The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 29 June 2017

77M v Ordnance Survey - access to justice for SMEs in IPEC

It is getting more difficult to drag
the IPECat to the Chancery Division...
On 15 June 2017, His Honour Judge Hacon dismissed Ordnance Survey’s application to transfer proceedings from the Intellectual Property Enterprise Court to the Chancery Division in 77M Ltd v Ordnance Survey Ltd [2017] EWHC 1501 (IPEC).  One of the AmeriKat's colleagues, Josh Angrave, summarizes the decision for readers:

Background

The claim relates to a product developed by 77M called “Matrix”, which is a database of geospatial and other information. 77M maintains that it has spent over £500,000 in developing the product and, in the process, has licensed data from at least 15 organisations including OS.

77M issued a claim on 19 August 2016 seeking:
(i) a declaration that the development of its product does not infringe any database or copyright belonging to OS, and is not in breach of any contract with OS; 
(ii) a declaration that the licensing or use of the product by its customers does not infringe such rights or breach any contract with the OS; 
(iii) an injunction to restrain OS from making any allegations to the contrary effect; and 
(iv) an injunction to restrain OS from instructing third parties to withhold data from 77M.
77M, as an SME, sought the protection of the costs regime as it applies in IPEC, having taken out after-the-event insurance to cover the opposing side’s costs of the litigation up to the £50,000 cap (at [10-11]). Whilst OS, a government-owned body with substantial licensing revenues, stated that its claim to damages, in its counterclaim, may exceed the IPEC cap of £500,000 (at [20]).

The requirements to order a transfer

In accordance with CPR 63.18 (2) and the provisions of Practice Direction 30(9), when deciding whether to order a transfer of proceedings to or from the IPEC the court will consider whether:
"(1) a party can only afford to bring or defend the claim in the Intellectual Property Enterprise Court; and 
(2) the claim is appropriate to be determined by the Intellectual Property Enterprise Court having regard in particular to – (a) the value of the claim (including the value of an injunction); 
(b) the complexity of the issues; and 
(c) the estimated length of the trial. 
9.2 Where the court orders proceedings to be transferred to or from the Intellectual Property Enterprise Court it may – (1) specify terms for such a transfer; and
(2) award reduced or no costs where it allows the claimant to withdraw the claim. Access to Justice – ‘the decisive factor’"
The cost capping system of IPEC, and its predecessor the Patents County Court, is considered one such method of facilitating access to justice for smaller and medium sized enterprises who could otherwise not afford to litigate in the High Court. Indeed, Judge Birss in ALK-Abello Limited v Meridian Medical Technologies [2010] EWPCC 14, described access to justice for small and medium sized enterprises as a ‘decisive factor’.

However, in Comic Enterprises Limited v Twentieth Century Fox Film Corporation [2012] EWPCC 133, Judge Birss held that "the decisive factor" was Comic Enterprises’ approach to the litigation, despite its being an SME (Katpost here). In that case, Birss transferred the proceedings from the PCC to the High Court because Comic Enterprises ran the action as if it was full scale High Court style litigation rather that if it were a more modest claim in the PCC. Birss J concluded that “the ultimate objective of an order for transfer is to do justice between the parties” (at [48]). In the present case, His Honour Judge Hacon held that “a transfer to the general Chancery Division would raise a serious likelihood of having the practical effect of blocking 77M’s access to justice” (at[24]).

With regards to Practice Direction 30(9)(1), Hacon HHJ held that 77M as an SME with limited financial resources is precisely the kind of litigant that is entitled to the benefit of the costs cap in IPEC, subject to other considerations. In particular, Hacon HHJ stated: “I do not take the view that it is incumbent upon an SME to prove exhaustively that it cannot access loans from elsewhere to fund litigation” (at [14]). Notably, OS offered no formal undertaking that it would agree to limit the costs liability of 77M so as to mitigate the risk of a high costs liability if the case were to be transferred to the Chancery Division (at [15]). In relation to the value of the claim under Practice Direction 30(9)(2)(a), Hacon HHJ was not convinced that the value of the injunction would be so extraordinarily high for IPEC to hear the case.

On the complexity of the issues, OS cited Comic Enterprises v Twentieth Century Fox in arguing that 77M had not approached this litigation as though it were a modest IPEC claim. This was argued by reference to the original Particulars of Claim, which were settled by junior and leading counsel. There was also opposition by 77M to an extension of the confidentiality club, which resulted in an application before the court (at [17]). Although Hacon HHJ agreed that the pleadings by 77M were “somewhat over-developed”, he did not see this as a case in which 77M pleaded either worthless causes of action or worthless defences (at [18]). Finally, on the estimated length of the trial, Hacon HHJ held that the maximum three day limit in IPEC should be sufficient, notwithstanding the complexity of the case, and provided that OS may revisit the question of a transfer at the CMC (at [21-23]).

