Overlapping Intellectual Property Rights 0199696446, 9780199696444

Citation preview

OVERLAPPING INTELLECTUAL PROPERTY RIGHTS

This page intentionally left blank

OVERLAPPING INTELLECTUAL PROPERTY RIGHTS Edited by

Neil Wilkof Shamnad Basheer

1

1

Great Clarendon Street, Oxford, OX2 6DP, United Kingdom Oxford University Press is a department of the University of Oxford. It furthers the University’s objective of excellence in research, scholarship, and education by publishing worldwide. Oxford is a registered trade mark of Oxford University Press in the UK and in certain other countries © The Editors and Contributors, 2012 The moral rights of the authors have been asserted First Edition published 2012 Impression: 1 All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted, in any form or by any means, without the prior permission in writing of Oxford University Press, or as expressly permitted by law, by licence or under terms agreed with the appropriate reprographics rights organization. Enquiries concerning reproduction outside the scope of the above should be sent to the Rights Department, Oxford University Press, at the address above You must not circulate this work in any other form and you must impose this same condition on any acquirer Crown copyright material is reproduced under Class Licence Number C01P0000148 with the permission of OPSI and the Queen’s Printer for Scotland British Library Cataloguing in Publication Data Data available Library of Congress Cataloging in Publication Data Library of Congress Control Number: 2012939892 ISBN 978–0–19–969644–4 Printed in Great Britain by CPI Group (UK) Ltd, Croydon, CR0 4YY Links to third party websites are provided by Oxford in good faith and for information only. Oxford disclaims any responsibility for the materials contained in any third party website referenced in this work.

PREFACE The idea for this book derived from teaching a class nearly a decade ago. The student asked Neil a simple question: how does the law handle a situation where an artistic work is protected both as a trademark and a copyright? Neil found himself stumbling to find an answer. Even more worrying was the fact that there was a severe paucity of secondary literature. The trademark/copyright overlap led to ruminations about intellectual property overlaps more generally and with that came the unformed urge to do a book on the subject. At least half a decade passed and Neil was making little progress with this project. Being convinced that the best way to handle the subject was through separate chapters on various intellectual property overlaps, each written by an expert on the subject-matter of the specific pair of rights, he sought a co-editor. Shamnad Basheer, an intellectual property scholar from India with a substantial background in intellectual property practice, seemed to be the perfect candidate. (Since both Neil and Shamnad had improbably both spent time in the past at the University of Illinois, Urbana-Champaign, fate seemed to be sending a clear message.) Neil then approached Shamnad with the offer to co-edit such a volume and Shamnad gladly accepted, blissfully unaware of the volume and intensity that such a task entailed. We then took the idea to Oxford University Press and, after a rigorous review process, it embraced the publication of this book. And thus was born this labour of love. This book’s journey, like any other journey of challenge, has seen many a trough and a crest. Thankfully we survived, owing to the wonderful support that we received from a large number of good-hearted people. Two people in particular merit mention. First, we wish to express our sincere gratitude to Luke Adams, who served as the original commissioning editor and guided us through the challenging process of formulating the proposal through to approval. Secondly, our heartfelt appreciation for the wonderful work by Sophie Barham, who took over the project and whose exemplary efficiency and skill in handling over 40 contributors saw the book to completion on time. Sophie has given new meaning to the word ‘indispensible’. Every project of this kind also needs a wise man, lurking in the background, who is always ready to offer a helping hand when called upon. Dr Jeremy Phillips was our wise man. In a word—thanks. We also wish to thank Shan Kohli, Jay Sanklecha, and Autri Saha, students of The National University of Juridical Sciences, Kolkata, and Levona Lavi, a student at Monash University in Melbourne, Australia for their help with preparing some of the chapters.

v

Preface At the end of the day, this book is all about the work of the various contributors and those who prepared the comparison tables for the various jurisdictions, who were all asked to give form and content to the editors’ vision. We have been fortunate that those who accepted the challenge have carried it out with aplomb, style, and profundity of thought. We hope that you are all pleased with the results. Neil Wilkof Ra’anana, Israel Prof. Shamnad Basheer Kolkata, India

vi

CONTENTS List of Contributors Table of Cases Tables of Legislation Introduction

xiii xxv xliii lv

1. Navigating the Interface between Utility Patents and Copyrights Andrew P. Bridges A. Hypothetical B. Conceptual Interplays between Utility Patent and Copyright Law C. Practical Considerations in Choice of Protection and Enforcement D. Conclusion 2. The Overlap between Patent and Design Protection David Musker A. Hypothetical—the Circular Beach Towel B. Do Overlaps Matter? C. Patent/Design Anti-overlap Provisions D. Systemic Cross-Links E. Patents and Designs—Twins or Antonyms? F. Design Law Exclusions G. The Circular Beach Towel Revisited

1 1.01 1.04 1.37 1.91 23 2.01 2.07 2.30 2.36 2.48 2.98 2.136 57

3. Patents and Trade Secrets Lionel Bently A. Hypothetical B. Introduction C. Preferring Trade Secrecy to Patents D. Trade Secrecy Prior to Patenting E. Trade Secrecy Alongside Patents F. Conclusion

3.01 3.04 3.06 3.58 3.78 3.82 83

4. Interfaces in Plant Intellectual Property Mark D. Janis A. Hypothetical B. Conceptual Overview C. Analysing Interface Issues in Plant Intellectual Property D. Conclusion E. Summary

vii

4.01 4.02 4.06 4.61 4.62

Contents 105

5. Patents and Utility Models Robert Harrison A. Hypothetical B. The Utility Model C. Protection in Germany D. Utility Models Worldwide E. The Australia Innovation System F. A European Proposal G. Examination H. Division/Branching I. Level of Inventiveness J. Conclusion K. Summary

5.01 5.04 5.06 5.11 5.16 5.22 5.27 5.31 5.35 5.41 5.44

6. Patents and Regulatory Data Exclusivity for Medicinal Products Duncan Curley and Marleen H.J. van den Horst A. Hypothetical B. Introduction C. The EU Battleground: Data Exclusivity, Patents, and Supplementary Protection Certificates D. Conclusion E. Summary 7. When Copyright and Trademark Rights Overlap Craig S. Mende and Belinda Isaac A. Hypothetical B. Conceptual Overview C. ‘Reality’—How the Interface Plays Out in the UK and US D. Conclusion E. Summary 8. The Design/Copyright Overlap: Is There a Resolution? Sam Ricketson and Uma Suthersanen A. Hypothetical B. The Meaning of ‘Design’ C. Berne Convention D. The Paris Convention for the Protection of Industrial Property E. TRIPS Agreement F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface G. Efficacy of Sui Generis Design Law H. Summary

viii

119 6.01 6.02 6.10 6.60 6.61 137 7.01 7.03 7.39 7.91 7.95 159 8.01 8.02 8.09 8.35 8.41 8.44 8.82 8.95

Contents 9. Overlapping Forms of Protection for Databases Jonathan Band and Brandon Butler A. Hypothetical B. Conflicting Models of Database Protection C. The European Union Database Directive D. The United States E. International Agreements F. Summary 10. Moral Rights or Economic Rights? Mira T. Sundara Rajan A. Hypothetical B. Moral Rights: A Definition C. The Importance of the Issue: A Common Law Perspective on Moral Rights D. The Theory Behind the Rights: Monism or Dualism? E. The International Arena: From Dualism to Realism F. Technology Dissolves Boundaries between Rights: The WIPO Internet Treaties G. The Future: A Unified Author’s Right? 11. Protection of ‘Famous’ Marks under Trademark Law and Passing Off David Llewelyn A. Hypothetical B. Introduction C. Passing Off D. Trademark Law E. Back to the Hypothetical F. Summary 12. Overlapping Rights in Designs, Trademarks, and Trade Dress Alan S. Nemes and Anna Carboni A. Hypothetical B. Introduction C. The United States D. The European Union E. Practical Advice and Insights 13. Overlaps between Trademarks and Geographical Indications Dev S. Gangjee A. Hypothetical B. Conceptual Overview

ix

189 9.01 9.03 9.16 9.39 9.69 9.75 209 10.01 10.02 10.07 10.22 10.44 10.50 10.63

231 11.01 11.05 11.07 11.34 11.70 11.73 251 12.01 12.02 12.04 12.39 12.92 277 13.01 13.03

Contents C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems D. Conclusion 14. Domain Names and Trademarks Mark V.B. Partridge A. Hypothetical B. The Conceptual Framework C. Practical Advice D. Application of Traditional Trademark Principles to Domain Names E. Application to Hypothetical F. Summary 15. Publicity Rights, Trademark Rights, and Property Rights Sheldon W. Halpern A. Hypothetical B. The Right of Publicity: Protecting the Associative Value of Persona C. Taxonomy, Categorization, and the Analogical Explosion D. The Right of Publicity as a Right Appurtenant: Constitutional and Intellectual Boundaries Attenuating Property Rights E. Trademark Rights as Rights Appurtenant: Property Rights in the Mark Itself F. Conclusion: A Functional Balance G. Summary 16. The Relationship between Trademark Rights and Unfair Competition Law Axel Nordemann and Tara Mooney Aaron A. Hypothetical B. Introduction C. Legal Background D. Slavish Imitations under Unfair Competition Law and Trademark Law E. Consumer Deception by Creating Confusing Similarity between Trademarks and/or Products under Unfair Competition Law and Trademark Law F. Comparative Advertising G. Discussion and Summary 17. The Relationship between Intellectual Property Rights and Competition Laws Thomas C. Vinje and Ashwin van Rooijen A. Hypothetical B. Introduction C. A Complementary Yet Tense Relationship D. Internal Balancing in Intellectual Property Rights E. Unilateral Refusals to License under Competition Law x

13.10 13.29 297 14.01 14.03 14.62 14.98 14.108 14.113 321 15.01 15.04 15.23 15.33 15.58 15.67 15.68 341 16.01 16.02 16.05 16.10

16.23 16.41 16.56

365 17.01 17.02 17.07 17.22 17.28

Contents F. Specific Issues Involving Standards: Patent Hold-up and the (F)RAND Defence G. Conclusion H. Summary

17.69 17.84 17.86 387 387 395 403 411 419 427 435 443 451 459 466 474 482 490 498 505 513

Comparison Tables Australia Brazil Canada China France Germany India Israel Japan Korea Mexico Netherlands Russia Singapore South Africa Turkey United Arab Emirates Index

521

xi

This page intentionally left blank

LIST OF CONTRIBUTORS Editors Shamnad Basheer is the Ministry of Human Resource Development (HRD) Professor in Intellectual Property law at the National University of Juridical Sciences (NUJS), Kolkata. He is the founder of SpicyIP, a blog dedicated to Indian intellectual property and innovation policy issues. This blog was rated as one amongst the 50 most influential IP personalities the world over by MIP (Managing Intellectual Property). He is also the founder of IDIA (Increasing Diversity by Increasing Access to Legal Education), a pan-India student movement to train underprivileged children for admission to the premier law schools. After graduating from the National Law School Bangalore, Shamnad Basheer joined Anand and Anand, a leading intellectual property law firm in New Delhi, where he rose to head the firm’s IT and telecommunications law division. He then went on to do postgraduate studies as a Wellcome Trust Scholar at the University of Oxford and transitioned to academia. However he continues to consult with law firms, governments, and intergovernmental institutions. In the past, he has been an IBA and an IPBA scholar and has published papers in leading intellectual property law journals. Shamnad Basheer was recently nominated as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). Neil Wilkof is a member of the Bressler Group, Ramat-Gan, Israel and he serves as special intellectual property counsel to Herzog, Fox & Neeman. He has been recognized by various surveys as a leading practitioner in the field of intellectual property and technology transfer. Neil Wilkof is the author of Trade Mark Licensing (2nd edition with Daniel Burkitt), is coeditor (with Melvin Simensky and Lanning Bryer) of Intellectual Property in the Global Marketplace, and is co-editor (with Ian D. Westbury) of Joseph J. Schwab: Science, Curriculum and Liberal Education, Selected Essays. Neil Wilkof has published numerous articles about intellectual law and practice and is on the editorial board of Intellectual Property Law and Practice. He has taught intellectual property law in several universities in the US, India, and Israel. Neil Wilkof is a graduate of Yale University, the University of Chicago, and the University of Illinois.

Contributors Tara Mooney Aaron is an intellectual property, technology, and entertainment attorneyat-law residing in Nashville, Tennessee. She co-founded the law firm of Aaron Sanders PLLC in July 2011. She graduated from the University of Tennessee College of Law as a member of Law Review and the Order of the Coif. Ms Aaron is a member of the Nashville Bar Association Intellectual Property Section and the Copyright Society of the USA Social Media Committee, and is a frequent speaker and writer on copyright and trademark law.

xiii

List of Contributors Jonathan Band is an intellectual property lawyer in Washington, DC, specializing in legislative and appellate advocacy. He received a BA from Harvard College, and a JD from Yale Law School. For almost 20 years, Jonathan Band worked at the Washington, DC, office of Morrison & Foerster LLP, including 13 years as a partner. He established his own law firm in May 2005. Jonathan Band is an adjunct professor at the Georgetown University Law Center, and has written extensively on intellectual property and the internet, including the books Interfaces on Trial and Interfaces on Trial 2.0, as well as over 100 articles. Lionel Bently is Herchel Smith Professor of Intellectual Property Law, University of Cambridge; Director of the Centre for Intellectual Property and Information Law; Professorial Fellow, Emmanuel College, Cambridge; Barrister (IT 2009); door tenant, 11 South Square, Gray’s Inn, London. He is the co-author (both with Brad Sherman) of Intellectual Property Law (Oxford: OUP, 2001; 2nd edn, 2004; 3rd edn, 2008) and The Making of Modern Intellectual Property Law—The British Expericence, 1760–1911 (Cambridge: CUP, 1999). He is co-author of Gurry on Breach of Confidence: The Protection of Confidential Information (Oxford: OUP, 2012) and co-director (with Martin Kretschmer), AHRC Resources Enhancement Project, Primary Sources on Copyright: (). Andrew P. Bridges, a partner in Fenwick & West LLP, is based in San Francisco and Silicon Valley. He represents innovators and their companies around the globe in a variety of important matters typically involving new technologies or business models, often when a company’s or an entire industry’s future is at stake. He litigates complex cases in internet, intellectual property, advertising, unfair competition, consumer protection, and commercial law. He also advises entrepreneurs and companies as they develop new products, technologies, or business models in the face of potential legal challenges. Andrew Bridges received AB with distinction in Greek and Latin, Stanford University; BA in Literae Humaniores and MA, Oxford University (Merton College); and JD, cum laude, Harvard Law School. Brandon Butler is the Director of Public Policy Initiatives at the Association of Research Libraries (ARL), a group whose members are 126 academic and research libraries in North America. His responsibilities there include analysis and intervention regarding copyright, privacy and surveillance, and telecommunications. He is currently working on a project to develop a code of best practices in fair use for academic and research libraries. Brandon also writes the ARL Policy Notes blog, , and the @ARLpolicy twitter account. Brandon Butler graduated from the University of Virginia School of Law in 2008. Anna Carboni is a partner of Redd Solicitors LLP. She is qualified as both a solicitor and a barrister and has over 20 years’ experience in the field of IP, with a particular focus on trademarks, designs, and copyright. She sits as an ‘Appointed Person,’ hearing appeals from the UK Trade Marks Registry. Anna was a partner of an international law firm and head of its London IP Group before being called to the Bar in 2003. She spent the next seven years as a barrister at Wilberforce Chambers before returning to practice as a solicitor in October, 2010. Duncan Curley is a solicitor and the director of Innovate Legal, a London-based boutique IP law practice that he founded in 2007. Dr Curley acts mainly for companies operating in the generic pharmaceutical sector. His work encompasses patent clearance and litigation, with a focus on achieving first-to-market generic drug product launches for his clients in the xiv

List of Contributors EU. Dr Curley’s previous publications include the book Intellectual Property Licences and Technology Transfer (on the European Technology Transfer Block Exemption) and ‘Extending Rewards for Innovative Drug Development’, a short report on Supplementary Protection Certificates published in December 2007 by the Intellectual Property Institute. Dr Dev S. Gangjee is a senior lecturer in law at the LSE, with teaching and research interests in intellectual property as well as more broadly in private law. Dev is a Research Fellow of the Oxford IP Research Centre and a Research Affiliate at IP Osgoode. He has recently completed a monograph on the history of international Geographical Indications protection— Relocating the Law of Geographical Indications—while also co-editing a research handbook on this topic. Additional interests include European and comparative trademark law, the history and theory of IP, collective innovation, and traditional knowledge protection. Sheldon W. Halpern holds the Hon. Harold R. Tyler, Jr., Chair in Law and Technology at Albany Law School; he had previously been at the Moritz College of Law of The Ohio State University, where he was the C. William O’Neill Professor of Law and Judicial Administration. In addition to being the lead author (with Port and Nard) of the United States volume of Kluwer’s International Encyclopaedia of Intellectual Property Law, he has published several books and articles in the fields of copyright law, trademark law, and the law of defamation and privacy and publicity rights; he has lectured and given seminars in these areas at the University of Edinburgh and at Queen Mary University (London). He has directed a series of interdisciplinary conferences exploring the impact of technology on intellectual propery law. Before joining academia, Professor Halpern practised law as a partner in law firms in New York and Minnesota and as general counsel of two large, publicly held corporations. Professor Halpern is a 1959 Order of the Coif graduate of the Cornell Law School. Dr Robert Harrison studied physics at Oxford and Sheffield Universities. After completing his qualifications as a German and European Patent Attorney with IBM Germany, he joined W.L.Gore & Associates, Germany, as European IP Counsel. He is now a partner with the 24IP Law Group, Munich, Berlin, Paris, and London. Rob’s practice involves developing intellectual property protection strategies, particularly in connection with merger and acquisition activities. Rob is a former co-chair of the Licensing Executives Society International’s Electronics, IT and Telecommunications Committee and is recognized by the IAM Magazine as one of the world’s leading IP strategists. Belinda Isaac is founder and principal of Isaac & Co Solicitors, a specialist IP firm based in Oxford. She has over 20 years’ experience of working with household global brands and sophisticated technology businesses across a broad range of industry sectors advising on the international protection, exploitation, and enforcement of IP rights. Belinda is a qualified solicitor and has a doctorate in Intellectual Property from Kings College, London. The author of Brand Protection Matters (Sweet & Maxwell 2001) Belinda has written widely on the subject of trademarks and branding and has co-authored several books. She has a particular interest in the protection and enforcement of rights in branded consumer products and the exploitation of rights in high technology businesses. Mark D. Janis teaches intellectual property, trademarks, and patent law courses at the Indiana University Maurer School of Law in Bloomington, Indiana, where he is Robert A. Lucas Chair in Law and the Director of the Center for Intellectual Property Research. xv

List of Contributors Professor Janis has authored a number of books, including the treatise IP and Antitrust (with Hovenkamp, Lemley, and Leslie), casebooks on trademarks and unfair competition law and trade dress and design law (both with Dinwoodie), and other books on trademark law (with Dinwoodie). He has published numerous law review articles and book chapters on patent law, intellectual property and antitrust, trademark law, and intellectual property protection for plants and plant biotechnology. Professor Janis is the winner of a Collegiate Teaching Award and a Faculty Scholar Award (both from the University of Iowa College of Law), and INTA’s Ladas Award in 2008. Prior to joining the faculty at Indiana, he was the H. Blair & Joan V. White Intellectual Property Chair at the University of Iowa College of Law. He practised patent law at Barnes & Thornburgh (Indianapolis) from 1989 to 1995. David Llewelyn is Professor of Intellectual Property Law at King’s College London and Professor (Practice) in the School of Law, Singapore Management University. A solicitor, he is Of Counsel at White & Case (based in its Singapore office) and is External Director and Deputy Chairman of the IP Academy Singapore. David is joint author of the leading practitioners’ work Kerly’s Law of Trade Marks & Trade Names (15th edn, 2011) and the textbook Cornish, Llewelyn & Aplin on Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (7th edn, 2010). His business book Invisible Gold in Asia: Creating Wealth through Intellectual Property was published in 2010, and is updated on its Facebook page Invisible Gold in Asia. Craig S. Mende is a partner at Fross Zelnick Lehrman & Zissu, PC, which has the largest US practice devoted exclusively to protection of trademark, copyright, unfair competition, domain name, and design rights. Mr Mende is co-chair of the New York chapter of the Copyright Society of the USA, heads his firm’s anti-counterfeit group, and represents a broad array of clients in copyright, trademark, and new media matters. He is a magna cum laude graduate of New York University School of Law, graduated with Honours in Philosophy from Haverford College, and clerked for the Honorable Judge Alan E. Norris on the US Court of Appeals for the Sixth Circuit. He previously practised in the Litigation Department of Cravath, Swaine & Moore and the Business and Legal Affairs Department of Arista Records in New York. David Musker is a UK and European patent attorney and trademark and design attorney, with litigation rights in the High Court. He is a partner at R G C Jenkins & Co, specializing in patents and designs, and Visiting Professorial Fellow at Queen Mary and Westfield College, London University. David was the founder of the Class 99 design law blog, an editor and contributor to the CIPA/ITMA Community Design Handbook, chair of the CIPA Designs and Copyright Committee and member of the Editorial Boards of JIPLP and ECDR. In 1993, he filed the first Community Design. Alan S. Nemes is a partner in the US law firm Husch Blackwell LLP. He has 25 years’ experience representing domestic and international clients regarding trademark, trade dress, design, copyright, domain name, and advertising issues. Alan has also practised extensively in the area of non-traditional IP rights. He represents clients before the US Trademark Trial and Appeal Board and federal courts. He previously served as IP counsel to Edison Brothers Stores, Inc, a retail fashion conglomerate, and later as managing partner of the IP firm, Kalish & Gilster. Axel Nordemann is a German lawyer working with the IP boutique firm of Boehmert & Boehmert. He joined the firm in 1993 and has been a partner in the Berlin office since 1996. xvi

List of Contributors The focus of his work is on trademark law, copyright law, and unfair competition law. He is the co-editor and co-author of several books on intellectual property law, including Nordemann: Competition Law—Trade Mark Law (11th edn, 2012), Fromm/Nordemann: Commentary on the German Copyright Act (10th edn, 2008), and Götting/Nordemann: Commentary on the German Act against Unfair Competition (1st edn, 2009). Axel Nordemann is Dr iur and honorary professor at the University of Konstanz where he teaches copyright law. Mark V.B. Partridge is the founder of Partridge IP Law, a Chicago-based firm with a global practice helping businesses protect brands, content, and ideas. A graduate of Harvard Law School, Mark has extensive experience with trademark and internet issues. In 1998, he was selected to serve as an expert on the WIPO Internet Domain Name Process. As a UDRP Panelist, he has issued over 175 decisions. He has served on ICANN committees to help develop rights protection mechanisms for new gTLDs. Mark’s books include Trademark and Copyright Litigation (2010) and Alternative Dispute Resolution (2009) published by Oxford University Press. Sam Ricketson is a Professor of Law at the University of Melbourne and also practises at the Victorian Bar in the area of intellectual property (copyright, patents, trademarks, and designs). Prior to November 2000, he was the Sir Keith Aickin Professor of Commercial Law at Monash University, and before this held various positions at the Universities of Melbourne and London. He has written and published widely in the area of intellectual property, and has been the Director of Studies in Intellectual Property in the Melbourne Law Masters programme since 2001. Dr Mira T. Sundara Rajan holds a doctorate from the University of Oxford, and is a scholar and specialist consultant on intellectual property rights. She is currently an Honorary Member of Magdalen College, Oxford University, and her former academic appointments include the Canada Research Chair in Intellectual Property Law at the University of British Columbia, (2004–11; Canada Research Chair Award 2005–15) and a Herchel Smith Fellowship in Intellectual Property Law at the Queen Mary Intellectual Property Research Institute of the University of London (2002–4). Mira’s most recent book, Moral Rights: Principles, Practice and New Technology (New York: Oxford University Press, 2011) examines the aspect of copyright law known as moral rights, and offers a unique analysis of their role in a technological environment. Professor Uma Suthersanen currently holds a chair in international intellectual property law at the Centre for Commercial Law Studies, Queen Mary, University of London. She has degrees from the National University of Singapore, and Queen Mary, London, and is a member of the Singapore Bar. Her other posts include: Queen Mary Studies in Intellectual Property (series editor); European Copyright and Design Reports (editor); British Literary and Artistic Copyright Association/ALAI-UK (vice-chairman); Association Litteraire et Artistique Internationale (ALAI) (executive committee); British Copyright Council (copyright working group); British Computer Society (legal advisory committee); Intellectual Property Academy of Singapore (Visiting Overseas Fellow). She has received consultancies from: United Nations Conference on Trade and Development; World Intellectual Property Organization; European Parliament; Government of Israel; Government of Singapore/ Singapore Intellectual Property Academy; International Centre for Trade and Sustainable Development. xvii

List of Contributors Marleen H.J. van den Horst holds a doctorate from VU University Amsterdam. She is partner and head of the IP & Technology Practice Group of the Netherlands based law firm BarentsKrans NV. She has extensive experience in litigating IP cases before various courts, both interim injunction and final relief proceedings. With a focus on patents and technology, she is frequently involved in multi-jurisdictional litigation. Client-driven, Marleen has specialized in patent litigation and regulatory proceedings in the pharmaceutical, life sciences, and healthcare industry. She is a regular speaker at international conferences, such as Fordham’s IP conference, C5 conferences, LES. She is a member of the Standing IP Committee of the Dutch Bar Association. Marleen is recognized as a leader in the field in Chambers Global, Chambers Europe, Europe Legal 500, and IAM Patent Litigation. Ashwin van Rooijen is an associate in the Brussels-based antitrust practice of Clifford Chance LLP. Having previously worked as a software engineer, Mr Van Rooijen specializes in advising technology firms in mergers and behavioural antitrust matters as well as a variety of intellectual property issues. He holds a PhD from the University of Amsterdam’s Institute for Information Law on the interplay between software copyright and competition law, an LLM from the University of California Berkeley, and an LLB/LLM from the Free University of Amsterdam. Thomas C. Vinje is a partner at Clifford Chance LLP in Brussels and chairman of the firm’s global antitrust practice. He specializes in European Union antitrust and intellectual property law, especially in high-technology matters. He has been particularly active on dominance and intellectual property matters as well as mergers in the IT sector, and is a regular speaker on related topics. Recently, he advised Oracle on its acquisition of Sun Microsystems. Mr Vinje holds a JD from Columbia University School of Law (James Kent Scholar) and a BA, summa cum laude, from the University of Washington. Mr Vinje is a solicitor in England and Wales and an attorney in Hawaii and California.

Contributors to the Comparison Tables Uğur Aktekin is an attorney-at-law and trademark and patent attorney specializing in intellectual property law. He co-chairs the IP department of his firm and his practice concentrates on trademark, design, copyright, information technology, unfair competition, advertising, and media laws. He has been involved in a number of advisory and litigation matters on all fields of IP law. He is a member of the Board of Directors of the Turkish Association of Patent and Trademark Attorneys and the committees of several international IP organizations. His email address is . Sean Alexander is a patent agent in the Vancouver office of Gowling Lafleur Henderson practising primarily in the biopharmaceutical, medical device, and greentech sectors. In addition to being a registered patent agent in Canada and the United States, Sean is a qualified European Patent Attorney. Sean has been working in the intellectual property area since 1996 and joined Gowlings in 2009. Roberto Arochi is a partner at Arochi, Marroquín & Lindner, SC. Roberto has over 30 years’ of experience in intellectual property law and he is recognized as one of the top IP law practitioners in Mexico. He focuses on trademarks, patents, copyrights, IP litigation, IP enforcement, border measures, domain names, advertising law, and licensing. xviii

List of Contributors He is an active member of the International Trademark Association (INTA), the Mexican Association for the Protection of Intellectual Property, the Mexican Bar Association, the Inter-American Association of Intellectual Property, the International AntiCounterfeiting Coalition and the Global Advertising Lawyers Alliance, among others. Roberto graduated from the Universidad Iberoamericana and is in the process of obtaining his JD from the Universidad Panamericana. Ravi Bhola is a patent attorney and is the partner heading the practice of the Bangalore office of K&S Partners. He handles filing and prosecution of patent applications in diverse areas of technology including biotechnology, bioinformatics, software, nanotechnology, pharmaceuticals, electronics, communication, and mechanical technology. He also advises clients on issues relating to licensing, assignment, oppositions, freedom to operate, technology landscaping, IP due diligence and auditing, IP portfolio strategy, patent pooling, negotiations, and litigation. Ravi Bhola regularly conducts patent workshops and invention capturing sessions for his clients. Christopher Blizzard is a Santa Clara University law student who spent a summer as an externship at Yuasa and Hara in Tokyo, Japan, and contributed to the comparison table of Japan as a member of the Yuasa and Hara team. Katherine Chandler is an intellectual property lawyer who advises on copyright and trademarks as well as trade practice issues dealing with misleading and deceptive conduct. She also undertakes substantial work in relation to anti-counterfeiting and brand protection. Katherine’s practice encompasses clients in a variety of industries including luxury goods, food and beverage, automotive, transportation, and pharmaceutical. Bertrand Cochet received his engineering degree in Telecommunications in 1997 and obtained a postgraduate degree in Intellectual Property from Strasbourg University in 2002. After having worked at the European Patent Office as a Patent Examiner, he joined Cabinet Plasseraud in 2008 where he worked as a European and French Patent Attorney. He now works as an in-house patent counsel with France Telecom. Hoo Dong Lee is the managing partner of the Intellectual Property Group at Bae, Kim & Lee LLC (BKL), which is the top tier full-service law firm in Korea. He is also a member of the Korea Copyright Commission and serves as a key member in many committees dealing with IP issues and developments. Furthermore, he has previously studied and worked in Japan for many years and is a well-renowned specialist of Japanese practice in Korea. Marina I. Drel is a partner and the head of the litigation and enforcement practice in Gowlings’ Moscow office. Marina’s broad practice and legal experience include advice to, and legal representation of, multinational corporations in courts of general jurisdiction, arbitration courts, and administrative proceedings in all areas of intellectual property and advertising. A qualified Russian barrister and solicitor, Marina has particular experience in infringement and counterfeit issues. Valérie Dureisseix handles drafting, prosecution, and performs freedom-to-operate studies at Cabinet Plasseraud. After Materials Sciences Engineering school, Valérie received a PhD earned between the Sciences and Separation Methods laboratory (EA3233, University of Rouen) and Cephalon France: a pharmaceutical company where she worked on solid state characterization of active pharmaceutical ingredients and their derivatives. Valérie joined the chemistry department of Cabinet Plasseraud in January 2010. xix

List of Contributors Robert A. Fashler is a lawyer and trademark agent in the Vancouver Office of Gowlings. He has specialized in intellectual property and technology for 25 years. Best Lawyers in Canada and Lexpert recognize Rob as one of Canada’s leading practitioners in IP and technology. He has also been listed in IAM Licensing 250 for 2011 (Intellectual Asset Management Magazine). Rob is an arbitrator and mediator associated with the World Intellectual Property Organization, International Trademark Association, National Arbitration Forum, and IP Neutrals of Canada, and is a Fellow of the Chartered Institute of Arbitrators. Taku Fujiwara is attorney-at-law at Yuasa and Hara in Tokyo, Japan. He studied at Chuo University, LLB, 2006; Hitotsubashi University, JD, 2008. Frédéric Glaize is a European trademark and design attorney, working at Cabinet Plasseraud. He assists clients on trademark, designs, domain names and software copyright legal protection, and enforcement. Among his editorial activities, Frédéric is the main contributor of , a blog on trademark law and its unusual aspects. He also contributes to Marques’ Class 46 blog. Deepak Gogia is an associate in the trademarks and copyright practice of K&S Partners in the firm’s Gurgaon office. He advises clients on all aspects of enforcement of trademarks, copyrights, and designs. He regularly appears before the High Court of Delhi, the Supreme Court of India as well as the Trade Marks Office and the Intellectual Property Appellate Board in connection with enforcement matters. He also regularly handles transactional work involving issues of copyright and entertainment law for clients from the movie and publication industry. Stephen Goldberg is head of trademarks and a partner at Spoor & Fisher, South Africa, a specialist IP firm established in 1920. Since then it has developed into a firm of over 50 lawyers and IP specialists providing solutions across the full spectrum of intellectual property. Stephen is a trademark attorney with 28 years’ experience specializing in domestic and international trademark registration, searches, and domain names. Stephen is also former lecturer and examiner on trademarks for the South African Institute of Intellectual Property Law, and former INTA Bulletin editor for Law and Practice, Middle East and Africa. Tim Golder has more than 27 years’ experience in intellectual property law. He has been a partner at Allens Arthur Robinson (based in the Melbourne office) since 1991, and before that worked as an associate of that firm and also at Slaughter and May in London. Tim works in both contentious and non-contentious matters, and also handles trademark portfolios for clients. Tim is both a lawyer and a registered trademarks attorney. He is a member of the Law Institute of Victoria, The International Trade Mark Association, the Intellectual Property Society of Australia and New Zealand, The Copyright Society of Australia, the Editorial Board (Trade Marks and Unfair Competition) of the Journal of Intellectual Property Law & Practice, the Victorian Society of Computers and the Law, Australian and New Zealand Sports Law Association, and the Franchise Council of Australia. He is also a consultant to the Trade Marks Sub-Committee of the Law Council of Australia. His email address is . Sara Holder is based in the United Arab Emirates; she heads up Rouse & Co International’s practice in the MENA region and has been regularly recognized as a leading practitioner. After qualifying and working as a lawyer in New Zealand, Sara gained extensive experience

xx

List of Contributors of intellectual property in China and Indonesia, before relocating to the Middle East. Sara also spent several years managing Rouse’s practice in Indonesia. Tim Iserief joined IP firm Klos Morel Vos & Schaap as a professional support lawyer in 2011. Tim is currently finishing his masters degree in intellectual property law at the University of Amsterdam, and is writing a thesis on the principle of relativity with regard to unfair competition matters in the Netherlands. Takeshi Kanda is an attorney-at-law of Yuasa and Hara in Tokyo, Japan, and specializes in all fields of intellectual property law including licensing and litigation, as well as IT, general corporate law, and transactions. He studied at Keio University, gaining an LLB in 2003, graduated from the Legal Training and Research Institute in 2006, and achieved an LLM at the University of Southern California, Gould School of Law in 2011. He also experienced working at the Japan Patent Office as a fixed-term official and whilst there was involved in the preparation for the Japanese Patent Act reform established in 2011. He has written several articles on intellectual property in Japanese and English for various books and magazines. Rajendra Kumar is a partner in the Gurgaon office of K&S Partners and heads the firm’s trademarks, copyright, and geographical indications litigation practice. His area of expertise extends to trademark and copyright litigation, all aspects of prosecution and enforcement of intellectual property rights, TRIPS-related issues, domain name disputes, and intellectual property aspects of the entertainment industry and the internet. He has assisted the Government of India in developing a new law for the protection of geographical indications in India. The author of several articles, Rajendra is also a prominent speaker at various fora, both national and international. FJ Labuschagne LLB (Northwest) LLM (Corporate) (Pretoria). Attorney of the High Court of South Africa, Associate Member of the South African Institute of Intellectual Property Law, Member of SAIIPL Design Law Committee. FJ specializes in the filing and prosecution of local patent and design applications as well as patent and design records and formalities at Spoor & Fisher in South Africa. He also focuses on regulatory advice as a member of the firm’s medicine, foodstuff, and product regulatory team. He has extensive transactional, commercial litigation and intellectual property enforcement experience. He can be reached at . Gilbert Leong is a partner in Rodyk & Davidson LLP’s Intellectual Property and Technology Practice Group. Gilbert speaks and writes widely in the field of data privacy/ protection matters. As a member of the legal sub-committee of the National Internet Advisory Committee, Gilbert participated in the drafting of the ‘Model Data Protection Code for the Private Sector’. Gilbert is acknowledged in ‘Who’s Who Legal: Singapore 2008’ for regulatory compliance, in the Asian Legal Business ‘Legal Who’s Who Singapore 2003’ for information technology, and is an Asialaw Leading Lawyer 2010 and 2011 for IT, telecommunications, and media. He was a member of several technology-focused think tanks in Singapore. In Gi Min is a senior associate of the IP Group at BKL. He is a member of the Korea Entertainment Law Society and his specialty is in the area of trademark, game, and entertainment law.

xxi

List of Contributors Manuel Morante is an associate at Arochi, Marroquín & Lindner SC (Mexico City) and mainly practises intellectual property law, international law, administrative law, and advertising law. He is an active member of the Mexican Association for the Protection of Intellectual Property and of the International Trademark Association (INTA). Manuel Morante has a law degree (1997) and JD from the Universidad Panamericana (UP). He is a Philosophical Anthropology graduate from the Philosophy Faculty of the UP (2002). Mr Morante teaches comparative law at the law faculty of Universidad Panamericana (Mexico City). Matthew Murphy is the managing partner of the MMLC Group and the head of its IP/IT Group for China. Matthew has a Master of Laws specializing in Chinese commercial law and IP law, and is well known for his 17 years of work in protecting the IP rights of major corporations and start-ups in China. Matthew has been listed as a leading lawyer in the Asia Pacific region by numerous publications, including Chambers & Partners, Lawyer Monthly, and others. He is also a popular gTLD and ccTLD domain name arbitrator with CIETAC and the HKIAC. In 2011, the MMLC Group was awarded China IP Law Firm of the Year by Lawyer Monthly, and China IT Law Firm of the Year by Corporate International. Latha R. Nair is a partner in the Gurgaon office of K&S Partners. She advises clients on all aspects of prosecution and enforcement of trademarks, geographical indications and copyrights, transactional and advisory work related to trademark and copyright protection on the internet and the entertainment industry, issues related to TRIPS Agreement, and the protection of geographical indications in India and abroad. Latha also has expertise in domain name disputes, trademark and copyright due diligence, and opinions on the exploitation of trademarks, copyrights, and geographical indications. She has authored several articles and regularly speaks at national and international fora. Shamin Raghunandan has practised trademarks at Spoor & Fisher for seven years. Her field of practice is domestic and international trademark registrations, searches, and portfolio management. She is the author of the chapter entitled ‘Singapore Treaty on the Laws of Trademarks’, published in the World Intellectual Property Rights and Remedies. She also contributes to the update of Katzarov’s Manual on Industrial Property and Kluwer Law International’s Brown Book. Shamin’s email address is . Gilles Ringeisen graduated from Strasbourg University in 1997 and subsequently obtained a postgraduate degree in intellectual property from the same university in 1998. He became a qualified French and Community trademarks and designs attorney in 2003. Gilles is a member of APRAM (Association des Praticiens du Droit des Marques et des Modèles) and ECTA (European Community Trademark Association). He joined Cabinet Plasseraud in 2000 and has been working there ever since. He specializes in trademarks and designs infringement matters, including specific issues of tobacco regulation. Gilles also focuses on intellectual property litigation. Dmitry S. Semenov is an associate in Gowlings’ Moscow office, practising in all areas of intellectual property, primarily trademark law, patents, copyright, domain name enforcement, and anti-counterfeiting. Dmitry has extensive experience in assisting multinational corporations in intellectual property rights matters, including successful anti-counterfeit activities and litigation. He has additional expertise in advertising, packaging and labelling, marketing, unfair competition, privacy and data protection, trade secrets, IP-related transactions, as well as in regulatory issues relating to the pharmaceutical industry. xxii

List of Contributors Madhusudan Siddara Thippappa is a patent attorney and works as a senior associate at K&S Partners’ Bangalore office. He represents clients in the areas of computer science, computer networks, embedded systems, computer applications and software, electronics and communications, electro-mechanical engineering, automotive engineering, and telecommunications. He is involved in patent drafting, prosecution, opinions on patentability, freedom to operate, invalidation search, due diligence, technology landscape, infringement analysis, IP portfolio building strategy, oppositions and managing patent portfolios of clients, and conducting patent workshops. Madhusudan regularly appears before the Patent Office for prosecutions, oppositions, hearings, and appeals. He regularly speaks at IP workshops. Benny Spiewak is a senior partner with ZCBS-Zancaner Costa, Bastos e Spiewak Advogados, based in São Paulo, Brazil. His practice is dedicated to legal, regulatory, and legislative policy challenges of clients engaged in the creative and innovative industries, mainly copyrightintensive markets, life sciences, and IP-driven commercial transactions. He is coordinator of the International Law Committee at the Brazilian Intellectual Property Association and officer of the Intellectual Property Association of the State of São Paulo. Benny is a member of the Intellectual Property and Health Law task forces of the Brazilian chapter of the American Chamber of Commerce, the American Intellectual Property Law Association, DIA-the Drug Information Association, and the Food and Drug Law Institute. He is assisting professor of intellectual property at the Continuing Education School of the Brazilian Bar Association, São Paulo section and visiting lecturer of intellectual property and global challenges at WIPO’s summer school, in Geneva and in São Paulo. Catherine Touati is a senior attorney in the chemistry/biotech department at Cabinet Plasseraud. She specializes in the chemical, cosmetic, food, and in particular the phytopharmaceutical, and pharmaceutical fields. She also advises on questions relating to Supplementary Protection Certificates. Catherine handles drafting, prosecution and defence of rights, as well as patent litigation matters, and also performs freedom-to-operate studies. Moïra Truijens graduated from the University of Utrecht where she specialized in intellectual property law and IT law. Moïra worked at the District Court of Utrecht as well as at the Institute for Information Law of the University of Amsterdam, and started her career as a lawyer at IP law firm Brinkhof, before she joined Klos Morel Vos & Schaap in 2008. She specializes in patent, copyright, trademark, and advertising issues. Moïra is one of the co-authors of the AIPPI reports on ‘Damages for infringement, counterfeiting and piracy of trademarks’ and ‘The person skilled in the art and the inventive step requirement in patent law’. She teaches and lectures frequently on subjects related to her practice. Josine van den Berg was educated at the University of Nijmegen where she majored in intellectual property law. In 2003, Josine joined IP firm Klos Morel Vos & Schaap. She spent a year at the District Court Haarlem as a trainee judge in 2007, returning to the firm in 2008. Her extensive litigation experience includes a considerable number of high profile trademark, copyright as well as tradename cases. Furthermore, her practice has a focus on press and media related matters. Josine teaches regularly on a wide range of intellectual property litigation related topics, including cost awards and ex-parte injunctions. Kai Westerwelle is a certified specialist lawyer in information technology law and advises major national and international companies on IT and intellectual property law. Dr Westerwelle has supported a substantial amount of national and international restructuring xxiii

List of Contributors and outsourcing projects, M&A transactions, and IPOs. He is the author of various publications and lectures at the University of Dresden (data protection) and the Frankfurt School of Business and Finance (IP law). Dr Westerwelle is chairman/member of the board of directors of different technology companies. Kozo Yabe is attorney-at-law/patent attorney and a partner of Yuasa and Hara in Tokyo, Japan; Chuo University, LLB, 1985; University of Illinois at Urbana-Champaign, LLM, 1994; Adjunct Professor, University of Illinois College of Law since 2000 and Chuo University Law School from 2005 to 2009; Board members of AIPPI Japan, ALAI Japan, and Japan Trademark Association. Takashi Yamada is attorney-at-law of Yuasa and Hara, Tokyo, Japan. He practises in intellectual property, corporate, information and communications technologies, international transactions, and litigation. He studied at University of Tokyo, LLB, 1993; Queen’s University (Canada), LLM, 1997, Legal Training and Research Institute in 2008. He has worked for the Ministry of Internal Affairs and Communications, Organisation for Economic Cooperation and Development (Paris), and was Counsellor, Legislative Bureau of the House of Representatives. He is a visiting lecturer at Keio University Graduate School of Media Design.

xxiv

TABLE OF CASES Note: Chapters 1–17 are referenced to paragraph number and the Comparison Tables are referenced to page number.

