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.

Monday, 16 October 2017

From Alicante to Munich - the EPO appoints its new President

The EPO has announced that Antonio Campinos has been elected as its new President. His appointment will be for a five-year term starting on 1 July 2018. 

Mr. Campinos, a Portuguese national, is currently Executive Director of the European Union Intellectual Property Office (EUIPO). He is also a former President of the Portuguese Institute of Industrial Property (INPI). In his welcome to his successor, current President of the EPO Benoît Battistelli hailed the appointment of Mr. Campinos as "a victory for Europe in its diversity", being the first time a national from the South of Europe has been appointed the head of the EPO.

In his role at the EUIPO, formerly known as OHIM, Mr. Campinos presided over the expansion of the office's facilities and the introduction of management and organizational changes.

Mr. Campinos has a degree in Law from the University of Montpellier, a postgraduate degree in European Studies from the University of Nancy, and a Masters' degree in Public Law from the University of Montpellier.  He worked for the Portuguese Ministry of Economy and Innovation before becoming Director of Trademarks at the INPI in 2000. He has been Chairman of the Board of Directors at the University of Strasbourg Centre for Intellectual Property Studies (CEIPI) since 2013.

Merpel welcomes Mr. Campinos to the exciting world of European Patents.  


Another German decision questions reasonableness of GS Media presumption if generally applied

A few weeks ago this blog reported on the judgment of the German Federal Court of Justice which decided that the presumption of knowledge envisaged by the Court of Justice of the European Union (CJEU) in GS Media [Katposts here] for for-profit link providers would not be applicable to search engines due to their importance to the functioning of the internet.

I have been made aware that this decision is not an isolated instance, and a similar line of reasoning can be found also in another recent German judgment, ie the one of the Regional Court of Hamburg issued earlier this year (308 O 151/17). Also this ruling shows a certain disagreement with recent CJEU case law on the right of communication to the public, including in the linking context, and warns against the dangers of intending the GS Media presumption of knowledge in too a broad sense.

Background

The decision orginated in the context of proceedings brought against the operator of a product search engine which lists furniture and home accessories for sale. The results are obtained by aggregating the listings of over 200 online shops. Further to a certain search, the defendant’s site displays results which consists of photographs (stored on third-party sites) of relevant products and links to the various listings.

The claimant operates an internet site on which it offers photos and products displayed by photos depicting a pug dog named Loulou, including the photograph below (to which it owns the copyright):
Use of the photograph above is licensed to third parties. One day, the claimant found out that the defendant's website displayed among the various results also a listing for a cushion (available for sale on Amazon) that reproduced - without its permission - the Loulou photograph above:
The claimant submitted that, by displaying this result, the defendant made an unauthorised act of communication to the public pursuant to §§ 15(2) UrhG and 19a UrhG

Being a for-profit undertaking, according to the claimant, the defendant had an obligation to ensure that the links displayed through its search engine would be to lawful content.

The decision

The Hamburg court dismissed the action, holding that the simple linking of a work hosted on a third-party site by way of 'framing' does not constitute an act of making available to the public within §19a UrhG. Referring to the decisions in Die Realität I and II, according to the court this is so because it is the operator of the third-party site that decides on the making available of the work at issue. 

Accordingly, the only provision that might come into consideration is the 'unnamed' right of communication to the public within §15(2) UrhG. To determine whether that would be actually the case, the court deemed it necessary to review relevant CJEU case law on Article 3(1) of the InfoSoc Directive.

The Hamburg court recalled the requirements of (1) an act of communication (2) directed to a public, as well as the other interdependent criteria employed by the CJEU and the 'indispensable intervention' of the user. The court then focused on the GS Media presumption of knowledge for link providers that act with a profit-making intention.

The court excluded that there would be a communication to the public in the case at issue. Although the requirement of the 'new public' was met, the act at issue would not take place with the indispensable intervention of the defendant, ie - as the CJEU held in Filmspeler [here] - an intervention made “with full knowledge of the consequences” of such conduct. 

According to the Hamburg court, the defendant in this case - although operating for a profit - had neither positive knowledge of the unlawfulness of the offer displayed through its search engine, nor could it have acquired knowledge of the offer’s unlawfulness in a reasonable way. The court also noted that a platform like Amazon is not usually associated with unlawful listings.

The links displayed were created through a completely automated process and the relevant offers were not subject to any editing or other manual control. This means that it cannot be assumed that the defendant had knowledge that the offer at issue incorporated content that would infringe the claimant's rights. 

In addition, upon becoming aware of the unlawfulness of the listing, the defendant promptly removed it. 