Summary 

The risk that 77M would be severely affected by an adverse costs order in the Chancery Division outweighed OS’ arguments that the complexity of the case necessitated conduct of the litigation in IPEC. However, an SME does not have an unfettered right to stay in IPEC, and if a larger defendant wishes to be sued in the High Court they should at least provide an undertaking to limit the costs liability to another specified amount should they win. As Judge Birss noted, a lower incursion of costs should suit both parties, especially in the case of a publicly funded litigant such as OS (at [16]).

Canadian Supreme Court holds that Google can be ordered to de-index results globally

Yesterday the Supreme Court of Canada issued its decision [Google Inc v Equustek Solutions Inc, 2017 SCC 34] in the important and longstanding litigation between Equustek Solutions and Google, concerning an issue that has become particularly sensitive over time: can Google be ordered to de-index results from its search engine globally, ie in respect of all country versions of its search engine?

The response of the Canadian Supreme Court has been in the affirmative, as Katfriend Nedim Malovic (Sandart&Partners) explains.

Here's what Nedim writes:

"The case stemmed from an action originally brought by Equustek Solutions (Equustek), a small technology company in British Columbia that manufactures network devices. Equustek became aware that a distributor of its products, Datalink Technologies Gataways (Datalink), had re-labelled one of its products and begun selling it online, passing it off as its own. Datalink had also acquired trade secrets belonging to Equustek to design and manufacture a competing product.

At some point Datalink, which had filed statements of defence in the action brought by Equustek, abandoned the proceedings, left the province, and currently carries out business from an unknown location. In fact, despite court orders prohibiting the sale of inventory and the use of Equustek’s IP, Datalink has continued selling the disputed product on its websites to customers worldwide.

It is essentially for this reason that in 2012, Equustek asked Google to remove search results, but the latter refused to do so lacking a court order prohibiting Datalink from carrying on its online business.

An injunction against Datalink was eventually issued by the Supreme Court of British Columbia. 

As a result, between late 2012 and early 2013, Google removed over 300 specific webpages associated with Datalink. However, Google did not de-index all of Datalink’s websites and, above all, did not de-index results other than those conducted on the Canadian top-level domain version of its search engine, google.ca.

According to Equustek Google’s de-indexing efforts had proved inefficient: it therefore applied and obtained an interlocutory injunction to enjoin Google from displaying any part of Datalink’s websites on any of its search results worldwide.

The Court of Appeal for British Columbia dismissed Google’s appeal; Google further appealed to the Supreme Court. 

Google submitted that the global reach of the order obtained by Equustek would be unnecessary and raise freedom of expression concerns. In addition, Google submitted that a global injunction would violate international comity because it is possible that the order could not have been obtained in a foreign jurisdiction, or that to comply with it would result in Google violating the laws of that jurisdiction.

Most painful de-listing
Yesterday, the Supreme Court dismissed the appeal, and upheld the worldwide interlocutory injunction against Google.

Among other things, the Supreme Court labelled Google’s international comity argument “theoretical”, and dismissed the idea that protection of freedom of expression would prevent an order of the kind obtained by Equustek. 

At paragraph 48, Abella J (writing for the majority) held that:

“This is not an order to remove speech that, on its face, engages freedom of expression values, it is an order to de-index websites that are in violation of several court orders. We have not, to date, accepted that freedom of expression requires the facilitation of the unlawful sale of goods.

Abella J also dismissed (at paragraph 49) the idea that an order of this kind would “interfere with what Google refers to as its content neutral character. The injunction does not require Google to monitor content on the Internet, nor is it a finding of any sort of liability against Google for facilitating access to the impugned websites.”

The judge further added (at paragraph 53) that the order at issue does not make Google liable for the harm that Datalink’s conduct has inflicted on Equustek:

“It does, however, make Google the determinative player in allowing the harm to occur. On balance, therefore, since the interlocutory injunction is the only effective way to mitigate the harm to Equustek pending the resolution of the underlying litigation, the only way, in fact, to preserve Equustek itself pending the resolution of the underlying litigation, and since any countervailing harm to Google is minimal to non-existent, the interlocutory injunction should be upheld.”

Hence, global de-indexing is necessary according to the Court because, if the removed search results were restricted to Canada alone, purchasers both in and outside Canada could easily continue to find the products of and purchase them from Datalink.

Comment
Ruling the world

When discussing the Equustek case, a parallel with decisions like Google Spain AEPD and Mario Costeja Gonzalez (Google Spain) is almost unavoidable.