T 83/98 and T 1077/99 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . T 335/90 (unpublished) (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . T 442/90 (unpublished), HETTLING-DENKER/Translucent Building Materials (T686/90), [2004] EPOR 5 T 252/91 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . T 1179/08 (unpublished) (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

2.43 2.66 2.67 2.43

A&M Records, Inc v Napster, Inc 239 F 3d 1004, 1023 (9th Cir 2001) . . . . . . . . . . . . . . . . . . . . . 1.70 A.A. Sharnoa Ltd v Seren Meuhadot Industries Ltd N. Tnuva, Court decision 22(1)113 . . . . . . . 2.104 AB Volvo v Erik Veng (UK) Ltd (C-238/87) [1988] ECR 6211 (ECJ 5 October 1988) . . . . . . . .17.34, 17.37, 17.38, 17.41, 17.44, 17.45, 17.48, 17.56, 17.60 Abdul-Jabbar v General Motors Corp, 85 F 3d 407 (9th Cir 1996) . . . . . . . . . . . . . . . . . . 15.15, 15.37 Abercrombie & Fitch Stores, Inc v American Eagle Outfitters, Inc, 280 F 3d 619 (6th Cir 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.06, 12.34, 12.35 Abschlussstück, BGH, GRUR (2003), 332 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.13 Acuson Corpn v Aloka Co Ltd, 209 Cal App 3d 425, 257 Cal Rptr 368, 10 USPQ 2d 1814 (CA Cal) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.44 Adelman v Christy, 2000 US Dist LEXIS 4516 (Az, 29 March 2000) . . . . . . . . . . . . . . . . . . . . . . 9.44 Afga-Gevaert AG’s Application (1982) RPC 441 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.38, 2.39, 2.42 AIDA v AIDU, BGH, GRUR (2010), 235 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.12 Alberto-Culver Co v Andrea Dumon, Inc, 466 F 2d 705, 175 USPQ 2d (7th Cir 1972) . . . . . . . 12.10 Alfred E. Tiefenbacher GmbH v H. Lundbeck A/S JGR 2009/27, Decision of the District Court of The Hague of 8 April 2009 . . . . . . . . . . . . . . . . . . . . . . . . . 6.54 Allison v Vintage Sports Plaques, 136 F 3d 1443 (11th Cir 1998) . . . . . . . . . . . . . . . . . . . 15.50, 15.52 Aluminiumräder, BGH, GRUR (2005), 163 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.13 Amarula und Marulaba, Higher Regional Court of Cologne, MarkenR (2009), 228 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.29, 16.35, 16.36 American Cyanamid (Dann’s) Patent [1970] 1 WLR 1507, [1970] 3 All ER 785, [1970] FSR 443, [1971] RPC 425 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.23 American Dental Ass’n v Delta Dental Plans Ass’n, 126 F 3d 977 (7th Cir 1997) . . . . . . . . . . . . . . 9.43 American Greetings Corp v Dan-Dee Import, Inc, 807 F2d 1136 (3d Cir 1986) . . . . . . . . . . . . . . 7.87 American Online v National Health Care Discount, Inc, 174 F Supp 2d 890 (ND Iowa 2001) . . . 9.60 American Waltham Watch Co v United States Watch Co 173 Mass 85, 53 NE 141 (1899) . . . . . 13.09 Amp Incorporated v Utilux Proprietary Limited [1972] RPC 103 (HL) . . . . . . . . 2.106, 2.109, 2.110, 2.113, 2.117, 2.118, 2.123, 2.127, 2.129, 2.131, 8.17 Anchor Wall Systems Inc v Keystone Retaining Wall Systems Inc [1996] APO 33 . . . . . . . . . . . . . 2.39 Angell Elevator Lock Co v Manning (1965) 348 Mass. 623, 626, 205 NE 2d 245 . . . . . . . . . . . . . 3.43 Anheuser-Busch v Budejovicky Budvar, NárodnÍ Podnik (C-245/02) [2004] ECR I-0000, [2005] ETMR 27 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11 Animal Fair, Inc v Amfesco Indus, Inc, 620 F Supp 175 (D Minn. 1985), affirmed 794 F 2d 678 (8th Cir 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.72 Animated Music Ltd’s Trade Mark [2004] ECDR 27. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.40 Animated Music Ltd’s Trade Mark [2004] ETMR 79 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.47 Ann-Margret v High Society Magazine, Inc, 498 F Supp 401, 404 (SDNY 1980) . . . . . . . . . . . . 15.56 Apotex USA, Inc, v Merck & Co, Inc 254 F 3d 1031, 59 USPQ 2d 1139 (CAFC, 2001). . . . . . . . 3.34 Apple Computer, Inc v Franklin Computer Corp, 714 F 2d 1240 (3rd Cir 1983) . . . . . . . . . . . . . 1.29 Apple/Method of transition between window states (T 50/07), [2010] EPOR 20 (TBA) . . . . . . . . 2.67

xxv

Table of Cases ARENHOLD/Deposit of an Industrial Design J 15/80 (1981) OJ EPO 213, [1979–85] EPOR A56, [1982] ECC 74 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.40 Arista Records LLC v Lime Group LLC, case No 06 CV 5936 (KMW), slip op. at 6 (SDNY 10 March 2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.75 Arsenal Football Club plc v Reed (C-206/01) [2002] ECR I-10273, [2003] ETMR 19 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.23, 7.45, 7.46 Asahi Kasei Kogyo KK’s Application [1991] RPC 485 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . 3.62, 3.63 Ashley Furniture Industries, Inc v Sanciacomo NA, Ltd, 187 F 3d 363 (4th Cir 1999) . . . . . . . . . 16.17 Aslanian, Re 590 F 2d 911, 200 USPQ 500 (CCPA 1979), 2125 . . . . . . . . . . . . . . . . . . . . . . . . . 2.45 Aspen Skiing Company v Aspen Highlands Skiing Corporation, 472 US 585, (US Sup Ct, 19 June 1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.31, 17.68 Associated Press v All Headline News Corp 608 F Supp 2d 454 (SDNY 2009) . . . . . . . . . . . . . . . 9.57 AstraZeneca v Commission, not yet published (Case T-321/05) (EU General Court 1 July 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.76 Attorney-General v Blake [2001] AC 263 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.25 Attorney-General v Guardian (No 2) (Spycatcher Case) [1990] 1 AC 109 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.12, 3.13, 3.47, 3.51 Augsburger Puppenkiste, BGH, GRUR (2009), 772 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.12 August Storck v OHIM (C-24/05 P) [2006] ECR I-5677 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.79 Au-Tomotive Gold, Inc v Volkswagen of Am, Inc, 457 F3d 1062 (9th Cir 2006) . . . . . . . . . . . . . . 7.87 Avia Group International Inc v L. A. Gear California Inc, 853 F 2d 1557, 7 USPQ 2d 1548 (Fed Cir 1988) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.108, 2.125, 2.127, 12.36 Bailey v Hughes [2006] EWPCC 5, [2007] FSR 1. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.135 Baker v Selden 101 US 99 (1879) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.12, 1.13, 1.14 Bang & Olufsen A/S v OHIM [2008] ETMR 46 (Case T-460/05) . . . . . . . . . . . . . . . . . . 12.77, 12.80 Bang & Olufsen A/S’s application to register the shape of a loudspeaker (Case R 497/2005-1), 10 September 2008 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.80 Barcelona.com, Inc v Excelentisimo Ayuntamiento de Barcelona, 330 F 3d 617 (4th Cir 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.81 Barclays Capital v Theflyonthewall.com 650 F 3d 876 (2nd Cir 2011) . . . . . . . . . . . . . . . . . . . . . 9.58 Bauhausklassiker v Möbel im Bauhausstil, Regional Court of Hamburg, Judgment of 12 February 2008, 312 O 525/07, GRUR-RR 2009, 76 (LS) . . . . . . . . . . . . . 16.25 Bavaria NV, Bavaria Italia Srl v Bayerischer Brauerbund eV (C-343/07) [2009] ECR I-5491, [2009] ETMR 61 (ECJ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.25 Bayer AG v Schein Pharmaceuticals, Inc, 301 F 3d 1306, 64 USPQ 2d 1001 (CAFC, 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.80 Bayer/Plasterboard (Opposition by Rigips and Wacker-Chemie) (T602/91) [1996] EPOR 388 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.69 Bayer’s Design (1908) 25 RPC 56 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.134 Bayerischer Brauerbund eV v Bavaria NV (C-120/08) [2011] ETMR 11. . . . . . . . . . . . . . . . . . . 13.17 Benedict v General Motors 184 F Supp 2d 1197 (ND Fla 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . 3.34 Benetton Group SPA v G-Star International BV (C371/06) [2008] ETMR 5 . . . . . . . . . . . . . . . . 7.57 Benson v Paul Winley Record Sales Corp, 452 F Supp 516, 517 (SDNY 1978) . . . . . . . . . . . . . . . 7.75 Berkeley Administration v McClelland [1990] FSR 505 (EWHC QB) . . . . . . . . . . . . . . . . . . . . . 3.24 Berkla v Corel, 66 F Supp. 2d 1129 (ED Ca 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 Bernstein v United States Dep’t of Justice, 176 F 3d 1132 (9th Cir 1997). . . . . . . . . . . . . . . . . . . . 1.30 Berry Sterling v Pescor Plastics 122 F 3d 1452, 1455 (Fed Cir 1997) . . . . . . . . . . . . . . . . . . . . . . 2.115 Best Lock Corp v Ilco Unican Corp 94 F 3d 1563 (Fed Cir 1996) . . . . . . . . . 2.56, 2.76, 2.103, 2.104, 2.108, 2.110, 2.118, 2.132 Bezpečnostní softwarová asociace—Svaz softwarové ochrany (C-393/09) [2011] ECDR 3 . . . . . . 1.34 Bilski v Kappos (2010) 130 SCt 3218 (US Sup Ct 2010). . . . . . . . . . . . . . .1.23, 1.24, 1.27, 3.04, 4.26 Bi-Rite Enterprises, Inc v Button Master, 555 F Supp 1188, 1198 (SDNY 1983). . . . . . . . 15.56, 15.67 Bleistein v Donaldson Lithographing Co., 188 US 239 (US Sup Ct 1903) . . . . . . . . . . . . . . . . . . 8.67 Blendsegel, GRUR (2002), 629 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.32 BMG Canada Inc v John Doe, 2005 FCA 193, [2005] 4 RCF 81 . . . . . . . . . . . . . . . . . . . . . . . . 10.53

xxvi

Table of Cases Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc, 563 US ___, ___, 131 Sup Ct 2188, 2194 (US Sup Ct 2011) . . . . . . . . . . . . . . . . . . . . . 1.05 Bollinger v Costa Brava Wine Co [1960] RPC 16 (Spanish Champagne case) . . . . . . . . . . . . . . . 11.17 Bonito Boats Inc v Thunder Craft Boats Inc 489 US 141 (1989) . . . . . . . . . . . . 2.27, 3.43, 3.57, 7.82, 8.78, 8.79 Brandir International Inc v Cascade Pacific Lumber Co 5 USPQ 2d 1089, 834 F 2d 1142 (2nd Cir 1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.75, 15.51 Bremszangen, BGH, GRUR (2002), 820 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.14 Bright Tunes Music Corp v Harrisongs Music, Ltd, 420 F Supp. 177 (SDNY 1976) . . . . . . . . . . . 1.60 Bristol-Myers Co’s Application [1968] FSR 407, [1969] RPC 146 (EW Div Ct) . . . . . . . . . . . . . . 3.64 British Horseracing Board Ltd and Others v William Hill Organization Ltd [2005] EWCA (Civ) 863 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.29, 9.30, 9.36 British Leyland v Armstrong (1986) RPC 279. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17 Brunswick Corp v British Seagull Ltd, 35 F 3d 1527 (Fed Cir 1994) . . . . . . . . . . . . . . . . . . . . . . 12.28 BT v One in a Million [1999] FSR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.26, 11.28 et seq BUC Int’l Corp v Int’l Yacht Council Ltd., 489 F 3d 1129 (11th Cir 2007) . . . . . . . . . . . . . . . . . . 1.35 Budejovicky Budvar Narodni Podnik v Anheuser Busch [2009] EWCA Civ 1022 . . . . . . . . . . . . 13.10 Budějovický Budvar National Corporation v Rudolf Ammersin GmbH (C-478/07) [2009] ECR I-7721, [2009] ETMR 65 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.06 Budish v Gordon, 784 F Supp 1320 (ND Ohio 1992) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 bundesligakarten.de, BGH, Judgment of 11 September 2008, GRUR (2009), 173 . . . . . . . . . . . 16.25 Burge v Swarbrick [2007] HCA 17, (2007) 234 ALR 204 . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17, 8.63 Campbell v Acuff-Rose Music, Inc, 510 US 569 (1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.64, 15.45 Capitol Records, Inc, v Thomas-Rasset, case No 06-1497 (MJD/LIB) slip op. (Dkt 457) (D Minn 22 July 2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.75 Cardtoons, LC v Major League Baseball Players Ass’n, 95 F 3d 959 (10th Cir 1996) . . . . . 15.11, 15.34 Carflow Products v Linwood Securities [1996] FSR 424 (EWHC Pat) . . . . . . . . . . . . 3.66, 3.67, 3.69 Carletti, Re 328 F 2d 1020, 1022 (1964) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.103 Carol Barnhart Inc v Economy Cover Corp 773 F 2d 411 (2nd Cir 1985) . . . . . . . . . . . . . . . . . . . 8.75 Carpenter v Smith (1841) 1 Webster’s Patent Cases 530 (Ex) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.32 Carson v Here’s Johnny Portable Toilets, Inc, 698 F 2d 831 (6th Cir 1983) . . . . . . . . . . . . 15.15, 15.24 Carson v National Bank, 501 F 2d 1082 (8th Cir 1974) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.24 Carter Products, Inc, et al v Federal Trade Commission, 323 F 3d 523 (5th Cir 1963) . . . . . . . . . 16.49 Cartoon Network, LP, LLLP v CSC Holdings, Inc, 536 F 3d 121 (2nd Cir 2008) . . . . . . . . . . . . . 1.58 Castle Rock Entertainment v Carol Publ’g Group, Inc, 955 F Supp 260 (SDNY 1997), aff’d, 150 F 3d 132 (2nd Cir 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 Catnic v Hill & Smith [1978] FSR 405, [1982] RPC 183 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.13 C.B.C. Distribution and Marketing, Inc v Major League Baseball Advanced Media, L.P., 505 F 3d 818 (8th Cir 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.34 CCC Information Serv Inc v Maclean Hunter, 44 F 3d 61 (2nd Cir 1994) . . . . . . . . . . . . . . . . . . 9.51 CDN Inv v Kenneth A Kapes, 197 F 3d 1256 (9th Cir 1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.50 CFPH [2005] EWHC 1589 PC . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.31 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB (Case R 690/2007-3) [2010] ECDR 1 (OHIM Board of Appeal) . . . . . . . . . 2.107, 2.109, 2.119 Champagne [1961] RPC 116 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.10 Cherokee’s Opposition (O-048-08) the Appointed Person (Ms Carboni) . . . . . . . . . . . . . . . . . . 11.57 Chicago Lock Co v Fanberg, 676 F 2d 400 (9th Cir 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . 3.23, 3.43 Chippendales USA, Inc, In Re 622 F 3d 1346 (Fed Cir 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.11 Chiron v Murex [1996] RPC 535 CA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.52 Chocoladenfabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (Golden Easter Bunny) (C-529/07) ECJ, Judgment of 11 July 2009 . . . . . . . . . . . . . . . . . . 16.15 Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75 . . . . . . . . . . . . . . 2.86 Claude Ruiz-Picasso v Daimler Chrysler [2006] ECR I-643, ECJ . . . . . . . . . . . . . . . . . . . . . . . . 11.41 CMI-Centers for Medical Innovation GmbH v Phytopharm Plc [1999] FSR 235 (EWHC Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.24

xxvii

Table of Cases Coca-Cola Bottling Co of Shreveport, Inc v Coca-Cola Co, 107 FRD 288 (D Del 1985) . . . . . . . 3.21 Coca-Cola Co v Purdy, 382 F 3d 774 (8th Cir 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.69 Coco v A.N. Clark (Engineers) [1969] RPC 41 (EWHC Ch) . . . . . . . . . . . . . . . . . . . . . . . . 3.11, 3.13 Colgate-Palmolive Co v Carter Products Inc, 230 F 2d 855, 108 USPQ 383 (CA 4 1956) . . . . . . . 3.51 Comedy III Productions, Inc v Gary Saderup, Inc, 25 Cal 4th 387, 403, 106 Cal Rptr 2d 126, 139, 21 P 3d 797, 807 (2001) . . . . . . . . .15.18, 15.44, 15.45, 15.47, 15,53 Commission Decision of 9.12.2009 relating to a proceeding under Article 102 of the Treaty on the Functioning of the European Union and Article 54 of the EEA Agreement (European Commission, 9 December 2009) . . . . . . . . . . . . . . . . . . 17.74 Commission of the European Communities v Federal Republic of Germany (C-132/05) [2008] ECR-I 957, [2008] ETMR 32 (‘Parmesan’) . . . . . . . . . . . . . . . . . . . . 13.19, 13.23, 13.25 Community of Roquefort v William Faehndrich, Inc, 198 F Supp 291, 131 USPQ 435 (SDNY 1961), affirmed in 303 F 2d 494, 133 USPQ 633 (2nd Cir 1962) . . . . . . . . . . . . . . 13.15 Comp Examiner Agency v Juris Inc, 1996 WL 376600 (CD Ca 1996) . . . . . . . . . . . . . . . . . . . . 14.16 Computer Associates Int’l, Inc v Altai, Inc 982 F 2d 693 (9th Cir 1992) . . . . . . . . . . . . . . . . . . . . 1.35 Consejo de Promoción Turística de México, SA de CV v Latin America Telecom Inc, WIPO Case No D2004-0242 (19 July 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.77 Consorzio Del Prosciutto Di Parma v Asda Stores Limited and Others [2001] UKHL 7, [2002] FSR 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.05 Consorzio del Prosciutto di Parma v Maple Leaf Meats Inc (2001) 2 FC 536 (Federal Court of Canada, Trial Division) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11 Consorzio del Prosciutto di Parma v Parma Sausage Products 23 USPQ 2d 1894 (1992 TTAB) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11 Contessa Food Products, Inc v Conagra, Inc, 282 F 3d 1370 (Fed Cir 2002) . . . . . . . . . . . . . . . . 12.30 Contico International Inc v Rubbermaid Commercial Products, Inc, 665 F 2d 820 (8th Cir 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.56 Continental Paper Bag v Eastern Paper Bag, 210 US 405 (US Sup Ct 1908) . . . . . . . . . . . . . . . . 17.33 Coogi Australia Pty Ld v Hysport International Pty Ltd (1998) 41 IPR 593. . . . . . . . . . . . . . 8.63, 8.89 Cooperativa Produttori Latte e Fontina Valle D‘Acosta, In Re, 230 USPQ 131 (TTAB 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.22 Corsearch v Thomson & Thomson, 792 F Supp 305 (SDNY 1992) . . . . . . . . . . . . . . . . . . . . . . . 9.46 Costar Group Inc v Loopnet, Inc, 373 F 3d 544 (4th Cir 2004). . . . . . . . . . . . . . . . . . . . . . . . . . . 1.60 Cray Valley v Delltech [2003] EWHC 728 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.42 Crocs Inc v ITC, 598 F 3d 1294 [2010] WL 638272 (Fed Cir 2010) . . . . . . . . . . . . . . . . . . . 2.75, 2.95 Crocs v Holey Soles with PHI (Case R 9/2008-3) [2010] ECDR 11 OHIM (3rd Bd App) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.42, 2.72 Croft v Day (1843) Beav 84 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.08 Cybersource Corp v Retail Decisions Inc, 654 F 3d 1366 (Fed Cir 2011). . . . . . . . . . . . . . . . . . . . 1.24 Daddy’s Junky Music Stores, Inc v Big Daddy’s Family Music Ctr, 109 F 3d 275 (6th Cir 1997). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.37, 16.39 DaimlerChrysler Corporation v OHIM (Case T-128/01) [2003] ECR II-701, [2003] ETMR 87 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.77 Dalrymple’s Application for a Patent, In Re [1957] RPC 449 (UK PO) . . . . . . . . . . . . . . . . . . . . . 3.64 Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649 . . . . . . . . . . . . . . . . . 8.89 Dastar Corp v Twentieth Century Fox Film Corp et al., 539 US 23 (2003) (‘Dastar’) . . . . . . 4.30, 7.76, 7.77, 7.78, 7.82, 7.83, 7.85, 7.87, 7.88, 7.90, 7.94, 10.03, 10.71 Data General Corporation v Grumman Systems Support Corporation, 36 F 3d 1147 (US Court of Appeals, First Circuit 14 September 1994) . . . . . . . . . . . . . . . . . . . . . 17.64, 17.65 DC Comics, Inc, In Re 689 F 2d 1042 (CCPA 1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.27 De Puy Spine Inc/Spinal Column Retaining Apparatus (T906/01) (TBA 28 September 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.68 Decision of the Council State of 6 July 2011, LJN BR0506, 201000808/1 . . . . . . . . . . . . . . . . . . 6.58 Delaware & Hudson Canal Co v Clark 80 US 311 (1871). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.09 Dellar v Samuel Goldwyn, Inc, 104 F 2d 661 (2nd Cir 1939) . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.51

xxviii

Table of Cases Designers Guild Limited v Russell Williams (Textiles) Limited [2000] 1 WLR 2416, [2001] FSR 11, (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.83 Desputeaux v Éditions Chouette (1987) Inc, 2003 SCC 17, [2003] 1 SCR 178. . . . . . . . . 10.19, 10.70 Deutsche Grammophon Gesellschaft mbH v Metro-SB-Großmärkte GmbH & Co KG (1971) ECR 487 (ECJ 1971) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.15 Develey Holding GmbH & Co Beteiligungs KG v OHIM (Case C-238/06 P) [2007] ECR I-9375, [2008] ETMR 20 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.75 Diageo v Intercontinental Brands [2010] EWHC 17 (Ch), [2010] ETMR 17 (EWCA Civ) . . . . 13.03 Diageo North America v Intercontinental Brands [2010] ETMR 57 . . . . . . . . . . . . 11.16, 11.21 et seq Dial-A-Mattress Operating Corp, In Re, 240 F 3d 1341, 57 USPQ 2d 1807 (Fed Cir 2001) . . . . 13.22 Diamond v Chakrabarty, 447 US 303, 206 USPQ 193, 197 (1980) . . . . . . . . . . . . . . . . . . . 2.53, 4.27 Dicks v Brooks (1880) 15 Ch D 22 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17 Dobson v Dorman, 118 US 10, 14 (1886) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.95, 12.30 Dollond’s Case (1766) 2 H Bl 470, 1 Webster’s Patent Cases 43, 1 Carpmael’s Patent Cases 28 (Common Pleas) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.32 Donaldson v Beckett (1774) 2 Brown’s Parl Cases 129, 1 ER 837 . . . . . . . . . . . . . . . . . . . . . . . . 10.45 Door-Master Corp v Yorktowne Inc 256 F 3d (Fed Cir 2001) . . . . . . . . . . . . . . . . . . . . . . . . 2.71, 2.95 Dorling v Honnor (1964) RPC 160 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17 Douglas v Hello! [2006] QB 125 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.28, 15.35 Douglas v Hello! [2008] 1 AC 1 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.13, 3.26 Dover v Nurnberger Celluloid (1910) 27 RPC 498 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.76, 2.85 Dow Chemical Co v Astro-Valcour Inc, 267 F 3d 1334 (CAFC 2001) . . . . . . . . . . . . . . . . . . . . . 3.34 Dr Ing h.c. F Porsche AG v Del Fabbro Laurent, WIPO Case No D2004-0481 (20 August 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.78 Dunlop Holdings Ltd v Ram Golf Corp, 118 USPQ 481 (7th Cir 1975), cert. denied, 189 USPQ 256 1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.35 Duraco Prods v Joy Plastic Enters, 40 F 3d 1431 (3rd Cir 1994) . . . . . . . . . . . . . . . . . . . . . . . . . 12.10 Düssel BGH, GRUR (1964), 458 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.25 Dyson v Vax [2010] FSR 39, [2010] EWHC 1923 (Pat), [2010] ECDR 18. . . . . . . . . . . . 2.107, 2.119 Eames Chair, OLG Frankfurt, (1982) 13 IIC 777 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.51 eBay v Bidder’s Edge 100 F Supp 2d 1058 (ND Ca 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.61, 9.64 eBay, Inc, v MercExchange LLC, 547 US 388 (2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.05, 1.73 EC—Protection of Trade Marks and Geographical Indications for Agricultural Products and Foodstuffs, First Submission of the United States, 23 April 2004 (WT/DS174 and 290) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.05 EF Cultural Travel v Explorica, 274 F 3d 577 (1st Cir 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.67 EF Cultural Travel BV v Zefer Corp, 318 F 3d 58 (1st Cir 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . 9.68 Egyptian Goddess, Inc v Swisa, Inc, 543 F 3d 665, 678 (Fed Cir 2008) . . . . . . . . . . 2.88, 12.32, 12.36 E.I. DuPont DeNemours & Co, In Re, 476 F 2d 1357 (CCPA 1973) . . . . . . . . . . . . . . . . 12.37, 16.39 El Greco Leather Products C., Inc v Shoe World, Inc, 806 F 2d 392, 395 (2nd Cir 1986), cert. denied, 484 US 817 (1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.05 Eldred v Ashcroft, 537 US 186 (2003), 239 F 3d 372 . . . . . . . . . . . . . . . . . . . . . . . . 7.16, 7.84, 10.32 Elvis Presley Trade Marks [1997] RPC 543 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.40 Eolas Technologies Inc v Microsoft Corp, 399 F 3d 1325, 1334, 73 USPQ 2d 1782 (CAFC, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.33, 3.34 EPI Environmental Technologies Ltd v Symphony Plastic Technologies plc [2005] 1 WLR 3456 (EWHC Ch, affd by EWCA Civ) [2006] 1 WLR 495 (note). . . . . . . . . 3.28 EPM Communications v Notara, 56 USPQ 2d 1144 (SDNY 2000) . . . . . . . . . . . . . . . . . . . 9.44, 9.45 Erven Warninck v Townend [1979] AC 731, [1980] RPC 31 (HL) . . . . . . . . . . . . .11.10, 11.11 et seq, 11.19, 11.22 Esquire v Ringer 414 F Supp. 939 (DDC 1976), reversed 591 F 2d 796 (DC Cir 1978) . . . . . . . . 8.74 Essentially biological processes (G 1/08) [2011] EPOR 27 (EBA) . . . . . . . . . . . . . . . . . . . . . . . . . 2.66 Estcourt v Estcourt Hop Essence Co (1874–5) LR 10 Ch App 276, 279 (CA) . . . . . . . . . . . . . . . . 3.42 ETA/Watch (T 456/90), [1993] EPOR 252 (TBA) 252, T 840/91 (TBA). . . . . . . . . . . . . . . 2.67, 2.70

xxix

Table of Cases Établissements Consten S.à.R.L. and Grundig-Verkaufs-GmbH v Commission of the European Economic Community, ECR 299 (ECJ 13 July 1966) . . . . . . . . . . . . . . . . 17.35 ETW Corp v Jireh Publishing, Inc, 332 F 3d 915 (6th Cir 2003) . . . . . . . . . . . . . 15.15, 15.44, 15.47, 15.49, 15.58 Evans v General Motors Corpn, 976 A 2d 84, 51 Conn Supp 44 (Sup Ct Conn 2007). . . . . . 3.24, 3.30 Evans Cooling Systems, Inc v General Motors Corp, 125 F 2d 1448, 44 USPQ 2d (BNA) 1037, 155 ALR Fed 645 (CAFC 1997), cert. denied, 118 Sup Ct 1050, 140 L Ed 2d 113 (US 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.75 Exxon Corporation v Exxon Insurance [1982] RPC 69 (CA). . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.40 Faccenda Chicken v Fowler [1987] 1 Ch 117 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.14 Factors Etc., Inc v Pro Arts, Inc, 579 F 2d 215 (2nd Cir 1978), cert. denied, 440 US 908 (1979). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.43 Farmers Build v Carier Bulk Materials [1998] EWCA Civ 1899, [1998] EWCA Civ 1900, [1999] RPC 461, [2000] ECDR 42 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.60 Federal Republic of Germany and Kingdom of Denmark v Commission of the European Communities (C-465/02 and C-466/02) [2005] ECR I-9115, [2006] ETMR 16 (ECJ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.25 Feist Publications, Inc v Rural Telephone Service Co, Inc 499 US 340, 111 Sup Ct 1282, 113 L Ed 2d 358 (US Sup Ct 1991) . . . . . . . . . . . .1.05, 7.07, 9.07, 9.10, 9.15, 9.39 et seq, 9.46, 9.48, 9.52, 9.64 Ferrero’s Application [1978] RPC 473 RDAT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.130 Ferroline Corp v General Aniline & Film Co 207 F 2d 912, 99 USPQ 240 (7th Cir 1953) . . . . . . 3.30 Fezer, GRUR (2009), 451 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.34 Fiji Water Co, LLC v Fiji Mineral Water USA, LLC, 741 F Supp 2d 1165 (CD Cal 2010) . . . . . . 12.11 Filipino Yellow Pages, Inc v Asian Journal Publishing Inc 198 F 3d 1143 (9th Cir 1999) . . . . . . . 13.22 Firmagroup Australia v Byrne & Davidson Doors (1987) 73 ALR 321, 9 IPR 353 . . . . . . . . . . . . . 2.74 Fixtures Marketing Ltd v OPAP [2004] ECR I-10549. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.31, 9.36 Fixtures Marketing Ltd v Oy Veikkaus AB [2004] ECR I-10365 . . . . . . . . . . . . . . . . . . . . . . 9.31, 9.36 Fixtures Marketing Ltd v Svenska Spel AB [2004] ECR I-10497 . . . . . . . . . . . . . . . . . . . . . . 9.31, 9.36 Fleischer v AVELA, 636 F3d 1115 (9th Cir 2011), withdrawn by Fleischer Studios v AVELA, Case No 09-56317 (9th Cir, 19 August 2011) . . . . . . . . . . . . . . . 7.86, 7.87, 7.88, 7.89, 7.90, 7.94 Flores v Mosler Safe Co, 7 NY 2d 276 (1959) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.09 Florida v Real Juices, Inc, 330 F Supp 428, 171 USPQ 66 (M D Fla 1971) . . . . . . . . . . . . . . . . . 13.15 Flos SpA v Semeraro Casa e Famiglia SpA (Assoluce—Associazione nazionale delle Imprese degli Apparecchi di Illuminazione, intervening), (C-168/09) [2011] ECDR 8 (ECJ, 2d Chamber). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.55 Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87 (CA) . . . . . . . . . . . . . 3.62 Fonovisa, Inc v Cherry Auction, Inc, 76 F 3d 259, 262 (9th Cir 1996) . . . . . . . . . . . . . . . . . . . . . 1.70 Ford Motor Co v Catalanotte, 342 F 3d 543 (6th Cir 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.63 Franchi v Franchi [1967] RPC 149 (EWHC Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.12 Francis Day & Hunter v 20th Century Fox [1940] AC 112 (PC) . . . . . . . . . . . . . . . . . . . . . . . . . . 7.40 Francis Fitzpatrick v Disney Enterprises (951/2001) OHIM Opposition Division . . . . . . . . . . . . . 7.47 Franek v Franco 615 F 3d 855 (7th Cir 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.01, 2.140 Freihofer v Hearst Corp, 65 NY 2d 135 (1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.34 French Republic v Saratoga Vichy Co 191 US 427 (1903) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.22 FUJI/Coloured disk jacket (T119/88), [1990] EPOR, 615, (1990) 4 OJ EPO 395 . . . . . . . . . . . . 2.66 Fujikawa v Wattansin, 93 F 3d 1559, 1567 (CAFC 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.34 Galiano v Harrah’s Operating Company, Inc 416 F 3d 411 (5th Cir 2005) . . . . . . . . . . . . . . . . . . 8.75 Gallay Ltd’s Application for a Patent, In Re [1959] RPC 141 (Pat Ap Trib) . . . . . . . . . . . . . . 3.64, 3.65 Gartenliege, BGH, GRUR (2007), 984 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.11 Gateway Inc v Companion Products Inc, 72 USPQ 2d 1591 (8th Cir 2004) . . . . . . . . . . . . . . . . 12.26 Gay, In Re 309 F 2d 769 (CCPA 1962) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.79, 3.80 Gebäckpresse, BGH, GRUR (2009), 79 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.11, 16.12

xxx

Table of Cases Geistbeck v Saatgut-Truehandverwaltungs GmbH (Case C-509/10) OJ C 30/15 (29 January 2011). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.40 Genealogie der Düfte, BGH GRUR (2004), 607 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.42 General Motors Corp v Lanard Toys Inc, 80 USPQ 2d 1608 (6th Cir 2006) . . . . . . . . . . . . . . . . 12.26 General Motors v Yplon [2000] RPC 572 (ECJ) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.47, 11.50 Generics (UK) Limited (Case C-527/07) [2009] ECR I-5259 (ECJ) . . . . . . . . . . . . . . . . . . . . . . . 6.44 Generics (UK) Ltd v Synaptech Inc (C-427/09) (CJEU, 28 July 2011) . . . . . . . . . . . . . . . . . . . . . 6.49 Generics (UK) Ltd v Synaptech Inc [2009] EWCA Civ 1119 (16 October 2009) . . . . . . . . . . . . . 6.49 George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 (HL) . . . . . . . 8.17, 8.62, 8.63 Gewinnfahrzeug mit Fremdemblem, BGH, GRUR (2006), 329 . . . . . . . . . . . . . . . . . . . . . . . . . 16.13 Giacalone v Network Solutions, Inc, 1996 WL 887734 (ND Ca June 14, 1996) . . . . . . . . . . . . . 14.21 Gilliam v American Broadcasting Companies, 538 F 2d 14 (2nd Cir 1976) . . . . . . . . . . . . . 7.75, 7.76, 10.69, 10.70 Gillman v Stern 114 F 2d 28, 31, 46 USPQ 430 (2nd Cir 1940), cert. denied, 311 US 718 (1941). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.34, 3.35 Glaxo Inc v Novopharm Ltd, 931 F Supp. 1280, 1298 (EDNC 1996). . . . . . . . . . . . . . . . . . 3.23, 3.80 Goodyear Tire & Rubber Co v H. Rosenthal Co, 246 F Supp. 724, 729 (D Minn 1965) . . . . . . . 13.22 Gordon Summer v Michael Urvan, WIPO Case No D2000-0596 (24 July 2000) . . . . . . . . . . . . 14.64 Gorham Mfg Co v White, 81 US 511, 1871 WL 14796, 1 (1871) . . . . . . . . . . . . . . 2.74, 12.04, 12.39 Gottschalk v Benson, 409 US 63 (1973) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.21 Green Lane Products v PMS International [2008] EWCA Civ 358, [2008] ECDR 15 . . . . . 2.76, 12.87 Grupo Gigante S.A. de C.V. v Dallo & Co 391 F 3d 1088, 1093 (9th Cir 2004) . . . . . . . . . . . . . 13.15 Grupo Promer Mon Graphic SA v OHIM, Pepsico (T-9/07 Metal Rappers), [2010] ECDR 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.77 Grupo Promer Mon Graphic SA v OHIM, PepsiCo Inc intervening (20 October 2011) (Case C-281/10 P) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.44 H. Marvin Ginn Corp v International Association of Fire Chiefs, Inc, 782 F 2d 987 (Fed Cir 1986) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.22 Haelen Laboratories, Inc v Topps Chewing Gum, Inc, 202 F 2d 866 (2nd Cir) (‘Haelan’), cert. denied, 346 US 816 (1953) . . . . . . . . . . . . . . 15.05, 15.07, 15.10, 15.11, 15.15, 15.16, 15.23, 15.31, 15.56 Halliburton v Smith [2005] EWHC 1623 PC. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.31 Hanfstaengl v Empire Palace (1894) 2 Ch D 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17 Hanover Star Milling Co v Metcalf, 240 US 403 (1916) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.59 Harley-Davidson Inc v Grottanelli 164 F 3d 806 (2nd Cir 1999) . . . . . . . . . . . . . . . . . . . . . . . . 13.22 Harrods Ltd v Sixty Internet Domain Names, 302 F 3d 214 (4th Cir 2002) . . . . . . . . . . . . . . . . 14.70 Harrods v Harrodian School [1996] RPC 697. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.09, 11.20 Hart v Dan Chas Taxidermy Supply Co 86 F 3d 320 (2nd Cir 1996) . . . . . . . . . . . . . . . . . . . . . . . 8.73 Hasbro Inc v Internet Entm’t Grp Ltd, 40 USPQ 2d 1479 (WD Wash 1996) . . . . . . . . . . . . . . . 14.16 Health Grades, Inc v Robert Wood Johnson University Hospital, No 06-02351 (D Col 19 June 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.51 Helitune Ltd v Stewart Hughes Ltd [1991] FSR 171 (Pat Ct) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.39 Helmore v Smith (1887) 35 Ch D 449, 456 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.14 Henkel KGaA v OHIM (Case C-144/06 P) [2007] ECR I-8109 . . . . . . . . . . . . . . . . . . . . . . . . . 12.76 Henkel KGaA v OHIM (Joined Cases C-456 and 457/01P) [2004] ECR I-5089, [2005] ETMR 44 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.76 Henkel KGaA v OHIM [2005] ETMR 56 (Case T-393/02) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.77 Hibberd, In Re, 227 USPQ 443 (BNA) (Bd Pat App Int 1985) . . . . . . . . . .4.27, 4.28, 4.29, 4.30, 4.31 Hodgkinson & Corby v Wards Mobility [1995] FSR 169 . . . . . . . . . . . . . . . . . . . 11.15, 11.27, 11.65 Hoffman v Capital Cities/ABC, Inc, 255 F 3d 1180 (9th Cir 2001) . . . . . . . . . . . . . . . . . . . . . . 15.34 Home A/S v Ofir (Denmark 2006) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.28 Hoop v Hoop 279 F 3d 1004 (Fed Cir 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.87 Hormonersatz, BGH GRUR (2002), 633 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.43 Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393, 97 ALR 615, 19 IPR 531, [1991] AIPC 37, 226 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.62, 2.98, 2.106, 2.112

xxxi

Table of Cases Hosokawa Ter Braak BV/Method for Preparing Confectionery (Opposition by Klöckner Hänsel Prozesstechnik GmbH (T1086/02) (TBA 21 December 2005) . . . . . . . . . . 3.68 HP Bulmer Ltd v J Bollinger SA (No 3) [1978] RPC 79 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.19 Hugo c Société Plon, Arrêt no 125 du 30 janvier 2007, Cass Civ Lre . . . . . . . . . . . . . . . . . . . . . . 10.37 Humpherson v Syer (1887) 4 RPC 407 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.64, 3.67 Hunter Douglas Industries BV/Treated Fabric (Opposition by Junkers & Müllers GmbH (T681/01) (TBA 28 November 2006) . . . . . . . . . . . . . . . . . . . . . . . . . 3.44, 3.69 IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 239 CLR 458 . . . . . . . . . . . . . . 8.42 ICON, BGH, GRUR (2008), 1115 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.32 iFranchise Group v Jay Bean/MDNH, Inc/Moniker Privacy Services [23658], WIPO Case No D2007-1438 (18 December 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.39 iLOR, LLC v Google, Inc, 631 F 3d 1372 (Fed Cir 2011) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.77 Image Technical Services, Inc v Eastman Kodak Company, 125 F 3d 1195 (US Court of Appeals, 9th Cir 26 August 1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.14, 17.65 Imagination Technologies Ltd v Office for Harmonization in the Internal Market (C-542/07) (ECJ 11 June 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.14 IMS Health GmbH & Co. OHG v NDC Health GmbH & Co. KG, [2004] ECR I-05039, (ECJ 29 April 2004) . . . . . . . . . . . 17.34, 17.43, 17.46, 17.48, 17.49, 17.54, 17.56, 17.60, 17.72 Independent Service Organizations Antitrust Litigation, In Re, 203 F 3d 1322 (US CAFC 17 February 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.63 Infields v Rosen (1939) 56 RPC . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.114 Information Handling Servs, Inc v LRP Publications, Inc, No 00-1859, 2000 US Dist. LEXIS 14531 (ED Pa 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.54 Institut Nat’l Des Appellations d’Origine v Vinters Int’l Co 958 F 2d 1574 (Fed Cir 1992) . . . . . 13.22 Institut National Des Appellations d’Origine v Brown-Forman Corp., 47 USPQ 2d 1875 (TTAB 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.15 Int’l Order of Job’s Daughters v Lindeburg & Co, 633 F2d 912 (9th Cir 1980) . . . . . . . . . . . . . . . 7.87 Intel Corp v CPM [2007] ETMR 59, (EWCA Civ) . . . . . . . . . . . . . . . . . . . . . . . 11.52, 11.53, 11.54 Intel Corp v CPM [2009] ETMR 13, (CJEU) . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.52, 11.55, 11.63 Intel Corp v Hamidi, 30 Cal 4th 1342 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.64 INTERCONNECT v T-InterConnect, BGH, GRUR (2008), 258 . . . . . . . . . . . . . . . . . . . . . . . 16.12 Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.42 Interlego AG v Tyco International Inc, [1988] All ER 949, [1988] RPC 343 (PC) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2.63, 2.100, 2.117, 2.124, 2.125 Intermatic Inc v Toeppen, 947 F Supp 1227 (ND Ill 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.16 International News Service v Associated Press, 248 US 215 (1918) . . . . . . . . . . . . . . . . . . . . . . . . 9.57 IRC v Muller’s Margarine [1901] AC 217 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.09 Istituto Chemioterapico Italiano S.p.A. and Commercial Solvents Corporation v Commission of the European Communities, 1974 223 (ECJ 6 March 1974) . . . . . . . . . . . 17.31 James Industries Ltd’s Patent Application [1987] RPC 235 (UK PO) . . . . . . . . . . . . . . . . . . 3.64, 3.65 Jeffrey Milstein, Inc v Greger, Lawloer, Rother, Inc, 58 F 3d 27 (2nd Cir 1995) . . . . . . . . . . . . . . 12.06 J.E.M. Ag Supply, Inc v Pioneer Hi-Bred Int’l, Inc, (2001) 534 US 124 . . . . . . . . . . . . 4.27, 4.28, 4.29, 4.30, 4.31, 4.32, 4.33, 4.34, 4.36 Jeweler’s Circular Publishing Co v Keystone Publishing Co, 281 F 83 (2nd Cir 1922) . . . . . . . . . . 9.10 JG v Samford (1656) Pop R 144 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.07 Jim Henson Productions, Inc v John T. Brady & Associates, Inc, 867 F Supp. 175 (SDNY 1994): . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.15, 15.17 John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] FSR 63 . . . . . . . . . . . . . . . . . . . . . . . . . 11.19 José Mallent Castello v 3M Innovative Properties Company OHIM Invalidity Division Case No ICD 000000057. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.44 Julia Fiona Roberts v Russell Boyd, WIPO Case No D2000-0210 (29 May 29 2000) . . . . 14.64, 14.73 Julius Sämaan v Tetrosyl [2006] FSR 42 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.06 Junger v Daley, 209 F 3d 481 (6th Cir 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.30

