planting ‘without being entitled to do so’ within the meaning of that provision, and were not entitled to avail themselves of the derogation in Article 14(1) since they failed to comply with the requirement to pay equitable remuneration laid down in Article 14(3) . This obligation to pay is enforceable, STV added, whether a request for information is made by the holder of the protected plant variety or not, the farmer must make the payment before sowing and the protected seed and, in any event, by the end of the marketing year in which the protected seed is planted.  Finally, STV maintained, the information published on its website and the guide listing all the protected varieties which it managed, which was sent each year to farmers, would let the Vogels calculate for themselves and then pay the amount due for planting those varieties.

The Vogels [who could have saved an awful lot of hassle and inconveniencing a good many IP bloggers and commentators, whether they were right or wrong, by just paying up 262.50 euro and getting on with their lives, says Merpel] denied liability to pay the full C-Licence fee and said they owed, at the most, a reduced fee, on the ground that the planting was ‘authorised’ within the meaning of Article 14(1). Nor were they required to reply to STV's request for information, since that request did not relate to the current marketing year. In other words, there would have to be an infringement of the obligation to provide information in order for the conditions governing entitlement to compensation to be satisfied.

The Landgericht Mannheim was unsure if STV was right that a farmer is required to pay, of his own initiative, the remuneration referred to in Article 14(3) of Regulation 2100/94 before sowing, in particular in the light of Article 6(1) of Regulation 1768/95 [implementing rules on the agricultural exemption provided for in Article 14(3) of Council Regulation 2100/94]. Accordingly that court decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:
‘(1) Is a farmer who has planted propagating material obtained from a protected plant variety without having concluded a contract for so doing with the plant variety right holder required to pay reasonable compensation, as provided for in Article 94(1) of Regulation No 2100/94, and — if he has acted intentionally or negligently — to compensate the holder for any further damage resulting from the infringement of the plant variety right in accordance with Article 94(2) of that regulation, where he has not yet fulfilled his obligation under the fourth indent of Article 14(3) of that regulation, in conjunction with Articles 5 and 6 of Regulation 1768/95, to pay an equitable remuneration (planting fee) at the time when he actually made use of the product of the harvest for propagating purposes in the field?

(2) If the first question is to be answered to the effect that the farmer can still fulfil his obligation to pay an equitable planting fee even after he has actually made use of the product of the harvest for propagating purposes in the field, are the aforementioned provisions to be interpreted as fixing a period within which a farmer who has planted propagating material obtained from a protected plant variety must fulfil his obligation to pay an equitable planting fee in order for the planting to be capable of being regarded as “authorised” for the purposes of Article 94(1) of Regulation 2100/94 in conjunction with Article 14 of that regulation?’
On 5 March the Advocate General advised the CJEU to rule as follows:
Articles 14 and 94 of Council Regulation ... 2100/94 ... in conjunction with Article 5 et seq. of Commission Regulation ... 1768/95 ... implementing rules on the agricultural exemption provided for in Article 14(3) ... must be interpreted to the effect that a farmer is able to make use of the product of the harvest which he has obtained by planting, on his own holding, propagating material obtained from a protected variety without the authorisation of the right holder, provided he pays the holder an equitable remuneration in accordance with Article 14 within a period beginning on the date on which the farmer actually seeded the product of his harvest and expiring at the end of the marketing year in which that use took place.
The CJEU accepted the position of the Advocate General and dismissed the arguments raised by the Vogels, who by this time had been supported by the Spanish government. Said the CJEU [at 28 to 31]:
28 ... to allow a farmer who has planted propagating material obtained from a protected plant variety (farm-saved seed) to fulfil, without any time-limit, the obligation to pay equitable remuneration by way of derogation and, thereby, avail himself indefinitely of the derogation under Article 14 ... would deprive the legal proceedings provided for in Article 94 of that regulation of any useful purpose. Moreover, since it provides that proceedings may be brought against any infringer who has failed to comply with that payment obligation, Article 94 ... precludes such a person from being able to regularise his situation at any time, including after the holder of the plant variety right has discovered an undisclosed use of the protected plant variety. If follows that only by defining a payment period is it possible to ensure that such proceedings are effective.