In that case the Court of Justice of the European Union (CJEU) held that an internet search engine operator is responsible for the processing of personal information which appears on web pages published by third parties, and might be requested by individuals to remove links to freely accessible webpages resulting from a search for their name. Amongst other things, grounds for removal include cases where the search results appear to be: i) inadequate, ii) irrelevant, iii) no longer relevant, iv) or excessive in the light of the time passed.

In the aftermath of the Google Spain decision a debate has ensued as to the scale on which delisting must take place. Google has opted for all European top-level domain versions of its search engine, but some data protection authorities have held that this would be insufficient. In this sense, the French Data Protection Authority has taken the view that de-listing should be global. More recently, also the Swedish Data Protection Authority has suggested that there may be situations in which results must be removed when searches are made from countries other than Sweden.

It will be interesting to see whether and how the echo of the Canadian Equustek decision will be heard in Europe, both in the IP context and in relation to data protection/right to be forgotten issues.”  

Life as an IP Lawyer: Copenhagen, Denmark

The AmeriKat's professional life, be it on the Kat or sat at her desk litigating her hours away, involves a huge amount of coordination, support and opposition with lawyers from all over the world. One of the IPKat's key objectives is to bring this global IP community closer together by sharing IP decisions, legislation and practice from across the world with our readers, with the aim that by understanding our unique perspectives on the culture of IP practice we can work together to make IP a success story for innovators, creators, users and the public. With those grand aims, the AmeriKat thought it would be worthwhile to ask the next generation of global IP lawyers to illuminate IP practice in their jurisdiction, as well as to give readers some fun reading over their lunch-al-desko...

**********************
Emil Jurcenoks
For the eighth in our series we travel 15 hours by car, north east, to Copenhagen Denmark where Emil Jurcenoks (Plesner) dreams of longer judgments, battles cross-border infringement, wishes for higher damages and costs awards and wants to bite into a burger with Bjarke Ingels.  

What can you see from your office window right now?

Plesner is located just north of the city centre near the edge of the harbour. Right now, I can see the new UN building and sun reflecting in the waves (through typical Danish summer clouds, of course) of the Oresund Strait (which separates Denmark and Sweden) while the ferry from Oslo, Norway, arrives.

When did you know that you wanted to pursue a career in IP?

My interest in IP began while studying Intellectual Property Law at the University of Copenhagen. It grew while I studied Trademarks and Related Rights at the Law School of The University of Melbourne, and when I began working in Plesner's IP department in August 2005, I knew that I wanted to pursue a career in IP.

Walk us through a typical day. What time do you get up, what do you do when you get to the office, etc.

I usually get up around 6:30am at the latest and spend the morning trying to get ready while helping my two daughters (aged 3 and 5) with everything from preparing breakfast, getting dressed, brushing their teeth, preparing their lunch boxes etc. I then normally drop my daughters off at kindergarten and school before riding my bike to the office, where I arrive around 8:30am. I then grab a cup of (our splendid!) coffee, before I start working on whatever appears to be most urgent. From that point on, there is no such thing as a typical day - which is one of the great things about this job! My day can consist of internal and external meetings, conference calls, court meetings, oral hearings, drafting of briefs, legal assessments of various IP matters, IP-due diligence, review and drafting of licence agreements, negotiations, pitches, etc. I normally have lunch around 12 noon, and I am usually home around 6pm, where I have dinner with my wife and kids. When the kids are tucked in around 8pm, I normally turn on the computer again and work for another few hours.

What are the key differences in your system that client/other lawyers from outside the jurisdiction find surprising or strange?

The view from Emil's office
Danish judgments are rather short. This makes them easy to read, but sometimes more difficult to interpret and apply in future cases. Also, a national trademark right can be acquired merely by making (very little) use hereof for the relevant goods.

What are the key challenges that are facing the next generation of IP lawyers in your jurisdiction? How are those challenges different from the previous generation?

IP matters are getting more complex with the development of the internet and new technologies. Matters are also more likely to contain cross-border issues than previously, which more often requires involving lawyers from different jurisdictions.

Furthermore, IP clients have acquired more knowledge about IP by hiring IP lawyers themselves. This requires external counsels to be able to provide even more specialised IP advice.

In addition, clients seem to be increasingly focused on whether the advice from the external counsel can add commercial value to the clients' business. The external counsel is therefore no longer just expected to provide legal advice - the external counsel is also expected to be a trusted commercial advisor.

What are the misnomers that people have about IP practice in your jurisdiction?

Many businesses do not protect their IP, because they think of IP as merely an expense that does not create real value. This is of course not true, which they realise when they encounter problems that could have been avoided.

If you could change one thing about IP practice in your jurisdiction, what would it be?

The damages awarded by the Danish courts should be much higher. The same goes for the costs that the courts order the losing party to pay to the winning party. The amounts are so low that even when the amounts are combined they rarely cover the winning party's actual costs and attorney's fees incurred by enforcing the IP rights in question.