xxxii

Table of Cases KangaROOS, U.S.A., Inc v Caldor, Inc, 778 F 2d 1571, 1574, 228 USPQ 32, 33 (Fed Cir 1985) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.37 Kellogg Co v National Biscuit Co, 305 US 111 (1938) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.25 Kenneth (trading as Screw You), Application of [2007] ETMR 7. . . . . . . . . . . . . . . . . . . . . . . . . 12.72 Kenrick v Lawrence (1890) 25 QBD 99 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.11 Kestos v Kempat & Kemp (1936) 53 RPC 139 . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.113, 2.128, 2.130 Kewanee Oil Co v Bicron Corp (1974) 94 Sup Ct 1879, 416 US 470 (US Sup Ct 1974) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.22, 3.23, 3.24, 3.27, 3.43, 3.52, 3.53, 3.57, 4.29 Key Publications, Inc v Chinatown Today 945 F 2d 509, 514 (2nd Cir 1991) . . . . . . . . . . . . . . . . 9.44 Keystone Publishing, Inc v UtahBrides.com, WIPO Case No D2004-0725 (17 November 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.77 Kieselstein-Cord v Accessories by Pearl, Inc 632 F 2d 989 (2nd Cir1980) . . . . . . . . . . . . . . . . . . . 8.75 King Features v Kleeman (1941) 58 RPC 207 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.17, 8.68 King Instrument Corp v Otari Corp, 767 F 2d 853, 860 (Fed Cir 1985), cert. denied 475 US 1016, 106 Sup Ct 1197, 89 L Ed 2d 312 (1986) . . . . . . . . . . . . . . . . . . 3.60 Kirchner & Co v Gruban [1908] 1 Ch 413 (EWHC Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.14 Knitwares, Inc v Lollytogs, Ltd, 71 F 3d 996, 1009 (2nd Cir 1995) . . . . . . . . . . . . . . . . . . 12.10, 16.17 Köhler, GRUR (2009), 445 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.34 Komesaroff v Mickle (1988) RPC 204 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.63 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C-299/990) [2003] RPC 2, Judgment of 18 June 2002 . . . . . . . . . . . . . . . . . . . . . . . 7.56, 16.14 Korzybski v Underwood and Underwood, Inc, 36 F 2d 727 (1929) 3 USPQ 242 . . . . . . . . . . . . . 2.13 KP Permanent Make-Up, Inc v Lasting Impression I, Inc, 543 US 111 (2004) . . . . . . . . . . . . . . . 13.16 KPN v XSO (Netherlands 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.29 Kraft Foods Holdings, Inc v Stuart Helm, 205 F Supp 2d 942 (ND Ill, 7 June 2002) . . . . . . . . . . 16.54 KUNOMI/Video game (T 928/03), [2006] EPOR 53 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.67 L.B. (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.83 L’Oréal v Bellure [2008] ETMR 1, CA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.24 et seq, 11.27, 11.32 L’Oréal v Bellure (C-487/07) [2009] ETMR 55 . . . . . . . . . . . . 7.23, 7.32, 11.48, 11.58 et seq, 11.66, 11.68, 16.44, 16.46 L’Oréal v Bellure [2010] ETMR 47, CA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.67 L’Oréal SA v Bellure NV (Case 04/18300) [2006] ECDR 16 . . . . . . . . . . . . . . . . . . . . . . . . . 7.63, 7.92 LA Gear Inc v Thom McAn Shoe Co 988 F 2d 1117, 1123 (Fed Cir 1993) . . . . . . . . . . . . 2.104, 2.108 Ladbroke v William Hill [1964] 1WLR 273 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.10 Lancashire Fires Ltd v S.A. Lyon & Co Ltd [1996] FSR 629 (EWHC Ch) . . . . . . . . . . . . . . . . . . . 3.14 Lancome Parfums v Kecofa BV (16 June 2006) cited by C Gielen, (2006) 28(9) EIPR N174 . . . . . 7.63 Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285, [2006] ECDR 31 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.107, 2.134, 12.62 Landscape Forms, Inc v Colbia Cascade Co, 113 F 3d 373, 381 (2nd Cir 1997) . . . . . . . . . . . . . 12.34 Lansing Linde Ltd v Kerr [1991] 1 WLR 251 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.14 Laubhefter, BGH, GRUR (2002), 86 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.14 Le Corbusier Möbel, GRUR 1987, 903 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.53 Le Corbusier, BGH, 10 December 1986, 1987 GRUR 90, (1988) 5 EIPR D-104 . . . . . . . . . . . . . 8.51 LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941 . . . . . . . . . . . . . . . . . . . . . . . . . 2.86 Lefebvre/Sealing Complex (T77/94) [2001] EPOR (52) 412 (TBA) . . . . . . . . . . . . . . . . . . . . . . . 3.62 Lego cases: Germany Bundesgerichtshof, Judgment of 2 December 2004, Italy: Corte di Cassazione, Judgment of 9 January 2008, France: Court de Cassation, Judgment of 18 October 2000, Holland: Hoge Raad, Judgment of 27 November 2009, Spain: Tribunal Supremo, Judgment of 17 July 2007 . . . . . . . . . . . . . . 16.15 Lego Juris A/S v HABM and Mega Brands Inc (C-48/09 P) [2010] ETMR 63. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2.23, 7.59, 7.94, 12.61, 16.15 Leon v Pacific Telephone and Telegraph Co, 91 F 2d 484 (9th Cir 1937) . . . . . . . . . . . . . . . . . . . . 9.10 Les Editions Albert Rene SARL v OHIM (OBELIX/MOBILIX) (C-16/06P) . . . . . . . . . . . . . . . 16.12

xxxiii

Table of Cases LIKEaBIKE, BGH, GRUR (2010), 80 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.11 Linde AG, Winward Industries Inc and Rado Uhren AG v Deutsches Patent- und Markenamt (Joined Cases C 53–55/01) [2003] ECR I-3161, [2003] ETMR 78 . . . . . . . . . 12.75 Lindner Recyclingtech v Franssons Verkstader AB (R690/2007-3), [2010] ECDR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.63 et seq, 12.66 Linkin Park LLC’s Application [2006] ETMR 74 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.47 Lipscher v LRP Publications, 266 F 3d 1305 (11th Cir 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.54 Lipton v Nature Co, 71 F 3d 464 (2nd Cir 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 Lister v Romford Ice and Cold Storage Co Ltd [1957] 2 WLR 158 (HL) . . . . . . . . . . . . . . . . . . . . 3.14 Little Caesar Enterprises Inc v Pizza Caesar Inc 834 F 2d 568 (6th Cir 1987) . . . . . . . . . . . . . . . . 13.15 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen BV (Case C-342/97) [1999] ECR I-3819, [1999] ETMR 690 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.85 Lotus Development Corp v Borland Int’l, Inc, 49 F 3d 807 (1st Cir 1995), aff’d 516 US 233 (1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.32 Lotus Development Corp v Paperwork Software Int’l 740 F Supp. 37 (D. Mass. 1990) . . . . . . . . . 1.32 LOUDSPEAKER II/Bang & Olufsen (R 497/2005-1) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.15, 2.16 Louis Vuitton Malletier v Haute Diggity Dog, LLC, 507 F 3d 252 (4th Cir 2002) . . . . . . . 16.01, 16.54 Lubrizol Corp v Esso Petroleum Co Ltd [1992] RPC 281, 295 (Pat Ct) . . . . . . . . . . . . . . . . . . . . . 3.39 Lucasfilm v Ainsworth [2011] UKSC 39 . . . . . . . . . . . . . . . . . . . . . . . . . . .2.60, 7.06, 7.54, 8.64, 8.65 Lucasfilm v Ainsworth [2010] ECDR 6 (Court of Appeal) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.64 Lugosi v Universal Pictures, 603 P 2d 425 (Cal 1979) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.11 Lux Traffic Controls v Pike Signals [1993] RPC 107 (Pat) . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.60, 3.62 Lynch, Jones & Ryan, Inc, v Standard & Poor’s, 47 USPQ 2d (BNA) 1759 (NY Sup. Ct. 1998) . . 9.57 Lyngstad v Anabas Products Ltd, [1977] FSR 62 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.28 MAC Dog, BGH, GRUR (1999), 161 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.13, 16.34 Macor Marine Systems/Secrecy Agreement (Opposition by Kvaerner Brug) (T830/90) [1995] EPOR 21 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.62, 3.68 Madey v Duke Univ, 307 F3d 1351 (Fed Cir 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.28 Madonna Ciccione p/k/a/Madonna v Dan Parisi and ‘Madonna.com’, WIPO Case No D2000-0847 (12 October 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.64, 14.73 Magic Wand Inc v RDB Inc, 940 F 2d 638, 19 USPQ 2d 1551, 1554 (Fed Cir 1991) . . . . . . . . . 13.22 Magill (C-241/91 P and C-242/91 P) (CJEU, 6 April 1995) . . . . . . . . . . . . . . . . . 17.34, 17.43, 17.46, 17.48, 17.53, 17.54, 17.56, 17.57, 17.60, 17.61 Magnolia Metal Company’s Trade-Marks, In Re [1897] 2 Ch 371 (CA) . . . . . . . . . . . . . . . . . . . 13.09 Magnolia Metal v Tandem Smelting (1900) 17 RPC 477 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . 11.08 MAI Systems Corp v Peak Computer, Inc, 991 F 2d 511 (9th Cir 1993) . . . . . . . . . . . . . . . . . . . . 1.58 Mann, Re, 861 F 2d 1581 (Fed Cir 1988) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.97 Markem Corp v Zipher [2005] RPC 31 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.51 Marriott Int’l, Inc v Seocho, FA 0303000149187 (Nat’l Arb Forum April 28, 2003) . . . . . . . . . . 14.65 Mars v Tecknowledge [2000] FSR 138 (EWHC Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.42 Martin Luther King, Jr, Center for Social Change, Inc v American Heritage Products, Inc, 250 Ga 135, 296 S E 2d 697 (1982) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.43 Masquerade Novelty Inc v Unique Industries Inc F 2d 663 (3rd Cir 1990), 15 USPQ 2d 1881 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.72 Matthew Bender & Co v Jurisline.com, LLC, 91 F Supp 2d 677 (SDNY 2000) . . . . . . . . . . . . . . . 9.54 Matthew Bender & Co v West Publishing Co 158 F 3d 674 (2nd Cir 1998) . . . . . . . . . . . . . . . . . 9.44 Matthews v Wozencraft, 15 F 3d 432 (5th Cir 1994). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.18 Mayo Collaborative Services v Prometheus Labs. Inc, 132 Sup Ct 1289 (2012) . . . . . . . . . . . . . . . 4.27 Mazer v Stein 347 US 201 (1954) . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.29, 7.07, 8.67, 8.68, 8.69, 8.74 McFarland v Miller, 14 F 3d 912 (3rd Cir 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . 15.18, 15.36, 15.52 McFarling v Monsanto Co, 363 F 3d 1336 (Fed Cir 2004) . . . . . . . . . . . . .4.31, 4.34, 4.35, 4.36, 4.59 Mecki-Igel, BGH, GRUR 1958, 500 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.53 Medical-Legal Consulting Inst, Inc v McHugh, 1998 US Dist LEXIS 8623 (ED Pa 1998). . . . . . . 9.43 Memphis Development Foundation v Factors Etc., Inc, 616 F 2d 956 (6th Cir), cert. denied, 449 US 953 (1980) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.43

xxxiv

Table of Cases Mephisto et M. Martin Michaeli v Sanders Distribution Sandis et Calzaturifi cio Grisport, Cour de Cassation, 26 mars 2002, PIBD 2002, 749-III-419 (the Jean-Pierre cycle shoe case) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.34 Merlet v Mothercare (1986) RPC 115 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.63 Merrell Dow v Norton [1996] RPC 76 (HL). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.60 Messenger v Gruner + Jahr Printing and Publishing, 94 N Y 2d 436 (2000) . . . . . . . . . . . . . . . . . 15.42 Metallizing Engineering Co v Kenyon Bearing and Auto Parts Co, 153 F 2d 516, 520 (Court of Appeal for Second Ct), cert. denied, 328 US 840, 66 Sup Ct 1016, 90 L Ed 1615 (1946) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.60, 3.61 METROBUS, BGH, GRUR (2009), 484. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.12 Metro-Goldwyn-Mayer Studios, Inc, v Grokster Ltd, 545 US 913 (2005) . . . . . . . . . . . . . . . . . . . 1.68 Metropolitan Dade County v Florida Power & Light Co, 45 USPQ2d (BNA) 1667 (Fla Cir Ct 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 Microsoft Corporation v Commission of the European Communities (Case T-201/04), [2007] ECR II-03601, (GC 17 September 2007) . . . . . . . . . . . . . . . 17.34, 17.47, 17.49, 17.51, 17.55, 17.56, 17.59, 17.61, 17.72 Microsonics Corpn’s Appn [1984] RPC 29 (UK PO) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.72 Millar v Taylor (1769) 4 Burr 2303, 98 ER 201 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.45 Miller v Universal Studios, Inc, 650 F 2d 1365 (5th Cir 1981) . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.09 Miller’s Ale House, Inc v Boynton Carolina Ale House, LLC, 745 F Supp 2d 1359 (SD Fla 2010). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.11 Mirage Studios v Counter-Feat Clothing Co Ltd [1991] FSR 145 . . . . . . . . . . . . . . . . . . . . . 2.83, 7.45 MOBIL OIL II/Friction Reducing Additive (Change of Claim Category) (G 2/88) [1990] OJ EPO 93 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.81 Modulgerüst II, BGH, GRUR (2010), 536 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.11 Mogen David Wine Corp, In Re 328 F2d 925 (CCPA 1964) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.04 Monsanto v David 516 F3d 1009 (Fed Cir), cert. denied, 555 U.S. 888 (2008) . . . . . . 4.31, 4.36, 4.59 Monsanto Co v Bowman, 657 F 3d 1341 (Fed Cir 2011), pet. gov. cert filed. Dec. 20, 2011, No 11–796 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.35, 4.36, 4.59 Monsanto Co v McFarling, 302 F3d 1291 (Fed Cir 2002). . . . . . . . . . . . . . . . . . . . . . 4.31, 4.33, 4.35, 4.36, 4.59 Monsanto Technology LLC v Cefetra BV (Case C-428/08) (CJEU) (6 July 2010) . . . . . . . . . 4.50, 4.51 Montgomery County Association of Realtors v Realty Photo Master, 878 F Supp 804 (D Md 1995), aff’d, 91 F 3d 132 (4th Cir 1996) . . . . . . . . . . . . . . . . . . . . . 9.43 Montgomery v Thompson [1891] AC 217 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.08 Moody v Tree (1892) 9 RPC 333 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.135 Morang & Co v LeSueur (1911), 45 SCR 95. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.08 Morris Communications Corp v PGA Tour, Inc, 117 F Supp 2d 1322 (MD Fla 2000) . . . . . . . . . 9.57 Morton-Norwich Products, Inc, Re 671 F 2d 1332 (CCPA 1982) . . . . . . . . . . . . . . . . . . . 2.115, 12.26 Moseley v V Secret Catalogue, Inc, 537 US 418 (2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.53 Muscat v Le [2003] FCA 1540 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.63 Mustad v Allcock and Dosen (1928) [1964] 1 WLR 109 (HL) . . . . . . . . . . . . . . . . . . . . . . . 3.28, 3.29 Nantucket, Inc, In Re, 677 F 2d 95 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.09 National Basketball Association v Motorola, Inc, 105 F 2d 841 (2nd Cir 1997) . . . . . . . . . . . . . . . 9.57 Native Guano v Sewage Manure (1889) 8 RPC 125 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.08 Nester’s Map & Guide Corp v Hagstrom Map Co, 796 F Supp 729 (EDNY 1992) . . . . . . . . . . . . 9.43 Nestlé Waters France v OHIM (Case T-305/02) [2003] ECR II-5207, [2004] ETMR 41 . . . . . . 12.77 New Japan Chemical Co Ltd/Method of Producing Acetals (T1081/01) (TBA 27 September 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.71 New Kids on the Block v News Am Publishing, Inc, 971 F 2d 302 (9th Cir 1992) . . . . . . . . . . . . 15.34 New York Mercantile Exchange v InterContinental Exchange, 497 F 3d 109 (2nd Cir 2007) . . . . . 9.51 New Zealand Needle Manufacturers Ltd v Taylor and Anor [1975] 2 NZLR 33 (Sup Ct Auckland) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.14 Newbery v James 2 Mer 446, 35 ER 1011 (Ch 1817) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.21 Newspaper Licensing Agency Ltd v Meltwater Holdings BV [2011] EWCA Civ 890 . . . . . . . . . . . 7.41

xxxv

Table of Cases Nicole Kidman v John Zuccarini d/b/a Cupcake Party, WIPO Case No D2000-1415 (23 January 2001). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.64 Nihon Keizai Shimbun v Compline Business Data, 49 USPQ2d 1516 (2nd Cir 1999) . . . . . . . . . 9.43 Noppenbahnen, BGH, GRUR (2002), 275 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.14 Nova Wines v Adler Fels Winery, 467 F Supp 2d 965 (ND Cal 2006) . . . . . . . . . . . . . 7.78, 7.80, 7.89 NOVARTIS II/Transgenic Plant (G 0001/98) [2000] EPOR 303 . . . . . . . . . . . 4.45, 4.46, 4.47, 4.48, 4.49, 4.50, 4.51, 4.52, 4.53, 4.54 Novelty v Amanresorts [2009] FSR 20 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.47, 11.49 O’Well Novelty v Offenbacher, 1998 US Dist 22199 (Md, 22 September 1998) . . . . . . . . . . . . . . 9.44 O2 Holdings Ltd and others v Hutchison 3G UK Ltd (‘Bubbles’) (C-533/06) [2008] ECR I-4231, (ECJ 12 June 2008) . . . . . . . . . . . . . . . . . . . . . . 12.85, 16.28, 16.45, 16.46 Oasis Publ’g Co v West Publ’g Co, 924 F Supp 918 (D Minn 1996) . . . . . . . . . . . . . . . . . . . . . . . 9.43 Och-Ziff v OCH Capital [2011] ETMR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.73 OddzOn Prods, Inc v Just Toys, Inc, 122 F 3d 1396, 1456 (Fed Cir 1998 en banc) . . . . . . . 2.71, 2.97, 12.04, 12.07, 12.25 Official Ruling (1926) 43 RPC No 4 Appendix, I . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.54 OHIM Board of Appeal Case R 690/2007-3 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB [2010] ECDR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.28, 2.34 Oracle America Inc v Google, Inc, case no 3:10-cv-03561 (ND Cal Complaint filed 12 August 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.16 Oracle, BGH, GRUR (2010), 343 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.11 Orange Book-standard (Bundesgerichtshof 6 May 2009) . . . . . . . . . . . . . . . . . . . . . . . . . 17.81, 17.82 Oscar Bronner GmbH & Co. KG v Mediaprint Zeitungs- und Zeitschriftenverlag GmbH & Co KG, Mediaprint Zeitungsvertriebsgesellschaft mbH & Co. KG and Mediaprint Anzeigengesellschaft mbH & Co. KG [1998] ECR I-07791 (ECJ 26 November 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.16 OSTSEE-POST, BGH, GRUR (2009), 672 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.33, 16.34, 16.35 Owens-Corning Fiberglas Corp, In Re, 774 F 2d 1116 (Fed Cir 1985) . . . . . . . . . . . . . . . 12.13, 12.28 Oyster Software v Forms Processing, 2001 US Dist LEXIS 22520 (ND Cal 2001). . . . . . . . . . . . . 9.64 Paice LLC v Toyota Motor Corp, 504 F 3d 1293 (Fed Cir 2007) . . . . . . . . . . . . . . . . . . . . . . . . . . 1.77 Painton & Co v Bourns, Inc, 442 F 2d 216 (CA 2nd Cir 1971) . . . . . . . . . . . . . . . . . . . . . . . 3.27, 3.53 Palmaz/Expandable Intraluminal Vascular Graft (Opposition by Advanced Surgical Intervention, Inc) T818/93) (TBA 2 April 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.68 Panavision Int’l LP v Toeppen, 945 F Supp 1296 (CD Ca 1996) . . . . . . . . . . . . . . . . . . . . . . . . . 14.16 Parfums Christian Dior v Evora (C-337–95) [1997] ECR I-6013 . . . . . . . . . . . . . . . . . . . . . . . . . 7.41 Parker v Flook, 437 US 584 (US Sup Ct 1978) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.21, 3.04 PB Cow & Co v Cannon Rubber Manufacturers (No 1) [1959] RPC 947 (CA) . . . . . . . . . . . . . 2.121 Peaceable Planet v Ty Inc, 362 F 3d 986, cert. denied 543 US 869 (7th Cir 2004) . . . . . . . . . . . . 15.40 People for Ethical Treatment of Animals v Doughney, 263 F 3d 359 (4th Cir 2001). . . . . . . . . . . 14.63 Perry v Truefit (1842) 6 Beav. 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.08 Peter Pan Fabrics, Inc v Martin Weiner Corp, 274 F2d 487, 489 (2d Cir 1960) 7.10 PHG Technologies LLC v St John Companies Inc 469 F 3d 1361 (Fed Cir 2006) . . . . . . . . . . . . 2.115 Philips Electronics NV v Remington Consumer Products Ltd (Case C-299/99) [2002] ECR I-5475, [2001] ETMR 81 . . . . . . . . . . . . . . . . . . . . . . . . . 2.24, 2.107, 12.61, 12.62 Philips v Remington [1998] ETMR 124, [1998] RPC 283 PC . . . . . . . . . . . . . . . . . . . . . . . 2.21, 2.23 Phoenix of Broward, Inc v McDonald’s Corp 489 F 3d 1156 (11th Cir 2007) . . . . . . . . . . . . . . . 16.40 Pilsen Urquell v Industrie Poretti SpA [1998] ETMR 168 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.21 Pippig Augenoptik GmbH & Co KG v Hartlauer Handelsgesellschaft mbH and others (C-44/01) (ECJ 8 April 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.42 Pivot Point Int’l, Inc v Charlene Products, Inc 372 F 3d 913 (7th Cir 2004) . . . . . . . . . . . . . . . . . 8.75 Plastiques Progrès v Établissements Roybier et Fils, Cour d’appel de Paris, 31 mai 2000, PIBD 2000, 705-III-448 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.34 PLG Research Ltd v Ardon International Ltd [1993] FSR 197 (EWHC Pat) . . . . . . . . . . . . . . . . . 3.64 Pollstar v Gigmania, Ltd, 170 F Supp 2d 974 (ED Cal 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.57

xxxvi

Table of Cases Polo/Lauren v Shop-In Dept Store [1998] 2 SLR 550 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.41 Positive Software Solutions, Inc v New Century Mortgage Corporation, 259 F Supp 2d 531 (ND Tex 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.46 Practice Management Info Corp v American Medical Ass’n, 121 F 3d 516 (9th Cir 1997), cert. denied, 522 US 933, amended, 133 F 3d 1140 (9th Cir 1998). . . . . . . . . . . . . . . . . . . . 9.43 ProCD, Inc v Zeidenberg, 86 F 3d 1447 (7th Cir 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.54 Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, [2008] FSR 8, [2008] ECDR 3 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.94, 12.86 Procter & Gamble/Colour-changing absorbent article (T1689/07), [2010] EPOR 19 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.66 Productores de Música de España (Promusicae) v Telefónica de España SAU (Telefónica), Judgment of the Court (Grand Chamber) of 29 January 2008 (Case C-275/06) . . . . . . . . . 10.53 Prysmian/Hydrogen-Absorbing Composition (T1464/05) [2010] EPOR 1 (TBA) . . . . . . . . 3.69, 3.70 Publishers v Euroclip et al, Amsterdam District Court (Arrondissementsrechtbank) 4 September 2002. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.29 Pugh v Riley (1912) 29 RPC 196 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.93, 2.132 Qualitex Co v Jacobson Products Co, Inc, 514 US 159 (1995), 34 USPQ 2d 1161 (1995) . . . . . . . . . . . . . . . . . . . . . . . . 7.18, 7.21, 12.26, 12.28, 16.18, 16.20 Quanta Computer, Inc v LG Electronics, Inc, 553 US 617 (2008). . . . . . . . . . . . . . . . . . . . . 1.05, 4.35 Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83 (EWHC Pat) . . . . . . . . . . . . . . . . . . 3.64 R Griggs Group Ltd and Others v Ross Evans and Others [2004] ECDR 15 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.40, 7.49, 7.50, 7.78 R v Patents Appeal Tribunal, ex p Beecham, Bristol-Myers Co v Beecham Group Ltd [1974] AC 646 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.23, 3.60 Racing Strollers, Inc v TRI Industries, Inc, 878 F 2d 1418, 1419, 11 USPQ 2d 1300, 1301 (Fed Cir 1989 en banc) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.37 Radio Telefis Eireann (RTE) and Independent Television Publications Ltd v Commission of the European Communities, [1995] ECR I-00743, ECJ 6 April 1995 . . . . . . . . . . 17.17, 17.43 Radzanower v Touche Ross & Co, 426 US 148, 155 (1976) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.28 Raleigh v Miller (1948) 65 RPC 141 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.92 Räucherkate, BGH, GRUR (2005), 419 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.34 Reckitt & Colman v Borden [1990] RPC 341 (Jif Lemon case) . . . . . . . . . . . . . . . . . . . . . 11.13, 11.14 Red Spider Technology v Omega Completions Technology [2010] EWHC 59 (Pat) . . . . . . . . . . . 2.83 Reddaway v Banham [1896] AC 199 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.08 Reed Elsevier Inc v Muchnick, 559 US ___, ___, 130 Sup Ct 1237, 1241 (2010) . . . . . . . . . . . . . 1.05 Reed Elsevier Props, Inc, In Re, 482 F 3d 1376, 1378 (Fed Cir 2007) . . . . . . . . . . . . . . . . . . . . . 13.22 Register.com v Verio, 126 F Supp 2d 238 (SDNY 2000), aff’d, 356 F 3d 393 (2nd Cir 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.54, 9.64, 9.68 Religious Tech Ctr v Netcom On-line Commc’n Servs, Inc, 907 F Supp 1361 (ND Cal 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.60 Rescuecom Corp v Google, Inc, 562 F 3d 123 (2nd Cir 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . 15.61 Research Corporation/Publication, T381/87 [1990] OJ EPO 213, [1989] EPOR 138, TBA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.62 Research Foundation of SUNY/Gene Translation Inhibitor (T838/97) (14 November 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.68 Rhone-Poulenc Rorer International Holdings v Yeda Research and Development Co Ltd [2007] UKHL 42, [2007] All ER (D) 373 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.51 Rich v RCA Corp, 390 F Supp. 530 (SDNY 1975) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.75 Richardson v Stanley Works, Inc, 597 F 3d 1288 (Fed Cir 2010) . . . . . . . . . . . . 2.65, 2.71, 2.75, 2.95, 2.97, 12.25 Rillenkoffer, BGH, GRUR (2008), 793 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.11, 16.12 Robert Bosch/Electrical Machine (Opposition by Siemens) (T1085/92) [1996] EPOR 381 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.64 Rockwell Graphic Sys, Inc v Dev Indus, Inc, 925 F 2d 174 (7th Cir 1991). . . . . . . . . . . . . . . . . . . 3.18

xxxvii

Table of Cases Rogers v Grimaldi, 875 F 2d 994, 1003-04 (2nd Cir 1989) . . . . . . . . . . . . . . . . . . . . . . . . 15.05, 15.39 Roland Corp v Lorenzo and Sons [1991] FCA 617, (1992) AIPC 90-852 (1991) 22 IPR 245, 105 ALR 623 (1991) 33 FCR 111 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.14 Rosco v Mirror Lite 304 F 3d 1373 (Fed Cir 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.108 Rosedale Associated Manufacturers Ltd v Airfix Products Ltd [1957] RPC 239 . . . . . . . . . . . . . . . 2.44 Rosenthal-Vase, BGH, GRUR 1959, 289 8.53 Roulo v Russ Berrie & Co, Inc, 886 F 2d 931 (7th Cir 1989) . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.17 Royal Philips Electronics NV v SK Kassetten GMBH & CO. KG (District Court, The Hague 17 March 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.83 SABEL BV v Puma AG, Rudolf Dassler Sport (Case C-251/95) [1997] ECR I-6191, [1998] ETMR 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.40, 12.85 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) RPC 203 (CA) . . . . . . . . . . 3.23 Salton, Inc v George Foreman Foods, Inc, WIPO Case No D2004-0777 (3 December 2004) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.78 Saugeinlagen, BGH GRUR (2008), 443 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.42 Schering Chemicals Ltd v Falkman [1982] QB 1 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.12 Schnell, Re, 46 F 2d 203 (CCPA 1931) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.76 Schoolhouse, Inc v Anderson, 275 F 3d 726 (8th Cir 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.44 Schweizerische Kaeseunion Bern v Saul Starck Inc 293 NYS 816 (1937) . . . . . . . . . . . . . . . . . . . 13.22 Scotch Whisky [1970] 1 WLR 917 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.10 Scott J. Daniels, In Re 144 F 3d 1452, 46 USPQ 2d 1788 (Fed Cir 1998) . . . . . . . . . . . . . . . . . . . 2.37 Seabrook Foods, Inc v Bar-Well Foods Ltd, 568 F 2d 1342, 1344 (Cust and Pat App 1977) . . . . . 12.11 Seager v Copydex [1967] 2 All ER 415 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.23 Seal-Flex, Inc v Athletic Track and Court Construction, 870 F Supp 753, 32 USPQ 2d 1676 (US D Ct, ED Mich 1994) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.61 Sears, Roebuck & Co v Stiff el Co 376 US 225 (1964). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.28 Sega Enterprises Ltd v Accolade, Inc, 977 F 2d 1510 (9th Cir 1992) . . . . . . . . . . . . . . . . . . . . . . . 1.64 Seid, In Re, 161 F 2d 229, 73 USPQ 431 (CCPA 1947) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.69 Sekio Epson Corp v Nu-Kote Intern, Inc, 190 F 3d 1360 (Fed Cir 1999) . . . . . . . . . . . . . . . . . . 12.25 SG & R Valuation Service Co v Boudrais and Others [2008] EWHC 1340 (QB) . . . . . . . . . . . . . 3.14 Shapiro Bernstein & Co v HL Green Co 316 F 2d 304 (2nd Cir 1963) . . . . . . . . . . . . . . . . . . . . . 1.69 Sheldon and Hammond Pty Ltd v Metrokane Inc (2004) 61 IPR 1 . . . . . . . . . . . . . . . . . . . . . . . . 8.89 shell.de, BGH, GRUR(2002), 622 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.34 Shellmar Products Co v Allen-Qualley Co, 87 F 2d 104, 108 (7th Cir 1936), cert. denied, 301 US 695, 57 Sup Ct 923, 81 L Ed 1350 (1937) . . . . . . . . . . . . . . . . . . . . . . 3.30 Sherry [1969] RPC 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.10 Shopalotto.com Ltd’s Patent Application [2006] RPC 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.54 Silberdistel decision, BGH, June 22, 1995, GRUR 1995, 581, (1997) 28 IIC 140 . . . . . . . . . 8.52, 8.53 Simba Toys GmbH & Co KG v Seven Towns Limited (Case R 1526/2008-2) (1 September 2009) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.81 Sinclair v Aquarius Electronics, Inc, 42 Cal App 3d 216, 116 Cal Rptr 654, 661 (CA Cal 1974) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.43 Singer Mfg Co v Briley, 207 F 2d 519, 520 n.3 (5th Cir 1953) . . . . . . . . . . . . . . . . . . . . . . . . . . 13.22 Sirena S.r.l. v Eda S.r.l. and others, (1971) ECR 69 (ECJ 1971) . . . . . . . . . . . . . . . . . . . . . . . . . . 17.15 Skinder-Strauss Associates v Massachusetts Continuing Legal Education, Inc, 914 F Supp 665 (D Ma 1995) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.44 Smith v Chanel, Inc, 402 F 2d 562, 159 USPQ (BNA) 388 (9th Cir 1968) . . . . . . . . . . . . . . . . . 16.51 Smurf Figurines, OLG Frankfurt, 23 February 1984, 1984 GRUR 520. . . . . . . . . . . . . . . . . . . . . 8.51 Snow v The Eaton Centre (1982), 70 CPR (2d) 105 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.08 Sobrefina SA’s Trade Mark Application [1974] RPC 672, at 680 . . . . . . . . . . . . . . . . . . . . . . . . . . 2.13 Société des Produits Nestlé SA v Pro Fiducia Treuhand AG, WIPO Case No D2001-0916 (12 October 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.79 SOHEI/General purpose management system (T 769/92) [1995] OJ EPO 525, [1996] EPOR 253 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.56 Sommer Allibert v Flair Plastics [1987] RPC 599 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.65

xxxviii

Table of Cases Sony Computer Entertainment, Inc v Connectix Corp, 203 F 3d 596 (9th Cir 2000) . . . . . . . . . . 1.64 Sony Corp of Am., Inc v Universal City Studios, Inc, 464 US 417 (1984) . . . . . . . . . . . . . . . 1.05, 1.68 Southco v Kanebridge, 390 F 3d 276 (3rd Cir 2004) (en banc) . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.51 Spafax Ltd v Harrison [1980] IRLR 442 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.14 Spalding v Gamage (1915) 32 RPC 273 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.09, 11.10 Sports Traveler, Inc v Advance Magazine Publishers, Inc, 25 F Supp 2d 154, 162 (SDNY 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.34 Stahlrohrstuhl, BGH, GRUR 1961, 635 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.53 State of Israel-Minister of Agriculture/Tomatoes (G 0001/08) (Enlarged Board 9 December 2010) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.44 Stenor Ltd v Whitesides (Clitheroe) Ltd, (1948) 65 RPC 1 (HL) . . . . . . . . . . . . . . . . 2.74, 2.76, 2.111, 2.132 Stephano v News Group Publications, Inc, 474 NE 2d 580 (NY 1984) . . . . . . . . . . . . . . . 15.16, 15.34 Stephens v Avery [1988] Ch 449 (EWHC Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.12 Stresstest, BGH GRUR (2005), 172 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.43 Strix Ltd v Otter Controls Ltd [1995] RPC 607 (EWHC Pat) . . . . . . . . . . . . . . . . . . . 3.64, 3.65, 3.67 Stuart Hall Co, Inc v Ampad Corp, 51 F 3d 780 (8th Cir 1995) . . . . . . . . . . . . . . . . . . . . . . . . . 16.17 Stufenleitern, BGH, GRUR (2007), 339 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.11 Synergys v Geha, s’Hertogenbosch Court of Appeal, 4 November 2003 (BIE 2004, 44) . . . . . . . . 2.107 Syngenta Participations AG/Broccoli (G0002/07)(Enlarged Board 9 December 2010) . . . . . . . . . 4.44 Synthon BV v SmithKline Beecham plc [2005] UKHL 59, [2006] 1 All ER 685 (HL). . . . . . . . . . 3.63 Taco Cabana Intern, Inc v Two Pesos, Inc, 932 F 2d 1113, 1120 (5th Cir 1991) . . . . . . . . . . . . . 12.12 Taittinger v Allbev [1993] FSR 641 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.20 Talbot v General Television Corp [1981] RPC 1 (Sup Ct Vict) . . . . . . . . . . . . . . . . . . . . . . . 3.23, 3.24 Tavener Rutledge v Trexapalm [1975] . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.40 Tchenguiz v Imerman [2011] 2 WLR 592 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.13 Tea Board of India v The Republic of Tea (2006) 80 USPQ 2d 1881 (TTAB) . . . . . . . . . . . . . . . 13.22 Tecalemit Limited v Ewarts Limited (No 2) (1927) 44 RPC 503 . . . . . . . . . . . . . . . . . . . . 2.114, 2.132 Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 85 IPR 571, (2011) 90 IPR 1 (Full Federal Court on appeal) . . . . . . . . . . . . . . . . . . . 8.42 Tennessee ex rel Presley Int’l Memorial Found v Crowell, 733 S W 2d 89 (Tenn Ct App 1987) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.19 Teva Pharmaceutical Industries Ltd and others v Istituto Gentili SpA and Merck & Co Inc [2003] EWHC 5 (Pat) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6.05 The Underfeed Stoker Co Ltd and Ernest William Robey, In the Matter of an Application for a Patent by (1924) 41 RPC 622 (Sol Gen) . . . . . . . . . . . . . . . . . . . . . . . . 3.64 Théberge v Galerie d’Art du Petit Champlain Inc, 2002 SCC 34, [2002] 2 SCR 336 . . . . . . . . . . . . . . . . . .10.02, 10.07 et seq, 10.12, 10.13, 10.14, 10.16, 10.17, 10.18, 10.20, 10.21, 10.22, 10.43, 10.52, 10.62, 10.69, 10.70 Ticketmaster Corp v Tickets.com, Inc, 2000 WL 1887522, 54 USPQ 2s 1344 (CD Cal 10 August 2000) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.44, 9.64 Ticketmaster Corp v Tickets.com, CV99-7654, 2003 US Dist. LEXIS 6483, *9 (CD Cal 7 March 2003) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.54 Timely Products Corp v Arron 523 F 2d 288, 187 USPQ 257 (CA 2nd Cir 1975) . . . . . . . . . . . . 3.30 Titan Group Pty Ltd, Re, and Titan Gym Equipment Pty Ltd v Steriline Manufacturing Pty Ltd, Anthony Mcgregor Sims and Trimtech Pty Ltd [1990] FCA 402 (18 October 1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.12, 3.44 Titan Sports, Inc v Comics World Corporation, 870 F 2d 85 (2nd Cir 1989) . . . . . . . . . . . . . . . 15.42 Toffoloni v LFP Publishing Group, 572 F 3d 1201 (11th Cir 2009) . . . . . . . . . . . . . . . . . . . . . . 15.25 Tokai/Dual-Type Damper (Opposition by Freudenberg) (T782/92) [1996] EPOR 207 (TBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.64, 3.68 Toshiba Europe GmbH v Katun Germany GmbH (C-112/99) ECJ, Judgment of 25 October 2001 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.42 Toys ‘R’ Us Inc v Akkaoui, 40 USPQ 2d 1836 (ND Ca 1996) . . . . . . . . . . . . . . . . . . . . . . . . . . . 14.16 Trade-Mark Cases, In Re 100 US 82, 94 (1879) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.17

xxxix

Table of Cases TrafFix Devices, Inc v Marketing Displays, Inc, 532 US 23, 33, 58 USPQ 2d 1001 (2001) . . . . . . . . . . . . . . . . . . . . . . . . . 4.04, 4.30, 7.82, 12.06, 12.26, 16.18 Transmatic v Gulton Industries, 601 F 2d 904, 912 (6th Cir 1979) . . . . . . . . . . . . . . . . . . . . . . . . 2.21 Transwestern v Multimedia Marketing Association, 133 F 3d 773 (10th Cir 1998) . . . . . . . . . . . . 9.44 Trib. corr. Paris, 17 January 1968, Gaz. Pal. 1968, 1, 197 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.48 Trib. corr. Seine, 2 February 1912, Ann. prop. ind. 1912, 290 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.48 Tumblebus Inc v Cranmer, 399 F 3d 754, 768 (6th Cir 2005) . . . . . . . . . . . . . . . . . . . . . . 12.10, 12.34 Two Pesos, Inc v Taco Cabana, Inc 505 US 763 (1992) . . . . . . . . . . . . 7.19, 7.21, 12.06, 12.10, 12.11, 12.12, 16.17 Ty Inc v Perryman, 306 F 3d 509, 510 (7th Cir 2002) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.61 Unilever plc v Griffin [2010] EWHC 899 (Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.44 Unilever/Deodorant Detergent (T585/92) [1996] OJ EPO 129 (TBA). . . . . . . . . . . . . . . . . . . . . 3.72 Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 384, [2007] FSR (25) 635, 649 . . . . . . . . 3.63 United Drug Co v Theodore Rectanus Co 248 US 90 (1918) . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.15 United States v Giles, 85 213 F 3d 1247 (10th Cir 2000) . . . . . . . . . . . . . . . . . . . . . . . . . 15.55, 15.65 United States v Glaxo Group, 410 US 52, 58, US Sup Ct 1973 . . . . . . . . . . . . . . . . . . . . . . . . . . 17.17 United States v Microsoft Corporation, 34 F 3d 34 (US Court of Appeals, DC Circuit 28 June 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.67 United States of America v Terminal Railroad Association of St. Louis et al, 224 US 383 (US Sup Ct 22 April 1912), Bronner . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.31, 17.58, 17.59 University Patents (G3/98) [2001] OJ EPO 62 (EBA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.75 US Payphone, Inc v Executives Unlimited of Durham, Inc, 18 USPQ2d (BNA) 2049 (4th Cir 1991) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.43 Ushio-Denki/Method of Treating Photo-resists (Opposition by Fusion Systems Corp) (T480/95) (5 November 1996) [1997] OJ EPO 20–21 (TBA) . . . . . . . . . . . . . . . . . . . . . . . 3.68 Van Products Co v General Welding and Fabricating Co, 419 Pa 248, 265, 213 A. 2d 769 (1965) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.04 Vandervell v Lundberg (1915) 33 RPC 60 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.132 Ventura v Titan Sports, Inc, 65 F 3d 725, 730 (8th Cir 1995) 15.15 Vercoe v RFML [2010] EWHC 424 (Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.25 Verizon Communications Inc v Law Offices of Curtis v Trinko, LLP, 540 398, 407, US Sup Ct, 13 January 2004 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17.16, 17.68 Vestergaard Fransen S/A (and others) v Bestnet Europe Ltd [2009] EWHC 1456 (Ch), [2010] FSR (2) 29 (EWHC Ch) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.25, 3.44, 3.48 Villeroy & Boch Keramische Werke K.G. v THC Sys, Inc, 999 F2d 619 (2d Cir 1993) . . . . . . . . . 7.87 Vine Products Ltd v Mackenzie & Co Ltd (No 3) [1969] RPC 1 . . . . . . . . . . . . . . . . . . . . . . . . . 11.18 Virgil v Time, Inc, 527 F 2d 1122 (9th Cir 1975), cert. denied, 425 US 998 (1976) . . . . . . . . . . 15.34 Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group, [2009] ECDR 11, [2009] EWHC 26 (Pat) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.83 Virginia State Bd of Pharmacy v Virginia Citizens Consumer Council, 425 US 748 (1976) . . . . . 16.51 W.L. Gore & Associates, Inc v Garlock, Inc, 721 F 2d 1540, 220 USPQ 303 (CAFC, 1983) . . . . . 3.35 W.L. Gore & Associates Inc v Kimal Scientific Products Ltd [1988] RPC 137, Pats Ct. . . . . . . . . . 3.60 Wahl Instruments Inc v Acvious Inc, 950 F 2d 1575, 1581 (CAFC 1991) . . . . . . . . . . . . . . . . . . . 3.80 Wal-Mart Stores, Inc v Samara Bros 529 US 205 (2000) . . . . . . . . . . . 7.21, 7.71, 12.11, 12.13, 12.35, 15.40, 16.01, 16.17, 16.22 Warren Publishing v Microdos, 115 F 3d 1509 (11th Cir), cert. denied, 118 Sup Ct 397 (1997) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.44 Webb, Re, 916 F 2d 1553 (Fed Cir 1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.130 weg.de, OLG Köln, MarkenR (2010), 190 (LS) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.12, 16.35 Werner Motors v Gamage (1904) 21 RPC 621 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.13, 2.16 Wheatley’s Application [1985] RPC 91 (CA) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.60 Whirlpool v Kenwood [2010] ETMR 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.36, 11.57, 11.63, 11.64 Whirlpool Corp v Kenwood Ltd [2008] EWHC 1930 (Ch), [2009] ETMR 5. . . . . . . . . . .12.77 et seq

xl

Table of Cases White v Samsung Elecs Am, Inc, 971 F 2d 1395, 1396 (9th Cir 1992), cert. denied, 113 Sup Ct 2443 (1993) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15.20, 15.41, 15.58 Williams Electronics, Inc v Artic International, Inc, 685 F 2d 870 (3rd Cir 1982) . . . . . . . . . 1.29.1.33 Windsurfing Chiemsee Produktions v Boots and Attenberger [1999] ECR I-2779 . . . . . . . . . . . 13.09 Wingate’s Registered Design (1935) 52 RPC 126 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.125 Wood v Zimmer (1815) 1 Holt NPC 58 (Nis Prius) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.79 Wotherspoon v Currie (1871–72) LR 5 HL 508 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.09 Wunderbaum, BGH, GRUR (1998), 935 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16.13 X-IT Products, LLC v Walter Kidde Portable Equipment, Inc, 155 F Supp 2d 577 (ED Va 2001) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.11 Yoghurt-Gums, Higher Regional Court of Hamburg, GRUR-RR (2009), 224 . . . . . . . . . . . . . . 16.34 York Trade Mark [1984] RPC 231 (HL) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.09 Zacchini v Scripps-Howard Broadcasting Co, 433 US 562 (1977). . . . . . . . . . . . . . . . . . . . . . . . 15.24 Zentrale zur Bekämpfung unlauteren Wettbewerbs v Plus Warenhandelsgesellschaft mbH (C-304/08), ECJ, Judgment of 14 January 2010 . . . . . . . . 16.06

xli

This page intentionally left blank

TABLES OF LEGISLATION xliii xliii xlvii xlix

European Primary Legislation European Secondary Legislation International Legislation National Legislation

Note: Chapters 1–17 are referenced to paragraph number and the Comparison Tables are referenced to page number. Art 101. . . . . . . . . . . . . . . . . . . . . . . . . .17.78 Art 102. . . . . . . . . . . . . . 17.28, 17.34, 17.75, 17.77, 17.80 Art 102(b) . . . . . . . . . . . . . . . . . . . . . . .17.48 Art 295. . . . . . . . . . . . . . . . . . . . 17.35, 17.42