According to the court, considering that the defendant's databank contains 50 million offers, it would be unreasonable to expect that every single link is checked beforehand. In the event of (several) completely automated processes it cannot be expected that the GS Media presumption operates in relation to each and every link. Referring to the Opinion of Advocate General Szpunar in Ziggo [here], the Hamburg court held that holding otherwise would extend liability to every imaginable far-removed contribution due to negligible lack of knowledge and, therefore, on the basis of merely fictitious intention. 

The court added that any different interpretation would also result in an undue compression of one's own freedom to conduct a business, as per Article 16 of the Charter of Fundamental Rights of the European Union.

As to whether things would change in the event that the link provider adopts third-party content as its own (which in any case was not what happened here), the court stated that this remains uncertain at the EU level. 

Comment

The decision of the Hamburg court, similarly to the one of the Federal Court of Justice, warns against an overly broad understanding of both communication to the public and the obligations imposed on link providers that operate for profit, especially if these handle a high number of links. 

Some aspects of the CJEU judgments discussed by the German courts are ambiguous and in need of further clarification. One might wonder whether national courts are best placed to carry out such an explanatory task or whether, instead, clarification at the CJEU level might be a better option to avoid inconsistent applications of relevant judgments by national courts.

AIPPI Congress Report 5: Pharma Day I - Sufficiently plausible

The AmeriKat waiting for a promise to be fulfilled,
ponders whether, perhaps, the promise
was, in fact, always implausible
The quality of seeming reasonable or probable.  It is clear that is the definition of "plausibility", but it is less clear what it means in patent practice.  What does this threshold really mean?  Where is the line drawn?  What are the policy reasons behind it? The first Pharma Day session at AIPPI Sydney had the ever topical issue of what does plausibility mean at its heart.  Warwick Rothnie reports:

"Jurgen Meier (moderator) outlined the theme of the session as looking at increasing questions from European Patent Office examiners beyond the traditional requirements of novelty and inventive step: whether an application for a life science patent is plausible or credible. Although not expressly mentioned in the EPC, the objection derives from the requirements of clarity, support and technical effect. 
Dominic Adair explained that “plausibility” is directed at preventing speculative claiming and so deprive others of freedom to operate. He argued that there could be situations where so-called armchair inventions should be permitted. Unlike mechanical patents, little in pharma is self-evident, especially second medical uses.

Dominic Adair then noted that the English courts required more than just demonstration that the claim was not inherently implausible, but must be assessed as a matter of substance. Nonetheless, the requirement of plausibility is still a “very low” threshold and different to the requirement of “fair expectation of success” in the inventive step inquiry - citing Actavis v Lilly[2015]. 
Questions which remain outstanding are the extent to which the plausibility threshold varies according to the technical field. Also, how is plausibility assessed in a field of fast moving technology, particularly when the assessment is being made in a revocation proceeding many years after filing. Another question is how will the courts decide cases where the molecular mechanism claimed is plausible at the priority date, but subsequently shown to be wrong, even though the claim still works (for reasons unknown). 
Charles Boulakia explained that similar unanswered questions arose also in Canada. Canadian courts had recently admitted that they were confused about how the sufficiency requirement in s 27(3) worked with the utility requirement in s 2. The Canadian Supreme Court had ruled that the questions are:
  1. what is the invention?
  1. How does it work?
  1. Having only the specification can a person skilled in the art successfully produce the invention using only the instructions contained in the patent?
Thus, if a person can make a “prophetic example” work following the instructions in the patent, that should be sufficient. If a minor research project is required, however, the claim will be insufficient. A recent example related to patents for skidoos where the invention turned on how the position of the rider was changed. Implementation of the invention, however, required more detailed instructions than given in the specification. Accordingly, the patent was invalid. Charles Boulakia then emphasised that, for the prophetic example to support validity, the prophetic example must nonetheless actually work. 
In Canada, it is not sufficient to include some examples that can be extrapolated to the claimed general principle. To claim the general principle, there must be examples plus an explicit statement outlining the reasoning which led to the claimed principle. Canadian courts will almost always refuse to take into account data obtained after filing the application. 
Canadian law has, however, abandoned the requirement that the claims satisfied the “promise of the patent”.[1] Intentional misleading could well still be a basis for invalidation. 
Judge Xia Luo, from the Supreme Court in China, explained the position in China (which Jurgen Meier explained her Honour had a large role in deciding). In the Warner-Lambert case the Supreme Court was prepared to admit experimental data after the filing date, but only if certain conditions were met. One important limitation is that data supporting a technical effect not disclosed in the original application is not admissible. Generally, experimental data which was not available to the person skilled in the art at the priority date would not be admissible as it was unfair: the patentee was not making a sufficient disclosure in exchange for the monopoly grant. 
Chinese courts will first consider whether the technical solution claimed in the patent is reproducible by following the instructions in the patent. For a novel compound, the patent must disclose and verify at least one use or application of the compound. 
Michele Wales congratulated AIPPI on adopting the gene patenting resolution yesterday. Ms Wales explained that the US was fully aware that its position was inconsistent with TRIPS, but the patentable subject matter tests in Alice, Myriad etc. were proving to be an effective tool for invalidating patents. Ms Wales considered that some 47% of biotech patents may be invalid. 
In the USA, prophetic examples are allowable, but must be written in the right (present) tense and confirmatory, post-published data is admissible. 
In Amgen v Sarnofi/Regeneron Fed Cir 2017–1480 (Oct 5 2017), Amgen (Repatha) and Sanofi (Praluent) had competing claims to antibodies binding to PCSK9 to lower high LDL levels. 
Amgen’s discovery of the commercial embodiment came after the patent, but there was extensive disclosure of the class in the specification. The Federal Circuit ruled that Sanofi should have been permitted to rely on its evidence about its experiments after the priority date showing the particular difficulty in identifying its own particular antibody. This evidence could be used in support of both its defence to infringement and that there had been insufficient disclosure in the patent to support the claimed monopoly. Accordingly, the Federal Circuit remitted the matter to the District Court for reconsideration.