What is the key advice you give clients when they are looking to protect or enforce IP rights in your jurisdiction?

Take your time to consider and obtain proper advice about which assets should be protected, which IP rights should be enforced, and how you wish to enforce such rights.

What gives you the biggest thrill in your job?

When I appear in court - and, of course, when I receive the judgment and see that we have won the case.

The view over Copenhagen from Plesner
What are the top trends and/or cases that we should be looking out for in your jurisdiction in 2017/2018?

Obviously, everyone is eager to see what will happen when the Unified Patent Court gets ready to roll. It is currently expected to be ready in the beginning of 2018, and it will pose a huge challenge for clients and patents lawyers all over Europe.

Also, as reported previously on the IPKAT the European Trade Secrets Directive will be implemented in Denmark through an entirely new and independent act on trade secrets. The proposal for the new act is supposed to be published in September 2017, and the final act is expected to be adopted with effect as of 9 June 2018; i.e. the date of the deadline for the implementation of the directive. The new act is expected to improve the protection of trade secrets and increase awareness about the importance of trade secret protection in Denmark.

To be successful in your jurisdiction, what are the key skills a young IP lawyer needs?

You need to be interested, thorough and creative, to have good communication skills, and be able to give commercial advice.

What are you going to/what did you eat for lunch today?

Fortunately, we are blessed with a magnificent kitchen that prepares something new and amazing each day; ranging from traditional Danish dishes and open sandwiches to spicy African and Indian dishes. I therefore never know what I am going to have for lunch before I see what is on the buffet.

What other jurisdictions do you work with the most in your practice?

We handle matters for clients located all over the world. I am most frequently in contact with colleagues from Sweden, Norway, and the UK.

Looking into your crystal ball, where do you see the profession in 10 years’ time?

With clients hiring their own lawyers and handling "the ordinary matters" themselves in-house, I believe we will see a need for external counsels to be even more specialised, and that assistance from external counsels will primarily be needed in contentious matters.

If you could practice IP law anywhere else in the world for a year, where would that be and why?

New York City. Mostly because I love New York City. But also because I would like to experience working in a US law firm and to get a better understanding of how discovery proceedings work.

If you could have lunch with someone famous in the IP world (judge, lawyer, inventor, politician, alive or dead), who would that be and why, and where would you take them?

I would have to say the Danish architect Bjarke Ingels from BIG. I love his architecture, which are actual works of art, and I am amazed by his ability to find new and creative solutions to urban problems; e.g. the Urban Rigger project, where containers have been made into small apartments for students, or the Amager Resource Center, where he is turning the roof of a waste-to-energy plant into a ski slope. I would really like to know where he finds that creativity, and as he appears to be a casual guy, I would buy him a burger at Gasoline Grill in Copenhagen, which was recently chosen by Bloomberg as one of the best 27 burger joints in the world.

After a bike ride around the city,
refuel with a smørrebrød
What is the best piece of advice you have ever been given?

The facts of a case are almost always more important than the law. It is almost always the facts of the case that will decide the outcome. The devil is in the detail, and it is therefore crucial to have a deep knowledge of the facts of the case.

If our readers were to come to your city, what are the top three things you recommend they see, do and eat (in that order)?
1. You should go on a harbour and canal tour on board one of the Netto-Boats. It is a wonderful (and cheap!) way to see the city, and you can tick off many of the most important sights on your list (including The Little Mermaid) during the cruise. 
2. Rent a bike. Copenhagen is small and has bike lanes almost everywhere, which makes it easy (and safe) to get around. 
3. Try one of Copenhagen's many Michelin star restaurants serving the world-famous Nordic cuisine. Noma is currently closed and it is impossible to get a table at Geranium, but Nordic cuisine can also be tasted at formel B or Almanak at The Standard. You should also try the world-famous open sandwiches ("smørrebrød"), and the best place in town is definitely Restaurant Palægade.

Wednesday, 28 June 2017

UK UPC ratification timetable to continue in September, while Prep Committee acknowledges German constitutional hold-up


Confused about UK legislative process?The IKat is here to help
The recent IPKat post bringing news that the Order on Privileges & Immunities had been laid before the UK Parliament brought several e-mails questioning the legislative steps needed to ratify the UPC Agreement (UPCA) and the Protocol on Privileges & Immunities (PPI).  Your questions are her command, so this morning the AmeriKat did some research into the steps required and timing following the recent election (thanks to some handy and helpful Government resources and constitutional lawyers). The below is what she found out:

Preliminary (clarifying) point

There had been previously a lot of confusion as to the legislative steps required to ratify an international agreement.  The process in the UK when ratifying international treaties is essentially three-step:
(i) Give Parliament an opportunity to object to the treaty:  Lay the international treaty (be it the UPC Agreement or the Protocol on Privileges & Immunities) before Parliament for 21 sitting days.  Both Houses have an opportunity during this time to pass a motion saying that the UK should not sign up to this treaty.  Essentially this is a "shout if you disagree" stage.  If nothing happens - like it did with the UPC Agreement and PPI, we move on to the next step.  
(ii) Incorporate the treaty obligations into national law.  The UK's policy has been to implement their international treaty obligations into national law (if they did not they would be bound only by international law). At this stage we have seen last year's Patents Order (which flowed from the UPCA) and now this week's Order on Privileges & Immunities (flowing form the PPI).  
(ii) Formal ratification:  Once the Order on Privileges & Immunities is passed (see more below), the final stage is that Government uses its powers derived from the Monarch (primarily exercised by the PM and Foreign Sectary) to deposit the final letter/instruments of ratification.  
Final steps required for UK ratification of the UPC

Step 1 - Pass scrutiny
Having been laid before Parliament, the Order on Privileges & Immunities ("the Order") now needs to go through the scrutiny process.  The scrutiny committee responsible for the Order is the Joint Committee on Statutory Instruments (JCSI). The JCSI, made up of peers and MPs, scrutinzes the legislation, essentially checking to see of the powers to create the secondary legislation (the Order) have been used correctly.  If they have any questions, they may ask the IPO or Parliamentary lawyers.  They will prepare a report for the House of Commons and House of Lords summarizing their review and setting out any remaining questions that should be debated.  The AmeriKat understands that JCSI's remit is narrowly defined to more legalistic issues, not policy issues.    
Where Steps 1 and 2 take place
Step 2 - Debate in Parliament
Once passed through the JCSI, the Order goes on to be debated in each House - Commons and Lords.  The debate is normally held in a special committee that is set up in each House - a delegated legislative committee - with the task of reviewing Statutory Instruments. The composition reflects the parties in the House - which will be a different makeup than in previous years given the lack of majority following the recent elections.  The length of the debate can depend on how many wish to speak.
Usually in the debates, a minister will introduce the legislation.  The opposition will then have a chance to respond, then other members have an opportunity to speak.  The minister then wraps up the position in a closing speech.  It then goes to vote.  The vote is a simple majority.  The Chair of the Committee then declares whether the order stands or falls (unlike primary legislation, statutory instruments stand or fall in tact - there is no possibility for amendments). 
The selection of the members for these committees will be done by a committee and is expected to be confirmed approximately 2 weeks before the vote.  There may be legalistic questions, as well as some policy debate about the Order and the UPC (generally), in both Houses.    
Step 3 - Privy Council approval 
If the Order is passed in both Houses, it will then go to the Privy Council for approval.   The Privy Council is able to approve it as the Queen gives them powers to do so. The Privy Council meets once a month – usually around third week of the month.  
Step 4 - Ratification 
The Order is then "made".  The UK can then ratify the UPCA and PPI.  This requires a formal letter drawn up by the Foreign Secretary and an instrument of ratification which states that the UK agrees to be bound by the UPC Agreement and the PPI.  These documents are then deposited with the depository which is the Secretariat of the EU Council.  This process can take a few weeks.
Timing

None of the above will be happening until Parliament sits again on 5 September.  This is because Step 1 cannot happen until the JCSI is formed.  Following the recent election, it has not yet been reformed and will not be until September.  If there are no further delays or unexpected hurdles, based on her research it may be that the UK may have ratified the UPC by end of November/early December 2017. This means there could be an early 2018 sunrise period with the Court opening in late spring 2018.  Of course, this does not take into account the matter of Germany (see below).

IP Minister Jo's brother - Foreign
Secretary  Boris Johnson
Scotland 

The Order is UK wide, but there are certain matters covered which touch on devolved matters so have to be dealt with by the Scottish Parliament with a separate order soon to be laid before them.  The process is similar to the above - they will go through the scrutiny, debate, Privy Council process but have time limits (minimum 40 days).

Next Steps

Of course none of this means that the UPC will be up and running soon after, of course, as there is the matter of Germany's constitutional challenge.  The German ratification delay was today dealt with in this message from Alexander Ramsey (Chair of the UPC Preparatory Committee).  He stated that another "layer of complexity has been added" which had "unfortunately...brought a pause to the German ratification of the UPCA and the Protocol on Provisional Application".  He continued:
"It is difficult to get a clear understanding of what is the status of the suit and what it is about, since there is not much information publicly available. The complaint has not been notified to the German Government or the Parliament. According to publicly available information an unnamed individual has lodged a complaint against the bill regarding the German ratification of the UPCA and has also submitted a request for preliminary/emergency measures ordering the suspension of the ratification until the Court has decided on the merits of the case. The Court seems to have informed the President of the Republic informally and as seems to be the usual practice in Germany, the President has decided not to proceed with the ratification until the Court has decided on the request for preliminary measures. 
Under the current circumstances it is difficult to maintain a definitive starting date for the period of provisional application. However, I am hopeful the situation regarding the constitutional complaint in Germany will be resolved rather quickly and therefore I am hopeful that the period of provisional application can start during the autumn 2017 which would mean that the sunrise period for the opt out procedure would start early 2018 followed by the entry into force of the UPCA and the UPC becoming operational.