EUROPEAN PRIMARY LEGISLATION Convention on the Grant of European Patents (European Patent Convention) of 5 October 1973 . . . . . . . . . . . 3.72, 4.43 EC Treaty (Treaty of Rome) 1958. . . . . . . . . . . . . . . . . . . . 17.35, 17.36 Art 82. . . . . . . . . . . . . . . . 17.50, 17.51, 17.56 European Convention for the Protection of Human Rights and Fundamental Freedoms, Rome, 4 November 1950 . . . . . . . . . . . . . . . .15.29 Art 8. . . . . . . . . . . . . . . . . . . . . . . . . . . .15.35 Art 10. . . . . . . . . . . . . . . . . . . . . . . . . . .15.35 Revision of the European Patent Convention 2000 . . . . . . . 1.17, 1.19, 1.25, 1.31, 2.30, 3.60, 4.53, 4.62 Art 6. . . . . . . . . . . . . . . . . . . . . . . . . . . . .2.91 Art 41(4) . . . . . . . . . . . . . . . . . . . . . . . . .2.42 Art 52. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Art 52(1) . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Art 52(2) . . . . . . . . . . . . . . . . . . . . 2.30, 2.31 Art 53. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Art 53(b) . . . . . . 4.42, 4.44, 4.45, 4.46, 4.47, 4.48, 4.49, 4.50, 4.52 Art 54. . . . . . . . . . . . . . . . . . . 3.04, 3.32, 3.63 Art 55. . . . . . . . . . . . . . . . . . . . . . . 3.50, 3.72 Art 55(1) . . . . . . . . . . . . . . . . . . . . . . . . .3.74 Art 55(1)(a) . . . . . . . . . . . . . . . . . . . . . . .3.72 Art 56. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Art 57. . . . . . . . . . . . . . . . . . . 2.30, 2.52, 3.04 Art 63. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.21 Arts 71–74 . . . . . . . . . . . . . . . . . . . . . . . .3.26 Art 83. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Art 84. . . . . . . . . . . . . . . . . . . . . . . . . . . .2.91 Art 91. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.29 Art 92(1) . . . . . . . . . . . . . . . . . . . . . . . . .4.39 Art 139. . . . . . . . . . . . . . . . . . . . . . . . . . .2.46 Art 140. . . . . . . . . . . . . . . . . . . . . . . . . . .2.46 Rule 43(7) . . . . . . . . . . . . . . . . . . . . . . . .2.92 Treaty on the Functioning of the European Union (Treaty of Lisbon) (TFEU)) 2009

EUROPEAN SECONDARY LEGISLATION Regulations Council Regulation (EEC) No 2392/89 of 24 July 1989 laying down general rules for the description and presentation of wines and grape musts [1989] OJ L232/13–39 . . . . . .13.14 Commission Proposal for a Council Regulation (EEC) concerning the creation of a supplementary protection certificate for medicinal products, COM(90) 101 final . . . . . . . . . . . . . . .6.29 Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products [1992] OJ L182/1 . . . . . . . . . . . . . . . .6.29 Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs [1992] OJ L208/1–8 . . . . . . . . . . . . .13.07, 13.17, 13.25 Art 14(3) . . . . . . . . . . . . . . . . . . . . . . . .13.18 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community Trade Mark, newly encoded through the Regulation No 207/2009 of 24 March 2009 [1993] OJ L11/1 (CTM Regulation) . . . . . . 11.35, 11.51, 11.62, 16.05

xliii

Tables of Legislation Council Regulation (EC) No 2100/94 on Community Plant Variety Rights [1994] OJ L227/1 . . . . . . . . . . .4.39, 4.44, 4.53, 4.59, 4.62 Art 9(1)(b) . . . . . . . . . . . . . . . . . . . . . . .11.73 Art 13(5) . . . . . . . . . . . . . . . . . . . . . . . . .4.40 Art 14. . . . . . . . . . . . . . . . . . . . . . . 4.40, 4.59 Art 14(1) . . . . . . . . . . . . . . . . . . . . . . . . .4.40 Art 14(2) . . . . . . . . . . . . . . . . . . . . . . . . .4.40 Art 14(3) . . . . . . . . . . . . . . . . . . . . . . . . .4.40 Art 15. . . . . . . . . . . . . . . . . . . . . . . . . . . .4.40 Art 29. . . . . . . . . . . . . . . . . . . . . . . . . . . .4.57 Art 92(1) . . . . . . . . . . . . . . . . . . . . . . . . .4.39 Commission Regulation 1768/95, Implementing Rules on the Agricultural Exemption Provided for in Article 14(3) of Council Regulation (EC) No 2100/94 on Community plant variety rights [1995] OJ L173/14–21 . . . . . . . . . . . . . . . . . .4.40 Commission Regulation (EC) No 2868/95 of 13 December 1995 Implementing Council Regulation (EC) No 40/94 on the Community trade mark [1995] OJ L303/1 as amended Rule 11. . . . . . . . . . . . . . . . . . . . . . . . . .12.52 Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products [1996] OJ L198/30 . . . . . . . . . . . . . . . . . . . . .6.29 Recital (11). . . . . . . . . . . . . . . . . . . . . . . .6.31 Council Regulation 6/2002 on Community Designs [2001] OJ L3/1 (CDR) amended by Council Regulation No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Union the Geneva Act of the Hague Agreement concerning the international registration of industrial designs [2006] OJ L386/14 . . . . . . . . . 8.54, 12.39, 12.49, 428 Recital 10 . . . . . . . . . . . . . . . . . . . 2.55, 2.101 Recital 31 . . . . . . . . . . . . . . . . . . . . . . . . .2.16 Art 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.39 Art 3(a) . . . . . . . . . . . . . . . . . . . . . . . . . .2.74 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.43 Art 4(2) . . . . . . . . . . . . . . . . . . . . . . . . .2.131 Art 4(3) . . . . . . . . . . . . . . . . . . . . . . . . .2.131 Art 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.43 Art 5(1)(a) . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 5(1)(b) . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.43

Art 6(1) . . . . . . . . . . . . . . . . . . . . . . . . . .2.88 Art 6(1)(a) . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 6(1)(b) . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 7(1) . . . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 7(2) . . . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 8 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.60 Art 8(1) . . . . . . . . . . . . . . . . . . . 2.100, 12.65 Art 8(2) . . . . . . . . . . . . . . . . . . . . . . . . .2.132 Art 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.69 Art 10. . . . . . . . . . . . . . . . . . . . . . . . . . .12.83 Art 10(1) . . . . . . . . . . . . . . . . . . . . . . . . .2.88 Art 11. . . . . . . . . . . . . . . . . . . . . . . . . . .12.49 Art 14. . . . . . . . . . . . . . . . . . . . . . . . . . .12.56 Art 19(1) . . . . . . . . . . . . . . . . . . . . . . . .12.89 Art 19(2) . . . . . . . . . . . . . . . . . . . . . . . .12.83 Art 25. . . . . . . . . . . . . . . . . . . . . . . . . . . .2.46 Art 25(6) . . . . . . . . . . . . . . . . . . . . . . . . .2.89 Art 36(1) . . . . . . . . . . . . . . . . . . . . . . . . .2.89 Art 36(3)(a) . . . . . . . . . . . . . . . . . . . . . . .2.89 Art 36(6) . . . . . . . . . . . . . . . . . . . . . . . . .2.94 Art 37(4) . . . . . . . . . . . . . . . . . . . . . . . .12.55 Art 38. . . . . . . . . . . . . . . . . . . . . . . . . . . .2.89 Art 81(d) . . . . . . . . . . . . . . . . . . . . . . . .12.90 Art 82. . . . . . . . . . . . . . . . . . . . . . . . . . .12.89 Art 96. . . . . . . . . . . . . . . . . . . . . . . . . . .12.42 Art 96(1) . . . . . . . . . . . . . . . . . . . . . . . . .2.16 Art 96(2) . . . . . . . . . . . . . . . . . . . . 8.54, 8.55 Commission Regulation (EC) No 1829/2002 of 14 October 2002 amending the Annex to Regulation (EC) No 1107/96 with regard to the name ‘Feta’ [2002] OJ 277/10 Recital 23 . . . . . . . . . . . . . . . . . . . . . . . .13.25 Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs [2002] OJ L341/28 Art 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2.94 Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights [2003] OJ L196/7–14 . . . . . . . . . . . . .1.87 Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs [2006] OJ L93/12 . . . . . . . . . 13.17, 13.18, 13.23, 13.25, 429, 430, 476 Art 3(1) . . . . . . . . . . . . . . . . . . . . . . . . .13.23 Art 3(4) . . . . . . . . . . . . . . . . . . . . . . . . .13.18

xliv

European Secondary Legislation Art 13 . . . . . . . . . . . . . . . . 13.12, 13.18, 13.29 Art 13(1) . . . . . . . . . . . . . . . . . . 13.18, 13.23 Art 13(3) . . . . . . . . . . . . . . . . . . 13.23, 13.29 Art 14(1) . . . . . . . . . . . . . . . . . . . . . . . .13.18 Art 14(2) . . . . . . . . . . . . . 13.12, 13.18, 13.29 Regulation (EC) No 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use, as amended by Regulation (EC) No 1902/2006 of the European Parliament and of the Council of 20 December 2006 [2006] OJ L 378/1 . . . . . . . . . . . . . . . . . . . . . .6.29 Council Regulation (EC) No 110/2008 of 15 January 2008 on the Definition, Description, Presentation, Labelling and the Protection of Geographical Indications of Spirit Drinks [2008] OJ L9/16 . . . . . . . . . . . . . . . . . . . . . .13.17 Council Regulation (EC) No 479/2008 of 29 April 2008 on the common organisation of the market in wine [2008] OJ L 148/1 . . . . . . . . . . . . . . .13.17 Commission Regulation (EC) No 1234/2008 of 24 November 2008 concerning the examination of variations to the terms of marketing authorisations for medicinal products for human use and veterinary medicinal products [2008] OJ L334/7 (Variation Regulation) . . . . . . . . . . . . . . . . 6.22, 6.23 Annex I . . . . . . . . . . . . . . . . . . . . . . . . . .6.23 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark [2009] OJ L78/1 (CTMR). . . . . . . . . 12.40, 13.12 Art 1(2) . . . . . . . . . . . . . . . . . . . . . . . . .16.05 Art 4 . . . . . . . . . . . . . . . . . . . . . . 12.40, 12.46 Art 5(2) . . . . . . . . . . . . . . . . . . . . . . . . .16.45 Art 7(1)(b) . . . . . . . . . . . . . . . . . . . . . . .12.72 Art 7(1)(c) . . . . . . . . . . . . . . . . . . . . . . .12.72 Art 7(1)(e)(i) . . . . . . . . . . . . . . . . . . . . .12.80 Art 7(1)(e)(ii) . . . . . . . . . . . . . . . . . . . . .12.61 Art 7(1)(e)(iii) . . . . . . . . . . . . . . . . . . . .12.80 Art 7(1)(f ) . . . . . . . . . . . . . . . . . . . . . . .12.69 Art 7(3) . . . . . . . . . . . . . . . . . . . . . . . . .12.79 Art 8(1)(b) . . . . . . . . . . . . . . . . . 16.12, 16.28 Art 9(1)(b) . . . . . . . . . . . . . . . . . 16.12, 16.28 Art 9(2) . . . . . . . . . . . . . . . . . . . . . . . . .12.89 Art 51(1)(a) . . . . . . . . . . . . . . . . . . . . . .12.48 Art 52(1)(b) . . . . . . . . . . . . . . . . 16.13, 16.16 Arts 66–74 . . . . . . . . . . . . . . . . . . . . . . .13.17 Art 66 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 429 Art 96(d) . . . . . . . . . . . . . . . . . . . . . . . .12.90

Art 97. . . . . . . . . . . . . . . . . . . . . . . . . . .12.89 Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products [2009] OJ L152/1 . . . . . . . 6.29, 6.49, 6.54 Recital 4 . . . . . . . . . . . . . . . . . . . . . . . . . .6.30 Recital 9 . . . . . . . . . . . . . . . . . . . . . . . . . .6.31 Directives Council Directive 65/65/EEC of 26 January 1965 on the approximation of provisions laid down by law, regulation or administrative action relating to medicinal products [1965] OJ L22/369 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.44 Council Directive 87/54 on the Legal Protection of Topographies of Semiconductor Products [1987] OJ L24/27 . . . . . . . . .2.11 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks [1989] OJ L40/1–7 (the TM Directive) . . . . . . . . . 11.35, 11.45, 11.62, 13.12, 16.05 Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs [1991] OJ L122/42–46 . . . . .1.61 Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights [1993] OJ L290/9–13 . . . . . . . . . . . . . . . . . .17.17 Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases [1996] OJ L77 (Database Directive) . . . . . . . . .1.20, 9.12 et seq, 9.52, 9.53, 9.59, 9.72, 9.75 Art 1(1) . . . . . . . . . . . . . . . . . . . . . . . . . .9.17 Art 3(1) . . . . . . . . . . . . . . . . . . . . . . . . . .9.19 Art 5(a) . . . . . . . . . . . . . . . . . . . . . . . . . .9.19 Art 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9.20 Art 7(1) . . . . . . . . . . . . . . . . . . . . . . . . . .9.22 Art 7(2)(a) . . . . . . . . . . . . . . . . . . . . . . . .9.22 Art 7(2)(b) . . . . . . . . . . . . . . . . . . . . . . . .9.22 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions [1998] OJ L213/13 (Biotech Directive) . . . . . . . . . . .4.41, 4.42, 4.53 et seq Art 2(3) . . . . . . . . . . . . . . . . . . . . . . . . . .4.53

xlv

Tables of Legislation Directive 98/44/EC (cont.) Art 4(1) . . . . . . . . . . . . . . . . . . . . . . . . . .4.53 Art 4(1)(a) . . . . . . . . . . . . . . . . . . . . . . . .4.53 Art 4(1)(b) . . . . . . . . . . . . . . . . . . . . . . . .4.53 Art 4(2) . . . . . . . . . . . . . . . . . . . . . . . . . .4.53 Art 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4.50 Art 11(1) . . . . . . . . . . . . . . . . . . . . . . . . .4.59 Art 12. . . . . . . . . . . . . . 4.54, 4.55, 4.57, 4.58 Art 12(1) . . . . . . . . . . . . . . . . . . . . 4.55, 4.57 Art 12(2) . . . . . . . . . . . . . . . . . . . . 4.56, 4.57 Art 12(3)(b) . . . . . . . . . . . . . . . . . . . . . . .4.57 Art 12(4) . . . . . . . . . . . . . . . . . . . . . . . . .4.57 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs [1998] OJ L289/28) (Designs Directive) . . . . . . . . . . . . . . . . . 8.54, 12.39 Recital 7 . . . . . . . . . . . . . . . . . . . . . . . . . .2.16 Recital 11 . . . . . . . . . . . . . . . . . . . . . . . . .2.94 Recital 14 . . . . . . . . . . . . . . . . . . . 2.55, 2.101 Art 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.39 Art 1(a) . . . . . . . . . . . . . . . . . . . . . . . . . .2.74 Art 3(2) . . . . . . . . . . . . . . . . . . . . . . . . .12.43 Art 3(3) . . . . . . . . . . . . . . . . . . . . . . . . .2.131 Art 3(4) . . . . . . . . . . . . . . . . . . . . . . . . .2.131 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.43 Art 4(1) . . . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 5(1) . . . . . . . . . . 2.75, 2.88, 12.43, 12.45 Art 6(1) . . . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 6(2) . . . . . . . . . . . . . . . . . . . . . . . . .12.45 Art 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.60 Art 7(1) . . . . . . . . . . . . . . . . . . . . . . . . .2.100 Art 7(2) . . . . . . . . . . . . . . . . . . . . . . . . .2.132 Art 9 . . . . . . . . . . . . . . . . . . . . . . . . . . . .12.83 Art 9(1) . . . . . . . . . . . . . . . . . . . . . 2.75, 2.88 Art 11. . . . . . . . . . . . . . . . . . . . . . . . . . . .2.46 Art 16. . . . . . . . . . . . . . . . . . . . . . . . . . . .2.16 Art 17. . . . . . . . . . . . . . . . . . . . . . . 8.54, 8.55 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (Copyright Directive) . . . . . . . . . . . . . .1.18, 1.56, 1.61 Art V . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.65 Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community Code relating to medicinal products for human use [2001] OJ L311/67–128 . . . . . . . . . . . . 6.47, 6.48 Recital 10 . . . . . . . . . . . . . . . . . . . . . . . . .6.14 Art 6 . . . . . . . . . . . . . . . . . . . . 6.10, 6.11, 6.22 Art 6(1) . . . . . . . . . . . . . . . . . . . . . 6.21, 6.24

Art 8 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6.44 Art 8(3) . . . . . . . . . . . . . . . . . . . . . 6.12, 6.13 Art 10. . . . . . . . . . . . . . 6.12, 6.18, 6.19, 6.24, 6.25, 6.46, 6.61 Art 10(1) . . . . . . . . . . . 6.12, 6.13, 6.15, 6.19, 6.24, 6.45 Art 10(2) . . . . . . . . . . . . . . . . 6.16, 6.17, 6.47 Art 10(3) . . . . . . . . . . . 6.12, 6.13, 6.17, 6.24 Art 10(4) . . . . . . . . . . . . . . . . . . . . . . . . .6.12 Art 10bis . . . . . . . . . . . . . . . . . . . . 6.12, 6.41 Art 10ter. . . . . . . . . . . . . . . . . . . . . . . . . .6.12 Art 10quater . . . . . . . . . . . . . . . . . . . . . . .6.12 Art 28(1) . . . . . . . . . . . . . . . . . . . . . . . . .6.11 Art 28(2) . . . . . . . . . . . . . . . . . . . . . . . . .6.11 Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights [2004] OJ L157/45–86 ((IPR) Enforcement Directive) . . . . . . . 3.25, 474, 475, 476, 477, 478, 479, 480 Recital 7 . . . . . . . . . . . . . . . . . . . . . . . . .16.46 Art 2 . . . . . . . . . . . . . . . . . . . . . . 12.40, 12.46 Art 3(1)(b) . . . . . . . . . . . . . . . . . . . . . . .12.72 Art 3(1)(c) . . . . . . . . . . . . . . . . . . . . . . .12.72 Art 3(1)(e) . . . . . . . . . . . . . . . . . . . . . . .16.14 Art 3(1)(e)(i) . . . . . . . . . . . . . . . . . . . . .12.80 Art 3(1)(e)(ii) . . . . . . . . . . . . . . . . . . . . .12.61 Art 3(1)(e)(iii) . . . . . . . . . . . . . . . . . . . .12.80 Art 3(3) . . . . . . . . . . . . . . . . . . . . . . . . .12.79 Art 5(1)(a) . . . . . . . . . . . . . . . . . 11.59, 16.46 Art 5(1)(b) . . . . . . . . . . . . . . . . . 16.28, 16.46 Art 5(1) sentence 2(b) . . . . . . . . . . . . . . .16.28 Art 5(2) . . . . . . . . . . . . . 11.43, 11.47, 11.48, 11.51, 11.58, 11.59, 11.64, 16.46 Art 5(2)(a) . . . . . . . . . . . . . . . . . . . . . . .16.46 Art 12(1) . . . . . . . . . . . . . . . . . . . . . . . .12.48 Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (Unfair Commercial Practices (UCP) Directive) [2005] OJ L148/22 . . . . . . . . 16.06, 16.24, 16.26, 16.34, 6.56, 432 Preamble 17 . . . . . . . . . . . . . . . . . . . . . .16.26 Recital 14 . . . . . . . . . . . . . . . . . . . . . . . .16.29 Art 6, para 1 . . . . . . . . . . . . . . . . 16.27, 16.34

xlvi

International Legislation Art 6, para 1(b) . . . . . . . . . . . . . . . . . . . .16.25 Art 6, para 2(a) . . . . . . . . 16.06, 16.27, 16.28, 16.29, 16.34 Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning Misleading and Comparative Advertising [2006] OJ 376/21 . . . . . . . . . .16.06, 16.41, 16.56 Recital 14 . . . . . . . . . . . . . . . . . . . . . . . .16.41 Recital 15 . . . . . . . . . . . . . . . . . . . . . . . .16.41 Art 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . .16.42 Art 3(a) . . . . . . . . . . . . . . . . . . . . . . . . .16.29 Art 3(a), para 1(d) . . . . . . . . . . . . . . . . . .16.28 Art 4 . . . . . . 16.42, 16.43, 16.44, 16.45, 16.46 Art 4(a) . . . . . . . . . . . . . . . . . . . . . . . . .16.42 Art 4(b) . . . . . . . . . . . . . . . . . . . . . . . . .16.42 Art 4(c). . . . . . . . . . . . . . . . . . . . . . . . . .16.42 Art 4(d) . . . . . . . . . . . . . . . . . . . . . . . . .16.42 Art 4(e). . . . . . . . . . . . . . . . . . . . . . . . . .16.42 Art 4(f ). . . . . . . . . . . . . . . 16.42, 16.45, 16.46 Art 4(g) . . . . . . . . . . . . . . . . . . . 16.42, 16.46 Art 4(h) . . . . . . . . 16.28, 16.42, 16.45, 16.46 Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property [2006] OJ L376/28 . . . . . . . .1.56 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trademarks [2008] OJ L299/25 (Trade Marks Directive) . . . . . . 7.23, 12.40 Art 4(4)(c) . . . . . . . . . . . . . . . . . . . . . . . .7.53 Art 10(1) . . . . . . . . . . . . . . . . . . . . . . . . .7.28 Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs [2009] OJ L111/16 (Software Copyright Directive) . . . . . . . . 1.19, 1.31, 1.65, 17.25 Art 52 . . . . . . . . . . . . . . . . . . . 1.19, 1.25, 1.31 Art 52(3) . . . . . . . . . . . . . . . . . . . . . . . . .1.25 INTERNATIONAL LEGISLATION Actes de la Conference de Berlin 1908, International Office, Berne, 1909, 42 (Berlin Revision 1908) . . . . . . . . . . 8.10, 8.19 et seq, 10.08 Actes de la Conference reunie a Rome du 7 mai au 2 juin 1928, International Office, Berne, 1929 (‘Actes 1928 ’), 231 (Rome Revision 1928) . . . . .8.10, 8.19, 8.22 et seq, 10.05, 10.08, 10.44

Brussels Revision 1948 . . . . . . . . . .8.10, 8.15, 8.27 et seq, 8.34 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) 15 April 1994, in the Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1868 UNTS 299, 33 LLM 1197 . . . . . . xxx, xxxi, 1.17, 1.42, 1.43, 1.80, 4.06, 4.15, 4.61, 6.08, 8.08, 8.40 et seq, 8.82, 8.86, 8.94, 10.50, 13.03 Pt II, s 4 . . . . . . . . . . . . . . . . . . . . . . . . . .8.41 Art 1(1) . . . . . . . . . . . . . . . . . . . . . . . . .13.05 Art 2(1) . . . . . . . . . . . . . . . . . . . . . 8.42, 8.93 Art 7(4) . . . . . . . . . . . . . . . . . . . . . . . . . .8.42 Art 9(1) . . . . . . . . . . . . . . . . . . . . 8.42, 10.05 Art 10(1) . . . . . . . . . . . . . . . . . . . 9.70, 10.05 Art 11. . . . . . . . . . . . . . . . . . . . . . . . . . . .8.91 Art 13. . . . . . . . . . . . . . . . . . . . . . . . . . . .8.93 Art 15(1) . . . . . . . . . . . . . . . . . . . . . . . .13.04 Art 16(1) . . . . . . . . . . . . . . . . . . . . . . . .13.13 Art 17. . . . . . . . . . . . . . . . . . . . . 13.09, 13.13 Arts 22–24 . . . . . . . . . . . . . . . . . . . . . . .13.05 Art 22(1) . . . . . . . . . . . . . . . . . . . . . . . .13.04 Art 24(6) . . . . . . . . . . . . . . . . . . . . . . . .13.21 Art 25. . . . . . . . . . . . . . . . . . . . . . . . . . . .8.41 Art 25(1) . . . . . . . . . . . . . . . 2.100, 8.42, 8.92 Art 25(2) . . . . . . . . . . . . . . . . . . . . . . . . .8.42 Art 26. . . . . . . . . . . . . . . . . . . . . . . . . . . .8.41 Art 26(1) . . . . . . . . . . . . . . . . . . . . 8.42, 8.92 Art 26(2) . . . . . . . . . . . . . . . . . . . . . . . . .8.93 Art 26(3) . . . . . . . . . . . . . . . . . . . . . . . . .8.93 Arts 27ff . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Art 27(1) . . . . . . . . . . . . . . . . . . . . 2.53, 4.14 Art 27(3)(b) . . . . . . . . . . . . . . . . . . 4.14, 4.15 Art 29. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Art 30. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.38 Art 39. . . . . . . . . . . . . . . . . . . . . . . 3.04, 3.57 Art 39(3) . . . . . . . . . . . . . . . . . . . . . 6.07, 504 Arts 44–46 . . . . . . . . . . . . . . . . . . . . . . . .1.80 Art 73. . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Berne Convention for the Protection of Literary and Artistic Works (Stockholm/Paris Acts) 1886. . . . . . . . . . . . . . . . . . . . . .1.31, 7.17, 8.08, 8.13, 8.24, 8.28, 8.34, 8.35, 8.39, 8.41, 8.42, 8.45, 8.57, 8.82 et seq, 9.20, 10.08, 10.44 et seq, 10.67, 10.69 Art 2(1) . . . . . . . . . . . . 8.09, 8.19, 8.22, 8.25, 8.27, 8.28, 8.87 Art 2(3) . . . . . . . . . . . . . . . . . . . . . . . . . .8.22 Art 2(4) . . . . . . . 8.19, 8.21, 8.22, 8.25, 8.26, 8.27, 8.29 Art 2(5) . . . . . . . . 8.26, 8.28, 8.30, 8.31, 8.32 Art 2(7) . . . . . . . . . . . . . . . . . 8.28, 8.32, 8.57

xlvii

Tables of Legislation Berne Convention for the Protection of Literary and Artistic Works (Stockholm/Paris Acts) 1886 (cont.) Art 2ter. . . . . . . . . . . . . . . . . . . . . . . . . . .8.23 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . 8.19, 8.21 Art 6bis . . . . . . . . 10.03, 10.05, 10.46, 10.47, 10.51, 10.59, 10.64 Art 6bis (2) . . . . . . . . . . . . . . . . . . . . . . .10.64 Art 7(4) . . . . . . . . . . . . . . . . . . . . . . . . . .8.31 Art 9(2) . . . . . . . . . . . . . . . . . . . . . 8.42, 8.93 Art 11(1)(ii) . . . . . . . . . . . . . . . . . . . . . .10.56 Art 11bis(1)(i), (ii) . . . . . . . . . . . . . . . . .10.56 Art 11ter(1)(ii) . . . . . . . . . . . . . . . . . . . .10.56 Art 14(1)(ii) . . . . . . . . . . . . . . . . . . . . . .10.56 Art 14bis(1) . . . . . . . . . . . . . . . . . . . . . .10.56 Arts 22–26 . . . . . . . . . . . . . . . . . . . . . . . .8.23 Art 24. . . . . . . . . . . . . . . . . . . . . . . . . . . .8.23 Art 27. . . . . . . . . . . . . . . . . . . . . . . . . . . .8.21 Art 27(3) . . . . . . . . . . . . . . . . . . . . . . . . .8.23 General Agreement on Tariffs and Trade (GATT) 1947 . . . . . . . . . . . . . . .1.17 Hague Agreement 1925 concerning the International Deposit of Industrial Designs Art 5(2)(b)(ii) . . . . . . . . . . . . . . . . . . . . . .2.89 Art 5(2)(b)(iii) . . . . . . . . . . . . . . . . . . . . .2.89 London Revision 1934 . . . . . . . . . . . . 8.40 Hague Revision 1960 . . . . . . . . . . . . . 8.40 Geneva Revision 1999 . . . . . . . . . . . . 8.40 Art 2(1) . . . . . . . . . . . . . . . . . . . . . . . . . .8.40 International Convention for the Protection of New Varieties of Plants (UPOV) 1961, 33 UST 2703, 815 UNTS 89 (as amended in 1972 and 1978) . . . . . . . 4.02, 4.06 et seq, 4.38, 4.39, 4.40, 4.49, 4.52, 4.53, 401, 519 Art 1(vi) . . . . . . . . . . . . . . . . . . . . . . . . . .4.48 Art 2(1) . . . . . . . . . . . . . . . . . 4.08, 4.10, 4.12 Art 37. . . . . . . . . . . . . . . . . . . . . . . . . . . .4.10 Art 37(1) . . . . . . . . . . . . . . . . . . . . . . . . .4.10 Art 37(2) . . . . . . . . . . . . . . . . . . . . . . . . .4.10 Art 37(3) . . . . . . . . . . . . . . . . . . . . . . . . .4.10 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, 31 October 1958, 923 UNTS 205 (1974) . . . . . . . . 468 Art 5(3) . . . . . . . . . . . . . . . . . . . . . . . . .13.14 Art 5(6) . . . . . . . . . . . . . . . . . . . . . . . . .13.14 Art 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . .13.21 Locarno Agreement of 8 October 1968 establishing the International Classification for Industrial Designs . . . . . . . . . . . . . . . . . . . . . . . .8.02 Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, 14 April 1891, 828 UNTS 389 (1972) . . . . . . . . . . . .13.20

Art 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . .13.21 Art 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . .13.20 OAPI (Organisation Africaine de la Propriété Intellectuelle) Uniform Law Art 2(2) . . . . . . . . . . . . . . . . . . . . . . . . . .2.33 Paris Convention for the Protection of Industrial Property of 20 March 1883, as amended . . . . . . . . 2.36, 2.38, 2.39, 5.09, 8.08, 8.35, 8.39, 8.41, 8.45, 8.82 et seq, 492 Art 1(2) . . . . . . . . . . . . . . . . . . . . . 8.35, 8.36 Art 2(1) . . . . . . . . . . . . . . . . . . . . . . . . . .8.36 Art 4A(1) . . . . . . . . . . . . . . . . . . . . . . . . .8.36 Art 4B . . . . . . . . . . . . . . . . . . . . . . . . . . .3.38 Art 4C(1) . . . . . . . . . . . . . . . . . . . . 2.37, 8.36 Art 4E(1) . . . . . . . . . . . . . . . . . . . . . . . . .2.36 Art 4E(2) . . . . . . . . . . . . . . . . . . . . . . . . .2.36 Art 5bis . . . . . . . . . . . . . . . . . . . . . . . . . .8.36 Art 5B . . . . . . . . . . . . . . . . . . . . . . . . . . .8.37 Art 5D . . . . . . . . . . . . . . . . . . . . . . . . . . .8.36 Art 5quinquies . . . . . . . . . . . . 8.39, 8.42, 8.91 Art 6bis . . . . . . . . . . . . . . . . . . . 11.34, 11.49, 11.50, 11.59 Art 6quinquies(B). . . . . . . . . . . . . . . . . .13.09 Art 7bis . . . . . . . . . . . . . . . . . . . . . . . . .13.05 Art 10bis . . . . . . . . . . . . . . . . . . . . . 8.93, 440 Art 10bis(3) . . . . . . . . . . . . . . . . . . . . . .13.03 Art 19. . . . . . . . . . . . . . . . . . . . . . . . . . . .8.40 Hague Revision 1925 . . . . . . . . . 8.35, 8.37 London Revision 1934 . . . . . . . . . . . . 8.37 Lisbon Revision 1958 . . . . . . . . . . . . . 8.37 Patent Cooperation Treaty 1970 . . . . . 3.19, 5.11, 5.12, 5.13 Strasbourg Convention 1963 . . . . . . . . . . . .4.49 Art 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.11 Art 2(b) . . . . . . . . . . . . . . . . . . . . . . . . . .4.49 Art 4(1) . . . . . . . . . . . . . . . . . . . . . . . . . .5.11 Art 22(1) . . . . . . . . . . . . . . . . . . . . . . . . .5.12 World Intellectual Property Organization (WIPO) Copyright Treaty (adopted 20 December 1996, entered into force 6 March 2002) (1997) 36 ILM 65 (WCT) . . . . . . . . . 9.72, 9.74, 10.50, 10.52, 10.53, 10.54, 10.55, 10.56, 10.57, 10.66, 10.67 Art 8 . . . . . . . . . . . 10.56, 10.58, 10.59, 10.60, 10.62, 10.66 WIPO Database Treaty . . . . . . . . . . . . . . . . .9.73 Art 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9.71 WIPO Joint Recommendation Concerning Provisions on the Protection of Well-known Marks 1999 Art 2(1)(c) . . . . . . . . . . . . . . . . . . . . . . .11.49 WIPO Model Law on Designs 1970 Art 1(2) . . . . . . . . . . . . . . . . . . . . . . . . . .8.39

xlviii

National Legislation WIPO Performances and Phonograms Treaty (adopted 20 December 1996, entered into force 20 May 2002) (1997), 36 ILM 76 (WPPT) . . . . . . . . . . . . 10.50, 10.51, 10.66 Art 5 . . . . . . . . . . . . . . . . . . . . . . 10.51, 10.66 WIPO Publication No 501 (E), WIPO: Geneva, 1981 . . . . . . . . . . . . . . 8.02, 12.55 NATIONAL LEGISLATION Australia Copyright Act 1912 . . . . . . . . . . . . . . . . . . .8.26 Copyright Act 1968 s 10(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.89 s 14(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.42 s 33(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.88 s 36(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .1.71 ss 74–77 . . . . . . . . . . . . . . . . . . . . . 8.42, 8.88 s 74(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.42 s 77(1)(a) . . . . . . . . . . . . . . . . . . . . . . . . .8.88 s 77(1)(a)(i) . . . . . . . . . . . . . . . . . . . . . . .8.89 s 115 . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.80 Copyright Amendment (Moral Rights) Act 2000 . . . . . . . . . . . . . . . . . . . . . .10.65 Designs Act 1906 . . . . . . . . . . . . . . . . . . . . . . . . s 18 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 23 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 27A . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 46 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 72 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 Designs Act 2003 Ch 4, Pt 3 . . . . . . . . . . . . . . . . . . . . . . . . .8.43 Ch 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 72 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.93 Patents Act 1990. . . . . . . . . . . . . . . . . . . . . .5.33 s 19(3) . . . . . . . . . . . . . . . . . . . . . . . . . . .5.21 s 19(4) . . . . . . . . . . . . . . . . . . . . . . . . . . .5.21 s 52 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.27 s 68 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.21 s 79B . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.33 s 79C . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.33 s 101A . . . . . . . . . . . . . . . . . . . . . . 5.27, 5.29 Patents Amendment Act 1979 (Cth) . . . . . . .5.16 Therapeutic Goods Act 1989 . . . . . . . . . . . . 394 Wine and Brandy Corporation Act 1980 (AWBC Act) . . . . . . . . . . . . 389, 390 Benelux Benelux Convention concerning Intellectual Property 2007 . . . . . . . . . . . . . . . . . . .8.50 Uniform Benelux Designs Law 1975 Art 21(1)(2) . . . . . . . . . . . . . . . . . . . . . . .8.50 Brazil Civil Code . . . . . . . . . . . . . . . . . . . . . . . . . . 400

Federal Constitution. . . . . . . . . . . . . . . . . . . 400 Industrial Property Law . . . . 397, 398, 399, 402 California Business and Professional Code §§ 17200–17209 . . . . . . . . . . . . . . . . . .16.08 Canada Competition Act . . . . . . . . . . . . . . . . . . . . . 407 Copyright Act, RS, 1985, c C-42 . . . . . . . 10.16, 10.20, 10.29 s 3.1 . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.14 s 28.2 . . . . . . . . . . . . . . . . . . . . . . . . . . .10.14 s 38.1 . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.80 Patent Act . . . . . . . . . . . . . . . . . . . . . . . . . . . 407 Trade-Marks Act . . . . . . . . . . . . . . . . . . 408, 409 s 7 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 407 s 7(b), (c) . . . . . . . . . . . . . . . . . . . . . . . . . 407 China Anti-Monopoly Law . . . . . . . . . . . . . . . . . . . 414 Copyright Law . . . . . . . . . . . . . . . 413, 414, 415 Law Against Unfair Competition. . . . . . . . . . . . . 411, 413, 415 Patent Law . . . . . . . . . . . . . . 411, 412, 415, 416 Trademark Law. . . . . . . . . . . . . . . . . . . 411, 415 Unjust Enrichment Law . . . . . . . . . . . . . . . . 415 Denmark Copyright Act Art 71. . . . . . . . . . . . . . . . . . . . . . . . . . . .9.26 France Code de la propriété industrielle Art L615-14 . . . . . . . . . . . . . . . . . . . . . .1.90 Intellectual Property Code 1992 (Code de la Propriété Intellectuelle, Loi N ° 92-597 du 1er juillet 1992 relative au code de la propriété intellectuelle (partie législative), last amended 2006 . . . . . . . . . 10.31, 10.35 Art L.111-1 . . . . . . . . . . . . . . . . . . . . . . .8.47 Art L.112-2, 7-12 . . . . . . . . . . . . . . . . . . .8.48 Art L.112-2, 14 . . . . . . . . . . . . . . . . . . . .8.48 Art L.121-1 . . . . . . . . . . . . . . . . 10.33, 10.36 Law of 1806 (Bulletin des Lois, 4th ser, IV, 352, 354) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.13 Germany Act on Utility Models 1986 (revised 1989). . . . . . 5.07–5.08, 5.09, 5.16, 5.33, 5.36, 5.37 s 1, para 1 . . . . . . . . . . . . . . . . . . . . . . . . .5.36 s 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.38 s 5, para 1 . . . . . . . . . . . . . . . . . . . . . . . . .5.33

xlix

Tables of Legislation s 7, para 1 . . . . . . . . . . . . . . . . . . . . . . . . .5.29 s 8, para 1 . . . . . . . . . . . . . . . . . . . . . . . . .5.27 s 15, para 1 . . . . . . . . . . . . . . . . . . . . . . . .5.29 Copyright Law 1965, as amended 2008 (Urheberrechtsgesetz, 9 September) s V . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.30 Art 2(1) . . . . . . . . . . . . . . . . . . . . . . . . . .8.50 Art 2(1), 4°, 5°, 7° . . . . . . . . . . . . . . . . . . .8.50 Art 29(1) . . . . . . . . . . . . . . . . . . . . . . . .10.30 Arts 31–44 . . . . . . . . . . . . . . . . . . . . . . .10.30 Art 39(2) . . . . . . . . . . . . . . . . . . . . . . . .10.28 Art 40(1) . . . . . . . . . . . . . . . . . . . . . . . .10.28 Art 40(2) . . . . . . . . . . . . . . . . . . . . . . . .10.28 Art 41. . . . . . . . . . . . . . . . . . . . . . . . . . .10.28 Art 42(2) . . . . . . . . . . . . . . . . . . . . . . . .10.28 Gebrauchsmustergestetz s 1, para 1, no 5. . . . . . . . . . . . . . . . . . . . .5.10 s 2, no 3 . . . . . . . . . . . . . . . . . . . . . . . . . .5.09 s 6, paras 1, 2 . . . . . . . . . . . . . . . . . . . . . .5.09 s 23, para 1 . . . . . . . . . . . . . . . . . . . . . . . .5.21 Gesetz über internationale Patentübereinkommen s 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.09 Gesetz zur Stärkung der vertraglichen Stellung von Urhebern und ausübenden Künstlern vom 22. März 2002, BGBl. I S. 1155, translated as Law to Strengthen the Contractual Position of Authors and Performing Artists of 22 March 2002, amending the Copyright Law of 9 September 1965, as last amended by Article 16 of the Law of December 13, 2001 . . . . . .10.30 Gesetz zur Bekämpfung der Produktpiraterie s 1, para 1 . . . . . . . . . . . . . . . . . . . . 5.07–5.08 Medicines Act . . . . . . . . . . . . . . . . . . . . . . . .6.48 Patent Act . . . . . . . . . . . . . . . . . .5.07–5.08, 5.37 s 1, para 2 . . . . . . . . . . . . . . . . . . . . . . . . .5.10 Trade Mark Act (Markengesetz) . . . . . 16.34, 428 s 3, para 2 . . . . . . . . . . . . . . . . . . . . . . . .16.14 s 4, No 2 . . . . . . . . . . . . . . . . . . . . . . . . .16.05 s 4, No 3 . . . . . . . . . . . . . . . . . . . . . . . . .16.05 s 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16.05 s 8, para 2, No 10 . . . . . . . . . . . . . . . . . .16.13 s 8, para 3 . . . . . . . . . . . . . . . . . . . . . . . .16.35 s 9, para 1, No 2 . . . . . . . . . . . . . . . . . . .16.28 s 14 . . . . . . . . . . . . . . . . . . . . . . . . . . . .16.35 s 14, para 1 . . . . . . . . . . . . . . . . . . . . . . .16.34 s 14, para 2, No 1 . . . . . . . . . . . . . . . . . .16.46 s 14, para 2, No 2 . . . . . . 16.12, 16.13, 16.28, 16.31, 16.36, 16.46 s 14, para 2, No 3 . . . . . . . . . . . . 16.13, 16.46 s 126 . . . . . . . . . . . . . . . . . . . . . . . . . . .16.05 Unfair Competition Act (UWG) . . . . . . . 16.10, 16.24, 16.26 s 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16.34

s 3, para 1 . . . . . . . . . . . . . . . . . . . . . . . .16.34 s 3, para 2 . . . . . . . . . . . . . . . . . . 16.27, 16.34 s 4, No 9 . . . . . . . . 16.06, 16.11, 16.12, 16.13, 16.25, 16.30, 16.32, 16.33 s 4, No 9 a . . . . . . . . . . . . . . . . . 16.13, 16.31 s 4, No. 9 b . . . . . . . . . . . . . . . . . 16.13, 16.31 s 4, No. 9 c . . . . . . . . . . . . . . . . . 16.13, 16.31 s 5 . . . . . . . . . . . . . . . . . . . . . . . 16.33, 16.34 s 5, para 1 . . . . . . . . . . . . . . . . . . . . . . . .16.25 s 5, para 1, sent 2 . . . . . . . . . . . . . . . . . .16.29 s 5, para 2 . . . . . . . 16.25, 16.27, 16.28, 16.29, 16.30, 16.31, 16.32, 16.33, 16.34, 16.35, 16.36 s 5, para 2, sent 1, No 1 . . . . . . . . . . . . . .16.25 s 5, para 3 . . . . . . . . . . . . . . . . . . . . . . . .16.43 s 6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16.43 s 6, para 2 . . . . . . . . . . . . . . . . . . . . . . . .16.46 s 6, para 2, No 3 . . . . . . . . . . . . . 16.29, 16.46 s 6, para 2, No 4 . . . . . . . . . . . . . . . . . . .16.46 s 8, para 3 . . . . . . . . . . . . . . . . . . 16.33, 16.34 India Competition Act, 2002. . . . . . . . . . . . . . . . . 439 Copyright Act 1957 . . . . . . . . . . . . . . . . . . . 439 Designs Act 2000 . . . . . . . . . . . . . . . . . . . . . 439 Geographical Indications of Goods (Registration and Protection) Act 1999 . . . . . . . . . . . . . . . . . . . . . . . 439 Patents Act 1970. . . . . . . . . . . . . . . . . . . . . . 439 Plant Variety Protection Law . . . . . . . . . . . . . 441 Trade Marks Act 1999 . . . . . . . . . . . . . . . . . 439 Israel Copyright Act 2007 s 56 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.80 Patent Law 1967 . . . . . . . . . . . . . . . . . . . . . . 448 Protection of Privacy Law . . . . . . . . . . . . . . . 448 Unjust Enrichment Law . . . . . . . . 444, 446, 447 Italy Law of 22 April 1941 Art 2(4) . . . . . . . . . . . . . . . . . . . . . . . . . .8.26 Japan Antimonopoly Act . . . . . . . . . . . . . . . . . . . . 455 Japan Utility Model Act . . . . . . . . . . . . . . . .5.11 Unfair Competition Prevention Act . . . . . . . . . . . . . . . . 451, 455, 456, 458 Korea Patent Act . . . . . . . . . . . . . . . . . . . . . . . . . . . 464 Seed Industry Act . . . . . . . . . . . . . . . . . . . . . 464 Trademark Law. . . . . . . . . . . . . . . . . . . . . . . 461 Unfair Competition Law . . . . . . . . . . . . . . . 459 Unfair Competition Prevention Act . . . . . . . 463 Utility Model Act . . . . . . . . . . . . . . . . . . . . . 464

l

National Legislation Law on Prevention of Fraud and Deception in Commercial Dealings . . . . . . . . . . . . 517 Patent Law . . . . . . . . . . . . . . . . . . . . . . 516, 519 Penal Code . . . . . . . . . . . . . . . . . . . . . . . . . . 517 Plant Varieties Law 2009. . . . . . . . . . . . . . . . 519 Trademark Law. . . . . . . . . . . . . . . . . . . . . . . 515