Ms Wales noted that, following this decision, it will probably be easy for an infringer to create a story supporting the difficulty of developing its invention which could be used to invalidate the competing (Amgen’s) patent. 
The US courts have also eliminated the “antigen exception” for claiming the antigen. Now, it will be necessary to disclose the specific structure of the antibody in the specification as with other “small molecule” claims. This will have great commercial impact with licensees now likely to be re-assessing whether they need a licence at all as many thousands of patents had been based on the “antigen excretion” and were not written to satisfy this “small molecule” requirement. This will have serious ramifications for many Universities and other small and medium enterprises which often rely on licensing their inventions out for development and commercial exploitation."

  1. Contrast the situation in Australia under the Ronneby Road case (appeal pending.)  

AIPPI Congress Report 4: The business of IP – IP and competition


When IP does battle with competition - fur goes
a flying
Yesterday, participants at AIPPI’s 2017 Congress enjoyed a lively and far-ranging discussion about the intersection of intellectual property and competition at Panel Session IV: The business of IP – IP and competition. Clare Cunliffe reports:

The panel was chaired by Erick Ficks (a Stockholm-based Partner and Head of Roschier's Intellectual Property, Brand Protection, Marketing & Consumer, and Public Procurement practices division). The panel members were Annabelle Bennett AO SC (a retired judge of the Federal Court of Australia), Damian Wasserbauer of Wasserbauer IP, a specialists in patent strategy, litigation, prosecution, and licensing, and Christian Vollrath of the European Commission’s enforcement commission (appearing in a private capacity).

The panel explained that the interface between intellectual property and competition has been apparent for a long time. The interface exists because intellectual property and competition pursue the same objective, of incentivising innovation. Specific aspects of that objective are safeguarded by competition law, where one player in the market possesses market power, or where there is collusion between players in the market. The basic principles of the interface are therefore well established, although new situations arise with the development of new technology. The panel observed that competition law does not treat cases involving intellectual property any differently to other cases. That is to say, the existence of intellectual property rights does not dictate the outcome of litigation. The most significant consideration in every case is whether the intellectual property holder is dominant in the market.

The Honourable Annabelle Bennett explained that the interface between IP and competition is the subject of scrutiny in Australia since Australia's Productivity Commission gave a report on its inquiry into Australia's Intellectual Property Arrangements to the Government in September 2016. The report arose from a recommendation in an earlier competition law review (the Harper Review) which suggested that Australia's IP regime needed to be viewed through a competition prism. The final Productivity Commission report recommended sweeping changes to all aspects of Australia's IP system. In August 2017, the Australian Government released its response, which accepted some of the recommendations, rejected others, and indicated the need for further consultation on others. Although the response suggested that intellectual property and competition share the purpose of furthering innovation, the relation between them is complicated. For example, the Government accepted that it should incorporate an objects clause into the Patents Act 1990 (Cth) describing the purpose of the legislation as enhancing the wellbeing of Australians by promoting technological innovation, transfer and dissemination, and that in so doing, the patent system should balance the interests of producers, owners and users of technology. Ms Bennett explained that it is not clear how this clause should be applied by Courts in determining the outcome of patent proceedings. This will need to be elucidated by judges. In another example, the Government accepted the recommendation that section 51(3) of the Competition and Consumer Act 2010 (which provides an exception to some of the restrictive trade practices provisions of that Act in relation to intellectual property licensing) should be repealed, but noted that where anti-competitive conduct in this space is nonetheless in the public interest, authorisation will be available from Australia’s competition watchdog, the ACCC. However, it remains to be seen how those provisions will work in practice (in response to a later question from the audience, Mr Ficks suggested that block exemptions, which are available in the EU, were a useful tool in helping companies comply with competition law in their settlement agreements).