A more detailed timetable will be communicated on this website as soon as the picture is clearer."
As ever, the IPKat will keep readers updated as to the progress in the UK and Germany.

Hendrix's portrait is original afterall say Paris Court of Appeal

Jimi Hendrix by Gered Mankowitz
Last week, the Paris Court of Appeal corrected the Paris Tribunal's interpretation of the originality condition with regard to photographic works. Or did they? 

At first glance, this decision looks like a classic case of the Court of Appeal setting the record straight on the interpretation and/or application of the law.  But looking at both decisions more closely, it seems that, in fact, counsels were taught a lesson on how to advocate for originality in the context of photographs, by the judges of the Paris Tribunal and Court of Appeal. So counsels, pay attention, copyright advocacy is our plat du jour !

The dispute

The copyright work at stakwas none other than Hendrix's portrait shot by Gered Mankowitz - a UK photographer known for his work with world-famous bands and rock stars such the Rolling Stones, and indeed Jimi Hendrix. 

The dispute lay between Mankowitz and the company Bowstir Ltd (who owns the economic rights in a number Mankowitz' photographs including the portrait) and the French company Egotrade. Egotrade specialises in the sales of electronic cigarettes and accessories. In this context, Egotrade had used one of Mankowitz's portrait in their marketing campaign both online and in their shops located in Paris. 

First instance decision

a modelling cat in total control
of his pose
In March 2014, Mankowitz and Bowstir filed for copyright infringement against Egotrade before the Paris Tribunal. In a decision handed down on 21 May 2015, the tribunal rejected the plaintiff's claim on the basis that Mankowitz's portrait did not satisfy the originality requirement, and as such did not enjoy copyright protection. 

According to the Paris Tribunal, the claimants had failed to point to relevant elements of original expression in their plea, in accordance with the Painer decision of the CJEU. In Painer, the CJEU had concluded that a realistic photograph, like a portrait, may receive copyright protection like any other work so long as national courts could establish that the work is the "intellectual creation of the author reflecting his personality and expressing his free and creative choices in the production of that photograph" (para 99; para 150 (1)). 


The tribunal stressed that the plaintiffs' built their claim around the aesthetic qualities of the portrait instead of referring to the photographer's "free creative choices" in the preparation or production of the shot, failing thereby to show his "personal touch" in the work. A grave mistake as the tribunal considered that the plaintiff's did "not explain who authored the choices regarding the subject's pose, his styling, and overall demeanor." As a result, the decision concluded that "nothing [in this claim] enables neither the judge nor the defendants to grasp whether any of these elements which are essential to assess the originality claimed in the work [...] are the fruits of the author's reflection on the photograph or its subject, whether the work bears the stamp of [Gered Mankowitz]'s personality or that of Jimi Hendrix". "Mr Gered Mankowitz does not allow the defendants to debate on the question of the work's originality, and the judge to assess its relevance." 


The Court had also found the aesthetic merits of the photograph Mankowitz described to be fairly "common-place" for this type of portrait. Nothing in the "angle, black and white, light background destined to highlight the subject, and the lighting" was regarded particularly unusual or original in the common sense of the term, according to the French Supreme Court. 

In deciding so, the Paris tribunal reminded the parties of a fundamental principle of French copyright advocacy: "only the author may identify the elements that evidence his personality, judges cannot supplement his failure to do so". Whilst the tribunal did not rule out that the portrait may be found original, they were not provided with the relevant evidence to confirm so. In the meantime, no copyright protection may be claimed, the claim for infringement ends there. 

Appeal decision

In their appeal, the claimants made sure to stress that Mankowitz's portrait was indeed the result of his "free creative choices". Mankowitz submitted evidence supporting the claim that he "guided and directed Jimi Hendrix during the shooting and that he had asked him to take the pose featuring on the photograph at stake". Mankowitz also explained that his decision to shoot the portrait in black and white was a conscious choice "to give more depth to the subject and give him the image of a serious musician", among other technical detail about his creative process. 