Mexico Federal Copyright Law . . . . . . . . . . . . . . . . . 473 Federal Economic Competition Law . . . . . . . 470 Federal Personal Data Protection Law . . . . . . 471 General Health Law . . . . . . . . . . . . . . . . . . . 473 General Health Regulations . . . . . . . . . . . . . 473 Industrial Property Law . . . . . . . . 466, 470, 471, 472, 473

United Kingdom Consumer Protection from Unfair Trading Regulations 2008 (SI 2008/1277). . . . . . . . . . . . . . . . . .13.03 Copyright Act 1911 . . . . . . . . . . . . . . 8.17, 8.26 s 22(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.17 s 35(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.17 Copyright Act 1956 . . . . . . . . . . . . . . . . . .10.48 s 9(8) . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.17 s 10 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.17 Copyright, Designs and Patents Act 1988 . . . . . . . . . . . . . . . . . . 1.65, 7.54 Pt III . . . . . . . . . . . . . . . . . . . . . . . 2.11, 8.42 s 4 . . . . . . . . . . . . . . . . . . . . . . . . . 8.62, 8.66 s 4(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.59 s 4(1)(a) . . . . . . . . . . . . . . . . . . . . . . . . . .7.43 s 11(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .7.14 s 16 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7.10 ss 22–26 . . . . . . . . . . . . . . . . . . . . . . . . . .1.71 ss 28–76 . . . . . . . . . . . . . . . . . . . . . . . . . .1.65 s 51 . . . . . . . . . . . . . . . . . . . . . . . . 7.54, 8.60 s 52 . . . . . . . . . . . . . . . . . . . . . . . . 7.54, 8.66 s 173 . . . . . . . . . . . . . . . . . . . . . . . . . . . .7.13 s 213(3)(b)(i) . . . . . . . . . . . . . . . . . . . . .2.132 s 215(1) . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 215(4) . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 216(1) . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 257 . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 Copyright of Designs Act 1839 . . . . . . . . . . .2.58 Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989/1070) . . . . . . . . .8.66 r 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.66 r 3(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.66 Design Copyright Act 1968 s 10(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.17 Design Rules 1932 r 92 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.17 Designing and Printing of Linens Act 1787 (27 Geo 3, c 38) . . . . . . . . . . . . . . . . . .8.13 Designing and Printing of Linens Act 1794 (Geo 3, c 23) . . . . . . . . . . . . . . . . . . . .8.13 Designs Copyright Act 1839 (2 & 3 Vict c 17). . . . . . . . . . . . . . . . . . . . . s 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.13 Engravings Acts . . . . . . . . . . . . . . . . . . . . . .8.17 Fine Arts Copyright Act 1862 . . . . . . . . . . . .8.17 Human Rights Act 1998 . . . . . . . . . . . . . . .15.29 Legal Deposit Libraries Act 2003 . . . . . . . . .1.51

Netherlands Copyright Act Art 10 . . . . . . . . . . . . . . . . . . . . . . . . . . . .9.38 Database Act . . . . . . . . . . . . . . . . . . . . . . . . 477 New York Civil Rights Law s 50 . . . . . . . . . . . . . . . . . . . . . . 15.08, 15.10 s 51 . . . . . . . . . . . . . . . . . . . . . . 15.08, 15.10 Russia Civil Code . . . . . . . . . . . . . . . . . . . . . . . . . . 487 Competition Law 2006 . . . . . . . . . . . . 485, 486 Privacy Laws . . . . . . . . . . . . . . . . . . . . . . . . . 487 Singapore Copyright Act. . . . . . . . . . . . 491, 493, 494, 497 Geographical Indications Act . . . . . . . . . . . . 493 Patents Act . . . . . . . . . . . . . . . . . . 490, 491, 496 Plant Varieties Protection Act . . . . . . . . . . . . 496 Registered Designs Act 491 Trade Marks Act . . . . . . . . . . 490, 492, 494, 496 s 5(3)(b) . . . . . . . . . . . . . . . . . . . . . . . . .11.47 South Africa Competition Act, 89 of 1998 . . . . . . . . . . . . 502 Liquor Products Act . . . . . . . . . . . . . . . . . . . 499 Medicines and Related Substances Control Act s 34 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 504 Merchandise Marks Act . . . . . . . . . . . . . . . . 499 Patent Act . . . . . . . . . . . . . . . . . . . . . . . . . . . 504 Trade Marks Act . . . . . . . . . . . . . . . . . . . . . . 500 Turkey Civil Code . . . . . . . . . . . . . . . . . . . . . . . . . . 510 Code of Commerce . . . . . . . . . . . . . . . 505, 509 Decree Law of Geographical Signs . . . . . . . . 507 United Arab Emirates Commercial Transactions Law . . . . . . . 515, 517 Constitution. . . . . . . . . . . . . . . . . . . . . . . . . 517 Consumer Protection Law . . . . . . . . . . . . . . 515 Copyright Law . . . . . . . . . . . . . . . . . . . 516, 517 GCC Trademark law was issued in 2006 . . . . 515

li

Tables of Legislation Patents Act 1949. . . . . . . . . . . . . . . . . . . . . .3.60 s 4(3)(b) . . . . . . . . . . . . . . . . . . . . . . . . . .3.79 s 7A(5) . . . . . . . . . . . . . . . . . . . . . . . . . . .8.93 s 32(1)(h) . . . . . . . . . . . . . . . . . . . . . . . . .3.79 s 32(1)(l) . . . . . . . . . . . . . . . . . . . . . . . . .3.60 s 32(2) . . . . . . . . . . . . . . . . . . . . . . . . . . .3.60 Patents Act 1977. . . . . . . . . . . . . . . . . . . . . .3.25 s 1(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 s 1(2) . . . . . . . . . . . . . . . . . . . . . . . 2.31, 3.04 s 1(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 s 2 . . . . . . . . . . . . . . . . . . . . . 3.04, 3.32, 3.63 s 2(4) . . . . . . . . . . . . . . . . . . . . . . . 3.50, 3.74 s 2(4)(a)(b) . . . . . . . . . . . . . . . . . . . . . . . .3.73 s 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 s 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 s 5(5)(6) . . . . . . . . . . . . . . . . . . . . . . . . . .2.38 s 7(1) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.51 s 7(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.51 s 7(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.51 s 7(2)(a) . . . . . . . . . . . . . . . . . . . . . . . . . .3.51 s 7(3) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.51 s 14(3) . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 s 16 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.29 s 22 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 s 30 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.26 s 39(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .1.45 s 60 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.23 s 60(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .1.59 s 64 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.39 s 64(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .3.39 s 64(2) . . . . . . . . . . . . . . . . . . . . . . . . . . .3.39 s 64(3) . . . . . . . . . . . . . . . . . . . . . . . . . . .3.39 Sch 1A . . . . . . . . . . . . . . . . . . . . . . . . . . .3.04 Patents Rules 1977 (SI 2007/3291) r 26 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.29 Patents and Designs Act 1907 (as amended in 1932) s 25(2)(j) . . . . . . . . . . . . . . . . . . . . . . . . .3.79 s 25(2)(o) . . . . . . . . . . . . . . . . . . . . . . . . .3.60 Patents and Designs Act 1919 . . . . . . 2.59, 2.113 Prints Copyright Act 1771 . . . . . . . . . . . . . .8.17 Registered Designs Act 1949 . . . . . . . 2.113, 8.04 s 1(3) . . . . . . . . . . . . . . . . . . . . . . . . . . .2.126 s 1A . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 1B . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 1C . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 3B(6) . . . . . . . . . . . . . . . . . . . . . . . . . . .2.89 s 4(2) . . . . . . . . . . . . . . . . . . . . . . . . . . . .2.55 s 8 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .8.43 s 24B . . . . . . . . . . . . . . . . . . . . . . . . . . .12.59 Registered Designs Rules 2006 (SI 2006/1975) r 26 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2.55 Sculpture Copyright Act 1814 . . . . . . . . . . .8.17 Statute of Anne 1709 . . . . . . . . . . . . . . . . . .7.06

Statute of Monopolies 1623 . . . . . . . . . . . . .2.30 Trade Descriptions Act 1968. . . . . . . . . . . .13.03 Trade Marks Act 1938 . . . . . . . . . . . . . . . .11.33 Trade Marks Act 1994 . . . . . . . . . . .7.55, 11.35, 11.58, 11.62 s 3(1)(b), (c), (d) . . . . . . . . . . . . . . . . . . .11.73 s 3(2)(b) . . . . . . . . . . . . . . . . . . . . . . . . .11.36 s 3(2)(c) . . . . . . . . . . . . . . . . . . . . . . . . .11.36 s 5(3) . . . . . . . . . . . . . . . . . . . . . 11.51, 11.52 s 5(4) . . . . . . . . . . . . . . . . . . . . . . . . . . .11.38 s 5(4)(b) . . . . . . . . . . . . . . . . . . . . . . . . . .7.53 s 10(1) . . . . . . . . . . . . . . . . . . . . 11.40, 11.59 s 10(2) . . . . . . . . . 11.06, 11.40, 11.42, 11.73 s 10(3) . . . . . . . . . 11.06, 11.37, 11.42, 11.43, 11.45, 11.47, 11.48, 11.51, 11.55, 11.57, 11.59, 11.60, 11.63, 11.64, 11.73 s 11(2)(b) . . . . . . . . . . . . . . . . . . . . . . . .11.70 s 23 . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7.25 s 24(1) . . . . . . . . . . . . . . . . . . . . . . . . . . .7.29 s 56(1) . . . . . . . . . . . . . . . . . . . . . . . . . .11.34 s 49 . . . . . . . . . . . . . . . . . . . . . . . . . . . .13.03 s 50 . . . . . . . . . . . . . . . . . . . . . . . . . . . .13.03 s 56(2) . . . . . . . . . . . . . . . . . . . . . . . . . .11.34 Sch 1 . . . . . . . . . . . . . . . . . . . . . . . . . . .13.03 Sch 2 . . . . . . . . . . . . . . . . . . . . . . . . . . .13.03 Trade Marks Registration Act 1875 . . . . . . .11.10 Utility Designs Act 1843. . . . . . . . . . . 2.27, 2.58 United States America Invents Act 2011 . . . . . . . . . . 3.61, 3.76 s 15(c) . . . . . . . . . . . . . . . . . . . . . . . . . . .3.81 Anti-Cybersquatting Consumer Protection Act (ACPA) . . . . . . . . . . . 14.19, 14.54 et seq, 14.85 et seq Audio Home Recording Act 17 USC § 1001 et seq . . . . . . . . . . . . . . . .1.59 Bill of Rights 1791 . . . . . . . . . . . . . . . . . . . .1.05 37 CFR § 1.71 . . . . . . . . . . . . . . . . . . . . .1.52 37 CFR § 1,153 . . . . . . . . . . . . . . . . . . .12.07 37 CFR § 1.153(a) . . . . . . . . . . . . . . . . . .2.87 37 CFR § 202.10(b) (1956) . . . . . . . . . . .8.69 Bylaws for Internet Corporation for Assigned Names and Numbers, as amended, effective 29 May 2008 Art 1, s 1 . . . . . . . . . . . . . . . . . . . . . . . . .14.34 Computer Fraud and Abuse Act (CFAA) . . . . . .1.89, 9.15, 9.65 et seq, 9.75 18 USC § 1030(a)(2)(C) . . . . . . . . . . . . .9.65 18 USC § 1030(e)(2)(B) . . . . . . . . . . . . . .9.65 18 USC § 1030(g) . . . . . . . . . . . . . . . . . .9.66 Constitution of 1787 . . . . . . . . 1.05, 1.16, 1.17, 7.16, 7.81, 10.32, 17.23 Art 1, § 8 . . . . . . . . . . . . . . . . . . . . . . . . .7.81 Art 1, § 8, clause 8 . . . . . . . . . . . . . 1.05, 9.41

lii

National Legislation First Amendment . . . . . . . . . . . . . .1.30, 9.08, 15.45 et seq, 16.51 Copyright Act 1909 . . . . . . . . . . . . . . 1.28, 8.70 Copyright Act 1976 . . . . .1.08 et seq, 1.14, 1.28, 1.29, 1.46, 1.59, 1.63, 1.68, 1.73, 1.82, 1.88, 7.68, 8.15, 8.77, 9.09, 9.10, 9.41, 9.45, 9.56 17 USC § 101 . . . . . . . . . . . 1.10, 1.28, 1.46, 1.47, 9.40 17 USC § 102 . . . . . . . . . . . . . . . . 1.09, 9.40 17 USC § 102(b) . . . . . . . . . . . . . . 1.10, 1.12 17 USC § 103 . . . . . . . . . . . . . . . . . . . . .9.40 17 USC § 106 . . . . . . . . . . . . . . . . 1.55, 1.63 17 USC §§ 107–122 . . . . . . . . . . . . . . . .1.63 17 USC § 107 . . . . . . . . . . . . . . . . . . . . .1.63 17 USC § 107(c) . . . . . . . . . . . . . . . . . . .1.58 17 USC § 203 . . . . . . . . . . . . . . . . . . . . .1.48 17 USC § 203(c) . . . . . . . . . . . . . . . . . . .7.68 17 USC § 301(a) . . . . . . . . . . . . . . . . . . .9.55 17 USC § 304 (c) . . . . . . . . . . . . . . . . . . .7.68 17 USC § 412 . . . . . . . . . . . . . . . . . . . . .1.78 17 USC § 504 . . . . . . . . . . . . . . . . . . . . .1.76 17 USC § 504(c) . . . . . . . . . . . . . . . . . . .1.74 17 USC § 505 . . . . . . . . . . . . . . . . . . . . .1.76 17 USC § 506 . . . . . . . . . . . . . . . . . . . . .1.88 Digital Millennium Copyright Act . . . . . . . .9.75 17 USC § 1201 . . . . . . . . . . . . . . . 1.59, 9.49 17 USC § 1204 . . . . . . . . . . . . . . . . . . . .1.88 Drug Price Competition and Patent Term Restoration Act (Hatch-Waxman Act) 1984 . . . . . . . . . 6.09, 6.26, 6.36, 6.37 Economic Espionage Act 1996 Pub L No 104–294, 110 Stat. 3488 18 USC §§ 1831–1839 . . . . . 3.25, 3.43, 3.57 Federal Food, Drug and Cosmetic Act s 505(j) . . . . . . . . . . . . . . . . . . . . . . . . . . .6.36 s 505(j)(5)(b)(iv) . . . . . . . . . . . . . . . . . . .6.36 Federal Reg 15,605 (14 March 1995) . . . . . .1.15 First Inventor Defense Act 1999 . . . . . . . . . .3.40 Patent Act 1842 Ch 263 . . . . . . . . . . 2.59, 12.04 Patent Act 1952 . . . . . . . .1.10 et seq, 1.21, 1.23, 1.59, 3.54, 8.77 Title 35 . . . . . . . . . . . . . . . . . . . . 4.33, 12.18 35 USC §§ 101–102 . . . . . . . . . . . . . . . .1.08 35 USC § 101 . . . . . . . . . . . 1.10, 1.11, 1.14, 2.53, 3.04, 4.26, 4.27, 4.28, 4.29 35 USC § 102 . . . . . . 3.04, 3.36, 3.76, 12.07 35 USC § 102(a)(1) . . . . . . . . . . . . 3.61, 3.76 35 USC § 102(a)(2) . . . . . . . . . . . . . . . . .3.36 35 USC § 102(b) . . . . . 3.33, 3.35, 3.36, 3.40, 3.60, 3.62, 12.18 35 USC § 102(g) . . . . . . . . . . . . . . 3.33, 3.34 35 USC § 103 . . . . . . . . . . . 3.04, 4.29, 12.07 35 USC § 112 . . . . . . . . . . . 1.52, 3.04, 3.79, 4.28, 12.07

35 USC § 119(f ) . . . . . . . . . . . . . . . . . . .4.29 35 USC § 122 . . . . . . . . . . . . . . . . . . . . .1.52 35 USC § 135(a) . . . . . . . . . . . . . . . . . . .3.34 35 USC § 154 . . . . . . . . . . . . . . . . . . . .16.20 35 USC § 154(a) . . . . . . . . . . . . . . . . . . .3.23 35 USC § 154(b) . . . . . . . . . . . . . . . . . . .3.21 35 USC §§ 171–173 . . . . . . . . . . . . . . . .8.77 35 USC § 171 . . . . . . . . . . 2.35, 12.04, 12.07 35 USC § 173 . . . . . . . . . . . . . . 12.18, 16.20 35 USC § 261 . . . . . . . . . . . . . . . . . . . . .3.26 35 USC § 271(a) . . . . . . . . . . . . . . . . . . .4.28 35 USC § 271(b) . . . . . . . . . . . . . . . . . . .1.68 35 USC § 271(c) . . . . . . . . . . . . . . . . . . .1.68 35 USC § 271(e) . . . . . . . . . . . . . . . . . . .4.28 35 USC § 271(e)(1) . . . . . . . . . . . . . . . . .1.66 35 USC § 273 . . . . . . . . . . . . . . . . . . . . .3.40 35 USC § 283 . . . . . . . . . . . . . . . . . . . . .1.73 35 USC § 284 . . . . . . . . . . . . . . . . 1.77, 3.25 35 USC § 285 . . . . . . . . . . . . . . . . . . . . .1.77 35 USC § 287 . . . . . . . . . . . . . . . 1.78, 12.23 35 USC § 289 . . . . . . . . . . . . . . . . . . . . .8.77 35 USC § 292 . . . . . . . . . . . . . . . . . . . . .1.88 Patient Protection and Affordable Care Act 2010 . . . . . . . . . . . . . . . . . . .6.26 Plant Patent Act . . . . . . . . . . . . . . . . . . . . . .4.28 Plant Variety Protection Act (PVPA). . . . . . . . . . 4.18 et seq, 4.32 et seq, 4.58, 4.62 7 USC § 2321 et seq . . . . . . . . . . . . . . . . .4.17 7 USC § 2401(a)(3) . . . . . . . . . . . . . . . . .4.24 7 USC § 2401(a)(9) . . . . . . . . . . . . . . . . .4.18 7 USC § 2402 (a)(1) . . . . . . . . . . . . . . . . .4.18 7 USC § 2402 (a)(2) . . . . . . . . . . . . . . . . .4.18 7 USC § 2402 (a)(3) . . . . . . . . . . . . . . . . .4.18 7 USC § 2402 (a)(4) . . . . . . . . . . . . . . . . .4.18 7 USC § 2404 . . . . . . . . . . . . . . . . . . . . .4.23 7 USC § 2422(2) . . . . . . . . . . . . . . . . . . .4.18 7 USC § 2422(3) . . . . . . . . . . . . . . . . . . .4.18 7 USC § 2422(4) . . . . . . . . . . . . . . . . . . .4.18 7 USC § 2483(b) . . . . . . . . . . . . . . . . . . .4.18 7 USC § 2483(b)(1)(B) . . . . . . . . . . . . . .4.18 7 USC § 2541(a) . . . . . . . . . . . . . . . . . . .4.19 7 USC § 2541(a)(4) . . . . . . . . . . . . . . . . 4.21, 4.28 7 USC § 2541(c) . . . . . . . . . . . . . . . . . . .4.28 7 USC § 2541(c)(1)(3) . . . . . . . . . . . . . . .4.24 7 USC § 2543 . . . . . . . . . . . . . . . . . . . . .4.22 7 USC § 2544 . . . . . . . . . . . . . . . . . . . . .4.21 7 USC § 2541(e) . . . . . . . . . . . . . . . . . . .4.21 7 USC § 2581 . . . . . . . . . . . . . . . . . . . . .4.17 Prioritizing Resources and Organization for Intellectual Property Act (PRO-IP Act) 2008, Pub L 110-403 . . . .1.88 Seed Availability and Competition Act 2011 . . . . . . . . . . . . . . . . . . . . . . .4.35

liii

Tables of Legislation Sherman Antitrust Act s 2 . . . . . . . . . . . . . . . . . . 17.28, 17.68, 17.75 Smith-Leahy Invents Act 2011 PL 112-29 . . . . . . . . . . . . . . . . . . . . . .3.40 s 3(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.36 s 3(n) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.36 s 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.40 Tariff Act 19 USC § 1337 . . . . . . . . . . . . . . . . . . . .1.84 Telecommunications Act 1996 . . . . . . . . . .17.68 Third Restatement of Unfair Competition. . . . . . . . . . . . . . . . . . . .15.25 s 17, cmt c (1993) . . . . . . . . . . . . . . . . . .12.27 s 39, cmt g (1995) . . . . . . . . . . . . . . . . . . .3.18 s 46, (1995) . . . . . . . . . . . . . . . . . . . . . .15.17 s 46, cmt c (1995) . . . . . . . . . . . . . . . . . .15.33 s 47, (1995) . . . . . . . . . . . . . . . . . . . . . .15.34 s 47, cmt c (1995) . . . . . . . . . . . . . . . . . .15.37 Trademark (Lanham) Act Ch 549, 69 Stat, 60 Stat 427 (1946) . . . . .7.19, 7.77, 13.29, 14.58, 16.22, 16.57 15 USC §§ 1001 et seq . . . . . . . . . . . . . .16.07 15 USC §§ 1051–1129 (2000) . . . . . . . 10.07, 15.58 15 USC § 1052(e)(5) . . . . . . . . . . . . . . .16.18 15 USC § 1052(f ) . . . . . . . . . . . . . . . . .16.18 15 USC § 1054 . . . . . . . . . . . . . . . . . . .13.15 15 USC § 1057(b) . . . . . . . . . . . . . . . . .12.35 15 USC § 1058(a)(2) . . . . . . . . . . . . . . .12.17 15 USC § 1059(a) . . . . . . . . . . . . . . . . .12.17 15 USC § 1064(3) . . . . . . . . . . . 13.22, 16.18 15 USC § 1091(c) . . . . . . . . . . . . . . . . .16.18 15 USC § 1111 . . . . . . . . . . . . . . . . . . .12.24 15 USC § 1114 (2010) . . . . . . . . 16.07, 16.37, 16.39, 16.40 15 USC § 1115(b)(5) . . . . . . . . . . . . . . .16.48 15 USC § 1114(1)(a) . . . . . . . . . . . . . . .16.40 15 USC § 1114(2)(D)(iv) . . . . . . . . . . . .14.85 15 USC § 1115(b)(8) . . . . . . . . . . . . . . .16.18 15 USC § 1117(d) . . . . . . . . . . . . . . . . .14.69 15 USC § 1125 (2010) . . . . . . . . . . . . . .16.07 15 USC § 1125(a) . . . . . . 7.83, 16.07, 16.08, 16.17, 16.19, 16.38, 16.39, 16.40, 16.52

15 USC § 1125(a)(1)(A). . . . . . . 16.40, 16.52 15 USC § 1125(a)(1)(B) . . . . . . . . . . . . .16.52 15 USC § 1125(a)(3) . . . . . . . . . . . . . . .12.17 15 USC § 1125(c) . . . . . . . . . . . . . . . . .16.55 15 USC § 1125(c)(2)(A). . . . . . . 16.52, 16.53 15 USC § 1125(c)(2)(B) . . . . . . . . . . . . .16.53 15 USC § 1125(c)(2)(C) . . . . . . . . . . . .16.53 15 USC § 1125(c)(3)(A)(i) . . . . . . . . . . .16.53 15 USC § 1125(c) (2000) (amended 2006) . . . . . . . . . . . 11.43, 15.62 15 USC § 1125(d) . . . . . . . . . . . . . . . . .14.54 15 USC § 1125(d)(1)(B)(i)(I)–(IX) . . . .14.56 15 USC § 1125(d)(1)(B)(ii) . . . . . . . . . .14.56 15 USC § 1125(d)(1)(C) . . . . . . . . . . . .14.69 15 USC § 1125(d)(1)(E) . . . . . . . . . . . .14.68 15 USC § 1125(d)(2)(C) . . . . . . . . . . . .14.70 15 USC § 1125(d)(2)(D)(i) . . . . . . . . . .14.70 15 USC § 1126 . . . . . . . . . . . . . . . . . . .16.49 15 USC § 1127 . . . . . . . . . . 7.18, 7.21, 7.28, 12.05, 12.17, 13.15 15 USC § 1143(a)(3) . . . . . . . . . . . . . . .16.19 Uniform Trade Secrets Act 1979, as amended in 1985 . . . . . . . . . . 3.16, 3.43 s 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.44 s 1(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.16 s 2(a) . . . . . . . . . . . . . . . . . . . . . . . 3.44, 3.49 s 3(b) . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.25 Vessel Hull Protection Act, Pub L No 105–304, 112cStat 2860 (1998) Title 17, Ch 13 . . . . . . . . . . . . . . . . . . . . .2.11 17 USC § 1201(a) . . . . . . . . . . . . . . . . . .8.79 17 USC § 1301 . . . . . . . . . . . . . . . . . . . .8.79 17 USC § 1301(b)(1) . . . . . . . . . . . . . . . .8.79 17 USC § 1302(1)–(4) . . . . . . . . . . . . . . .8.79 17 USC § 1329 . . . . . . . . . . . . . . . . . . . .8.81 17 USC § 1330(2) . . . . . . . . . . . . . . . . . .8.81 Visual Artists Rights Act of 1990, Pub L No 101–650, 104 Stat 5128, 17 USC § 106A (‘VARA’) . . . . . . 10.03, 10.16, 10.69

liv

INTRODUCTION

It is called the ‘Shade of Von Jhering’. As described by a leading figure in the legal realism approach to law, Felix Cohen, it goes something like this, [A] great German jurist had a curious dream. He dreamed that he died and was taken to a special heaven reserved for the theoreticians of the law. In this heaven one met, face to face, the many concepts of jurisprudence in their absolute purity, freed from all entangling alliances with human life. Here were the disembodied spirits of good faith and bad faith, property, possession, laches, and rights in rem. Here were all the logical instruments needed to manipulate and transform these legal concepts and thus to create and to solve the most beautiful of legal problems. . . . The boundless opportunities of this heaven of legal concepts were open to all properly qualified jurists, provided only they drank the Lethean draught which induced forgetfulness of terrestrial human affairs. But for the most accomplished jurists the Lethean draught was entirely superfluous. They had nothing to forget.1

The Shade of Von Jhering is not limited to the systemic disembodiment of legal thinking from the setting in which the law takes place. It is also the failure of legal thinking to take into account the complexity of the flow of influences and circumstances that ultimately give form to legal context. By not addressing this flow of influences and circumstances, the result is the same as for Von Jhering’s legal theoreticians—it is as if they do not exist. This book, the culmination of nearly a decade from germination of an idea through to consummation, is an attempt to avoid the Shade of Von Jhering in connection with a central aspect of intellectual property law and practice. That aspect is the prevalence of overlaps between various types of intellectual property rights and the subject-matters that are covered. While intellectual property stakeholders encounter such overlaps frequently, there has been no comprehensive treatment of the issue. It is not unusual for one to be called upon to address a situation in which more than one set of intellectual property rights might apply to a common subject-matter. Computer software, which merits both patent and copyright protection in some countries; plant varieties, which are entitled to patent and plant variety protection; and pharmaceutical drugs, which claim protection under both patent and regulatory data exclusivity regimes, are some of the prominent examples in this regard. However, the unavailability of secondary materials to assist one in navigating the thicket of overlapping intellectual property rights in their various manifestations makes it difficult, costly, and inefficient to deal with such issues. As a result, an appreciation of the implications of such overlaps for both law and practice has been thin at best, to the detriment of the intellectual property community more generally. The goal of this book is to fill this gap by focusing on various pairs of overlapping intellectual property rights, whereby a chapter is devoted to discussing each such pair. In addition, this book is about enabling its readers to act in a more informed and productive manner with 1

Cohen, (1935) 35 Columbia Law Review 809 (emphasis added).

lv

Introduction respect to issues that involve the overlap of intellectual property rights. Aristotle taught us over two millennia ago about the importance of ‘practical wisdom’, the ability to make use of knowledge—not for its own sake—but to enable persons to engage in better forms of action. This book is intended for equal amounts of thinking and doing with respect to the challenges posed by overlapping intellectual property rights. It is an attempt to encourage practical wisdom in an area where guideposts have been few and far between. As such, it seeks to offer insights that are both theoretical and practical. It has been observed that ‘[n]ot taking advantage of the overlap misses opportunities or, worse, amounts to “malpractice”.’2 Even if we, as a profession, may not be directly guilty of having imbibed the Lethean draught en masse with respect to promoting a greater awareness of the issue of overlapping intellectual property rights, we still stand justifiably accused of leaving the topic largely unexplored. This book is intended to put an end to the disjunction between the frequency of encounters of overlapping intellectual property rights by persons engaged in intellectual property and the paucity of resources available to deal with the issue. In so doing, it is hoped that we will no longer be accused of the double charge of missed opportunities or even malpractice and we will be better able to engage in intellectual property matters.

A. Prevalence of Overlapping Intellectual Property Rights The premise of the book is that overlapping intellectual property rights are common in practice and that this will only continue to increase. From its judicial and statutory antecedents dating back to the 18th century, the scope and diversity of intellectual property has continued to expand, especially during the last century. These developments have taken place both with respect to an enlargement in the types of subject-matters eligible for protection, and an increase of the number of separate and discrete intellectual property rights that provide legal protection for them. In part, these developments are a function of technological advancement, resulting in an increase in the number and diversity of goods and services and ever-more powerful platforms to deliver them. Efforts are first made to apply existing forms of intellectual property rights to these developments. When this proves inadequate, new laws are put in place to provide additional protection. While the expansion of intellectual property rights are more typically the result of legislative activity, it may also occur as a result of judicial decisions. Often, such judicial precedents serve to spur the legislator to then provide statutory endorsement. In addition, the expansion of international arrangements, most notably TRIPS (‘The Agreement on Trade Related Aspects of Intellectual Property Rights’), have made it more likely that member countries are likely to adopt all of the intellectual property rights covered by the Agreement. While there still remain material differences in the intellectual property protection accorded by various countries and extensive debates on TRIPS flexibilities and 2 Dratler, ‘Intellectual Property Law: Commercial, Creative, and Industrial Property’, quoted in Jorda on: Exploitation of the Overlap Between Patents and Secrets is Paramount. (emphasis added) last visited 27 February 2012.

lvi

Introduction the minimum standards mandated by TRIPS, the expansion of rights at the international level is more extensive than ever. This expansion of international intellectual property is also spurred in large part by the proliferation of free trade agreements. As such, the number of possible circumstances in which a given subject-matter may be covered by more than one set of intellectual property laws can only be expected to increase. The book fits squarely, even crucially, as an aid to assist in dealing with this expansion.

B. Theoretical Underpinnings of Intellectual Property In dealing with the issue of overlaps, one is forced to confront the purpose and rationale of each of the various intellectual property regimes. To this extent, some of the chapters may prove useful for those attempting to appreciate the underlying jurisprudence behind each intellectual property regime. The task of unmasking the core principles underlying each regime also helps frame policy arguments regarding the overlaps. In particular, it helps address the key policy issue in overlaps, namely: should the subject-matter be subjected to dual protection? Chapter 2 begins by dealing with this issue, highlighting several arguments why overlaps are undesirable and then proceeding to critique these claims.

C. Focus on Laws and Judgments The analytical focus of the book is on the sources for the creation, enforcement, and disposition of overlapping intellectual property rights, namely legislative enactments and judicial decisions, and the principles that can be derived from them. This is not to say that normative considerations about what the law ought to be are out of place. Indeed, several of the chapters in the book discuss issues of policy and even contemplate new possible legislation as part of the analysis.3 But the focus is on the laws and judgments that govern intellectual property overlaps, and the ways by which one can take effective action and make proper decisions when confronted with such a situation.

D. How Should the Relationship between the Various Intellectual Property Rights Be Categorized? In offering 17 chapters, each of which provides a discussion about a discrete pair of intellectual property rights, as well setting out tables summarizing the national position in 17 different countries for each of these pairs of intellectual property rights, the question arises: what are the various ways in which the relationship created by these various pairs of rights can be viewed? Stated otherwise, what kind of taxonomy might likely cover the types of relationships discussed? The starting point for addressing this question is that there is some form of overlap regarding the subject-matter covered by each of the two intellectual property rights of the pair. Assuming this to be the case, the central inquiry then becomes: given this common subject-matter, how 3

Illustratively, see Chapters 2–6.

lvii

Introduction does each of the two legal rights deal with this common subject-matter and what is the relationship between the rights with respect to this subject-matter? Based on the 17 pairs of intellectual property rights that are discussed in the book, there appear to be four principal situations in which intellectual property rights might overlap with respect to a given subject-matter. Since each of these four possible situations consists of two separate elements, the subject-matter and the intellectual property right, the ultimate outcome for each of these four situations will depend upon the nature of the subject-matter, the relevant laws involved, and the interrelationship between them. These outcomes in their full complexity form the basis for the discussion of the various chapters of the book. To give the reader a sense of these possible outcomes, a brief discussion is set out based on these four possible situations. Of course, a complete discussion of the points discussed can be found in the specific chapter dealing with the relevant pair of intellectual property rights. 1. The two sets of intellectual property rights mutually cover the entirety of the common subject-matter Both copyright law and trademark law might cover the same artistic work in its entirety.4 The questions regarding the relationship between these rights will include the manner by which each of the two laws might protect the same artistic work, and whether the protection granted by the two sets of laws is complementary, mutually exclusive, or partially exclusive. 2. The two sets of intellectual property rights may cover only part of the common subject-matter Both patent and plant breeders’ rights might cover certain plant-related inventions.5 However, many types of subject-matter under patent law are clearly not covered by the plant breeders’ rights law. The questions regarding the relationship between these rights will include the extent to which inventions covered by the plant breeders’ rights law are also protected under the patent law, and whether the protection granted by the two sets of laws is complementary, partially exclusive, or mutually exclusive. 3. The two sets of intellectual property rights cover different aspects of the common article Both patent law and registered design law may cover the same subject-matter, being an article,6 but the patent will cover the functional aspects of the article while the registered design will cover the aesthetic aspects of the article. In such a case, the main question will include whether the protection granted by the two sets of rights is complementary, partially exclusive, or mutually exclusive.

4 5 6

See Chapter 7. See Chapter 4. See Chapter 2.

lviii

Introduction 4. There may, or may not be, two sets of intellectual property rights, covering the same aspects in part, or different aspects, of the same subject-matter, depending upon the national law Both copyright law and the database protection law may cover databases, which are comprised of the structure and organization of the database as well as its contents.7 The determination of the interrelationship between these two sets of laws will depend upon whether the particular jurisdiction provides for both copyright protection and database protection. If the jurisdiction provides for protection for both types of rights, the question will include whether the protection granted by the two sets of rights is complementary, partially exclusive, or mutually exclusive.

E. Broadening Our Understanding of Intellectual Property The book seeks to broaden our understanding of intellectual property based on two principles. First, in addressing overlapping intellectual property rights from the view of discrete pairs of rights, the book adopts both a micro approach, where legal doctrine (case law and statute) is considered, and a macro approach, where the broader policy implications of overlaps are discussed. This is the appropriate approach, because, in so doing, it achieves broad coverage across a large number of intellectual property rights, while at the same time facilitating an analysis of these rights from the view of overlapping rights. In line with the dual purpose of the book, it enables one to both appreciate the theoretical underpinnings of overlapping rights and to act based on that understanding.8 Second, in focusing on overlapping rights, this book includes certain rights that are not usually included within the more traditional understanding of the term intellectual property. In particular, this book includes chapters that discuss the right of privacy and/or personality,9 the database right,10 unfair competition,11 competition law/antitrust,12 and data exclusivity.13 The reason for doing so is that each of these rights fits comfortably and naturally within the context of the right with which it is coupled. As a matter of practice, to have excluded these rights from the discussion of overlapping rights would have impoverished the relevance of the book and circumscribed its scope. At the end of the day, the book’s value will be found in its ability to help readers appreciate the scope of the framework around intellectual property overlaps.

7

See Chapter 9. Aristotle’s seminal attempt to categorize phenomena, in his work The Categories, focuses on related things (‘said to be of something else or to be somehow referred to something else’) rather than relationships between things. Aristotle’s Categories, Stanford Encyclopedia of Philosophy (first published 7 September 2007, 11–12). Inversely, the approach taken by the book focuses on a discussion of the relationship between various pairs of overlapping intellectual property rights. 9 Chapter 17. 10 Chapter 9. 11 Chapter 15. 12 Chapter 17. 13 Chapter 6. 8

lix

Introduction

F. The Structure of the Book The book is divided into two parts. The first part contains 17 chapters, each of which is dedicated to the discussion of a separate and distinct pair of intellectual property rights. The legal context for most of the chapters is English or United States law. The reason for doing so is to anchor the discussion on these jurisdictions in order to achieve, as much as possible, a degree of uniformity. In some circumstances, when appropriate, the discussion has also been brought to bear on European Union law or the law of certain European jurisdictions. Having said that, the focus of the chapters is on the broader principles that can be applied, no matter what the reader’s jurisdiction. For readers that are interested in overlaps in countries other than the US and UK, the tables at the end of the book provide ample learning. The chapters are organized in clusters to provide more continuity for the reader, particularly in the event that the reader wishes to read the chapters in seriatim, rather than to consider a specific overlapping pair of intellectual property rights. Thus, Chapters 1–6 all involve patents coupled with another right (Chapter 1, patents and copyright; Chapter 2, patents and design rights: Chapter 3, patents and trade secrets; Chapter 4, patents and plant variety protection: Chapter 5, patents and utility models; Chapter 6, patents and data exclusivity). Chapters 7–10 all involve copyright coupled with another right (Chapter 7, copyright and trademarks; Chapter 8, copyright and design rights; Chapter 9, copyright and database rights; Chapter 10, economic copyright and moral rights). Chapters 11–14 all involve trademarks coupled with another right (Chapter 11, registered trademarks and unregistered trademarks; Chapter 12, trademarks and designs; Chapter 13, trademarks and appellations of origin; Chapter 14, trademarks and domain names). Chapters 15–17 all involve non-traditional forms of intellectual property rights (Chapter 15, unfair competition and trademarks; Chapter 16, right of publicity/privacy and trademarks; Chapter 17, competition/antitrust and intellectual property rights). Each chapter is written by a separate author (or authors) in order to take maximum advantage of their collective expertise. The authors are evenly distributed between contributors who are primarily engaged in academic scholarship and contributors who combine both the practice of intellectual property law with scholarly publishing. Whatever the background of the particular author, each chapter addresses both the theoretical and practical aspects of the overlap under discussion. The diversity of the authors’ background and jurisdiction would, it is hoped, provide differing perspectives on the issue of overlaps. Moreover, each chapter begins with a hypothetical situation that highlights the issues raised by the relevant overlap and concludes with a bullet-point summary for the ease of readership. The book is directed towards a worldwide readership. Accordingly, the second part of the book contains summary tables for 17 representative national jurisdictions from around the world (Australia, Brazil, Canada, China, France, Germany, India, Israel, Japan, Mexico, Netherlands, Russia, Singapore, South Africa, South Korea, Turkey, UAE). The table for each country addresses each of the 17 pairs of overlapping rights from the perspective of the relevant national law on the basis of six fields (the overlapping subject-matter; manner of protection; extent of rights; duration of rights; enforcement; major unresolved issues). These tables enable a reader, interested in the position of any of the overlapping rights lx

Introduction discussed in the various chapters in any of the countries surveyed, to obtain a concise summary. The summary tables were prepared by experienced intellectual practitioners in each of the various jurisdictions. As an interesting aside, the editors received comments from many of the contributors about both the challenge in, and the satisfaction received from, the preparation of the tables. Only our editorial rapier, being obliged to impose strict standards on the length and format of the various tables, served to dampen the ardour of the contributors. Readers are encouraged to complete their own version of these tables for their jurisdiction (and share them with the editors, if they wish). Judging by the experience of the various national contributors, such an exercise will yield oversized benefits.

lxi

This page intentionally left blank

1 NAVIGATING THE INTERFACE BETWEEN UTILITY PATENTS AND COPYRIGHTS Andrew P. Bridges, Fenwick & West LLP

A. Hypothetical B. Conceptual Interplays between Utility Patent and Copyright Law (1) The constitutional basis of patent and copyright in United States law (2) The United States Patent Act and Copyright Act

(3) Statutory foundations of patent and copyright law in other countries (4) The treatment of business models (5) The treatment of computer programs

1.01 1.04

C. Practical Considerations in Choice of Protection and Enforcement D. Conclusion

1.04 1.08

1.17 1.21 1.27 1.37 1.91

A. Hypothetical A computer scientist with training in operations research leaves her employer, an e-commerce 1.01 retailer, to help found a new web-based company that will revolutionize the way customers buy custom-tailored clothing online without having to visit a tailor. She and three friends take their savings, borrow money on their credit cards, and rent a house where they spend fourteen months feverishly planning their business and writing code for the new website. One of the founders, a computer science professor, also draws upon a graduate student occasionally to help with the coding, paying the student on an hourly basis to write code for the user interface of the website at home according to general specifications the professor furnished. Urged on by a venture capitalist who provides early financing after the founders had spent 1.02 months soliciting funding, the founders file a series of patent applications covering the company’s business model, its ordering process, its methods for fitting customers remotely, its systems for tracking customer preferences and for anticipating changes in customer sizing, and its innovations in customer communications and web design. The new venture’s website goes ‘live’, and its business becomes wildly successful. The following 1.03 year, however, a rival emerges in the nascent online custom-tailored clothing market: the graduate student is its chief technology officer, and venture capitalists who didn’t get to invest in the first venture back the rival. The new business emulates in every way the business model of the first business, and its user interface is virtually identical to the first company’s interface. The founders of the first venture, outraged, want to assert every type of legal claim 1

Chapter 1: Navigating the Interface between Utility Patents and Copyrights against the rival. In particular, they explore the possibility of asserting both copyright and patent claims in respect of their creations that were misappropriated by the follow-on business. This chapter explores some of the issues arising from the overlap between patents and copyrights in such a context.

B. Conceptual Interplays between Utility Patent and Copyright Law (1) The constitutional basis of patent and copyright in United States law 1.04 The relationship between utility patent law and copyright law in the United States (US)

presents a remarkable paradox: they share the same fundamental principles but have widely divergent details and applications in practice. 1.05 Copyright and patent protection have a special place in US law because the original

Constitution in 1787 made explicit provision1 for them in the powers that the Constitution accorded Congress: ‘The Congress shall have the Power . . . To Promote the Progress of Science and the useful Arts, by securing for limited Times to Authors and Inventors the exclusive Rights to their Writings and Discoveries.’ United States Constitution Article I, § 8, clause 8. US courts have repeatedly underscored the importance of that foundation in interpreting and applying the copyright and patent laws.2 US courts also have invoked principles of patent law to interpret copyright law, and vice versa.3 1.06 Nevertheless, while US copyright and patent law shares a common Constitutional basis and

have a ‘historic kinship’, Congress has exercised its Constitutional power with respect to the two fields in a very different fashion. Moreover, the differences in apparent stakeholders in the respective laws, their expected roles in litigation, their marketplace power, and their political influences account for vastly different contours of the laws as they affect the practical business of litigation and the opportunities and choices for litigants to exploit copyright and patent theories in individual cases. 1.07 The dividing line between copyrights and utility patents is implicit in the two categories of

protected activity in the US Constitution: ‘Writings and Discoveries’. Shaped by statutes, and applied by the courts, the respective fields of law have grown beyond mere writings and discoveries, and the lines have blurred. This allows practitioners to capture the benefits of both protections in a variety of contexts, especially where writings or other expressive works may embody or reflect discoveries and inventions.

1 In fact, the rights of authors and inventors are the only rights expressly described as such in the original Constitution, before the Bill of Rights added to them in 1791. 2 See, eg, Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc, 563 US ___, ___, 131 S Ct 2188, 2194 (2011) (patent); Quanta Computer, Inc, v LG Electronics, Inc, 553 US 617, ___ (2008) (patent); Reed Elsevier Inc v Muchnick, 559 US ___, ___, 130 S Ct 1237, 1241 (2010) (copyright); Feist Publications Inc v Rural Telephone Service Co., 499 US 341, 349 (1991) (copyright); Sony Corp of Am., Inc v Universal City Studios, Inc, 464 US 417, 428 (1984) (copyright). 3 See, eg, eBay, Inc, v MercExchange LLC, 547 US 388, 392–3 (2006) (policies regarding injunctions, citing copyright law in patent case); Sony Corp, 464 US at 439–42 (drawing from patent statute in recognizing nonstatutory contributory infringement cause of action in copyright law, because of ‘historic kinship’ between patent and copyright law).