Mr Wasserbauer noted that unfair competition law is well settled in the US, and that the major issues which arise relate to “mega-mergers” and issues around FRAND licensing (for example, the patent pools which are covered by FRAND licences, and the issue of whether the terms offered by essential patent holders are unfavourable). The consistent challenge for regulators is to respond to creative attempts by companies with market power to avoid regulation.

In the EU, the interface between intellectual property law and competition recognises the importance of intellectual property, but also recognised that competition fosters innovation. The panel gave the example of “pay-for-delay” cases, where a settlement agreement restricts generic market entry in exchange for benefits transferred from the originator to the generic company. Such agreements (which have been the subject of scrutiny in the EU and the US), most often relate to formulation patents, and result in delayed market entry of cheaper generic medicine.

Mr Wasserbauer agreed that “pay for delay” had a significant effect on the market. He observed in the case of patent pools, where licence fees are tiered to reflect the expiry of patents, pay for delay could have the effect of keeping licence fees higher for longer. Mr Wasserbauer noted that competition laws were an important consideration in the context of IP harmonisation, because where IP laws are harmonised but competition laws are not, transaction costs will be increased. The panel noted that the formal harmonisation of IP laws was likely to be very difficult, but that there was an indirect drive to harmonise, with many jurisdictions having introduced competition laws. Ms Bennett noted that when adjudicating local disputes concerning global agreements, the local market conditions were likely to be significant. The panel noted that this was a particularly significant consideration in the context of trade secrets, where the law of trade secrets differs markedly between different jurisdictions, with the effect that a global agreement might be differently construed in different places.

Mr Ficks asked what issues the Internet of Things might raise for competition. The panel responded that although the question of interoperability posed interesting issues in the context of competition, the key question is still likely to be whether any player in the market is dominant. If they are, competition considerations will apply. If they are not, then they will have freedom to operate. The difficult issue is ascertaining whether and when a particular player is dominant. Ms Bennett observed that clear guidelines for assessing dominance might be of more assistance that, for example, objects clauses. Mr Wasserbauer noted the Internet of Things has not yet been built. However, he highlighted one significant issue in the context of interoperability requirements. In the US context, compulsory licensing schemes have previously been rejected in light of the US Constitution’s takings clause. Without a way to ensure that interoperability requirements are not a barrier to entry, the Internet of Things may have detrimental effects on competition.

 We wait with interest to see how the regulation of competition in the context of intellectual property will unfold in these jurisdictions …

Sunday, 15 October 2017

Does the retreat from internationalism mean the retreat of IP?


This Kat has been fortunate to have his professional career track the Golden Age of IP. Whether or not that Golden Age is coming to an end, one thing is certain: the Golden Age has gone hand in hand with internationalism. IP rights may be territorial, but IP, as part and parcel of internationalism and globalization, has seemed inexorable. At least, until now. Whatever one’s politics, it cannot be denied that that the last few years have witnessed a sea change in the status of internationalism. The usual suspects begin with Brexit, America First and Catalonia, with an emphasis on national sovereignty at their collective core. The position was notably set out in a Wall Street Journal article published in May 2017 in the name H.R. McMaster, currently the U.S. National Security Advisor and Gary Cohn, the head of the U.S. National Economic Council, who wrote:
“The world is not a ‘global community’ but an arena where nations, non-governmental actors and businesses engage and compete for advantage. We bring to this forum unmatched military, political, economic, cultural and moral strength. Rather than deny this elemental nature of international affairs, we embrace it.” [This Kat is quoting from September 23rd issue of The Economist, since he does not have an on-line subscription to the Wall Street Journal.]
To appreciate these words (a piece by Daniel Drezner in The Washington Post called it “the most extraordinary op-ed of 2017”), we need to reach back a bit into history. Following the Treaty of Westphalia in 1648, the various combatants to the bloody Thirty Years' War reached a series of agreements that had the effect of enshrining the notion of sovereign states, with non-interference as the norm and balance of power the means for insuring such co-existence, here. All of this worked reasonably well as sovereign states flourished and inter-state violence did not get terribly out of hand, even if the norm was that might makes right.

However, the scope of the horror of World War I led a group of visionaries to contemplate the creation of international structures that would put a brake on the most destructive tendencies of sovereign states. The initial efforts were not overly successful, as World War II demonstrated, but the aftermath of that terrible war was to provide the basis for liberal institutional internationalism to take root, the broad contours of which are, at least for the moment, still in place today, here.