29 ... the holders of plant variety rights alone are responsible for the control and supervision of the use of the protected varieties in the context of authorised planting and they depend, therefore, on the good faith and cooperation of the farmers concerned [citing Case C-509/10 Geistbeck, noted by the IPKat here]. Accordingly, the absence of a precisely defined period within which farmers are required to comply with the obligation to pay equitable remuneration by way of derogation is liable to encourage farmers to defer that payment indefinitely, in the hope of avoiding payment altogether. To allow farmers to avoid complying with their own obligations towards holders in such a way would be at odds with the objective set out in Article 2 of Regulation No 1768/95 of maintaining a reasonable balance between the legitimate interests of the farmers and the holders concerned.

30 ... it is apparent from Article 7(2) of Regulation No 1768/95 that the marketing year during which payment of the remuneration is due starts on 1 July and ends on 30 June of the subsequent calendar year. Although that provision concerns the definition of areas dedicated to growing plant varieties by small farmers, it clearly shows that the marketing year during which propagating material obtained from a protected plant variety (farm-saved seed) was planted was regarded by the institution responsible for that regulation, when establishing the implementing rules for Article 14(3) ..., as the relevant period in which the equitable remuneration by way of derogation is to be paid.

31 Thus, if he has failed to pay the equitable remuneration by way of derogation within the period that expires at the end of the marketing year during which he planted propagating material obtained from a protected plant variety, without having concluded a contract for so doing with the plant right holder, a farmer must be regarded as having effected, without being entitled to do so, one of the acts set out in Article 13(2) of Regulation No 2100/94, which entitles the holder to bring the forms of action provided for in Article 94 of that regulation.
Accordingly the CJEU answered the Landgericht Mannheim's questions thus:
In order to be able to benefit from the derogation provided for in Article 14 ... from the obligation to obtain the authorisation of the holder of the plant variety right concerned, a farmer who has planted propagating material obtained from a protected plant variety (farm-saved seed) without having concluded a contract for so doing with the holder is required to pay the equitable remuneration due under the fourth indent of Article 14(3) of that regulation within the period that expires at the end of the marketing year during which that planting took place, that is, no later than 30 June following the date of reseeding.
This seems about right, thinks the IPKat, though the intention of the EU legislature could have been expressed a little more simply and clearly.

The difference between winter barley and spring barley, here
Barley wine here and here

Monday, 29 June 2015

Never too late: if you missed the IPKat last week ...

From the brilliant and fertile brain of our staunch supporter and comrade-at-arms Alberto Bellan comes this week's harvest of last week's Katposts, the 52nd in the series (yes, we've kept them going for an entire year!)  Alberto's summary of the choicest posts from last week, which should help bring you up to speed if you missed anything, reads like this:
Valentina provides a useful summary of the major innovations of the European Trade Mark Reform draft just issued by the EU Council [on which the IPKat recently reported here].

* Hello goodbye: no estoppel as licensee gets the push

Motivate Publishing FZ LLC and another v Hello Ltd [2015] EWHC 1554 (Ch) is a Chancery Division, England and Wales, ruling concerning termination, (non)-renewal, and estoppel within the context of an international publish licence agreement. 

* Poll results: Inventor of the Year

A few weeks ago, the IPKat asked whether the European Patent Office (EPO) ought to be organising and funding the European Inventor of the Year award. His concerns were twofold: the resources that are devoted to this event, and the fundamental question of whether the EPO ought to be seen to be ranking different inventions in terms of their merits. Also, the IPKat ran a sidebar poll to see how readers feel about this event. Here are the results, presented by David.

* Are you a new IP lawyer in search of a network? Here's something for you

Are you a 'new' IP practitioner or academic -- whether with a legal or non-legal background -- looking for a network to join in order to share ideas and discuss topical issues facing this great area of the law? Then you may be interested in the recently created New IP Lawyers Network, which Eleonora presents in this post.

* Delfi v Estonia: ISPs and the freedom to impart information

Katfriend Christina Angelopoulos writes about Delfi v Estonia, a bizarre decision in which the European Court of Human Rights ruled on whether an online newspaper could be liable for the comments of its readers.

* Consultation event on Court Fees for the Unified Patent Court - and news on timing of UK implementation

Darren reports on the consultation event on the Court fees for the Unified Patents Court, a joint enterprise between the Intellectual Property Office, the IP Federation, and the Chartered Institute of Patent Attorneys.