2

B. Conceptual Interplays between Utility Patent and Copyright Law (2) The United States Patent Act and Copyright Act In the US, utility patents protect rights in new, useful, and non-obvious inventions that are 1.08 manifest in processes, machines, manufactures, or compositions of matter.4 Examples include new pharmaceuticals, new types of machines, new ways of assembling products, and new business methods. At the controversial edge of patent protection are business methods or strategies such as tax-avoidance methods, investment strategies, and one-click ordering systems on a website. In the US copyrights protect rights in original, creative expression in ‘works of authorship’ 1.09 that have been rendered in a tangible medium of expression. They include (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.5 The US Copyright Act appears to make patent and copyright coverage mutually exclusive. 1.10 It states that ‘[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.’6 The Patent Act, by contrast, provides protections for processes as inventions;7 a ‘procedure, . . . system, and method of operation’ as described in the Copyright Act may be variants upon the concept of ‘process’. Similarly, the Copyright Act limits protection that might otherwise apply to utilitarian products. It defines ‘useful article’ as ‘an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.’8 It then limits the scope of ‘pictorial, graphic, and sculptural works’ as follows, Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.9

By contrast, the Patent Act protects inventions consisting of utilitarian manufactures.10

1.11

The Copyright Act expressly limits protection for pictorial, graphic, and sculptural works that 1.12 may constitute useful articles. There is no such explicit limitation for literary works in the Act, but the limitations of Section 102(b) derive from a seminal US Supreme Court case pertaining to a book. In Baker v Selden,11 the plaintiff owned the copyright in a book detailing a new book-keeping method, which consisted primarily of book-keeping forms and a description of their use. The plaintiff sued defendant for authoring a book that contained forms identical 4 5 6 7 8 9 10 11

35 USC §§ 101–102. 17 USC § 102. 17 USC § 102(b). 35 USC § 101. 17 USC § 101. Ibid. 35 USC § 101. 101 US 99 (1879).

3

Chapter 1: Navigating the Interface between Utility Patents and Copyrights to those of the plaintiff. The US Supreme Court considered the question as whether the author, by owning copyright in the book in which he explained his system or method of book-keeping, could prevent others from copying forms from the book. 1.13 The Court stated as follows,

The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires. The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public—not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application. . . . [T]he teachings of science and the rules and methods of useful art have their final end in application and use, and this application and use are what the public derive from the publication of a book which teaches them. But as embodied and taught in a literary composition or book, their essence consists only in their statement. This alone is what is secured by the copyright. The use by another of the same methods of statement, whether in words or illustrations, in a book published for teaching the art would undoubtedly be an infringement of the copyright.12 1.14 Thus the effect of such limiting provisions in the Copyright Act and of decisions such as

Baker is to prefer patent law as the basis of protection of functional intellectual creations that may occupy a boundary zone between writings and discoveries, which is to say, copyrights and patents. On the other hand, literary works are explicitly not patentable in the US:13 the invention of a new and non-obvious plot twist in a novel, for example, is not eligible for protection because it does not fall within the categories of eligibility in the Patent Act (processes, machines, manufactures, or compositions of matter).14 1.15 US law provides for the registration of copyrights. Mindful of the boundary between patents

and copyrights, for a number of years the US Copyright Office forced an election on inventors/authors to choose between patent (utility or design) protection and copyright with respect to, for example, scientific or technical drawings that may explicate an invention. It dropped that requirement in 1995,15 allowing that distinct monopolies could exist with respect to certain related matters, but in so doing it did not signal a position in favour of convergence of patent and copyright protection. Notably, the notice of the regulatory change in the Copyright Office procedure did not suggest that copyrighted works in the boundary zone were functional; the suggestion instead was that they potentially provided information about inventions. 1.16 In the US, it is therefore evident that the Constitution provides a common basis for patent

and copyright law, while the federal statutes appear to divide them into separate domains.

12 13 14 15

101 US at 103–04. See, eg, Manual of Patent Examining Procedure § 2106 IV.B. 365 USC § 101. 60 Fed Reg 15,605 (14 March 1995).

4

B. Conceptual Interplays between Utility Patent and Copyright Law With the abandonment of a regulatory effort to force an election between one domain and the other, the law allows creators and their lawyers room to urge dual protection of creative expression with functional purposes and effects.16 (3) Statutory foundations of patent and copyright law in other countries Patent law and copyright law in the European Union (EU) and many other countries do not 1.17 have a basis analogous to the US Constitution; instead, they derive from statutes and show the influence of the international TRIPS agreement.17 There is no EU-wide patent at this point, but inventors have a choice of filing applications in individual jurisdictions or in the European Patent Office (EPO).18 It enables a single procedure for obtaining patent protection in designated member states, in essence gaining a group of national rights. Some countries provide rigorous examination of patents; others do not. Nevertheless, patent law in the European countries has undergone a great deal of de facto harmonization, thanks in part to both TRIPS and the European Patent Convention. Generally, following TRIPS, patent protection extends to inventions that have novelty, inventiveness, and industrial applicability, which roughly correspond to US criteria for protection. European copyright law operates at a national level, but European directives have promoted 1.18 some degree of harmonization of the laws of the several member states. It has a broader scope than US copyright law, affording rights not only to authors and creators but also to performers, producers, and broadcasters. It also protects performances and broadcasts in a way that extends beyond US protection. Most notably for our purposes, European copyright law pertaining to computer programs (unlike regular copyright) lacks an ‘originality’ requirement.19 Whereas US law appears to allow some overlap between patent and copyright in the case 1.19 of functional literary works, such as computer software, EU law appears to resolve the ambiguity in favour of copyright and not patent protection. Thus, one European directive20 classifies computer programs explicitly as literary works subject to copyright protection, while the European Patent Convention states that computer programs ‘as such’ are not eligible for patent protection.21 In addition, a related European directive22 protects ‘database rights’, which correspond 1.20 roughly to those non-creative products of effort and investment (including to a degree the protection of ideas) that the US Supreme Court excluded from copyright protection in Feist. The term of protection is much shorter than copyright: 15 years from the date of completion of the database or its publication, whichever is later. Whereas US patent and copyright law have tension at their interface, this database protection in Europe explicitly addresses some

16 One high-profile current example of combined patent and copyright litigation, over Google’s Android platform, is Oracle America Inc v Google, Inc, case no 3:10-cv-03561 (ND Cal Complaint filed 12 August 2010) 17 Agreement on Trade Related Aspects of Intellectual Property Rights, a World Trade Organization agreement connected with the Uruguay Round of the GATT (General Agreement on Tariffs and Trade), 1994. 18 The EPO is not an EU agency. Instead, it is a separate intergovernmental organization with 38 member states. See last visited 28 February 2012. 19 Directive 2001/29/EC. 20 Directive 2009/24/EC. 21 Article 52. 22 Directive 96/9/EC.

5

Chapter 1: Navigating the Interface between Utility Patents and Copyrights of the problems of that interface. To the extent one has, through effort and ingenuity, assembled a body of information, including reports of discoveries of natural phenomena or data pertaining to laws of nature, the intellectual product may be akin to, but lie outside the bounds of, the areas of patent and copyright protection. Database protection may govern such a product. Another chapter on this book focuses on database rights.23 (4) The treatment of business models 1.21 The scope of patent protection for inventions in the Patent Act extends nearly to the limit of

human ingenuity, subject to a principal limitation that patents cover actual inventions and not mere ideas. Case law 24 has established that laws of nature, physical phenomena, and abstract ideas (including algorithms and mathematical formulas) are not patentable. 1.22 Among the most controversial subjects of patent protection are business methods, including

investment, financial trading, and tax avoidance methods or strategies. Because many of these business methods have their expression and execution in sophisticated computer programs, for example for program trading or large-scale data mining, this topic lies at the intersection of patent and copyright law. 1.23 The continued scope of ‘business method’ patents is uncertain in the US. Controversy results

both from debate over whether they deserve protection by a legal monopoly and from a sense on the part of some observers that examination of such patents is hopelessly flawed, especially in the evaluation of novelty and prior art. The US Supreme Court recently disappointed some observers with little guidance in a case that many had expected to lead to a wide-ranging review of patentability in this context. The Court, in Bilski v Kappos,25 affirmed the rejection of a patent for an investment-hedging method based upon mathematical formulas. It refused to exclude business methods from patentability without suggesting broad patentability of such methods. Further, it disapproved of a requirement that patented processes be tied to a machine or to transformation of matter but acknowledged that other limiting criteria may be appropriate if they are consistent with the text of the Patent Act. 1.24 Thus, inventions such as novel tax or investment strategies appear vulnerable after Bilski.

Moreover, in light of changes in the composition of the Supreme Court, business method patents as a category may yet lose patent protection. Four of the nine justices expressed the view, in a concurring opinion, that ‘business methods are not patentable.’26 The Federal Circuit’s later decision in Cybersource Corp v Retail Decisions, Inc 27 goes further in limiting patents for internet-enabled inventions, holding that the implementation of an otherwise unoriginal process on a general-purpose computer or network does not render the overall invention patentable. 1.25 ‘Schemes, rules, and methods for performing mental acts, playing games, or doing business,

and programs for computers’ as such are unpatentable in member jurisdictions of the

23

See Chapter 9: Jonathan Band and Brandon Butler, Overlapping Forms of Protection for Databases. eg, Parker v Flook, 437 US 584 (1978); Gottschalk v Benson, 409 US 63 (1973). 25 561 US ___, 130 S Ct 3218 (2010). 26 561 US ___, 130 S Ct 3218, 3232 (2010) (concurring opinion of Stevens, J. in which Ginsburg, Breyer, and Sotomayor, J.J., joined). 27 654 F 3d 1366 (Fed Cir 2011). 24

6

B. Conceptual Interplays between Utility Patent and Copyright Law European Patent Convention.28 The ‘as such’ limitation29 leaves room for patentability of inventions that rely in part upon schemes or methods which may gain patent protection based upon the extent they involve a novel use of an apparatus or solve a technical problem.30 On the other hand, Japan, China, Australia, and Canada permit business method patents in certain circumstances. The field has a great deal of ferment, however, and there is uncertainty over how far business methods may be protectable by patents in certain applications and settings. Companies document their business methods in many ways, whether in business plans, 1.26 training videos, instruction manuals, diagrams, or other written or recorded works. The law is clear that such documents are entitled to copyright protection. To guard against competitors’ copying one’s business methods, a company may wish to protect against copying or distribution of those documents that may most easily inform or coach another on how to carry out the business method. Copyright can thus supplement trade secret protection, in protecting against imitation by others, to the extent that the methods are not evident in a rights holder’s public activities. (5) The treatment of computer programs Related to the question of business method patents is that of software patents. Computer 1.27 programs create methods for a wide variety of business activities, from calculating investment strategies to controlling manufacturing machinery. The Bilski decision suggests that certain computer programs that affect machines should enjoy protection under the patent laws. The question is more difficult, however, with computer programs that simply engage in calculations and whose output is information rather than a physical effect on a machine or another object, because Bilski made clear that a patentable process must involve something more than an idea.31 Computer programs are, by their very nature, functional products: they consist of a series of 1.28 instructions to machines (ie, computers) to carry out a variety of functions that, in turn, stimulate other functions of greater and greater generality and complexity. Mapped to the terrain of patent and copyright law, these aspects place them on the patent side of the field. Yet computer programs consist of language and symbols, originally but not exclusively emanating from human thought and ingenuity, and reflecting a certain type of expression. For that reason, computer programs (originally written on paper, then converted to machinereadable media such as punch cards, paper tape, and eventually electronic tapes, disks, and chips) obtained registration under the 1909 US Copyright Act as ‘books’. The 1976 Copyright Act provided for computer software within the definition of ‘literary works’, even though that classification seems counterintuitive, ‘Literary works’ are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied (emphasis added).32 28

Art 52, European Patent Convention. Art 52(3). 30 See last visited 28 February 2012, for collected cases of the Boards of Appeal under the European Patent Convention. 31 561 US _____ at _____, 130 S Ct 3218 at 3231. 32 17 USC § 101. 29

7

Chapter 1: Navigating the Interface between Utility Patents and Copyrights 1.29 In 1980, the US Congress amended the Copyright Act to make explicit its application to

computer programs, which it defined as ‘a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result’,33 and it also limited enforcement of copyright in computer programs against reproductions by owners of copies of programs in the course of their utilization or archival.34 Court decisions from the early 1980s recognized copyrightability of computer programs expressed in object, or machine, code.35 1.30 The conception of computer programs as a form of protectable expression finds analogous

support in US court decisions ruling that they deserve the First Amendment guarantees of freedom of expression.36 Not only is a computer program a literary work, but it also constitutes Constitutionally-protected expression. 1.31 In Europe, the Software Copyright Directive, following TRIPS, recognizes software as a

‘literary work’,37 suggesting that its primary mode of protection is under copyright law and not patent law.38 Indeed, the same article of the European Patent Convention that restricts business method patents also restricts patentability of ‘programs for computers’ in member jurisdictions.39 An applicant may obtain a patent by showing that the invention is a technical solution to a technical problem, but software to implement a business method, for example, will be unpatentable.40 1.32 While computer programs often have functional aspects in their operations of machines,

they also may have artistic and graphic aspects in how they appear to computer users, including to remote users accessing software over the Web. A lively question has been to what extent software developers can assert copyright not merely over the code they write but over the images generated in their user interfaces when a user operates the software. One early trial court decision upheld protection for software user interfaces in Lotus Development Corp v Paperback Software Int’l.41 An appellate court in a different case arising from the same judge as the first case held otherwise in Lotus Development Corp v Borland Int’l, Inc, limiting protection

33

Pub L 96-517 § 10(a) (12 December 1980) (amending 17 USC § 101). Pub L 96-517 § 10(b) (12 December 1980) (amending 17 USC § 117). 35 eg, Apple Computer, Inc v Franklin Computer Corp, 714 F.2d 1240 (3rd Cir 1983); Williams Electronics, Inc v Artic International, Inc, 685 F.2d 870 (3rd Cir 1982). 36 Junger v Daley, 209 F 3d 481 (6th Cir 2000); Bernstein v United States Dep’t of Justice, 176 F 3d 1132 (9th Cir 1997) (withdrawn upon grant of rehearing, and case eventually dismissed as moot when defendant represented it would not enforce challenged regulation). 37 The concept of ‘literary work’ comes from the Berne Convention, which defines ‘literary and artistic works’ jointly, without distinguishing the two, as follows, The expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science. 38 Directive 2009/24/EC. 39 Article 52. 40 ‘Patents for software?’ last visited 28 February 2012. 41 740 F. Supp. 37 (D. Mass. 1990). 34

8

B. Conceptual Interplays between Utility Patent and Copyright Law for a user interface on the ground that Lotus was trying to enforce rights in a method of operation reflected in its menus and command hierarchy.42 To the extent computer programs generate displays and sounds during their use, they may 1.33 qualify as audiovisual works and gain copyright protection on that basis. This was apparent early in the context of computer programs that generated audiovisual games: copyright holders had registered copyrights not only in their computer programs but also in the audiovisual works comprising their displays.43 In Europe, a recent case distinguished between underlying computer programs and user 1.34 interfaces, finding user interfaces not protectable under the law relating to computer programs but eligible for protection under ordinary copyright law.44 This recognizes a distinction evident in US law but with a different approach since US copyright law does not distinguish between software copyright and ordinary copyright in the way that European directives do.45 One important limitation on the copyright enforcement of functional computer programs 1.35 (including games) in the US is the ‘idea/expression dichotomy’ and its related concept, the ‘merger doctrine.’ The first distinguishes between unprotectable ideas and protectable expression. The second creates a rule that, if an idea and its expression are tightly connected, with few practical ways to express an idea, they ‘merge’ and neither enjoys protection.46 In cases involving computer software, largely influenced by the seminal decision in Computer Associates Int’l, Inc v Altai, Inc,47 courts take those limitations into account by analysing the software to ‘filter’ out the expressions that are so closely linked to ideas, processes, functions, and the like. Only after the filtering takes place can the court evaluate the substantial similarity of the programs to determine what protectable expression finds its counterpart in the defendant’s program. In this fashion courts have developed modes of analysis to protect the boundaries and distinct interests of copyright and patent law. Based on a review of the laws and frameworks for patent and copyright protection, the 1.36 following highlights emerge: • Jurisdictions do not generally exclude dual protection of intellectual creation under patent and copyright law, but there are significant tensions between the different domains as applied to the same intellectual products. • Statutes, directives, and international agreements try to distinguish between matters fit for patent protection and those fit for copyright protection, but the distinctions are not necessarily clear. • The intellectual products that most fully implicate both patent and copyright interests, namely computer software to implement novel business methods, are the most controversial and are relatively unstable in terms of assured recognition and enforceability.

42 49 F.3d 807 (1st Cir 1995), aff’d 516 US 233 (1996). The Supreme Court granted review but affirmed without opinion by operation of law when the Court divided evenly (one justice recusing himself ). 43 eg, Williams Electronics, Inc, v Artic International, Inc, 685 F 2d 870 (3rd Cir 1982). 44 C-393/09, Bezpečnostní softwarová asociace—Svaz softwarové ochrany. 45 As the court pointed out in C-393/09, originality is not a requirement for copyright protection of computer programs. 46 See, eg, BUC Int’l Corp v Int’l Yacht Council Ltd., 489 F.3d 1129 (11th Cir 2007). 47 982 F 2d 693 (9th Cir 1992).

9

Chapter 1: Navigating the Interface between Utility Patents and Copyrights

C. Practical Considerations in Choice of Protection and Enforcement 1.37 The hypothetical scenario that began this chapter illustrates how a variety of activities and

results of the company may yield both patent and copyright protection. There may be copyright in all computer code underlying the business, the user interface designs, and the unpublished business plans generated internally by the company. Patents may be available for business models for the new type of business and in its ways of interacting with customers; and patents may be available for groundbreaking software design. There are also potential intellectual property weaknesses in the hypothetical scenario: who owns the copyright in code that the graduate student wrote? Has the company adequately secured ownership rights in its copyrights and patents? Do the patent applications seek coverage merely of abstract ideas? Did premature disclosure of the invention kill the prospects of a patent? 1.38 The following are some industries and companies that may typically seek both patent

protection and copyright protection for their products or services: computer software companies, computer hardware companies (firmware protection), integrated computer companies, consumer electronics companies (ie, iPad), financial services companies and investment companies, business consulting companies, videogame companies, social networking companies, online services (such as online retailers and entertainment companies), manufacturers of electronic products that depend on authentication (garage door openers, printers), and training providers. 1.39 Against that backdrop, numerous factors will affect a decision to rely upon patent or copyright

protection, or both, in protecting a company’s business against rivals or unauthorized followers. Apart from the differences in the scope and object of protection, there are numerous differences in the practical aspects of enforcement, ranging from venue to defences to remedies. 1.40 Timing of Protection US copyright arises instantly upon the creation of a qualifying work,

and it lasts for a very long time: generally for the life of the author plus 70 years (in the case of certain works, 95 years from the date of publication or 120 years from the date of creation). While a copyright registration is necessary for litigation over US works, it is not usually a significant impediment. Copyright registration applications do not undergo significant substantive examination, they are inexpensive and easy, and they can result in registration very quickly (within a month) if the applicant demonstrates a need and pays an extra fee. 1.41 By contrast, US patents require formal issuance of the patent in order for protection to start,

and they last a much shorter period, generally 20 years from the date of the application. They undergo serious examination, which may involve significant attorney fees, and they typically require more than a year to mature. 1.42 In addition, a delay in seeking a copyright registration may affect the availability of statutory

damages, but a delay in filing a patent application may be fatal: US law bars patents where the invention was the subject of a disclosure, sale, or offer for sale more than one year before the patent application. Because of TRIPS provisions, patent terms in other countries tend to match the US term, 20 years from the application date (with extensions possible for certain pharmaceutical patents). Thus, in terms of timing, copyright law is stronger for the rights holder. 10

C. Practical Considerations in Choice of Protection and Enforcement In other countries, copyright also generally arises automatically, without the requirement of 1.43 any formality, as in the US. But unlike the United States, other countries lack an obligation to register a copyright in order to enforce the copyright in court. As a consequence, unlike the US, other countries generally do not impose a penalty or forfeiture of any remedies based upon a failure to register the copyright. Copyright terms vary, frequently for either life of the author plus 50 years under the influence of TRIPS or life of the author plus 70 years in harmony with EU legislation. Some countries have extended the term even further, however: Mexico, for example, now has a copyright term of life of the author plus 100 years. Ownership of Rights In the US, patents belong to inventors, who are natural persons 1.44 responsible for conceiving the invention, whether or not the inventor reduced the invention to practice.48 Inventors who are employees of a business typically assign their patent applications to the employer, as such an assignment is necessary to perfect ownership in the employer.49 In most other countries, companies may own patents at the outset, and either individuals or 1.45 companies may apply for patents. In the United Kingdom, for example, a provision of the Patent Act defines when an employer or employee owns the right to patent an invention: if an employee makes an invention in the course of normal duties, or pursuant to work specifically assigned to the employee, or involving a special obligation to further the employer’s interest, the employer is the owner. In other circumstances the employee may be the owner.50 Under US copyright law, the copyright ‘author’ may be an individual or a business entity. 1.46 In the case of a person creating a work alone, that person is usually the author. When a person works for a business, authorship depends on the relationship of the parties and often hinges on the definition of ‘work made for hire’ in the Copyright Act.51 When a person creates a work as an employee of a business, in the normal conduct and scope of the person’s employment, the work is a ‘work made for hire.’ The consequence is that the employer is the author and the initial owner of the copyright. Where a person is an independent contractor and creates a work upon a commission or 1.47 special order by another, the work may or may not be a ‘work made for hire.’ On this point numerous persons, including experienced lawyers, often make mistakes: to qualify as a work made for hire in this context, (a) the work must be specially ordered or commissioned, (b) there must be a written ‘work made for hire’ agreement, and (c) the work must fall into one of the several specific categories of works eligible for ‘work made for hire’ treatment by agreement.52 If an enterprise wishes to acquire a copyright from an individual non-employee author, and 1.48 the work does not qualify as the enterprise’s ‘work made for hire’, then the enterprise may

48

Manual of Patent Examining Procedure § 2137.01. Employers, without being inventors or patent owners, may have rights to practise an invention by an employee without fear of liability for infringement under the common-law doctrine of ‘shop right’, which grants the employer an implied royalty-free, non-exclusive, and non-transferable licence. 50 Patent Act 1977, s 39(1). 51 17 USC § 101. 52 The eligible works are: (a) a contribution to a collective work, (b) a part of a motion picture or other audiovisual work, (c) a translation, (d) a supplementary work, (e) a compilation, (f ) an instructional text, (g) a test, (h) answer material for a test, and (i) an atlas. 17 USC § 101. 49

11

Chapter 1: Navigating the Interface between Utility Patents and Copyrights obtain an assignment from the author. But US law creates a long-term trap with respect to assigned copyright rights. Except in cases of works made for hire, an assignor (or licensor) of a copyright has an absolute, non-waivable right to terminate the transfer, recapture the copyright, and renegotiate a new assignment or license. This termination power generally arises 35 years after the grant or a publication pursuant to a grant; there are detailed requirements and formalities for its exercise.53 1.49 The US treatment of these matters is idiosyncratic. In many other countries, the creator of a

copyrighted work is generally considered the author even if the first copyright owner is the author’s employer. The US ‘work made for hire’ concept that makes the employer both author and owner usually does not apply elsewhere. Generally, other countries give employers the copyright in works that employees create; cases of independent contractors may turn upon the facts and reasonable expectations of the parties. 1.50 Required Disclosures Copyright registration, which is necessary to enforce US works,

normally requires the deposit of a copyrighted work. In the case of copyrighted works that may contain trade secrets, however, such as source code of a copyright program, the law allows protection of the trade secret by a partial deposit with redactions.54 Copyright applications are public documents, but deposits need not be public, and indeed some copyrighted works are unpublished. Copies of copyright deposits may be obtained from the Copyright Office upon a showing of an appropriate need. 1.51 Because other countries do not generally require registration, or even provide a facility for

registration, there is generally no deposit requirement. An exception exists in those countries that may demand that copyright owners furnish copies of their works for ‘legal deposit libraries’ for the public’s benefit. In the UK, for example, one copy of every print publication must go to the British Library, and five other academic libraries may request copies within one year of publication.55 1.52 A patent applicant must fully disclose the invention to the point that one skilled in the art

can apply the teaching to carry out the claimed invention; this ‘enablement’ requirement also ensures that the invention has ‘utility’ and that mere ideas do not gain patent protection. The applicant must describe a complete embodiment of the invention and the best mode of practising the invention.56 Patent applications are confidential until they are published, generally 18 months from the filing date, subject to certain exceptions.57 1.53 An issued patent is a public document, as is the file history that details the prior art that the

examiner reviewed, the applicant’s amendments and arguments, and the entire prosecution process: the disclosure is part of the bargain that the inventor enters into in order to secure the monopoly over the invention. For software inventions in particular, the ‘enablement’ requirement often means that the applicant must disclose the specific source code used to 53

17 USC §203. In fact this lack of a deposit of a complete work can lead to some ambiguity or gamesmanship relating to whether the work in the registration is the same as the work at issue in litigation. 55 Legal Deposit Libraries Act 2003. Beyond the legal requirement, there is a code of practice for other forms of publication, such as microform and off-line electronic media; computer programs and computer games are subject neither to a legal requirement or a code of practice. See last visited 28 February 2012. 56 35 USC § 112; 37 CFR § 1.71; MPEP 608.01(h). 57 35 USC § 122. 54

12

C. Practical Considerations in Choice of Protection and Enforcement implement the invention, and a patent’s scope can sometimes be limited to the source code disclosure and its equivalents. Thus a choice of patent protection entails a greater degree of disclosure than copyright 1.54 protection, and it may be more difficult for a defendant to verify the scope of a copyright than the scope of a patent. This is particularly so in software cases where a defendant’s attorney may not be able to inspect source code of a plaintiff’s work. Given that copyright prevents only copying of the work, the lack of access to the work itself may not pose any significant disadvantage to a third party who comes up with similar software. On the other hand, if the software is patented, any person who uses any part of the claim in his or her follow-on invention may be prone to an infringement action. Scope of Rights US copyright law58 gives a copyright holder control over five activities: 1.55 (1) the reproduction of a copyrighted work in copies or phonorecords (which are defined as material objects); (2) preparation of derivative works based upon the original work; (3) distribution of copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership or by rental, lease, or lending; (4) public performance of the copyrighted work;59 and (5) public display of the copyrighted work. In the European Union, copyright law of various states harmonized pursuant to the Copy- 1.56 right Directive60 generally protects the rights of (1) reproduction, (2) communication to the public, and (3) distribution of copies to the public. Another directive provides for the protection of the rights of (4) rental and lending, (5) fixation, and (6) broadcasting.61 US patent law gives the patent holder control over making (or having made), using, offering 1.57 to sell, selling, or importing a patented invention. Note that the control over ‘use’ makes patent protection broader than copyright protection, which has no such control. One could traditionally use a copyrighted work—by reading a book, watching a movie or television program, listening to a concert, or looking at a painting—without implicating copyright law. Nevertheless, the advent of digital computing and communication technologies has 1.58 drastically changed that copyright environment because those technologies fundamentally depend on copying: opening an e-book may involve loading the data constituting that e-book into a devices memory, which may mean moving the data onto a RAM chip temporarily. One Court Of Appeals has found such RAM loading to constitute making an infringing copy.62 Another US Court Of Appeals found a 1.2 second buffer not to constitute a reproduction that implicated a copyright holder’s rights.63 Moreover, new ‘paracopyright’ laws, while not directly increasing the scope of copyright 1.59 rights, make illegal the use of certain devices and technologies that merely give ‘access’ to copyrighted works even if their users do not engage in any of the controlled activities.64 As a 58

17 USC § 106. This summary compresses two different subsections of the relevant statute; the scope of the public performance right varies according to the type of work. See 17 USC § 106 (4), (6). 60 Directive 2001/29/EC. 61 Directive 2006/115/EC. 62 MAI Systems Corp v Peak Computer, Inc, 991 F 2d 511 (9th Cir 1993), legislatively overruled in part by 17 USC § 117(c). 63 Cartoon Network, LP, LLLP v CSC Holdings, Inc, 536 F.3d 121 (2nd Cir 2008). 64 These include the Audio Home Recording Act, 17 USC § 1001 et seq and the Digital Millennium Copyright Act, 17 USC § 1201. 59

13

Chapter 1: Navigating the Interface between Utility Patents and Copyrights consequence, the effective scope of copyright law is becoming broader and more resembles that of patent law in the sense that copyright law regulates ‘uses’ of copyrighted works as the Patent Act regulates ‘uses’ of inventions. This is true even though the Patent Act explicitly governs use whereas the Copyright Act does not on its face limit use but merely limits five specific categories of activities. The rights of a patent holder in other countries are similar to those of a US patent holder. For example, the rights of a patent holder in the United Kingdom (generally speaking) are to control the making of, disposal of, offer to dispose of, use of, importing of, or keeping of a product embodying a patented invention or a product obtained by the use of a patented process, and to control the using or offering for use of a process practising the invention.65 1.60 In the US, both patent and copyright infringement are considered ‘strict liability’ causes of

action.66 Nevertheless, in cases involving online services in particular, courts in copyright cases have interpreted the law as requiring ‘volitional’ conduct by a defendant to justify liability.67 This reflects a realization that online service providers with massive source and user bases may be helpless to avoid activities that may implicate copyright law owing to the automated nature of their functions and services. The courts take for granted the utility and benefit of the online services and refrain from imposing impossible obligations and unsupportable liabilities. 1.61 Copyright law and patent law differ substantially with respect to independent creation by a

defendant. Copyright law protects ‘original’ creations,68 but patent law protects ‘novel’ and ‘non obvious’ inventions. In this context ‘novel’ means never known before; ‘original’ means ‘not copied’. If three persons independently arrive at the same technological breakthrough, only one is ‘novel’. If three persons independently create the same expression, without any access to or knowledge of each other, all three products are ‘original ’. 1.62 In this respect patent law has a much more forceful preclusive effect on rivals: an authenti-

cally independent breakthrough may not be available to a company if another beat it to the punch. The only solution is to design around the patent. In copyright law, proof that a second developer had no access to the first copyrighted work will protect the second developer. In cases where there has been some access and a controversy over similarity has arisen, a defendant may adopt a ‘clean room’ method of isolating a new development crew so that it has no access to the first work, giving it specifications for product performance and parameters for its use, and soliciting a fresh effort that is demonstrably independent. In evaluating patent and copyright protection for certain intellectual products, a company may wish to consider the relative ease and cost to a potential defendant of a patent workaround or a copyright clean-room replacement.

65

Patents Act 1977, s 60(1). They are strict liability causes of action in that neither knowledge nor intent is an element of direct infringement (they may be elements of secondary liability). Thus, for example, a songwriter may be liable for infringing upon a song he or she had previously heard based on unconscious plagiarism. See, eg, Bright Tunes Music Corp v Harrisongs Music, Ltd, 420 F Supp. 177 (SDNY 1976)(George Harrison’s ‘My Sweet Lord’ unconsciously plagiarized ‘He’s So Fine’). 67 Costar Group Inc v Loopnet, Inc, 373 F 3d 544, 554 (4th Cir 2004); Religious Tech Ctr v Netcom On-line Commc’n Servs, Inc, 907 F Supp 1361 (ND Cal 1995). 68 European copyright law has an idiosyncratic exception to this requirement with respect to copyright in computer programs. Cf Directive 91/250/EEC (protection of computer programs) with Directive 2001/29/ EC (copyright generally); see C-393/09, Bezpečnostní softwarová asociace—Svaz softwarové ochrany. 66

14

C. Practical Considerations in Choice of Protection and Enforcement In addition, US copyright law has a robust doctrine of ‘fair use’ that limits the scope 1.63 of a copyright.69 The Copyright Act’s fair use statute identifies a non-exhaustive list of examples of fair use and provides four non-exclusive factors for courts to consider in determining fair use: Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include— (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.70

Courts apply the factors flexibly and on a case-by-case basis with copyright’s ultimate 1.64 purpose in mind: the promotion of science and the useful arts.71 Some decisions in the US have expressly found reverse engineering, and copies made in the course of reverse engineering, to be fair use.72 In Europe and other jurisdictions, the law of fair use is not as general (or vague) and flexible. 1.65 Instead, the law provides enumerated exceptions or limitations that are highly detailed. The European Directive,73 for example, sets forth 15 specific exceptions and limitations that might roughly correspond to American fair use; in the UK the Copyright, Designs, and Patents Act 1988 sets forth over 50 specific exceptions and limitations.74 Express provisions in the UK Act immunize reverse engineering. While the European Copyright Directive does not authorize reverse engineering, a different directive on the legal protection of computer programs allows justification for reverse engineering.75 Patent law in the US and other jurisdictions does not have an equivalent limiting doctrine 1.66 of fair use. Only very narrow circumstances defined by statute, such as preclinical testing of pharmaceuticals,76 are outside the scope of patent enforcement. Some jurisdictions use additional restrictions on patentability, such as prohibiting patent protection for methods of medical treatment in lieu of a fair use doctrine as a defence.

69 The rights of a copyright holder under section 106 of the Copyright Act, 17 USC. § 106 are specifically ‘subject to sections 107 through 122’ of the Act. Section 107 states: ‘Notwithstanding the provisions of section[ ] 106, the fair use of a copyrighted work . . . is not an infringement of copyright.’ 70 17 USC. § 107. 71 Campbell v Acuff-Rose Music, Inc, 510 US 569, 577–78 (1994). 72 Sony Computer Entertainment, Inc v Connectix Corp, 203 F 3d 596 (9th Cir 2000); Sega Enterprises Ltd. v Accolade, Inc, 977 F 2d 1510 (9th Cir 1992). 73 Directive 2001/29/EC, Article V. 74 Copyright, Designs, and Patents Act 1988, s 28–76. 75 Directive 2009/24/EC. 76 35 USC § 271(e)(1).

15

Chapter 1: Navigating the Interface between Utility Patents and Copyrights 1.67 Thus, in the US, patent holders are in a much stronger position than copyright holders in

enforcing rights where there may be independent creation, automated activity, or strong innovation-promoting uses by a defendant. Outside the US, stronger copyright protection and specifically enumerated limitations in lieu of a flexible fair use doctrine make copyright law more useful by comparison. 1.68 Secondary Liability In the US, patent and copyright law both have secondary liability

regimes that reflect a striking symmetry of effect with a striking asymmetry of means. Patent statutes expressly define contributory patent infringement77 and active inducement of infringement78. On the other hand, the Copyright Act has no analogues to those statutes. Nevertheless, the US Supreme Court has twice turned to the Patent Act to fashion, judicially, a doctrine of contributory infringement and of active inducement of infringement.79 Generally speaking, the doctrines in both fields (a) impose liability on persons who furnish a product knowing that product to be specially adapted to infringement and lacking a substantial non-infringing use; and (b) impose liability for actively inducing infringement. 1.69 US copyright law has also developed a separate, specific judicial doctrine of ‘vicarious liability’.

The doctrine is a specific form of liability, distinct from the generic notion of ‘vicarious liability’, and it finds no counterpart in US patent law. As the Second Circuit stated in Shapiro, Bernstein & Co v H.L. Green Co, Many of the elements which have given rise to the doctrine of respondeat superior . . . may also be evident in factual settings other than that of a technical employer–employee relationship. When the right and ability to supervise coalesce with an obvious and direct financial interest in the exploitation of copyrighted materials—even in the absence of actual knowledge that the copyright monopoly is being impaired . . . the purposes of copyright law may be best effectuated by the imposition of liability upon the beneficiary of that exploitation.80 1.70 Later cases have expanded that description, primarily by substituting (in Fonovisa, Inc v

Cherry Auction, Inc 81) ‘direct financial benefit’ for ‘an obvious and direct financial interest’, and then finding (in A&M Records, Inc, v Napster, Inc 82) a direct financial benefit because of the investments a company had attracted despite an absence of revenues. 1.71 Other countries have wide variation in the treatment of secondary liability. The UK expressly

provides for secondary liability for copyright infringement;83 Australia treats it as a form of direct infringement, by violation of the right of a copyright holder to authorize certain actions with respect to copyrighted works.84

77

35 USC § 271(c). 35 USC § 271(b). 79 Sony Corp of Am v Universal City Studios, Inc, 464 US 417 (1984) (contributory infringement); Metro-Goldwyn-Mayer Studios, Inc, v Grokster Ltd, 545 US 913 (2005). Some courts following Grokster have evidenced uncertainty as to whether ‘inducement’ is a separate branch of secondary liability or instead is a form of contributory infringement. The Supreme Court in Grokster made clear several times that ‘inducement’ was the same as contributory infringement. ‘One infringes contributorily by intentionally inducing or encouraging direct infringement. . .’ Grokster, 545 US at 930. 80 316 F 2d 304, 307 (2nd Cir 1963). 81 76 F 3d 259, 262 (9th Cir 1996). 82 239 F 3d 1004, 1023 (9th Cir 2001). 83 Copyright, Designs and Patents Act 1988, ss 22–26. 84 Copyright Act 1968, s 36(1). 78

16

C. Practical Considerations in Choice of Protection and Enforcement Remedies In this area, patent and copyright laws in the US are extraordinarily diverse. 1.72 Selection of types of protection and enforcement will normally place these considerations at the forefront of an intellectual property strategy. In the area of injunctions, a recent US case law has put patent and copyright law on a 1.73 relatively even footing. The landmark US Supreme Court decision in eBay Inc v MercExchange, LLC 85 ruled that the provision in the patent statute for injunctive relief, which states that a court ‘may grant injunctions in accordance with the principles of equity’ in cases of infringement,86 requires courts to evaluate the propriety of injunctions according to traditional equitable criteria. The Court rejected the general rule that patent holders are presumptively entitled to injunctions upon a finding of infringement. The Court explicitly drew a parallel with the treatment of injunctions under the Copyright Act and cited its earlier copyright cases rejecting the suggestion that an injunction automatically follows whenever there is a finding of infringement. As a consequence, one may infer that the standard for injunctive relief in US patent and copyright cases will be comparable for at least the near future. In the area of damages, copyright law and patent law are quite different in the US. A primary 1.74 difference is the availability of ‘statutory damages’ in copyright cases at the election of the copyright holder instead of actual damages from infringement. Statutory damages normally range from $750 to $30,000 per work infringed, with all parts of a compilation or derivative work being counted as one work. In cases of innocent infringement, statutory damages may fall as low as $200 per work infringed; in cases of wilful infringement, statutory damages may reach $150,000 per work infringed.87 This has led to some extraordinary damages claims in copyright litigation, including a 1.75 damage claim potentially in the trillions of dollars—without any proof of actual harm to the copyright owner—in the LimeWire litigation.88 Indeed, in one prominent case record labels have obtained verdicts against an individual—a single mother of modest means—of over $1 million for the download of 24 songs from the internet.89 Copyright holders may seek actual damages or statutory damages at their election as 1.76 discussed above. They may also obtain additional profits of the infringer not included in the actual damages. In establishing profits, the copyright holder need only prove a defendant’s gross revenues; the alleged infringer has to prove deductible expenses and an allocation of profits to factors other than the copyrighted work.90 A prevailing party in a copyright case (plaintiff or defendant) may recover attorney’s fees in the court’s discretion, a departure from the normal American rule, with the standard requiring something more than mere victory but less than bad faith or an ‘exceptional case’.91

85

547 US 388 (2006). 35 USC § 283. 87 17 USC § 504(c). 88 Arista Records LLC v Lime Group LLC, case no. 06 CV 5936 (KMW), slip op. at 6 (SDNY 10 March 2011) (rejecting claim that damages could reach trillions of dollars). 89 Capitol Records, Inc, v Thomas-Rasset, case no. 06-1497 (MJD/LIB) slip op. (Dkt 457) (D Minn 22 July 2011)(granting remittitur to $54,000 after jury award, at third trial, of $1.5 million; second trial had resulted in verdict of $1.92 million, leading to an earlier remittitur). 90 17 USC § 504. 91 17 USC § 505. 86

17

Chapter 1: Navigating the Interface between Utility Patents and Copyrights 1.77 Patent holders may seek damages adequate to compensate for the infringement but no less

than a reasonable royalty; the court has the power to increase damages up to three times the amount.92 A court may, in lieu of an injunction, order payment of post-judgment ‘running’ royalties as an alternative.93 A court may award attorney’s fees to a prevailing party in patent litigation, but only in an ‘exceptional case’.94 1.78 Both patent law and copyright law provide for forfeitures of certain damages by plaintiffs.

A patent holder who fails to use a patent notice cannot recover any pre-litigation damages from an infringer who received no notification of infringement.95 A copyright holder forfeits the ability to recover statutory damages and attorney’s fees if (a) infringement of an unpublished work began before the effective date of the copyright registration or (b) in the case of a published work the copyright holder failed to register the copyright by the earlier of (i) three months after first publication or (ii) commencement of the infringement.96 1.79 Thus, in the US, copyright holders may have a substantial advantage over patent holders in

seeking damages and attorney’s fees; they are at slightly greater risk of paying attorney’s fees if they lose the litigation. 1.80 Other jurisdictions generally provide consistent remedies for patent and copyright infringe-

ment, including actual damages or an accounting of a defendant’s profits and injunctions.97 In strong cases, additional damages are available and, in very strong cases, seizure of infringing goods may be available. In some cases an innocent infringer is liable only for an accounting of profits.98 The TRIPS Agreement99 promotes recovery of damages and recovery of expenses, including attorney’s fees, in intellectual property infringement cases. 1.81 Litigation Forums In the US, the use of a patent or copyright strategy has only a relatively

small effect on the available forums for litigation. Both patent law and copyright law100 are exclusively federal, and only federal courts have the power to adjudicate infringement actions.101 Infringement lawsuits begin in federal district courts, which are courts of general federal jurisdiction.102 Those courts have the power to decide all issues in the case, specifically both validity and infringement of the rights. 1.82 There is a slight difference in the rules affecting which geographic district court may handle

patent and copyright litigation. A specific patent venue statute provides that an infringement case may be brought wherever the defendant resides or where the defendant has committed acts of infringement and has a regular and established place of business.103 (That statute does

92

35 USC. § 284. See, eg, Paice LLC v Toyota Motor Corp, 504 F 3d 1293 (Fed Cir 2007). 94 35 USC § 285. The standard is generally ‘objective baselessness’ of a plaintiff’s claim or wilful infringement (including objective recklessness) by a defendant. iLOR, LLC v Google, Inc, 631 F 3d 1372 (Fed Cir 2011). 95 35 USC § 287. 96 17 USC § 412. 97 Canada and Israel provide statutory damages for copyright infringement, like the United States. Section 38.1, [Canada] Copyright Act; Section 56, [Israel] Copyright Act 2007. 98 See, eg, Section 115, [Australia] Copyright Act 115. 99 Arts 44–46. 100 With the exception of pre-1972 sound recordings, which are governed by state law and the common law, as noted above. 101 28 USC § 1338(a). 102 28 USC § 1338(a). 103 28 USC § 1400(b). 93

18

C. Practical Considerations in Choice of Protection and Enforcement not apply to declaratory relief actions, which fall under the normal federal venue statute.) Cases arising under the Copyright Act (including declaratory relief actions) have proper venue wherever the defendant or his agent resides or may be found.104 In both cases, a different statute defines where a corporate defendant ‘resides’ as where it is subject to personal jurisdiction,105 which usually gives a plaintiff a very wide choice of districts. In infringement cases against individual defendants, however, a copyright holder may have a much wider choice than a patent holder. While copyright cases normally have appellate review in the various regional circuits of the 1.83 US Court of Appeals, patent infringement appeals go only to a specialized court, the US Court of Appeals for the Federal Circuit.106 (To the extent that copyright cases also involve patents, those cases follow the path of patent cases to the Federal Circuit.) The US Supreme Court exercises discretionary review over all cases from all the circuits of the US Court of Appeals. In addition to using these courts for infringement litigation, both patent and copyright 1.84 holders may initiate proceedings before the International Trade Commission (ITC) in Washington, DC to exclude infringing products from the US market pursuant to the Tariff Act s 337.107 Damages are not available in ITC proceedings, but its powers are strong against importers affecting a domestic industry (even importers who are not parties to the case) and its proceedings are very fast compared to normal court litigation. The importance of its exclusion orders and cease-and-desist orders has grown after the Supreme Court’s eBay decision, which eliminated a general rule of injunctive relief after a finding of patent infringement: that ruling has had no effect on Section 337 exclusion orders. While ITC proceedings are available to enforce rights in all types of federal intellectual property, patent owners take advantage of them far more than copyright or trademark holders. In other countries, patent and copyright cases share the same courts as well, allowing dual- 1.85 purpose cases to proceed in a single court. Jurisdictions with specialized intellectual property courts, such as the United Kingdom, Mexico, and Thailand, often handle both patent and copyright matters. On the other hand, in some countries such as Germany and some Eastern European countries, some courts cannot resolve an entire patent dispute, because disputes must be divided into different courts for adjudication of infringement and invalidity claims. Government Enforcement On this front, US patent and copyright law differ dramatically, 1.86 and copyright holders have an edge. While US Customs will exclude patent-infringing products from importation based upon an exclusion order of the ITC, it will not otherwise assist patent holders or make its own determination as to whether imported products infringe upon US patents. By contrast, US Customs will investigate and evaluate imports for possible copyright infringement, based upon the mere registration of a copyright with US Customs and Border Protection and upon a request of a copyright holder.108

104 105 106 107 108

28 USC § 1400(a). 28 USC § 1391(c). 28 USC § 1295. 19 USC § 1337. See last visited 28 February 2012.

19

Chapter 1: Navigating the Interface between Utility Patents and Copyrights 1.87 Many countries provide Customs enforcement of intellectual property rights. Some countries

will enforce patent rights more vigorously via Customs inspections. The European Union, for example, allows customs officers to detain goods for suspected patent infringements, unlike US Customs, pending a court determination of infringement.109 1.88 There is no criminal enforcement of US patent rights.110 By contrast, the US Copyright Act

specifically includes criminal offences relating both to copyright infringement and to the ‘paracopyright’ restrictions on design of products that may interfere with copyright protection and on alterations to copyright management information.111 Criminal enforcement of copyright law has grown by leaps and bounds in recent years, as powerful industry groups have lobbied for more governmental enforcement efforts and more governmental resources to supplement their own civil litigation efforts. As an example, the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (the PRO-IP Act)112 has promoted the enforcement, investigation, and prosecution of intellectual property crimes, mostly involving infringement of commercially produced sound recordings and motion pictures and production of knock-off consumer goods. 1.89 In addition, while technically not a copyright law, the Computer Fraud and Abuse Act estab-

lishes an offence of accessing a protected computer or network beyond one’s authorization: to the extent one has gained access to a network or computer for the purpose of copying material (including both copyrighted material and trade secrets) available on the network, a copyright holder may seek governmental prosecution of the offender as well.113 1.90 A number of countries provide for criminal enforcement of copyright laws. Criminal

enforcement of patent laws is less common; France and Germany are jurisdictions where it is available.114 In many jurisdictions courts have the power to use criminal sanctions against parties that fail to respect civil injunctions by the courts, including injunctions against patent or copyright infringement.