IP had been ahead of this game, with both the Paris and Berne Conventions already enacted before the end of the 19th century, creating an international framework within which the IP law of most sovereign countries could operate (with the US absence from the Berne Convention being a notable exception). But truth be told, all of this IP internationalism was a sideshow until the creation, enforcement and commercialization of IP rights became part of the expanding linkages in global trade that took off in the 1980’s, culminating in the creation in 1995 of the WTO and, for IP, the enactment of TRIPS Agreement. It was the intertwining of the increasing globalization of trade with the transnational structures already in place for IP, all against the backdrop of post-World War II internationalism, which has defined IP practice as we have come to know it.

But for how long? We witness this internationalism being challenged by a call for the return to the earlier form of national sovereignty (what Professors Oona Hathaway and Scott Shapiro call the Old World Order, here), where internationalism (and by extension, economic globalization) and the values that they purport to have fostered will take a back seat, if not be wholly evicted, from the world political stage. And so the question: what will be the fate of IP? There are in principle two possible outcomes.

First, IP will be unaffected. Internationalism was perhaps nice to have, but the creation of works and making of inventions will continue apace. The scope of supply chains may change, but invention and creation will continue, albeit perhaps more at the local level; IP activity is ultimately unrelated to whether nation states are more, or are less, integrated. As Arkady Volozh, the co-founder of Yandex, the Russian on-line giant, has observed: “You can either go global in one service in which you feel good about, or you focus one market and do it really well”. Whatever happens to IP practice going forward, it will not be due to a decline in internationalism (e.g., the challenge to the behemoths of social media will focus on data and privacy, not on classic IP).

Or IP will be impacted, but what will be the vector remain to be seen. In principle, one can posit the impact as either positive or negative. It seems difficult to fathom how the contraction of internationalism will lead to more IP activity. That leaves the other alternative, namely a decline of IP activity, if for no other reason that the retreat of internationalism will bring with it more mercantilist tendencies together with an inward-looking national gaze and reduced potential for market scale. The nature and form of this contraction, and the implications for IP practice, remain open questions. Food for thought for those currently attending the AIPPA annual conclave, this year in Sydney, and those at similar gatherings.

AIPPI Congress Report 3: Young AIPPI Forum

The newest members of AIPPI
Although not historically known for an overwhelming younger membership, AIPPI has taken significant steps over the last several years to encourage the participation of the next generation of IP lawyers and leaders.  Over the past five years, the AmeriKat has noticed a huge change in the demographic of participation at AIPPI with an increasing number of next generation participants.  This year's Congress in Sydney marked the first Young AIPPI Forum form which James Ellsmore (King & Wood Mallesons) reports:  
"Saturday afternoon saw approximately 80 young AIPPI members descend on Home Nightclub for the Young AIPPI Forum. The Forum offered young lawyers and attorneys aged 36 and under the opportunity to network with peers over drinks in an informal setting. This experience was very different from the ‘networking’ that this guest Kat last engaged in on the dancefloor of Home Nightclub in another life!
The Forum began with a ‘Networking and Fun’ session delivered by personal coach Derek Percival of MMA Team. Derek spoke about the importance of networking for young professionals and offered some tips for building networking skills and making strong connections with other members during the Congress. He suggested that members be aware of personality types, as well as cultural and social differences, and how those differences might affect their conversations. He also encouranged members to take themselves out of their comfort zones and demonstrate vulnerability.
Derek then had members break into small groups to share their networking experiences and to perform some short, icebreaker activities. One of these activities involved participants roping each other together and then working out how to disentangle themselves without letting go of the ropes. After a few minutes of passing each other’s arms and legs around and under each other it was safe to say that the ice had well and truly been broken.

Having mastered these activities, AIPPI’s up and coming members were provided with perhaps the missing ingredient for effective networking – alcohol – and set loose to put their newly acquired skills to practice. Members from many countries and backgrounds mingled, exchanged experiences working in the IP field and swapped business cards whilst overlooking the International Convention Centre.

All told, the Forum was a valuable experience for young AIPPI members looking to meet other members, build confidence and connect with familiar faces during the remainder of the Congress."