On the basis of the claim thus re-framed, the Paris Court of Appeal declared Mankowitz's portrait of Hendrix original for copyright purposes. Surprisingly perhaps, the Court of Appeal decision made no reference to Painer - despite the fact that the CJEU's interpretation of originality in that case had been key in the first instance decision. Instead, the Court of Appeal couches the originality condition in rather odd terms by declaring that "the work must present a unique physiognomy evidencing an aesthetic parti pris and reflecting the stamp of personality of its author". The Court then moved to add that "these elements considered together with the fact that Mr Mankowitz is a photographer known internationally, notably for his work with the Rolling Stones, whose photographs enjoy a strong notoriety, establish that the photographic work at stake is the result of free and creative choices performed by the photographer, translating the expression of his personality". 

Whilst the outcome of the decision should be welcome insofar as it seems consistent with CJEU jurisprudence and accepted thresholds of originality in French copyright law... the reference to "aesthetic parti pris" or the reputation of the artist as pertinent by Court of Appeal in their assessment of the work's originality is at odds with well-established jurisprudence denying the relevance of genre, aesthetic merits or quality for the purpose of copyright (see, Cass. crim, 2 mai 1961: JCP G 1961, II, 12242 ; Cass.ass. plen. 7 mars 1986 : D. 1986, 405, concl. Cabannes, note Edelman; RIDA 1986, 136, note Lucas).

However, it should be noted that this not the first time the notion of "aesthetic parti pris" features in the rhetoric of the Parisian Bench. Indeed, in a decision dating back to 14 February 2007 (No 06/09813) the Bench relied on the concept of "aesthetic parti pris" to define the originality condition in relation to the design of Jean-Paul Gautier's perfume bottles known as "Homme" and "Femme" (NB: there seem to be a typo in the report of the case). This Kat suggests that the concept of "parti pris" be read without negative connotation necessarily but be understood as "choice" or "stand", rather than "bias" or "prejudice" - although the decision does not expand on the question.  

Take away points
  • In France, originality in photographic works must be claimed (and pleaded) by making direct reference to the creative choices photographers make in preparation of, during, and after shooting. In this regard, the decisions of the Tribunal and the Paris Court of Appeal comply with the guidelines set out by the CJEU in Painer. Photographers must evidence creative control over the creative process, and show that the model had little to do with the visual results embodied in the photographs. 
  • The originality test in France, at least with regard to photographic works, does not appear to be fully harmonized with CJEU case law, as elements alien to the European court's vocabulary such as "aesthetic parti pris" or the author's reputation are still taken into consideration. For more on the copyright protection of photographs in France see here

Covfefe ... the trade mark?!

The 'covfefe' tweet
What's a 'covfefe'? Even The New York Times has posed this question, after US President Donald Trump used the word in one of his (regular) tweets. 

At least we know that the word is a wannabe trade mark, being subject to several trade mark applications (including in the UK), as Katfriend Oliver Fairhurst (Lewis Silkin) explains. But will these applications eventually succeed?

Here's what Oliver writes:

"While readers would be forgiven for missing it, the 45th President of the United States of America recently took his habit of late night tweeting to a new low. Widely understood to have been an attempt to rail against the negative press coverage he has received, Mr Trump instead complained of the “negative press covfefe” before trailing off mid-sentence.

Given that Mr Trump’s Twitter following appears to be largely made up of journalists and bloggers, the #covfefe hashtag immediately began trending and featuring in ‘memes’ mocking the President.

The word instantly evokes the anti-Trump sentiment of which the President complains. With the English language’s newest word gaining instant fame, it is perhaps unsurprising that various enterprising folk around the world have sought to register it as a trade mark. Applications have been filed in the US, and one person has sought to register COVFEFE in the UK in class 32 (“Ale; Ales; Beer; Beer and brewery products; Beer-based beverages; Beers; Beverages (Non-alcoholic -); Flavored beer; Flavored beers”).

Is it registrable?

The COVFEFE mark is distinctive, it is not descriptive of the goods covered, and it is not obviously objectionable on the grounds of morality or deception or any other rule of law. Indeed, the UK IPO has allowed it to proceed to publication.

Mr Trump (despite the time and content of the above mentioned Tweet) apparently does not and has never drunk alcohol. One could therefore understand why Trump might not approve of this use of the word he (inadvertently) coined simultaneously to (1) promote the sale of alcohol (a product that he does not care for) and (2) mock him (an activity which he positively despises).

However, under what ground could he oppose its registration? It is unlikely he could oppose under section 5 of the TMA (i.e. earlier right, passing off, copyright etc.). He might reasonably argue that the mark, the registration and use of which might be intended to mock him and/or be against his values, was applied for in bad faith. However, such an opposition seems unlikely.

But should it be registered?

The UK craft beer industry has a particularly unique approach to naming beers, and some beer producers might frown at the attempt to monopolise the use of the word. Given Scottish brewer BrewDog’s past mocking of world leaders (see here), they might be disappointed that the name is off the table.