D. Conclusion 1.91 The variation in treatment of patents and copyrights within some jurisdictions (especially

the US), and among jurisdictions, offers practitioners a wide choice of strategies for protection and enforcement of rights and a wide choice of remedies. Here are the principal factors for consideration:

109

Regulation 1383/2003. In fact, two statutes relating to patents criminalize acts only of patent claimants, not infringers: forgery of letters patent and false patent marking are crimes under 18 USC. § 497 and 35 USC § 292. See also last visited 28 February 2012. 111 17 USC. § 506 provides for criminal offences pertaining to infringement; 17 USC § 1204 provides for criminal offenses and penalties relating to violation of the anticircumvention and copyright management information provisions of the Digital Millennium Copyright Act. 112 Pub L 110-403. 113 One recent case involved the controversial arrest of an executive for an alleged violation of the Computer Fraud and Abuse Act during his deposition in a related civil case. 114 Code de la propriété industrielle—art. L615-14: three years’ imprisonment and 300,000 euros fine for knowing patent infringement; Urheberrecchtsgesetz, art 106: three years’ imprisonment or a fine. 110

20

D. Conclusion • Superior timing considerations make copyright protection important when available: it is instantly available, is instantly or quickly enforceable, and endures decades longer than patent protection. • Copyright law may offer a plaintiff with low or unprovable actual damages an opportunity to secure windfall statutory damages in the US. • Copyright law offers better opportunities to promote criminal enforcement against an adversary. • Copyright law offers protection with less disclosure by the rights holder. • Assuming the validity of a patent, patent protection gives a much broader preclusive effect than copyright law by displacing independent and not merely derivative efforts of others. • Different jurisdictions have different policy-based restraints upon the enforcement of patent and copyright rights, which one must study carefully before bringing litigation. • Fair use and fair-dealing limitations are very different between the US and other countries, and are likely more favourable to the defence in the US; other countries, however, have more vigorous policy limitations upon patent rights. • Secondary liability remains uneven around the globe; the US has the most developed jurisprudence and attractive opportunities to broaden litigation targets. Opportunities to combine patent and copyright claims in their boundary zone are uncertain, and both the US and other jurisdictions offer different sets of advantages for aggressive enforcement.

21

This page intentionally left blank

2 THE OVERLAP BETWEEN PATENT AND DESIGN PROTECTION David Musker, R G C Jenkins & Co

A. Hypothetical—the Circular Beach Towel B. Do Overlaps Matter? (1) (2) (3) (4) (5)

‘Stretch’ ‘Forced election’/pre-emption Post-expiry right of use Mismatched defences Undermining or circumventing patents

C. Patent/Design Anti-overlap Provisions (1) Patent law—exclusion of registrable designs (2) Design law—exclusion of patentable inventions

D. Systemic Cross-Links (1) Cross-priority (2) Cross-citation

E. Patents and Designs—Twins or Antonyms? (1) Technology v Aesthetics (2) Form and function

(3) Idea/expression (4) Words/pictures (5) Broad/narrow

2.01 2.07 2.10 2.12 2.22 2.26 2.27

F. Design Law Exclusions (1) Functional designs (2) Reasons for exclusion of functional designs (3) The ‘multiplicity of forms’ sub-test (4) Kestos v Kempat (5) ‘Multiplicity of forms’—refinements (6) Subjective tests—designer’s intention, user’s impression (7) Designer’s intention (8) User’s conception of designer’s intention (9) Nature of the product (10) Visibility (11) ‘Must-fit’ (12) Method or principle of construction

2.30 2.30 2.32 2.36 2.36 2.43 2.48 2.52 2.74

G. The Circular Beach Towel Revisited

2.83 2.89 2.97 2.98 2.98 2.101 2.104 2.113 2.114 2.116 2.117 2.119 2.125 2.128 2.132 2.133 2.136

A. Hypothetical—the Circular Beach Towel1 You create a new beach towel. Preceding towels were rectangular, but yours is circular. It fea- 2.01 tures a central slit through which you can poke your head, to wear it as a poncho. It costs a little more to cut and edge, and wastes a little more material, but it quickly becomes very popular. Prudently, you apply simultaneously for a patent and also a registered design (in the US, 2.02 a utility patent and a design patent). Both are granted. Here is the patent: 2500000 CIRCULAR BEACH TOWEL Beach towels are rectangles of cotton. Cotton is hard-wearing, but exposure to sand can make it less fluffy. Since Leonardo da Vinci, the sides of the towel have been in the ‘golden ratio’ 1

Based on Franek v Franco 615 F 3d 855 (7th Cir 2010).

23

Chapter 2: The Overlap between Patent and Design Protection (although most are six feet in length and three feet in width), allowing a regular American male to lie untouched by sand. A dedicated sunbather aligns the towel with the sun for an even tan. However, as the sun moves through the day, it is occasionally necessary to stand up and re-orient the towel, which activity is unwelcome to the dedicated sunbather, and increases the wear on the towel. It is an object of this invention to provide a circular section of woven fabric that when used as a towel for sunbathing requires no repositioning toward the changing angle of the sun. It is a further object of this invention to provide a material suitable for such a towel. A preferred embodiment of the invention, needing no illustration, provides a circular towel of woven material of six foot diameter, to correspond to the reclining heel-to-crown length of an average American male. The circular shape allows for the repositioning of the human body toward the changing angle of the sun while the towel remains stationary, thereby eliminating the need for continual repositioning of the towel as with the conventional rectangular sunbathing towel. Also, the circular shape of the towel utilized as an absorbent, heat-retaining garment permits greater conformity to the human body. A suitable material for making the towel is di-hexatowelium. This polymer, formerly used only as a rat poison pellet binder, can be made into a towelling material visually identical to terry cotton, with additional resistance to wear and to thermal cycling. CLAIMS: 1. A towel construction comprising a non-rectangular towel made of di-hexatowelium. 2. A towel construction as set forth in claim 1 wherein said towel is circular in shape, whereby a user while sunbathing may reposition his or her body towards the changing angle of the sun while the towel remains stationary. 2.03 And here is the design (see Figures 2.1 and 2.2):

0005555-0001 Beach Towels 2.04 You are pirated. You reach for your rights. You consider copyright and passing off or trade

dress rights but, for reasons which will be explained elsewhere in this book, decide against them. You sue on your patent and your design. 2.05 By way of defence, however, the infringer says that the existence of your patent invalidates

your design, and vice versa. Her grounds are that. • The patent constitutes proof that the circular shape is dictated by function, and hence unregistrable as a design. • Claim 1 lacks novelty (true, unfortunately, over a newly-cited prior patent to a triangular towel made of di-hexatowelium). • The design constitutes proof that the circular shape is aesthetically appealing. Thus, claim 2 of the patent is obvious and does not involve an inventive step as differing merely in aesthetic details from the prior art. • You have, as a general principle, no right to dual protection—you have a duty to elect the protection you seek and by selecting each you have abandoned your right to the other.

Figure 2.1 Circular Beach Towel—Front 24

B. Do Overlaps Matter?

Figure 2.2 Circular Beach Towel—Side

Can double protection place you in double jeopardy? It is likely that at least one of these 2.06 defences will fail. Which, however, very much depends on your jurisdiction. The law is in flux, but the approaches, and some of the answers, will emerge below.

B. Do Overlaps Matter? Intellectual property practitioners are accustomed to multiple coexisting patents or 2.07 copyrights in the same work, but the view from outside the system is different.2 Vaver lists objections to overlap: 1. (‘Stretch’) ‘If material is adequately protected by trade mark law, why stretch copyright law to protect it more?’ 2. (‘Election’) ‘If the same creative process is protected by both patent and copyright, why should the copyright not be forfeited if a patent is voluntarily acquired?’ 3. (‘Post expiry right to use’) ‘If a design right or product patent expires, why should the possibility even exist, as it does now, of having additional potentially perpetual trade mark protection on the product shape, a right even more potent than protection by patent or design right?’

2 See generally, eg, V. Moffat, ‘Mutant Copyrights and Backdoor Patents: the problem of overlapping Intellectual Property protection’, (2004) 19 Berkeley Technology law Journal 1473; D. Vaver, ‘Reforming Intellectual Property Law: An Obvious and Not-so-Obvious Agenda: The Stephen Stewart Lecture for 2008’, (2009) IPQ 158.

25

Chapter 2: The Overlap between Patent and Design Protection 4. (‘Mismatched defences’) ‘If overlap of rights is permitted for owners, why should it not be permitted equally for users? If a user has a right of fair dealing with a copyright logo under copyright law, why can he not claim this right if sued for trade mark infringement of the logo?’ 2.08 One more objection which sometimes arises is:

5. (‘Undermining’ or ‘circumventing’) Other rights can circumvent stringent patent examination, undermine the patent system, and threaten trade with trivial monopolies. 2.09 As between patents and designs, however, these concerns have much-reduced force.

(1) ‘Stretch’ 2.10 What is the ‘proper’ scope of patent or design law? Rather than defining protectable subject-

matter too closely, legislators appear to show a universal preference for allowing patent law to develop with industry and technology. It is therefore no simple matter to prohibit wrongful ‘stretching’ without stifling necessary evolution—one man’s flexibility is another man’s stretch. 2.11 In practice, avoiding overlap means creating gaps, later plugged with sui generis measures—

each of which increases the number of interfaces between rights and hence increases, rather than reducing, the potential for overlapping protection. This is particularly true of design rights, themselves often seen as a gap-fill between patents and copyright. ‘Utility models’ were originally a gap-fill between patents and designs.3 Other examples in the design area are the UK’s Unregistered Design Right,4 the US Vessel Hull Protection Act,5 and the various Semiconductor Chip Topography protection measures.6 (2) ‘Forced election’/pre-emption 2.12 Limitation to only one form of protection, and enforced renunciation of others, cannot

operate without clear selection rules, which neither Europe nor the US have enacted. Which right is renounced—the patent or the design? And if timing is determinative, how should simultaneously filed rights be treated? 2.13 In the US, the election theory of Korzybski v Underwood 7 was not followed in relation to

other rights or other factual situations. Likewise in the UK, the enforced election (between patent and copyright) in Catnic v Hill & Smith8 was decided on other grounds on appeal;9 and does not hold as between other rights.10 Nor was it widely followed elsewhere. 2.14 The case law was reviewed in the Australian case Roland Corp v Lorenzo and Sons,11

The underlying notion appears to be that a piece of intellectual property may be deprived of protection in one category on the ground that it is more appropriately dealt with under 3 According to the EU Commission, there was an ‘area not covered by industrial design law or patent law, so that . . . the new right was intended to close a gap’. Green Paper—The protection of utility models in the Single Market Brussels 19 July 1995 COM (95) 370 final p 63. 4 Copyright, Designs and Patents Act 1988, Part 3. 5 Vessel Hull Design Protection Act, Chapter 13 of Title 17. 6 Washington Treaty; EU Directive 87/54 on the Legal Protection of Topographies of Semiconductor Products [1987] OJ L24/27. 7 Korzybski v Underwood and Underwood, Inc., 36 F 2d 727 (1929) 3 USPQ 242. 8 [1978] FSR 405, [1982] RPC 183. 9 Having heard argument on Werner Motors v Gamage. 10 Sobrefina SA’s Trade Mark Application, [1974] RPC 672, at 680, Whitford J himself. 11 [1991] FCA 617; (1992) AIPC 90-852 (1991) 22 IPR 245; 105 ALR 623 (1991) 33 FCR 111.

26

B. Do Overlaps Matter? another . . . I prefer to follow what appears to be the orthodox assumption, that the two may co-exist . . .

The same appears true under EU law. According to the Office for Harmonization in the 2.15 Internal Market (OHIM) in Lego v Mega Brands,12 ‘If an entity possesses the required conditions, it may be protected simultaneously by a number of intellectual property rights’. (a) Double protection—Werner Motors v Gamage European design law expressly permits parallel protection by design and patent.13 The point 2.16 was decided long ago in the UK in Werner Motors v Gamage,14 in which, ten days before filing the design, the proprietor applied for a patent. The patent and the design had substantially identical drawings. The design had a statement 2.17 of novelty directed to ‘the pattern as shown of a motor cycle frame’. In the patent, claim 1 recited a series of integers which ‘read onto’ (ie covered) the drawings, and claim 2 was in the ‘omnibus’ form: ‘A frame for motor cycles constructed substantially as described with reference to the accompanying drawings’. It might therefore have been thought comparable in scope and effect to the design.

d f b p

a

e

Figure 2.3 Werner Motors v Gamage (annotated by the Court) 12 Lego Juris A/S v Mega Brands Inc (R 856/2004-G) [2007] ETMR 11 OHIM (Grand Board of Appeal) at para 39 followed in R 497/2005-1—LOUDSPEAKER II/Bang & Olufsen at para 26. 13 Council Regulation 6/2002 on Community Designs [2001] OJ L3/1 (‘CDR’) Recital 31. ‘This Regulation does not preclude the application to designs protected by Community designs of the industrial property laws . . . such as those relating to . . . patents . . .’ applied in OHIM Appeal Board Decision R 497/2005-1—LOUDSPEAKER II/Bang & Olufsen at para 26—see also Council Reg 6/2002 Art 96(1) and equivalent Directive 98/71 on the Legal Protection of Designs [1998] OJ L289/28 Recital (7) and Art 16. 14 (1904) 21 RPC 621.

27

Chapter 2: The Overlap between Patent and Design Protection 2.18 Vaughan Williams LJ commented that the two rights were ‘different in their legal nature and

scope’ and that the design ‘leaves it open to every member of the public to attain the same end by using an article which differs from it in shape and configuration . . .’ 2.19 He begrudgingly concluded that ‘I cannot find any estoppel or any ground for putting the

plaintiff to an election between the Letters Patent and the Copyright of the Design’.15 2.20 Romer LJ thought it reasonable for a patentee to file a design, in case his patent was

ultimately invalid. Thus, ‘the two rights being not necessarily the same may exist together, though, no doubt, to a certain extent they may overlap and interfere . . .’16 Cozens-Hardy LJ referred to the difference in scope between the different rights: ‘The Patent may be used or infringed in many ways not involving the use of the registered Design’.17 2.21 Two rationales thus emerged:

1. Different natures ‘Unless there is a specific provision preventing rights from co-existing, then they just do.’18 2. Different scopes Mere overlap was no problem, as with two overlapping patents or copyrights. Likewise, in the US, duplication rather than overlap is required to trigger ‘double patenting’ objections between a design patent and a utility patent, which are thus both rare and difficult to prove.19 (3) Post-expiry right of use 2.22 The concern in ‘election’ cases was usually not the existence of double protection per se, but

the unwarranted extension of monopoly after expiry of patent rights when the public should be free to use an invention. Where the other right is a perpetual trademark or an interminable copyright this may have great commercial significance, but considerably less so for designs which have a similar lifetime (give or take five years) to patents,20 and must be filed in the same time frame (rather than, say, after expiry of the patent) in order to avoid self-anticipation by prior publication.21 2.23 In the UK, the post-expiry right to use doctrine now ‘has no place in the modern statutory

scheme of things’ (Philips v Remington22). However, although it no longer justifies the ‘election’ theory discussed above, it may provide an underlying rationale for applying other provisions to the same effect. According to the European Court of Justice (CJ) in Lego v OHIM,23 . . . protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings . . . In the system of intellectual 15

Ibid., at 629. Ibid., at 630. 17 Ibid., at 631. 18 Philips v Remington [1998] ETMR 124, [1998] RPC 283 PC. 19 Transmatic v Gulton Industries, 601 F 2d 904, 912 (6th Cir, 1979), also discussion in G. Dinwoodie, and M. Janis, Trade Dress and Design Law (New York: Wolters Kluwer, 2010) 311. 20 14 to 25 years is normal. 21 French designs—closely assimilated to copyright—could under the old law be extended up to 50 years and did not require absolute novelty, which may underlie historical French resistance to double protection (for which, see D. Cohen, ‘Le nouveau droit des dessins et modèles’, (2002) Economica at para 64). 22 [1998] ETMR 124 PC, [1998] RPC 283 PC, following American Cyanamid (Dann’s) Patent [1970] 1 WLR 1507; [1970] 3 All ER 785; [1970] FSR 443; [1971] RPC 425. 23 Case C-48/09 P Lego Juris A/S v OHIM, Mega Brands, Inc [2010] ETMR 63 CJ. 16

28

B. Do Overlaps Matter? property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators. . .

Although ‘that consideration underlies not only . . . trade mark law, but also . . . designs’, the 2.24 decision is opaque (and obiter) in application to the latter.24 The post-expiry doctrine for patents is strong in the US, but not between design and utility 2.25 patents. In Kellogg v National Biscuit,25 protection under unfair competition law was refused to Shredded WheatTM biscuits, previously protected by expired utility and design patents. No adverse comment was passed on dual protection by utility and design patents. However, double patenting, even between a design patent and a utility patent, is generally not permitted.26 In practice, the objection can be overcome by a ‘terminal disclaimer’ renouncing any term extension of the longer-lasting right over the shorter one.27 (4) Mismatched defences The acts of infringement and defences for designs in Europe are closely modelled on those 2.26 for patents,28 and the same in the US, so this objection has little practical force where the overlap is between designs and patents. (5) Undermining or circumventing patents The patent system has existed for long enough to acquire defenders29 for whom it is the only 2.27 legitimate exception to untrammelled competition. Other forms of protection are therefore seen as unwarranted intrusions into the market which, if popular, threaten the survival of the patent system by robbing it of business.30 In the US, the picture is complicated by the tussle for jurisdiction between Federal institutions (competent in patents) and States (competent in unfair competition).31 There is however no reason to cede primacy to the patent system. Although it is often painted 2.28 in rosy hues,32 in its modern form it is generally neither much older nor much more rigorous than the design system. Both systems similarly require novelty over the prior art, and restrict protected subject-matter by statute. Exhaustive examination is neither an inherent nor an

24 As pointed out by the Advocate-General of the CJ in Philips v Remington Case C-299/99 Philips v Remington Opinion of Advocate-General Colomer, [2001] RPC 38, [2001] ETMR 48, [2002] ECR I-5475 at para 34. 25 Kellogg Co v National Biscuit Co, 305 US 111, 120–122 (1938). 26 See, for example, the US Manual of Patent Examining Practice MPEP 1504.06 Double Patenting. 27 As, in Commonwealth countries, ‘association’ and ‘patents of addition’ allowed double protection in return for a curtailed term. 28 See D. Musker, Community Design Law Principles and Practice, (London: Sweet & Maxwell, 2002) 66. 29 See L. Bently, and B. Sherman, ‘The United Kingdom’s Forgotten Utility Model: The Utility Designs Act 1843’, (1997) 3 IPQ 265–278. 30 ‘. . . could essentially redirect inventive efforts away from the careful criteria of patentability developed by Congress’. Bonito Boats Inc v Thunder Craft Boats Inc 489 US 141 (1989). 31 Dinwoodie and Janis, see n 19 at 24. 32 ‘prerequisites to obtaining a patent are strictly observed, and . . . the limitations on its exercise are equally strictly enforced.’ ‘carefully used to promote invention while at the same time preserving free competition.’ Sears, Roebuck & Co v Stiffel Co 376 US 225 (1964). ‘restrictive conditions imposed by patent law’, OHIM Board of Appeal Case R 690/2007-3 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB [2010] ECDR 1.

29

Chapter 2: The Overlap between Patent and Design Protection exclusive feature of the patent system—some offices33 examine, many34 never did and others35 have given it up. And to the extent that the same product can be protected either by design or by patent, the narrower scope of the former hardly poses a serious threat to the latter. 2.29 Nonetheless, legislators and judges have created exclusions that have either the intention or

the effect of creating areas where overlap is problematic.

C. Patent/Design Anti-overlap Provisions (1) Patent law—exclusion of registrable designs 2.30 Since the Statute of Monopolies, patents in the common law world have been restricted to

‘inventions’—which are, however, not defined in either US or European law. The word denotes both a kind of subject-matter, and a level of thought.36 The absence of a definition in the European Patent Convention (EPC)37 was intentional, and the scope of protectable subject-matter is constrained by the ‘industrial application’ requirement,38 and the ‘nonexhaustive list of non-inventions’ of EPC Article 52(2). 2.31 During the protracted EPC negotiations, the UK proposed39 an exclusion of ‘Designs

or arrangements in which the novelty resides in appeal to the eye’, explicitly to eliminate overlap, but this was rejected.40 Instead, ‘aesthetic creations’ ‘as such’ were excluded. This is taken in the UK to exclude overlap with copyright41 rather than designs, as is clear from the wording of the Patents Act 1977.42 (2) Design law—exclusion of patentable inventions 2.32 The now-superseded French design law43 did specifically exclude protection for patentable

inventions, . . . if the same object may be considered both as a new design or model and as a patentable invention and if the elements constituting the novelty of the design are inseparable from those of the invention, such an object may be protected only under the [patents] provisions.

33

The ‘IP5’ offices (those of the US, Europe, Japan, China, and Korea), and a few others. For example, until recently, France. 35 The Netherlands, for example. 36 ‘Inventive step’, ‘inventive height’, ‘inventive activity’. 37 Convention on the Grant of European Patents (Cmnd 7090). 38 EPC Art 57. 39 White Paper: The effects of the Strasbourg Convention of 1963 (Cmnd 2835) 1965, Patents Liaison Group. 40 J. Pila, ‘Art. 52(2) of the Convention on the Grant of European Patents: What did the Framers Intend?’ (1995) 36 IIC 755 at 778. 41 See CFPH [2005] EWHC 1589 PC, Halliburton v Smith [2005] EWHC 1623 PC, although this may not be correct: Justine Pila, ‘The Future of the European Requirement for an Invention: Inherent Patentability as a Pre- and Post-Patent Determinant’ in Biotechnology and Software Patent Law: A Comparative Review on New Developments, G. Ghidini and E. Arezzo (eds) (Cheltenham: Edward Elgar, 2011), Ch 1 available at last visited 28 March 2012. 42 Patents Act 1977, s 1(2) (implementing the EPC in the UK): ‘a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever’. 43 Law of 14 July 1909, Art L. 511-3, §2. 34

30

D. Systemic Cross-Links Portugal, Spain, and Belgium did likewise,44 as the OAPI law45 of Francophone Africa 2.33 still does. In practice, this exclusion was applied with varying effects over the years. Sometimes, it was 2.34 only applied where a design met all the substantive criteria for patentability. In earlier cases, it was held to bite only where a technical function could be achieved by a single form—in other words, for designs where the form fused with the function—so that a design was valid where it could be shown that other forms would fulfil the same function. Later, however, this ‘multiplicity of forms’ approach was abandoned in France, and there are several recent cases where it appears that the mere coexistence of a patent with similar drawings was enough to invalidate a parallel design.46 There is thus no ‘bright line’ separating patents from designs in Europe or the US. The positive 2.35 requirements for ornamentality 47 or ‘eye appeal’48 (for designs), and utility or technical character (for patents), and the specific statutory exclusions of functional designs and aesthetic inventions discussed in this chapter, do not produce a ‘lack of overlap’,49 or a ‘clear and unmistakable separation’.50 Where a given design includes both functional and ornamental elements, it may qualify for either or both rights.

D. Systemic Cross-Links (1) Cross-priority The Paris Convention51 provides for cross-priority claims between a patent and a utility 2.36 model52 (within 12 months) and between a utility model and a design53 (within six months) and does not preclude ‘domestic’ or ‘internal’ priority within one country under national law. (a) The US position The US patent system provides a domestic priority system of continuation and continuation- 2.37 in-part applications, unconstrained by the Paris Convention periods,54 within which a US

44

U. Suthersanen, Design Law in Europe (London: Sweet & Maxwell, 2000). OAPI uniform law, Art 2(2). 46 See, for example, Plastiques Progrès v Éstablissements Roybier et Fils, Cour d’appel de Paris, 31 mai 2000, PIBD 2000, 705-III-448 concerning coat hangers, and Mephisto et M. Martin Michaeli v Sanders Distribution Sandis et Calzaturificio Grisport, Cour de Cassation, 26 mars 2002, PIBD 2002, 749-III-419, the Jean-Pierre cycle shoe case. See also the discussion in OHIM Board of Appeal case: Case R 690/2007-3 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB [2010] ECDR 1 and the authorities cited therein. 47 In the US, 35 USC 171 ‘any new, original and ornamental design for an article of manufacture.’ 48 Former Commonwealth laws. 49 As suggested in G. Zimmerman, ‘Extending the Monopoly? Risks and benefits of multiple forms of Intellectual Property protection’ (2000) 17 Canadian Intellectual property Review 345. 50 As suggested by the quote attributed to Vaver by Zimmerman see (2000) 17 Canadian Intellectual property Review 363, para 4.5. 51 Paris Convention for the Protection of Industrial Property of 20 March 1883 as amended (‘Paris Convention’). 52 Paris Convention, Art 4E(2). 53 Paris Convention, Art 4E(1). 54 Paris Convention, Art 4C(1). 45

31

Chapter 2: The Overlap between Patent and Design Protection design patent application may claim priority from a US utility patent application55 and vice versa.56 (b) Europe—patent claiming priority from a design 2.38 It is clear from the statute57 that a UK patent application cannot claim domestic priority

from a UK design application. Against that background, the UK Court in Agfa-Gevaert AG’s Application58 considered whether priority could be claimed from a German design application. The court concluded that no priority was possible, for various reasons: • The design application would ‘afford no protection to the invention’.59 It was not an application which ‘seeks to protect the invention as such’. Since the court accepted that the design application disclosed (and therefore protected) an embodiment of the invention, the rationale must be that the design application could not protect the claimed invention across its scope, or the particular features that were sufficiently novel and technical to support grant of the patent. • The Paris Convention did not mean that ‘an application for any one of the specified kinds of intellectual property protection can give rise to a claim of priority in respect of an application for any of the other kinds . . .’60 • The different terms permitted for claiming from patents and designs would have made it necessary to provide a rule as to which applied, and there was no such rule.61 2.39 In Agfa-Gevaert, the German design filing could not have been used to claim priority in a

German patent. In the US, however, priority from a design patent application can be claimed in a utility patent application. The effect was considered in Anchor Wall Systems v Keystone,62 in which an Australian ‘petty patent’ claimed ultimate priority from a US utility patent application, which itself claimed priority from design patent applications. Since, under the Paris Convention, priority may only be claimed from a ‘first’ application, the issue was whether the US design patents generated a priority right to the claimed invention. It was held that they did not. It was, well established that manufactures, for example processes and devices, involving only functional features and not aesthetic features, are available for protection under Australian patent law. Such manufactures form ‘the proper subject of letters patent . . .’ Thus the meaning of the term ‘invention’ as used and defined in the act must be understood in this context. It follows that when used in the definition of basic application, invention must be understood in this same context, i.e. something available for protection by a patent as against other possible protections such as a design or trademark . . .Thus an application to protect the invention or creation of a new or ornamental design involving features of external and aesthetic appearance, in my view, is not encompassed. . . 55 In re Scott J. Daniels, 144 F 3d 1452, 46 USPQ 2d 1788 (Fed Cir 1998), following Racing Strollers, Inc v TRI Industries, Inc, 878 F 2d 1418, 1419, 11 USPQ 2d 1300, 1301 (Fed Cir 1989 en banc). See also MPEP, 1504.20 Benefit Under 35 USC 120, and 201.11 Claiming the Benefit of an Earlier Filing Date Under 35 USC 120 and 119(e); and the cases cited therein. 56 In re Scott J. Daniels, 144 F 3d 1452, 46 USPQ 2d 1788 (Fed Cir 1998), following KangaROOS, U.S.A., Inc. v Caldor, Inc, 778 F 2d 1571, 1574, 228 USPQ 32, 33 (Fed Cir 1985). See also MPEP, n 55. 57 Patents Act 1977, s 5(5) and (6)—UK is not a ‘convention country’. 58 (1982) RPC 441. 59 Ibid., at 451, 454. 60 Ibid., at 456. 61 Ibid., at 457. 62 Anchor Wall Systems Inc v Keystone Retaining Wall Systems Inc [1996] APO 33.

32

D. Systemic Cross-Links The European Patent Office considered a priority claim from a German design application.63 2.40 The Legal Board of Appeal held that, The deposit of an industrial design in essence protects aesthetic appearance. Although the deposited design may incorporate an invention, according to national design laws the deposit will not protect the invention as such.

The rationale of the cases is that whilst a design application may disclose an embodiment 2.41 of a patentable invention, it is not an application to protect that invention, and hence not available for a Paris Convention-type priority claim. (c) Europe—design claiming priority from a patent National design priority law is not harmonized in Europe. For the UK, it is likely that the 2.42 broad (though obiter) remarks in Agfa-Gevaert would exclude priority from a patent application. Whilst priority claims from utility models are permitted in the Community Design system,64 no explicit provision is made for patent applications and they are not accepted by OHIM as the basis of a priority claim.65 The question was left undecided in Crocs, Inc v Holey Soles Inc.66 (2) Cross-citation (a) Designs as prior art against patents in Europe Designs form part of the state of the art against a patent. Although light on text, they are 2.43 capable of invalidating a patent claim on the basis that the species anticipates the genus,67 and can be combined with other documents in an obviousness attack.68 (b) Patents as prior art against designs in Europe Patents likewise form part of the state of the art against designs.69 In the event that the patent 2.44 discloses all features of a design in a drawing, the comparison between the two is straightforward. A patent which describes the design textually in sufficient detail could, in principle, invalidate a design,70 but general statements such as ‘the head could be made in any shape’71 do not suffice—the genus does not anticipate the species. (c) Cross-citation in the US For the US, it is clear from numerous decisions that citation of designs against patents and 2.45 vice versa is possible: ‘Although there are different statutory bases and standards for utility

63 ARENHOLD/Deposit of an Industrial Design J 15/80 (1981) OJ EPO 213, [1979-85] EPOR A56, [1982] ECC 74. 64 Council Reg 6/2002 Art 41(4). 65 OHIM Examination Guidelines—Community Designs para 10.1. 66 Case R 9/2008-3 Crocs v Holey Soles with PHI, [2010] ECDR 11 OHIM (3rd Bd App). 67 Examples are EPO Appeal Board decisions T 83/98 and T 1077/99 (unpublished, both unsuccessful citations). 68 EPO Appeal Board decision T 1179/08 (unpublished), Reasons 5.2—albeit an unsuccessful attack in that case. 69 Although the Cologne Appeal Court recently expressed doubt on the citability of a utility model against a German design under the old German law due to the different orientations of the rights: email from Henning Hartwig to the author, 22 June 2011. 70 See, for example, Rosedale Associated Manufacturers Ltd v Airfix Products Ltd [1957] RPC 239. 71 José Mallent Castello v 3M Innovative Properties Company OHIM Invalidity Division Case No. ICD 000000057.

33

Chapter 2: The Overlap between Patent and Design Protection patents and design patents, no similar distinction exists when determining what constitutes relevant prior art for these two types of patents’.72 (d) Prior rights in Europe 2.46 In Europe, prior filed but unpublished designs are not a citable ‘prior right’ against a patent73

and prior unpublished patent applications are not a ‘prior right’ citable against a design.74 This is consistent with the priority position; it would be strange to deny a priority claim from something that would be citable as a prior right, and vice versa. (e) Prior rights in the US 2.47 In the US, earlier-filed US patents of others (whether design or utility patents) are treated as

if prior-published.

E. Patents and Designs—Twins or Antonyms? 2.48 Within the intellectual property family, patents and registered designs are the closest of

siblings. They are both ‘monopoly’ rights (in the legal, rather than the economic sense), which can be infringed irrespective of the infringer’s mens rea. They both, as a consequence, need to show novelty over the state of the art, irrespective of the creator’s mens rea—subjective originality won’t do. They are usually filed and granted according to similar regulations. Many of the actors involved are the same—usually, the same registration office,75 the same agents, and the same judges. 2.49 However, some of these similarities are illusory. The patent system is only one of those affecting

the orbit of design registration—copyright and trademarks also exert an influence. And whilst the similarities in legal bases between patents and designs might be expected to result in the two being drawn together, the effect is often one of repulsion rather than attraction, as actors in the longer-established and more economically important patent system defend it against encroachment by other, less reassuringly familiar, forms of protection.76 2.50 As a result, the relationship between patents and designs is often represented as one of

opposites. Commonly-stated comparisons are listed in Table 2.1.

Table 2.1 Commonly stated contrasts Issue

Patents are . . .

Designs are . . .

Subject-matter Aspect protected Level of abstraction Scope Medium

Technological Function Ideas Broad Words

Aesthetic Form Embodiments or expressions Narrow Pictures

72 73 74 75 76

Re Aslanian 590 F 2d 911, 200 USPQ 500 (CCPA 1979), 2125. Under Articles 139 and 140 EPC (or their UK equivalent). Under Dir 98/71 Art 11 or Council Reg 6/2002 Art 25. Europe provides a rare exception. See Bently and Sherman, n 29.

34

E. Patents and Designs—Twins or Antonyms? However, when these commonly-held comparisons are unpicked, they are either over- 2.51 simplifications, or not antonyms, or both. (1) Technology v Aesthetics (a) Patents, inventions, and technology Patents are for ‘inventions’, but although machines and technologies have always been 2.52 central to the patent system, the common law tradition historically took a broader view of ‘inventions’ and did not exclude patents for failing to be ‘technological’. Patent law requires utility or ‘industrial applicability’ for some practical purpose,77 but this has not always been confined to the ‘technological arts’ or ‘fields of technology’.78 US patent law extends generally to ‘anything new under the Sun made by man’79 (though 2.53 this is qualified by the requirement to fall within one of the statutory categories of ‘processes, machines, manufactures and compositions of matter’80), and the US Patent Office practice has therefore been, to take an example, to grant patents to board games.81 It was until 200682 also the practice of the UK Patent Office to grant patents for board games 2.54 characterized by novel printed matter, in accordance with a 1926 Official Ruling.83 Under the influence of the EPC that changed, and the current, more restrictive, practice is discussed here. (b) Designs and ‘aesthetics’ Designs have always protected ornamental mass-produced articles, but have not historically 2.55 been available for many ‘aesthetic creations’ in the UK. Instead, works of a ‘primarily literary or artistic character’ were for many years specifically excluded,84 with the intention that copyright alone should apply to these. There was a requirement for ‘eye appeal’ under the old UK law, but this involved only some visual impact not rising to the level or art or beauty.85 Under the current European laws, designs are not excluded as being primarily aesthetic, but no aesthetic quality is required.86 The current US statute requires a patentable design to be ‘ornamental’, and it is conventional 2.56 for the claims of a design patent to be thus limited, but87 this requirement is usually thought not to rise to the level of art or beauty—‘“ornamental” does not always mean artistic or pleasing to the eye . . . ornamentation is in the eye of the beholder . . .’,88 ‘. . . design patents are

77 In Europe, if it can be ‘made or used in any kind of industry’, EPC Art 57. Industry is ‘an activity which belongs to the useful or practical arts as distinct from the aesthetic arts’ EPO Guidelines C-IV, 5.1. Some practical utility is required: Chiron v Murex [1996] RPC 535 CA. 78 TRIPS Art 27(1). 79 Diamond v Chakrabarty, 447 US 303, 308–09, 206 USPQ 193, 197 (1980). 80 35 USC 101. 81 See, for example, US 3961795 ‘Antitrust prosecuting board game’, or US 3850433 ‘Board Game involving patent transactions’ (see Figure 2.4), according to your prejudices. 82 Until Shopalotto.com Ltd’s Patent Application [2006] RPC 7. 83 (1926) 43 RPC No 4 Appendix, i. 84 Registered Designs Act 1949, s 4(2) and Rule 26 of the various Registered Designs Rules. 85 ‘. . . it has always been considered that a design need not possess any artistic merit.’ Russell-Clarke and Howe on Industrial Designs, 7th edn (London: Sweet & Maxwell, 2005) 3-51, 89. 86 Dir 98/71 Recital 14 and Council Reg 6/2002 Recital 10 ‘whereas it is understood that this does not entail that a design must have an aesthetic quality.’ 87 Though the jurisprudence is divided. 88 Best Lock Corp v Ilco Unican Corp 94 F 3d 1563 (Fed Cir 1996) Judge Pauline Newman’s dissent.

35

Chapter 2: The Overlap between Patent and Design Protection 23 MFG. PLANT

MFG. PLANT

NO 5,0 00

7

000 0 00

5

00

4 000

EA

30,

L

H RC S A D SE AR C

D NO

000

40,0

000

2

37 12

61

MFG. PLANT

45

27

28

3

44

PATENT ATTY.

29

MFG. PLANT

43

42

MFG. PLANT

3

67

20

38

MFG. MFG. CONCEPT PLANT PLANT

41

15

40

MFG. PLANT

39

14

PA O TE RE FFI NT VI CE EW

MFG. PLANT

36

0

46

2

25, 00

MFG. CONCEPT PLANT

30

17 26

6

47

25 000 35,

000

2

000

000

000

MFG. PLANT

18

8

1

3

PATENT ATTY.

31

15, 000

L

DEA

35

MFG. PLANT

PATENT ATTY.

57

PATENT CONCEPT MFG. AUCTION PLANT

MFG. PLANT

34

MFG. PLANT

56

MFG. PLANT

33 19

PATENT ATTY.

55

MFG. PLANT

MFG. PLANT

MFG. PLANT

48

. FG T M AN PL

MFG. MFG. CONCEPT PLANT PLANT

54

E M

53

PT CE N RDS CO CA

MFG. PLANT

49

24

32

52

50

O

MFG. PLANT

16

51

21 H

PA O TE FF N IC T E

13

22

10

Figure 2.4 US 3850433 ‘Board Game involving patent transactions’

concerned with the industrial arts, not the fine arts. . . It is enough for present purposes that it is not ugly’.89 (c) Patent law—statutory exclusion of ‘aesthetic creations’ 2.57 European case law on the ‘aesthetic creations’ exclusion has taken a somewhat uneven course.

Whilst a pure work of art is excluded as such, the European Patent Office (EPO) view is that a mixture of ‘technical’ and ‘non-technical’ (ie, aesthetic) features may be patentable.90 The EPO Guidelines cite a tyre tread as an example having both aesthetic and technical features

89 Contico International Inc. v Rubbermaid Commercial Products, Inc, 665 F 2d 820, 825 (8th Cir 1981), discussed in Dinwoodie and Janis, see n 19 at 317. See also U. Suthersanen, Design Law: European Union and United States of America, (London: Sweet & Maxwell, 2010) 10-012 onwards. 90 T 769/92 SOHEI/General purpose management system, [1995] OJ EPO 525, [1996] EPOR 253.

36

E. Patents and Designs—Twins or Antonyms? which might be patentable.91 The US situation is broadly similar—a work of art per se could in principle be rejected as non-statutory subject-matter.92 (d) Utility as a qualification for design protection For much of the nineteenth century, designs could be registered, rather than rejected, on the 2.58 basis of new utility. In the UK, the 1839 Act93 was not restricted to ornamental designs, and it was succeeded by the 1843 Utility Designs Act, which provided protection for designs ‘having reference to some purpose of Utility.’ The US 1842 Act94 was, like the UK 1839 Act, silent as to any requirement for ornament. 2.59 Case law led95 to ‘an overlap between the scope of protection for design and utility patents.’96 In 1870, the statute provided for the protection of ‘. . . any new, useful and original shape or configuration of any article of manufacture . . .’ as well as various types of ornamental designs.97 Explicit statutory exclusions of functional or non-ornamental matter date back only to 1902 (in the US) and 191998 (in the UK).99 The Nicholson Report100 proposed the reintroduction of registered protection for purely 2.60 functional designs, but a parallel unregistered design right scheme, explicitly intended to protect purely functional designs, was introduced instead.101 Thus, although design registration appears to have evolved away from protecting products 2.61 on the basis of a purely utilitarian advantage in the common law world,102 design protection and utility or function are not inherently incompatible. (e) Design law—exclusion of technology/functionality and relation to utility Even when new utility ceased to be a sufficient criterion for registration of a design, it did not 2.62 immediately become a disqualification—many (and perhaps most) designs protect objects which have some utility. However, in the late nineteenth and early twentieth centuries, a functionality exclusion evolved in the UK case law (though invalidation on this ground was very rare103). In the US, there is no statutory objection to a design of a useful article, but a judicially-created functionality doctrine has evolved as a sub-test of the statutory requirement 91 EPO Guidelines for Examination, C-IV, 2.3.4, ‘If, however, the article happens also to have technical features, it might be patentable, a tyre tread being an example of this. The aesthetic effect itself is not patentable, neither in a product nor in a process claim.’ 92 MPEP 2106 Patent Subject Matter Eligibility, 2106.01 Computer-Related Nonstatutory Subject Matter. 93 Copyright of Designs Act, 1839. 94 Patent Act of 1842, Ch 263. 95 J. Du Mont, ‘A Non-Obvious Design: Re-examining the Origins of the Design Patent Standard’, (2010) 45(3) Gonzaga law Review 531. 96 Ibid., at 555. 97 Section 71, quoted in Du Mont see n 95, 563 at fn 194. 98 Patents and Designs Act, 1919. 99 See Bently and Sherman, n 29. 100 Green Paper on Intellectual Property and Innovation, Cmnd 9117, HMSO 1983. 101 White Paper on Intellectual Property and Innovation, Cmnd 9712, HMSO April 1986 at paras 3.21 and 3.33 and 3.39(a), Farmers Build v Carier Bulk Materials [1998] EWCA Civ 1899, [1998] EWCA Civ 1900, [1999] RPC 461; [2000] ECDR 42; Lucasfilm v Ainsworth [2011] UKSC 39 at para 49. 102 Not however in South Africa where parallel ornamental and functional design registration systems coexist. 103 As explained by the Federal Court of Australia in Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393; 97 ALR 615; 19 IPR 531; [1991] AIPC 37, 226.