AIPPI Congress Report 2: Plenary session on inventor remuneration

Mittens fantasy of inventor remuneration -
not a likely outcome, alas!
Yesterday, Clare Cunliffe made her way to the plenary session at AIPPI's World Congress where the topical question of inventor remuneration and draft position paper was being debated.  Clare reports:
"The plenary session for patents involved a lively discussion of a draft position statement on inventor remuneration. The issue of employee inventors and the rights of employers has been an ongoing topic of interest for AIPPI members, with resolutions passed in 1967, 2004 and 2015. 
Mr John Osha, the Deputy Reporter General of AIPPI, explained that inventor remuneration was a serious and controversial issue. Given the very different approaches taken by different national and regional groups, Mr Osha explained that AIPPI was not seeking to reach a resolution in relation to inventor remuneration at the 2017 Congress. Indeed, he explained that harmonisation might not be either desirable or necessary. 
Rather, AIPPI had circulated a questionnaire and draft position statement to identify the different viewpoints of different members, and to determine those issues where there was a definite consensus between local and regional groups. The draft position statement will be used for consultation with government and non-government organisations.
The discussion bore out Mr Osha's observation that it will be difficult to reach a consensus position on this complicated issue.

The UK Group noted that the position statement did not define the term 'employee'. In light of changing employment conditions, the UK Group suggested that any position statement should incorporate a definition based on a rigorous comparative analysis.
A proposal by the French Group that all employees should be entitled to receive remuneration beyond their regular salaries and benefits was narrowly rejected, as was a proposal that the position of employee inventors in the public sector should differ from the position of employees in the private sector. 
There was widespread support for the proposition that employee inventors as inventors should be recognised on any patent application.
It was not possible to discuss the whole of the proposed statement during the course of the plenary session. One of the major unresolved issues was the circumstances under which an invention made by an employee should be deemed to be owned by the employer - for example inventions made using an employer's resources.

Another unresolved issue was the means by which employee remuneration is determined.
The committee (ably chaired by Koen Bijvank of Brinkhof), has invited interested local and regional groups to submit further comments."

AIPPI Congress Report 1: On a different note - copyright and music

The AmeriKat's jet lag finally taking over,
but not before she brings you news from the
music and copyright panel
While the AmeriKat was recovering from moderating the epic which was the trade secrets session at the first morning of AIPPI's World Congress in Sydney, Warwick Rothnie was being entertained by something more lyrical in the copyright and music panel session.  He reports: 

"Andrew Wiseman (Moderator) introduced the overarching theme of the session as the impact of the digital era on the music industry. 
Prof. Ingrida Veiksa (University Turiba) began by reporting that a survey of the Baltic countries showed that 40 - 50% of the general public were accessing their content via YouTube at least daily. That number rose to 70% to 80% at least once a week. Survey respondents indicated they generally considered that accessing music for free on the Internet was not problematic. 
Andrew Wiseman said this highlighted the problem; the change in business model from bricks and mortar stores to online. 
Lisa Margolis, Senior Vice President Business and Legal Affairs and Chief Legal Counsel at Warner Bros, explained that the music industry’s first response, suing downloaders in the courts, did not prove successful. Dan Rosen, CEO at Australian Recording Industry Association/Phonographic Performance Company, pointed out that the music industry was really the first industry to experience the disruption of the digital revolution so it was perhaps understandable that that was the initial response. Andrew Wiseman noted that film was initially insulated from this disruption by bandwidth constraints and expense. However, price and technology had since evolved. 
Dan Rosen noted that these days the public performance right in the recording amounted to 20% of music industry revenues. Lisa Margolis explained that US law was different to the laws of most countries as, while there is a public performance right in the underlying composition, there is not generally in the recording of the performance. In particular, traditional radio broadcasting strenuously resisted paying licence fees for broadcasting recorded music. Nonetheless, with the downturn in revenues from distribution, performance revenues were increasingly important. 
Prof. Veiksa reported on IFPI’s 2017 Report on Global Music Listening Methods. 85% of young music consumers engaged in streaming; but only 35% did so through paid services, the remainder were streaming via free services. This was the “value gap”. There were for example 900 million users of video streams generating US$553 in revenues. In contrast, however, only 212 million uses of subscription audio services (paid and advertisement supported) generated US$3,904 million in revenues. Further, Spotify (a subscription audio service) pays US$20 per user compared to YouTube paying less than US$1 per user. 
Dan Rosen pointed out that the global music market effectively halved over the last 15 years from revenues from sales of recordings on physical media, largely as a result of piracy. The good news is that the last two years had seen strong growth in digital streaming revenues. The largest revenue streams in the USA, UK and Australia are now for digital streaming and did not exist five years ago. 
Andrew Wiseman noted that we have also seen a shift in consumer perspectives from insisting on ownership of a physical copy to acceptance of paying for access to millions of recordings online.[1] 
Dan Rosen noted that the development of online subscription services meant that in Australia piracy rates were down to 25% from 40%. In addition to making access to recorded music online affordable and easy, the industry is making it more difficult to access pirate sites by actions such as website blocking injunctions. A third limb to this strategy is educating the public copyright infringement and the availability of legitimate services. Lisa Margolis noted that there was increasing pressure on YouTube to increase the payments it made for the copyright protected material in its services. 
All panelists drew attention to the sheer volume of material being uploaded to YouTube. It was argued that the ‘safe harbour’ regimes such as §512 of the DMCA were directed to situations where an ISP was really in the same position as the postal service or telephone company, simply carrying content introduced by other people. YouTube was not even envisaged when the safe harbours were introduced and takes a much more active and integrated role in relation to user content which the content industries consider is qualitatively different. 
One emerging trend noted by Dan Rosen is the increased willingness of artists to stand up and protest about the impact of changing laws and practices on their livelihoods. That has been a big shift since Metallica sued Napster. Prof. Vrieska indicated that it was important to start education programs for children in kindergarten as well as school and university."
Dan Rosen reported that vinyl recordings had unexpectedly made a recovery in the USA and Australia, now accounting a substantial proportion of physical sales.  