The attempt to register COVFEFE raises an interesting question: where a sign is already associated with a third party, but not a third party who could object to the registration of it as a trade mark, is it right that someone can stake their claim over it to the exclusion of others? Several such terms have been registered in the UK and EU, e.g. YOLO (as in ‘”you only live once”, apparently coined by US rapper Drake) and CHILLAX (the portmanteau of chill and relax, brought into the common British consciousness by former PM David Cameron’s use of the word).

Putting aside for a minute the proliferation of ‘functions’, the main purpose of a trade mark is to link an expression (i.e. a word, sign, sound etc.) to the source of certain goods and services. It seems somehow wrong that a person claim an exclusive right to hijack the pre-existing fame of a word to sell their goods and services. This is particularly so in certain industries (e.g. fashion) where capturing the zeitgeist is often crucial.

Either way, it looks as though the mark will proceed to registration. And this author looks forward to raising a glass of Covfefe and toasting to the enduring allure of trade marks."

Oliver Fairhurst is an Associate in the Brands & IP and Dispute Resolution teams at Lewis Silkin. The views expressed in this article are the author’s own. 

Injunction available after claimed licence fees paid - PPL v JJPB

Should an injunction be granted when the licence fees which were the reason for a claim being issued have all been paid?  What about if further licence fee payments (incurred after the claim form was issued) have not been paid?

Phonographic Performance Limited (or PPL) "licenses recorded music played in public or broadcast and then distributes the licence fees to its performer and recording rightsholder members." It is one of the most regular users of the IP Enterprise Court.

One of its recent targets, Mr Gaughan, runs a bar called the Watkins Folly.  The owner, Mr Gaughan reached a settlement with PPL shortly after service of the claim form. He paid the licence fee for past infringements but: (i) did not set up the agreed Direct Debit to cover payments over the following year and; (ii) continued  to play sound recordings to the public.

Not to be confused with...
After failed attempts to persuade Mr Gaughan to pay up, PPL applied to the court for judgment in default and to lift the automatic stay which applies six months after the period for filing a defence has expired.  The big question was not whether Mr Gaughan was in default (he had not filed a defence) but whether an injunction should be granted in these circumstances i.e. where payment has been made for all the infringements which existed at the time the proceedings were issued.


PPL had run into similar difficulties with JJPB Limited in relation to a cocktail bar called Keystones. Once again these defendants are in default but have paid outstanding licence fees up to the date the claim form was issued and no acknowledgement of service or defence has been filed.

Injunctions were granted against both Mr Gaughan and JJPB because:
  1. an injunction is ordered to stop an infringement happening in the future on the basis of a the existence of a threat and intention to do that;
  2. because the injunction looks to the future and is based on a threat and intention to infringe, generally the fact that a defendant has infringed in the past is sufficient to establish the necessity of an injunction;
  3. it can be appropriate to take account of events after the claim was issued - the position on the date of issue is not the whole story;
  4. both Defendants were continuing to infringe but did not have a licence so it is appropriate for the court to grant an injunction; and
  5. requiring fresh proceedings would elevate form over substance and simply add to everyone's costs.

Tuesday, 27 June 2017

Trademark application for the devil's horn withdrawn

Distinctive enough?
Last week, the United States Patent and Trademark Office notified the withdrawal, by express abandonment, of Gene Simmons's trade mark application for the hand gesture known as the devil's horns. This application for the registration of the hand gesture was keenly followed by this Kat who relishes reading positions and opinions of intellectual property offices or courts on unusual marks. 


Spock and cat unimpressed at Barack's
diluting use of 'their' sign.
The application sought to register a gesture-based sign described as "a hand gesture with the index and small fingers extended upwards and the thumb extended perpendicular" in relation to the international class 41. This class covers "services having the basic aim of the entertainment, amusement or recreation of people" and the "presentation of works of visual art or literature to the public for cultural or educational purposes". The application had further specified the types of services targeted by the application as "entertainment, namely, live performances by a musical artist; personal appearances by a musical artist". 



An earlier post dedicated to Simmons's trade mark application reported on a number of uses of the so-called devil's horn (also known as 'I love you' in sign language) recorded prior to Simmons's alleged first performance of the hand gesture. These examples of prior use depicted a rather bleak picture of Simmons's chances to secure trade mark protection in relation to the sign. Indeed, it seemed very likely that the US Patent and Trade Mark Office would have rejected the application for lack of distinctive character. Nevertheless, a positioning of the US governmental body on the registrability of a hand gesture in principle would have been most interesting. Indeed, one could think of other hand gestures enjoying greater distinctive character (inherent or acquired) which may, one day, find their way to the US Patent and Trademark Office's desk. 

We will have to wait for another application to see whether the boundaries of trade mark law can be pushed a step further by adding hand gestures to the category of unusual marks, next to smells, colors or sounds. 




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