* Not so secret agent: when Bond isn't 007 but 0.77

In "The wounded patent survived, was only just infringed, but no injunction"here, Darren wrote about the decision of Birss J in Smith & Nephew Plc v ConvaTec Technologies Inc [2013] EWHC 3955 (Pat), a technically detailed case which amused Merpel, who commented that a case that started off being basically about chemistry ended up being basically about mathematics. The Court of Appeal (Lords Justices Kitchin, Briggs and Christopher Clarke), at [2015] EWCA Civ 607 , then allowed ConvaTec's appeal and dismissed Smith & Nephew's cross-appeal. Jeremy offers an introduction …

* Round, round: how to round? How do we round?

… and then Darren takes the floor for a more in-depth analysis.

* Canary Wharf: great place name, not much hope for a trade mark ...

Jeremy writes upCanary Wharf Group Ltd v Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch), a Chancery Division, England and Wales, decision with a history, and a curious trade mark tale too.

* A novel becomes a saga - Actavis v Lilly set to go on and on

The IPKat blogged last year about the masterful and erudite judgment of Mr Justice Arnold in Actavis v Lilly (judgment on BAILII here), concerning pemetrexed. In the brand-new Court of Appeal decision just out - Actavis UK Ltd & Others v Eli Lilly & Company [2015] EWCA Civ 555 (25 June 2015), Lord Justice Floyd (Lords Justices Kitchin and Longmore concurring) disagreed with Arnold J on two main issues. The floor goes to Darren.

* Council of Europe focuses on Eponia, and there's more to come

Pierre Yves le Borgn' [the apostrophe is not a typo -- it belongs to his name], a French Representative in the Parliamentary Assembly of the Council of Europe, has initiated a Declaration concerning recent developments in Eponia that has been signed by 82 MPs/senators, including four or the five main political group leaders. And who could tell this story better than our own lovely Merpel?

* Freedom of panorama: what is going on at the EU level?

A few days ago the Legal Committee of the European Parliament voted on an amended version of the draft Report prepared by MEP and Pirate Party member Julia Reda on the implementation of the InfoSoc DirectiveAmong the relevant amendments, there’s one concerning freedom of panorama. Do you know what that’s about? If not, Eleonora is here to give you the full scenario.

* Will proof of a well-known mark ultimately be determined by a brain scan?

A futuristic Neil imagines a time when consumers’ psychological/neurological associations could be measured (also) for the sake of assess a trade marks’ reputation

* Case management decisions in the Lyrica case

The ongoing case between Warner-Lambert (a subsidiary of Pfizer) and Actavis concerning pregabalin (sold by Pfizer under the trade mark Lyrica, and by Actavis under the trade mark Lecaent) seems set to be the case of the year, Darren says.  After one Court of Appeal decision (reported by IPKat here and here) and four first instance decisions (see here,herehere and here), the IPKat has learned that there was a flurry of case management motions resulting in a decision that is not available on BAILII, but that the same Darren comments in this post.



Never too late 51 [week ending on Sunday 14 June] - GIs in France | IPBC Global 2015 | EPO recap | EPO and OAPI bff? | 3-D Lego trade mark | Garcia v Google | B+ subgroup | EU trade mark reform and counterfeits in transit | French v Battistelli | US v Canada over piracy | UK Supreme Court in Starbucks |  BASCA v The Secretary of State for Business | Patent litigation, music, politics | Product placement in Japan.

Never too late 50 [week ending on Sunday 7 June] - Swiss claims | Italian-sounding trade marks for cosmetics | “IP litigation and Enforcement” event | Saving WiFi | Spy scandal at the EPO | Rihanna v DC Comics | KitKat trade mark | Taste trade marks in the Netherlands | Connectivity and human rights | Trade secrets, client confidentiality and privilege | 3-d printing and counterfeiting | Ericsson v Apple in the FRAND battlefield.

Never too late 49 [week ending on Sunday 31 May] - Another copyright-exhaustion-and-software reference to the CJEU | ORO trade marks and GC | Patent Reform in EU | Copyright in the Bahamas | More and more references to the CJEU: communication to the public and linking | Trade secrets and the FoMo phenomenon | Independence of EPO’s BoA.

Never too late 48 [week ending on Sunday 31 May] - The meaning of EPO appeal system | 3D Printing and the law | Epo and external investigation firms | Umbrella designs | US Supreme Court in Commil USA, LLC v Cisco Systems | European Inventor Award | FIFA and brand integrity | Warner-Lambert v Actavis |  Wine in Black GmbH v OHIM | IP and busking | Swiss-style claims.

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