Friday, 13 October 2017

Saturday Sundries

INTA is holding a couple of educational events in Berlin back-to-back:

Time for some IP News!
-- A workshop on Free Trade Zones (on November 29) 
-- A conference on Brand Authenticity – a relatively new topic, where the focus will be on how sustainability, Corporate Social Responsibility and integrity impact a company’s bottom line (November 30-December 1). Details are available here and here.

INTA has also recently announced their 2018 educational calendar and the Europe Conference will be held in February (26-27) in London on the topic of designs (full calendar at www.inta.org/calendar).

Press release: Best practice code of conduct on SEP licensing

EU innovators have kick-started the development of a best practice code of conduct for licensing Standard Essential Patents for 5G and the Internet of things. The project started at a Cen-Cenelec Workshop held in Paris.

The workshop is being held against the backdrop of an upcoming communication from the European Commission on the system of FRAND licensing of Standard Essential Patents. Supporters of the FRAND system unanimously agree that it is essential to maintain the balanced benefits that open standards deliver to developers of connectivity technologies, the developers and manufacturers that use them, and European consumers.

An online version of the press release can be found here.

Press release: CENELEC Industry code of conduct launch on standards licensing

In the context of the European Commission’s ‘FRAND Communication’ (expected publication at the end of November) – a project will begin on Oct. 6, 2017 in Paris – under the oversight of the CENELEC standards body. It intends to establish an “Industry Code of Conduct for Standard Essential Patents (SEPs) licensing”. In particular, it will be relevant to the development of technology standards in the field of 5G and Internet of Things (IoT).

IP Europe – an industry alliance promoting standards innovation and intellectual property – believes that an industry Code of Conduct could help all stakeholders to harness the potential of the Internet of Things, without the need for further regulation.

A full press release – with quotes from the Cenelec President, IP Europe and Nokia, can be found here.

Upcoming events:

Question the Trade Mark Judges 2017
Wednesday 18 October 2017, 18:00 - 19:30, followed by a reception
J Z Young Theatre, UCL Anatomy Building, Gower Street

UCL Institute of Brand and Innovation Law (IBIL) and MARQUES, the European Association of Trade Mark Owners, invite you to meet and question some of the judges that are or were until recently deciding our trade mark disputes.

Further details can be found here

Patents in Telecoms and the Internet of Things
Thursday 9 - Friday 10 November 2017, Washington DC

The UCL Institute of Brand and Innovation Law and George Washington University’s Faculty of Law announce their 3rd Conference on Patents in Telecoms and the Internet of Things in November 2017 in Washington D.C. 

The conference will be a unique gathering of industry, the judiciary and regulators from the US, Europe and Asia, organised by Professor Sir Robin Jacob (the Sir Hugh Laddie Chair of Intellectual Property at UCL Laws) and Professor Marty Adelman, Co-Director of the Dean Dinwoodey Center for Intellectual Property Studies of George Washington University’s Faculty of Law.

View the full programme and booking details here.

Fresh study: Strengthening the Position of Press Publishers and Authors and Performers in the Copyright Directive

This study was commissioned by the European Parliament’s Policy Department for Citizens’ Rights and Constitutional Affairs at the request of the JURI Committee. It reviews Art 11 and Arts 14-16 of the proposed Directive on Copyright in the Digital Single Market. It outlines criticisms that have been made of the proposals, includes reports of research into the operation and effects of precursors of Article 11 in Germany and Spain, a summary of the cultural economics literature on legal regulation of authors’ contracts and analysis of the laws of 7 Member States to see in what way Arts 14-16 would “add value”. 

Further details can be found here. And the full text can be downloaded here.

Expression of Interest for a Junior Research Position: Legal and Policy Recommendations for Community networks

The Department of Engineering and Information Science of the University of Trento is recruiting a temporary junior researcher in media and telecommunications law (at the post-doctoral, PhD or master level) for a period of 12 months to produce legal information and policy recommendations for community networks, as part of the netCommons project.

Further details can be found here

Industrial Strategy: Intellectual Property Call for Views

Call for views on maximising the incentives of the Intellectual Property system to stimulate collaborative innovation and licensing opportunities. 

As the government sets out its plans for an ambitious new industrial strategy, the IPO is seeking views to form part of our contribution to the next phase of the strategy. We are looking for your views on a range of specific ways we can get innovators to work together more effectively and get the most out of their IP. The consultation will run for five weeks, closing on 15 November 2017.

Further details can be found via here.

Photo courtesy of Mr. He Gong and his lovely kitten Ruobai.

Event report: I3PM General Assembly 2017 at WIPO in Geneva

I3PM, the International Institute for Intellectual Property Management, recently held its biennial General Assembly at WIPO in Geneva.

Gordan Hyland, I3PM President, reports on how it went.

Here’s what Gordan writes:


“The General Assembly presents an ideal opportunity for the professional fellowship to "learn, network, socialize". The headquarters of the United Nations IP body was deemed a suitably symbolic venue to celebrate the 10th anniversary for what is primarily a pan-European Association comprising almost one hundred members from twenty two countries representing a cross-section of all forms of intellectual property, industry, law practice and consulting. The combination of awe inspiring views, a comprehensive day of presentations on leading edge IP subjects, and an off-site dinner made for a most memorable occasion.
After a “State of the Association” update by the exiting President, usual Board activities (Statutes tuning, aerating ideas for the future), Officer elections followed and activity moved on to hot topic presentations (copies of which are available on the I3PM website).

IP Management Education was addressed by Alexander Wurzer, Adjunct-Professor at CEIPI, Director of studies for MIPLM, who is not only an Advisory Board member but in some way a progenitor, or at least founding inspirer, of the Institute. Chantal Koller, Managing Director & Trademark Attorney at Novagraaf Switzerland reviewed best practices in the management of trademarks, touching on e.g. remarkable improvements with Asian clients’ in portfolio management techniques. Philippe Therias gave a unique fascinating insight into FOSS (Free & Open Source Software) company management processes being one of the subject matter pathfinders having been there from the very start with a key company behind its creation and evolution. Martin Chatel, Product & Quality Manager, Dennemeyer reviewed EPO’s validation agreements with a very interesting deep dive into the evolving patent/industry climate in Morocco.
After lunch WIPO also fielded presentations on patents, copyright and trademarks. Christine Bonvallet, Senior Legal Officer, updated on the latest PCT developments (including PPH and the possible integration into the PCT). Sara Amini, Senior Project Officer, reviewed WIPO tools for users of the Madrid System in an alive and engaging manner. Paolo Lanteri, Legal Officer, gave a thought-provoking insight into copyright in the digital environment at WIPO. The presentations were very interesting and stimulating to the point of insufficient time to field all the desired questions.
WIPO’s generous tour of their incredible New Conference Hall, an architectural splendour (really), rounded off the day before all retired to enjoy a good social dinner Swiss style after a walk down the hill toward the lake. Dinner conversation ranged from past post mortems to idealistic broad brushstroke future directions via germane short term realities. But overall what shone though is a friendly informal atmosphere, an enthusiasm for meeting and engaging with colleagues, a desire to do more in the future, as well of course to be on the cutting edge of the intangible asset economy, whilst maintaining mainstream relevancy.
I3PM is dedicated to promoting the field of IP Management and thereby enhance the emergence of a dynamic IP-driven economy. It does so by forming a unique experience pool in the management and realisation of value from intangible assets. The general object of the Institute is to study problems relating to the management of intellectual property and to the profession of the members of the Institute, to come to conclusions on these problems and to convey these conclusions to the authorities and other interested parties as recommendations or opinions or as drafts. The Association promotes the highest standards in ethics, education and professional excellence. Access to outstanding publications, education resources and career services help secure a professional advantage to advance members’ careers. Cooperation with other related bodies, e.g. Observership at WIPO, keep the Association abreast of the latest developments in the field, as does organizing conferences on specialized subjects, e.g. “IP Management Challenges Arising from Pervasive Digitalization”. The Institute’s Statutes require a General Assembly every second year with elections to officer posts being held, hot topics discussed and an opportunity to get together in a collegiate environment provided. Previous venues include Brussels, Munich and Strasbourg. An outstanding Advisory Board of industrial, academic and institutional representatives has been assembled. Subject matter experts, and luminaries, are present at all levels of the Association eager to participate and interact with each other. Ambitious but realistic plans exist for the coming years and great appreciation is felt towards all those who have expended effort along the journey so far. I3PM welcomes inquiries from prospective candidates and other IP associations, academia, industry etc. Contact is easy via the website or colleague-members."

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