37

Chapter 2: The Overlap between Patent and Design Protection for ornamental character. There is now a statutory exclusion of functional designs in Europe, discussed in this Chapter, but it is important to bear in mind that the respective functionality doctrines in the US and Europe spring from different roots. 2.63 A design is not excluded from protection merely because one part is functional.104 The exclusion

applies only where the design is predominantly functional (in the US) or entirely functional (under the old UK law)105—except where novelty also comes into play. (f ) Subject-matter at the point of novelty 2.64 Patents and designs both require not only novelty but also some statutory character (‘technicality’

for patents and ‘non-functionality’ for designs). Either can therefore suffer the defect identified by Dr Johnson106 that the statutory part is not novel and the novel part is not statutory; a lack of protectable subject-matter at the ‘point of novelty’. 2.65 Many judgments comment that, in general, designs and claimed inventions should be taken

‘as a whole’ and not dissected and rejected element-by-element.107 However, currently, the usual approach is to invalidate where there is only non-statutory matter at the point of novelty. (g) Patents—aesthetics at the point of novelty 2.66 According to the current EPO approach, the presence of ‘any technical means’ is sufficient

to save a product as a whole from exclusion as an ‘aesthetic creation’.108 However, where the only difference between a claim and the prior art has a purely aesthetic advantage or effect, no matter how non-obvious, it cannot confer an inventive step.109 2.67 The manner in which an aesthetic effect is provided might, however, be inventive if non-

obvious, allowing the grant of a patent. Extrapolating from cases in other excluded areas (financial methods, for example), the issue is often whether the skills of a technical person (an engineer) are involved in providing the aesthetic effect. If so, then there may well be a patentable invention.110 If not, then there is none.111

104

Interlego A.G. v Tyco International Inc, [1988] RPC 343 (HL), at 354, criticized by some. Ibid. 106 ‘Your manuscript is both good and original, but the part that is good is not original and the part that is original is not good.’—attributed to Samuel Johnson. 107 Some, however, hold that a design does not include functional features at all, which must be filtered out for all purposes: ‘. . . the scope of the claim must be construed in order to identify the non-functional aspects of the design. . .’ Richardson v Stanley Works, Inc, 597 F 3d 1288, 1294 (Fed Cir 2010); if not filtered out altogether, they are almost ignored (eg, Sommer Allibert v Flair Plastics, [1987] RPC 599 (CA)). 108 G 1/08 Essentially biological processes (to be published in OJ EPO 2011), Reasons 6.3 affirming cases such as PROCTER & GAMBLE/Colour-changing absorbent article (T1689/07), [2010] EPOR 19, and implicitly overruling earlier cases such as FUJI/Coloured disk jacket (T119/88), [1990] EPOR, 615, (1990) 4 OJ EPO 395. 109 See, for example, EPO Appeal case T 335/90 (unpublished). 110 See, for example, EPO Appeal cases T 442/90, HETTLING-DENKER/Translucent Building Materials (T686/90), [2004] EPOR 5; T 252/91 (unpublished); T 1032/93 (unpublished); PROCTER & GAMBLE/ Colour-changing absorbent article (T1689/07), [2010] EPOR 19. 111 See, for example, EPO Appeal cases ETA/Watch (T456/90), [1993] EPOR 252, T 840/91 (unpublished), KUNOMI/Video game (T928/03), [2006] EPOR 53, APPLE/Method of transition between window states (T50/07), [2010] EPOR 20. 105

38

E. Patents and Designs—Twins or Antonyms? An oft-quoted EPO example is a lampshade carrying a new picture by Da Vinci112—although 2.68 the object as a whole is more than an aesthetic creation, and the painting is certainly not ‘obvious’, the skills engaged in providing the aesthetic effect achieved are solely those of an artist and not an engineer. In the US, the same is currently true in assessing obviousness of utility patents, following 2.69 In re Seid,113 ‘matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art’.114 (h) Example—the ETA/Watch patent The ETA/Watch case115 illustrates how the EPO handles design-overlap patents. The case 2.70 concerned a granted European patent to a watch strap fastening, opposed on the basis of prior art disclosing all but one feature of the claim. 5.5 . . . . . . a widely distributed commercial product, such as the inexpensive watch of the present invention, must satisfy requirements of both a technical and an aesthetic nature. It is accepted that requirements of an aesthetic nature may be satisfied by technical means and, in principle, an aesthetic aim does not affect the patentability of such technical means, provided that the latter are new and inventive. 5.8 . . . this shape . . . is therefore clearly a design measure aimed solely at an aesthetic effect which does not help to solve a technical problem. Such a characteristic does not contribute to the inventive step of the claimed subject-matter.

7

1

5 20 19 2

7

6 3d

10 9

5a 6

8 1a

14

3b

9

1b

13 12

A

A 11

3c 7

3d

3c

19

R

8 16 2 2c

15 17 5a 2b

r

2a

Figure 2.5 ETA/Watch

112 See D. Rees, ‘Software Patents—EPO Practice: History and State of Play, prepared for the EPIDOS Annual Conference, European Patent Office (EPO)’, 16 October 2001, at 5, last visited 27 February 2012. 113 161 F 2d 229, 73 USPQ 431 (CCPA 1947)—advertising display device comprising a bottle and a hollow member in the shape of a human figure from the waist up. 114 MPEP 2144.04 Legal Precedent as Source of Supporting Rationale 1 AESTHETIC DESIGN CHANGES. 115 ETA/Watch (T456/90), [1993] EPOR 252.

39

Chapter 2: The Overlap between Patent and Design Protection (i) Designs—functionality at the point of novelty 2.71 In the US, ‘When a claim is rejected . . . as being unpatentable over prior art, features of the

design which are functional and/or hidden during end use may not be relied upon to support patentability.’116 The appeal judgment in Richardson v Stanley Works, Inc117 held that ‘. . . the scope of the claim must be construed in order to identify the non-functional aspects of the design . . .’ and factor them out before performing an overall impression comparison for infringement or validity.118 Protection ‘does not extend to any functional elements of the claimed article.’ 2.72 The position is probably similar under the new European design law. The issue was raised in

Crocs, Inc v Holey Soles Inc119 where it was said that the named designer had only added a functional heelstrap (described, together with other features, in several parallel patent applications) to the existing design of a plastic clog. The design was invalidated as not creating a different overall impression to the prior art. Within the ‘overall’ impression, the part played by the strap was much reduced, in large part because of its functional nature.120 (j) Conclusion 2.73 The presence of aesthetic elements does not preclude patentability of an otherwise allowable

invention, nor does the presence of technical elements prevent registration of an otherwise allowable design. Nor do the exclusions from one right match precisely the requirements of the other. If it marks any border, the technology/aesthetics divide is more apt to distinguish patents from copyright than from designs.

Figure 2.6 Crocs v Holey Soles

116

MPEP 1504.02 Novelty, 1504.03 Nonobviousness. Richardson v Stanley Works, Inc., 597 F 3d 1288, 1294 (Fed Cir 2010), following OddzOn Prods, Inc v Just Toys, Inc, 122 F 3d 1396, 1456 (Fed Cir 1998 en banc). 118 Door-Master Corp v Yorktowne Inc 256 F 3d (Fed Cir 2001). 119 Case R 9/2008-3 Crocs v Holey Soles with PHI, [2010] ECDR 11 OHIM (3rd Bd App). 120 Ibid., at paras 104–108. 117

40

E. Patents and Designs—Twins or Antonyms? (2) Form and function (a) Function v Form—designs ‘Primarily the purpose . . . is to protect shape not function . . .’121 It is certainly true that what 2.74 is protected is the design of a product, and this means its appearance,122 in other words its form123 as perceived by the senses (and usually, by the eye). This has for many years been the US position, following Gorham v White.124 The protected subject-matter of a design is in fact the overall impression125 on an observer, 2.75 created by the appearance resulting from the shape (or other elements) of a product itself (or its ornamentation). It is initially necessary to dissociate the design of the product from the product itself. The 2.76 European law divorces the two for many purposes,126 following in this respect the former UK law.127 For example, a design lacks novelty if the same shape has been applied to another product128 and any use of a design is an infringement of a design including applying it to any product. An important sub-test, however, is based on ‘design freedom’ as a regulator both of design 2.77 scope and of validity—the less the design freedom, the smaller the scope, and the greater the likelihood of validity. Constraints on design freedom include:129 • • • • •

Features imposed by the technical function of the product; Statutory requirements applicable to the product; Cost; Safety; Fitness to work with other products.

These, and other factors, with an indication of what the product is, combine to constitute the 2.78 brief to which the designer must work. The designer’s output, the design, is therefore separate from the set of constraints to which he is subject.

121 Stenor v Whitesides (Clitheroe) Ltd (1948) 65 RPC 1 (HL), [1947] All ER 241, see also Firmagroup Australia v Byrne & Davidson Doors (1987) 73 ALR 321, 9 IPR 353, ‘The Act is concerned with shape and configuration, not function.’ 122 See, for example, Dir 98/71 Art 1(a) or Council Reg 6/2002 Art 3(a). 123 For example, shape (one of the elements of appearance in Dir 98/71 Art 1(a) or Council Reg 6/2002 Art 3(a)). 124 81 US (14 Wall.) 511, 524–525 (1871). 125 For Europe, Dir 98/71 Arts 5(1) and 9(1), and corresponding Council Reg 6/2002 Arts 6(1) and 10(1), and, for the US, ‘the overall impression of the claimed ornamental features’ Crocs, Inc v ITC, 598 F 3d 1294 (Fed Cir 2010)—same test for validity as infringement, Richardson v Stanley Works, Inc, 597 F 3d 1288, 1294 (Fed Cir 2010). 126 Green Lanes v PMS [2008] EWCA Civ 358. 127 See the quote below from Dover v Nurnberger Celluloid. In the US, the usual view is that ‘Design is inseparable from the article to which it is applied . . .’ MPEP 15.44 Design Inseparable From Article to Which Applied, approved in Best Lock v Ilco, Newman dissented, but something closer to the UK position emerges from Re Schnell, 46 F 2d 203 (CCPA 1931), acknowledging that some designs can be applied to multiple products. 128 See, for example, Stenor v Whitesides (Clitheroe) (1948) 65 RPC 1 (HL) (design of fuse anticipated by same design of bicycle crank). 129 Grupo Promer Mon Graphic SA v OHIM, Pepsico (T-9/07 Metal Rappers), [2010] ECDR 7, at paras 67–70.

41

Chapter 2: The Overlap between Patent and Design Protection 2.79 The number of different appearances that could be created in order to meet the brief is the

‘design freedom’. Where the brief can be met in only one way, there is no design freedom— the end result is in a one-to-one relationship with the brief, so that130 every designer would produce the same result. In the absence of any design that can be separated from the brief, there is nothing protectable. (b) Function v Form—patents 2.80 Patents also protect product forms. Patented products include electronic circuits, pro-

grammed computers, chemical, and biological species, but the historical core of the patent system is in the protection of mechanical products such as machines, devices, tools, and civil engineering structures. A claim to such products is in terms of the elements making up its form. At the beginning of the patent system, no doubt such products were employed mainly in business, but with the rise of mass consumer consumption in the nineteenth and twentieth centuries, consumers came into possession of complex mechanisms,131 and patented consumer products have invaded the home which had previously been the domain of design and trademark protection. 2.81 It is impossible to analyse patents without considering how inventions function, but it is not

generally the case that patents protect ‘function’ per se. A patent usually protects a ‘solution’ that solves a ‘technical problem’ in a particular way. Patent claims are either for products or processes.132 A product claim does not necessarily cover all structures that functions in the same way to solve the problem, still less all ways of solving the problem. (c) Conclusion 2.82 The form/function contrast therefore provides an imperfect dividing line between patents

and designs. The issue is summarized in the US Manual of Patent Examining Practice (MPEP) In general terms, a ‘utility patent’ protects the way an article is used and works . . ., while a ‘design patent’ protects the way an article looks . . . Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. . . While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.133

(3) Idea/expression 2.83 ‘Design right does not therefore protect ideas. Ideas are protected by patent law.’134 But is it

as simple as that? And does this rather trite proposition of copyright law have any practical value for designs? The UK Courts have repeatedly doubted it.135 No doubt patents offer 130

Perhaps after the expenditure of considerable skill, labour, and investment. First watches, then cars, then electrical domestic machines, then consumer electronics. 132 G 2/88 MOBIL OIL III/Friction Reducing Additive (Change of Claim Category) [1990] OJ EPO 93. 133 MPEP 1502.01 Distinction Between Design and Utility Patents. 134 Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group, [2009] ECDR 11, [2009] EWHC 26 (Pat) at para 25, see also Red Spider Technology v Omega Completions Technology [2010] EWHC 59 (Pat) at para 124: ‘The relevant distinction is between real, particular designs on the one hand (which are capable of protection under the section) and ideas on the other’. All UK Unregistered Design Right cases. 135 ‘For myself, I find it difficult to determine what that phrase means in the present context’. BrowneWilkinson VC, Mirage Studios v Counter-Feat Clothing [1991] FSR 145; ‘it all depends on what you mean by “ideas”’ Lord Hailsham of St Marylebone, L.B. (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 (HL); 131

42

E. Patents and Designs—Twins or Antonyms? protection at a higher level of generality than designs, but it is inaccurate to characterize this as an idea/expression split. Patents in Europe do not protect all new ideas136 indeed, ‘mental acts’ as such are specifically 2.84 excluded from patentability. Only ideas which are statutory ‘inventions’ and are ‘industrially applied’ are patentable, and these restrictions anchor ideas firmly in the physical realm—the more concrete and the less abstract, the likelier a patent is to be valid. On the other hand, although designs (like anything else) must be reduced to some physical 2.85 form to be protected, and must be for application to a product, they are based on a new idea that can be separated from the product: Dover v Nurnberger Celluloid,137 Design means, therefore, a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article . . . It is a conception, suggestion, or idea which is the thing capable of being registered . . . It is a suggestion of form or ornament to be applied to a physical body.

This is generally at a higher level than the precise reproductions filed in a design applica- 2.86 tion—up to a point. Thus, where the originator of a design has someone else prepare detailed drawings, the latter is not the designer. In a case where the originator of a design idea had made sketches and a Chinese collaborator had drawn them up, devised a CAD model and made moulds, the Australian High Court held that, Authorship of a design is in the ‘person whose mind conceives the relevant shape, configuration, pattern or ornamentation applicable to the article in question and reduces it to visible form’.138

In similar vein, in Hoop v Hoop139 two brothers who conceived the concept of eagle-shaped 2.87 fairing guards for motorcycle handlebars and registered it as a design succeeded against their cousin and his wife, who ‘refined and perfected’ the idea to produce sketches and moulds, and also registered the same—their conception made them the designers.140 In practice, then, the difference is in kind rather than in degree—both patents and designs 2.88 involve some kind of idea and some level of expression (or application). The difference is not in the nature of the right but in the person of the reader. Whereas a patent is directed to a reader of skill in the relevant art, who may be able to extract a principle of operation from an exemplary drawing, a design is directed to a lay observer (the ‘informed user’ in Europe,141 the ‘ordinary observer’ in the US142) who will generally be much less able, or inclined, to do so.143

‘Nevertheless, it needs to be handled with care. What does it mean?’ Designers Guild Limited v Russell Williams (Textiles) Limited [2000] 1 WLR 2416, [2001] FSR 11, (HL). All UK design copyright cases. 136 The animal chess set would probably not be patentable for example. 137 (1910) 27 RPC 498 (CA). 138 Chris Ford Enterprises Pty Ltd v BH & JR Badenhop Pty Ltd (1985) 7 FCR 75, 80, followed in LED Technologies Pty Ltd v Elecspess Pty Ltd [2008] FCA 1941. 139 279 F 3d 1004 (Fed Cir 2002). 140 Judge Lourie dissented: ‘Design patents do not claim concepts. They claim specific designs set forth in their claims, which invariably refer to the appearance of what is illustrated in the patent’s drawings. 37 CFR s1.153(a) (2001).’ 141 Dir 98/71 Arts 5(1) and 9(1), and corresponding Council Reg 6/2002 Arts 6(1) and 10(1). 142 Following Egyptian Goddess, Inc v Swisa, Inc, 543 F 3d 665, 678–79 (Fed Cir 2008 en banc). 143 For the nineteenth century controversy on the interpretation of designs, see Bently and Sherman, n 29.

43

Chapter 2: The Overlap between Patent and Design Protection (4) Words/pictures 2.89 Designs must contain pictures, and patents (at least in the mechanical and civil engineering

fields) almost always do. Patents must contain a description and a claim,144 but the amount of text required in a design145 may be minimal—no more than an indication of the product to which the design is applied146—although many countries permit147 (and some require148) a description, a disclaimer disclaiming part of what is shown,149 a ‘statement of novelty’ directing attention to the particular features which are novel,150 or a claim.151 2.90 It is therefore not the simple presence or absence of words and pictures which distinguishes

patents and designs, but the relationship between the two. 2.91 Within a patent, the claims reign supreme.152 They ‘define the matter for which protection

is sought’153 and the ‘extent of protection conferred’ is ‘determined by the claims’,154 the description and drawings being used to interpret them.155 2.92 At one time in the nineteenth century, after claims became mandatory in the US and UK, it

was customary for them to refer explicitly to the description and drawings with a ‘substantially as described’ clause, but such ‘omnibus’ claims are now no longer used in US utility patents, and are not generally permitted in EPO practice. Cross-references to the drawings ‘shall not be construed as limiting the claim.’156 In Commonwealth practice, however, ‘omnibus’ claims157 are commonplace, and the drawings thus have some role in determining scope. 2.93 Originally, in the nineteenth century, it was common for designs to have a statement of

novelty much like an omnibus claim. Thus, in Pugh v Riley,158 the statement of novelty read, ‘The novelty consists in the disposition of a tyre rim d in relation to a hub e and in the cross sectional arrangement of the spokes a, b, c.’159 2.94 Currently, however, it is clear in Europe that the pictures are paramount.160 Whilst an indica-

tion of the relevant product is required, and a description may be present, these ‘shall not 144

Though claims are usually not required on initial filing. Other than bibliographic data. 146 And even this is not required on filing in Europe: Council Reg 6/2002 Articles 36(1) and 38. 147 Council Reg 6/2002 Art 36(3)(a), Hague Agreement Art 5(2)(b)(ii). 148 China, Bulgaria, and Russia, for instance, and see Hague Agreement Art 5(2)(b)(iii). 149 Council Reg 6/2002 Art 25(6), UK Registered Designs Act 1949, s 3B(6). 150 And thus acting essentially as a disclaimer for the others. 151 As in the US. 152 This has not always been the case. As late as 1968, French patents were not required to include a claim at all. 153 EPC Art 84. 154 EPC Art 6. 155 The exact extent to which such ‘interpretation’ is permissible was left open when the EPC was drafted, and when it was amended, and is therefore still in doubt. 156 EPC Rule 43(7). 157 In the form ‘An electric generator for a cycle, constructed and arranged substantially as herein described, with reference to and as illustrated in the accompanying drawings’—upheld in Raleigh v Miller, (1948) 65 RPC 141 (HL). 158 (1912) 29 RPC 196. 159 The drawing showed a cross-section, with elements other than a–e shown in dashed lines and the same drawing was used in Pugh’s patent, filed the day before. It was held not to show a particular unique design but an illustration of a method of construction from which an engineer could devise many variants, and the design registration was therefore either not infringed or invalid. 160 Dir 98/71, Recital 11, see Procter & Gamble v Reckitt Benckiser [2007] EWCA Civ 936, [2008] FSR 8, [2008] ECDR 3 (CA). 145

44

F. Design Law Exclusions affect the scope of protection of the design as such.’161 The description is intended merely to explain the pictures.162 In the US, a description of a design ‘would probably not be intelligible without the illustra- 2.95 tion’163 and thus ‘a patented design is defined by the drawings in the patent’164 which are of ‘decisive importance’.165 Although design patents have claims, they are ‘. . . claimed according to their drawings, and claim construction must be adapted to a pictorial setting’.166 Thus, from similar beginnings, patents and designs have evolved apart—for patents, the text 2.96 governs and the pictures explain, and vice versa for designs. As designs in Europe include pictures of only one embodiment, they cannot have a broader scope than patents. (5) Broad/narrow As a result of their different content and addressees, at least in Europe and the US, ‘Design 2.97 patents have almost no scope.’167 For functional designs, where common design constraints underlie similarities, ‘A claim to a design containing numerous functional elements . . . necessarily mandates a narrow construction.’168

F. Design Law Exclusions (1) Functional designs The principal regulator of the degree of overlap between designs and patents is the function- 2.98 ality exclusion. Unfortunately, however, ‘The concept of function in this area of discourse is not easy to describe in clear terms because it often becomes in the end a philosophical debate, as the reported cases demonstrate.’169 TRIPS170 permits (but does not require) that design protection may be denied to ‘designs 2.99 dictated essentially by technical or functional considerations’. The current European Directive governing national European design laws provides that,171 A design right shall not subsist in features of appearance of a product which are solely dictated by its technical function.

‘Function’ here means what European design law refers to as the ‘technical function’ of a 2.100 product,172 or what the Privy Council referred to173 under the former UK law as ‘what the

161

Council Reg 6/2002 Art 36(6). Community Design Implementing Regulation (‘CDIR’) 2245/2002 [2002] OJ L341/28 Art 2. 163 Dobson v Dorman, 118 US 10, 14 (1886). 164 Door-Master Corp v Yorktowne Inc 256 F 3d (Fed Cir 2001). 165 Richardson v Stanley Works Inc 597 F 3d 1288, 1294 (Fed Cir 2010). 166 Crocs Inc v ITC 598 F 3d 1294 [2010] WL 638272 (Fed Cir 2010). 167 Re Mann, 861 F 2d 1581, 1582 (Fed Cir 1988). 168 Richardson v Stanley Works Inc 597 F 3d 1288, 1294 (Fed Cir 2010), following OddzOn Prods., Inc. v Just Toys, Inc., 122 F 3d 1396, 1456 (Fed Cir 1998 en banc). 169 Lockhart J in Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393; 97 ALR 615; 19 IPR 531; [1991] AIPC 37, 226. 170 Trade Related Intellectual Property Rights Agreement (TRIPS) 1994, Art 25(1). 171 Dir 98/71 Art 7(1) and equivalent Council Reg 6/2002 Art 8(1). 172 Dir 98/71 Art 7(1) and equivalent Council Reg 6/2002 Art 8(1). 173 Interlego A.G. v Tyco International Inc, [1988] RPC 343 PC at 357. 162

45

Chapter 2: The Overlap between Patent and Design Protection article is intended mechanically to do.’ In the case where shape is inseparable from function, almost all design registration schemes withhold protection.174 (2) Reasons for exclusion of functional designs 2.101 Some175 suggest that the European exclusion merely re-enacts the former French patentability

exclusion. The Recitals, however, indicate that its purpose is that ‘technological innovation should not be hampered’.176 2.102 That would only occur where a design monopolized or pre-empted a technical innovation.

The ‘technology’ involved in most designs is the simplest of mechanical engineering, which is often not patentable. High-technology products (computers, mobile phones) are often protected by design, but merely in their externals, not the innovative electronics or software which drive them. 2.103 The US functionality test developed from a different source—as a sub-test for absence of

ornamental character.177 However, influenced by trade dress law, it is nowadays often applied as a defence to infringement to ensure freedom to compete in the market. (3) The ‘multiplicity of forms’ sub-test 2.104 Freedom to compete is absent in the rare case where the function of a product can only be

performed by a single shape. According to the ‘multiplicity of forms’ test, in all other cases, ‘A design is not dictated solely by its function when alternative designs for the article of manufacture are available.’178 This test is and has been used in many countries. The competition law rationale was well expressed by the Israeli Supreme Court,179 . . . when there are also other designs that achieve the useful objective, it cannot be said that the design is dictated only by the function, and there is no overlap between the delineations of design registrations and utility patents, because another person can create his own object that performs the same function with the same effectiveness by changing the form without having the design registration stand in his way. 2.105 The enduring popularity of this test is due to the fact that it is:

• Focused on the situation where a design can become anticompetitive because there is no market alternative to fulfil the same function in the same way; and • Objective, not subjective.

174 As the new European design law does by virtue of Dir 98/71 Art 7(1) and corresponding Council Reg 6/2002 Art 8(1), and as the UK has for registered designs, but not unregistered designs or copyright, since the end of ‘utility designs’, already discussed. The former Scandinavian law contained no functionality exclusion, and authority was divided on whether the older Australian law did so. 175 For example Cohen, see n 21 at 23. 176 Dir 98/71 Recital 14, Council Reg 6/2002 Recital 10. 177 ‘. . . it has long been settled that when a configuration is the result of functional considerations only, the resulting design is not patentable as an ornamental design for the simple reason that it is not “ornamental”—was not created for the purpose of ornamenting.’ Re Carletti 328 F 2d 1020, 1022 (1964), followed in Best Lock Corp v Ilco Unican Corp 94 F 3d 1563 (Fed Cir 1996). 178 Best Lock Corp v, Ilco Unican Corp 94 F 3d 1563 (Fed Cir 1996), citing LA Gear Inc v Thom McAn Shoe Co 988 F 2d 1117, 1123 (Fed Cir 1993), 179 A.A. Sharnoa Ltd. v Seren Meuhadot Industries Ltd N. Tnuva, Court decision 22(1)113, English summary by Reuben Berman, downloaded on 6 June 2011 from last visited 27 February 2012.

46

F. Design Law Exclusions It was extensively used in the UK in the late nineteenth and early twentieth centuries, until 2.106 decisively terminated by AMP v Utilux180 in 1971. The Australian courts followed the same approach until recent amendments to their design statute,181 and it was in the past employed elsewhere in Europe.182 Under the new European design law, the Advocate-General of the CJ183 held multiplicity of 2.107 forms to be the correct approach, and German,184 Spanish, and UK Courts185 followed— unlike those of the Netherlands186 or, recently, France.187 In the US, the multiplicity of forms test is always relevant, and some courts have treated it as 2.108 dispositive,188 but its precise status nowadays is unclear—it may now merely be one of several indicative sub-tests.189 A criticism is that it would apply only in a few, if any, circumstances, so that the scope of the 2.109 exclusion ‘would be reduced almost to vanishing point’.190 But this is not a principled objection. Some are attracted to the notion that exclusions have to be ‘given teeth’ by broad interpretation, but exclusions are sometimes included for declaratory or normative purposes,191 or to deal with situations which, although rare, are important.192 The mating shapes of a lock and corresponding key are often given as an example where the 2.110 multiplicity of forms test would bite—the key can only be the shape it is if it is to turn the lock. This was the fact-pattern considered in Best Lock v Ilco Unican193 where the design patent concerned was held invalid—though the dissenting judgment suggests that even this was not an open-and-shut case.194

180

[1972] RPC 103 (HL). Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393; 97 ALR 615; 19 IPR 531; [1991] AIPC 37, 226. 182 See Suthersanen, n 44 at 12-064, 12-018 for Belgium, 13-022-13-031, 13-110 for France. 183 Case C-299/99 Philips v Remington Opinion of Advocate-General Colomer, [2001] RPC 38, [2001] ETMR 48 [2002] ECR I-5475 at [34]. 184 See, for instance, Stuttgart Appeal Court, decision of 30 April 2008; Dusseldorf District Court, 16 July 2008 email from Henning Hartwig to the author, 22 June 2011. 185 Landor & Hawa v Azure [2006] EWCA Civ 1285 [2006] ECDR 31 (CA) followed the AGO’s Opinion but in Dyson v Vax [2010] FSR 39, [2010] EWHC 1923 (Pat), [2010] ECDR 18 this was said to be obiter and not followed. 186 Synergys v Geha, s’Hertogenbosch Court of Appeal, 4 November 2003 (BIE 2004, 44). 187 Cohen, see n 21 and the discussion in OHIM Board of Appeal Case R 690/2007-3 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB [2010] ECDR 1. 188 Best Lock Corp v Ilco Unican Corp 94 F 3d 1563 (Fed Cir 1996), citing LA Gear Inc v Thom McAn Shoe Co. 988 F 2d 1117, 1123 (Fed Cir 1993). 189 For example, Rosco v Mirror Lite 304 F 3d 1373, 1378 (Fed Cir 2002), but it may be a ‘very persuasive rationale’, Avia v LA Gear 7 USPQ 2d 1548, 1533 (Fed Cir 1988). 190 Because ‘. . . it is difficult to imagine any actual case where one shape and one shape alone will work’, Lord Reid in Amp Incorporated v Utilux Proprietary Limited [1972] RPC 103 at 109. See also R 690/2007-3 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB [2010] ECDR 1, para 30 ‘highly exceptional circumstances’. 191 Especially those of European law, drafted by conciliatory compromise between competing committees. 192 The European functionality exclusion was indeed intended to apply only in ‘those extremely rare cases where form follows function’ (Memorandum accompanying amended Draft Directive). 193 Best Lock Corp v Ilco Unican Corp 94 F 3d 1563 (Fed Cir 1996). 194 On the basis that there were many different lock-and-key combinations. Lord Reid also doubted that it was truly a single shape situation—Amp v Utilux, see n 190 at 109. 181

47

Chapter 2: The Overlap between Patent and Design Protection 2.111 Similar facts confronted the UK House of Lords in Stenor v Whitesides,195 which concerned

an interfitting fuse, where a corresponding patent indicated that ‘the correct fuse will therefore constitute a kind of key for operating the switch mechanism, which cannot be operated by an incorrect key.’ Unsurprisingly, it was held invalid.196 2.112 Sensibly viewed, the multiplicity of forms test can come into play more widely.197 The sim-

pler the design, and the greater the technical constraints, the narrower the range of shapes which will do the job. (4) Kestos v Kempat 2.113 The origin of the ‘dictated by function’ test in UK law was Kestos v Kempat & Kemp,198 in

which the judge adopted a phrase from Counsel’s submissions, ‘A mere mechanical device199 is a shape in which all the features are dictated solely by the function or functions which the article has to perform’, and it was adopted into the Statute in 1949 (regrettably, according to Amp v Utilux). Kestos concerned a bra, covered both by the asserted design and by a parallel patent. Although it refers to an earlier case which had found the ‘multiplicity of forms’ test inadequate, the decision in Kestos (finding the design valid but not infringed) clearly used that test, Figure 1 of the drawings attached to the Specification is substantially identical with the drawing which is the subject of the registered Design. It is true that the Specification [of the patent] is directed to the particular functions which it is claimed that a brassiere, made in accordance with the invention as therein described and as shown in Figure 1, performs. It is, I think, impossible to suggest that all brassieres must necessarily be made substantially in accordance with Figure 1 and in my judgment the registered Design cannot properly be said to cover a mere mechanical device or a mode or principle of construction within the meaning to be attributed to those phrases . . . [ie all features solely dictated by function].200

Figure 2.7 Kestos v Kempat & Kemp

195

Stenor Ltd v Whitesides (Clitheroe) Ltd, (1948) 65 RPC 1 (HL). As being a ‘mere mechanical device’—the then-prevailing exclusion. 197 Hosokawa Micron International Inc v Fortune (1990) 26 FCR 393; 97 ALR 615; 19 IPR 531; [1991] AIPC 37, 226 Gummow J. dissenting. 198 (1936) 53 RPC 139. 199 The relevant exclusion in the 1919 Act. 200 Kestos (1936) 53 RPC 139 at 152. 196

48

F. Design Law Exclusions Claims: 1. A bust support consisting essentially of two breast pockets, a girdle running horizontally below the breasts and wholly or partially integral with the pockets, two shoulder straps, each of which is attached to the top of the corresponding pocket, passes substantially vertically over that shoulder directly above the pocket and is attached at its other end to the girdle, and two bands, preferably elastic, which are connected to the upper edges of each of the two breast pockets and cross over each other freely in the hollow of the chest, substantially as described. 6. A bust support constructed substantially as described with reference to the accompanying drawings.

(5) ‘Multiplicity of forms’—refinements Some consider the multiplicity of forms test too generous, on the basis (unlikely in practice) 2.114 that where a small number of discrete forms are available, registering them all would create a monopoly in the function.201 Problems arise where the alternatives are impractical or less advantageous—if a design 2.115 monopolizes the optimum shape for a given function, there is inevitably a cost to competitors in avoiding it. US courts have adapted the multiplicity of forms analysis to take account of these issues. For example, in PHG v St John202 (design patents for medical patient identification label sheets, claiming priority from a utility patent application), the Court considered that not all alternatives were commercially realistic. A full multiplicity of forms investigation involved determining (inter alia) whether: • the ‘protected design represents the best design’, and • ‘alternative designs would adversely affect the utility of the specified article’. (6) Subjective tests—designer’s intention, user’s impression By way of contrast, rather than adapting the multiplicity of forms test, the UK courts 2.116 abandoned it altogether. (7) Designer’s intention In Amp v Utilux,203 a set of concurring but disparate judgments on the design of an electrical 2.117 connector,204 the House of Lords decided that ‘dictated’ meant, ‘driven by’—the question was whether no other motivation than function was present, rather than whether no other shape was possible.

201 See Tecalemit Limited v Ewarts Limited (No 2) (1927) 44 RPC 503 and Infields v Rosen (1939) 56 RPC 163—both wrong on the facts, in the view of the present writer. 202 PHG Technologies LLC v St John Companies Inc. 469 F 3d 1361 (Fed Cir 2006), following Berry Sterling v Pescor Plastics 122 F 3d 1452, 1455 (Fed Cir 1997). Dinwoodie and Janis, see n 19, comments that these cases restate the trade dress formulation from Re Morton-Norwich Products, Inc 671 F 2d 1332 (CCPA 1982). 203 Amp Incorporated v Utilux Proprietary Limited [1972] RPC 103. 204 See Interlego A.G. v Tyco International Inc, [1988] RPC 343 (HL), a few years later, in which the House of Lords in its guise as the Privy Council commented that ‘That is a decision which has given rise to a little difficulty because the views expressed by the Lords who composed the Committee in that case do not altogether coincide . . .’

49

Chapter 2: The Overlap between Patent and Design Protection

Perspective view from above and one side

A

Figure 2.8 Amp v Utilux 2.118 The designer conveniently conceded that he had only considered function, and the design

was duly invalidated. However, in general application, that approach does raise some obvious problems: • It is not transparent—the designer’s motivation is private; • Cross-examination of the designer is not always available; • Designers may unintentionally create something attractive to a consumer, which should be protected;205 • Even the best or only possible shape could be protected where there was some intention to create a striking appearance (whereas it would be rejected by the multiplicity of forms test). (8) User’s conception of designer’s intention 2.119 These drawbacks (together with the inconvenient fact that the designer swore he had aesthetic

considerations in mind) led OHIM206 to view the question through the eyes of the user, It goes without saying that these matters must be assessed objectively: it is not necessary to determine what actually went on in the designer’s mind when the design was being developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything other than purely functional considerations could have been relevant when a specific feature was chosen. 2.120 But this question, whether the tribunal would think the observer would think the designer

was functionally motivated, is a long way from the underlying question whether the design actually is functional—it struggles to bear the weight of a double load of legal fiction. 2.121 It is more likely to break down where an article is both functional and aesthetic—a user

seeing an attractive design will not discern any associated technical function (unless his habits include reading parallel patents). For example, in Cow v Cannon,207 the design involved diagonal ridges on a plastic hot water bottle. It was held that although the ribs had a function in preventing the user’s feet from being burnt, the evidence did not show that this was the 205 As recognized by Lord Reid in Amp v Utilux, but see, per contra, rejecting the design under the multiplicityof-forms test, Best Lock Corp. v Ilco Unican Corp: ‘Any aesthetic appeal of the key blade design . . . is the inevitable result of having a shape that is dictated solely by functional concerns.’ 206 OHIM Board of Appeal Case R 690/2007-3 Chaff Cutters Lindner Recyclingtech GmBH v Franssons Verkstader AB [2010] ECDR 1, approved in Dyson v Vax [2010] FSR 39, [2010] EWHC 1923 (Pat), [2010] ECDR 18. 207 PB Cow & Co v Cannon Rubber Manufacturers (No 1) [1959] RPC 947 (CA).

50

F. Design Law Exclusions sole reason why the particular configuration concerned had been adopted, and others were possible. Thus, features with two purposes, functional and non-functional, could be protected by design. Presumably, the designer had given thought to the issue of heat dissipation, but it is likely that the user would (incorrectly) have seen the pattern of ribs on a cheap consumer product as purely ornamental. It may be unrealistic nowadays to imagine that users separate ‘ornamental’ from ‘functional’ 2.122 appearances. Many designers, since the Bauhaus, have made a virtue of merging rather than separating form and function.208 Part of the appeal of a useful product is the promise of good performance,209 and products 2.123 which are fit for purpose are often also attractive—perhaps all attractiveness, whether in things, animals, or people, does no more than reflect fitness for some purpose. A user confronted with what appears to be a functional design may be attracted to it because it appears functional—whether or not it actually is so. Functional appearance itself may, for some users, be no more than a fashion statement.210 The aesthetic of merged function and form, the aesthetic of form as promise of functional performance, the aesthetic of unneccessary function as ornament, are poorly dealt with by current judicial approaches.

Figure 2.9 Cow v Cannon 208

See, for example, Dinwoodie and Janis, n 19 at 13, Suthersanen, n 44 at 12. ‘But a terminal will appeal to the eye of an electrician only if he thinks it best for his purpose. It is its suitability for its function that will determine his choice . . .’ Amp v Utilux, per Viscount Dilhorne. 210 Denim jeans, combat-chic camouflage wear, motorbike jackets, and Doctor Martens boots; and leisure vehicles based on military models, for example. 209

51

Chapter 2: The Overlap between Patent and Design Protection 10

12

12 10 11

Figure 2.10 Lego patent GB 587206 2.124 The LegoTM litigation illustrates the difficulty. After the basic patents expired, the UK Privy

Council211 held that the design of the LegoTM toy building brick had eye appeal and was registrable—virtually an inevitable conclusion for a child’s plaything, one might think, but when considering and rejecting a much later trademark application, OHIM came to the opposite conclusion, holding that the brick was entirely functional. Even though it had eye appeal, this was merely ‘ . . . the aesthetics of a sound structural and functional form.’212 (9) Nature of the product 2.125 Most decisions on functionality can be rationalized on the nature of the product (and hence

the user or buyer) rather than the design. It is surely arguable that the ‘function’ of the bra in Kestos was partly aesthetic—as for any article of clothing.213 Wingate’s Registered Design 214 concerned a pair of spectacles protected by patent and design—it was held that the design was not excluded as functional and lacking in eye appeal, largely, it seems, because of the nature of the product itself. Per Interlego AG v Tyco International,215 . . . it makes no sense to exclude from protection designs for articles which have—and indeed may be intended to have as their principal attraction—a distinctive and novel appearance merely because they also contain features . . . which are dictated by the functional requirements. 2.126 A design for a consumer product where ‘aesthetic considerations’ are ‘normally taken into

account to a material extent’216 by the buyer or user may have functional parts, but unless these are the only points of novelty, the design as a whole will almost always be protectable without the need for further enquiry. 2.127 The situation where the product is not of this nature—for example, the internal component

part of Amp v Utilux—is more difficult. For the US,217 ‘The design for the article cannot be 211

Interlego A.G. v Tyco International Inc, [1988] All ER 949, [1988] RPC 343 (HL). Lego Juris A/S v Mega Brands Inc (R 856/2004-G) [2007] ETMR 11 OHIM (Grand Board of Appeal) at para 63. 213 Strangely, in the US, clothing and footwear is seen as generally functional; see, eg, Avia Group International Inc v L. A. Gear California Inc, 853 F 2d 1557, 1563, 7 USPQ 2d 1548, 1553 (Fed Cir 1988). 214 (1935) 52 RPC 126. 215 [1988] RPC 343 at 354. 216 To quote the exclusion adopted in the UK between 1989 and 2001 as the Registered Designs Act 1949, s 1(3). 217 MPEP 1504.01(c) Lack of Ornamentality [R-5] - 1500 Design Patents, 1. FUNCTIONALITY VS. ORNAMENTALITY, citing Avia Group International Inc. v L. A. Gear California Inc, 853 F 2d 1557, 1563, 7 USPQ 2d 1548, 1553 (Fed Cir 1988), concerning footwear. 212

52

F. Design Law Exclusions assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional.’ Nonetheless, the onus of proof is usually on the applicant to show the contrary. (10) Visibility An issue raised by, but not argued in, Kestos v Kempat is the fact that the bra is not visible in 2.128 normal use (ie, wear). Although visibility is not per se relevant to patentable inventions, in practice many patented mechanisms (automobile engines for example) will in normal use be hidden from view for a range of reasons including aesthetics, safety, aerodynamics, or protection against dust. The components in Amp v Utilux were ‘unseen in the machines for which they were required 2.129 (save by those who make or service the machines)’. Non-visibility was thus relevant to the findings that the design was functional and lacked ‘eye appeal’, as evidence that no one cared about the form or appearance of the product. Visibility alone is, however, an inadequate test. Articles may be bought, used, and appreci- 2.130 ated in many different ways. As noted above, few would claim that the appearance of undergarments (as in Kestos) is irrelevant. For example, in Ferrero’s Application218 in the UK, the interior of a chocolate egg was initially rejected as being not visible at point of purchase but upheld on appeal as being visible at point of end use, and in Re Webb219 in the US, a hip prosethetic, initially rejected as being not visible at point of end use, was upheld on appeal as being visible on purchase.

Figure 2.11 Ferrero’s Application

218 219

[1978] RPC 473 RDAT. 916 F 2d 1553 (Fed Cir 1990).

53

Chapter 2: The Overlap between Patent and Design Protection

Figure 2.12 Re Webb 2.131 The current European design law has a narrow statutory exclusion for designs which are not

visible in normal end use220 but only for designs of ‘component parts’221 (despite the views of some French commentators222) such as the connector in Amp v Utilux. In the US, non-visibility is ‘a sound rule of thumb’ for refusal, but rebuttable.223 (11) ‘Must-fit’ 2.132 Lock-and-key interfitting designs were statutorily excluded in the UK by 1989 provisions,224

carried over almost verbatim into the current European design law,225 known universally, though inaccurately, as the ‘must-fit’ exclusion. Best Lock and Stenor v Whitesides could

220

Council Reg 6/2002 Art 4(2) and (3) and corresponding Dir 98/71 Art 3(3) and (4). See D. Musker, ‘Hidden Meaning? UK Perspectives on Invisible in Use Designs’, [2003] 25 EIPR 450. 222 P. Du Candé, ‘La Directive No 98/71 CE du 13 Octobre 1998 du Parlement et du Conseil sur la protection juridique des dessins et modèles’, D. Aff No 143, 7 January 1999 10–15, for example. 223 MPEP 1504.01(c) Lack of Ornamentality, III. REJECTIONS MADE UNDER 35 USC 171. 224 Copyright, Designs and Patents Act 1988, s 213(3)(b)(i). 225 Dir 98/71 Art 7(2) and corresponding Council Reg 6/2002 Art 8(2). 221

54

G. The Circular Beach Towel Revisited nowadays have been excluded on this basis, as could the designs featured in several other UK functionality cases.226 (12) Method or principle of construction The exclusion of ‘methods or principles of construction’ from UK unregistered design right 2.133 formerly applied also to registered designs.227 It bites on those designs which are inseparable from their method of manufacture, in two rather different ways. Firstly, it prevents the expansion of scope of a design registration to protect a principle that 2.134 could be expressed in several different shapes. It therefore operates against applicants who file design applications which are generic to several different shapes,228 and against those who frame their assertions of infringement at too high a level of abstraction,229 duplicating, rather than merely overlapping, the scope of patents: Bayer’s Design.230 The exclusion also operates in a second way, related not to the level of abstraction with which 2.135 the design is described or claimed but to the level of specificity of its method of manufacture. Occasionally, the appearance of a product is the unique result of a particular manufacturing process, in the sense that operating that process will always produce that appearance. Granting protection to the only possible product of the process therefore monopolizes the process. That was held to be the case in Bailey v Haynes,231 where a particular mesh used for a fishing net was the inevitable result of the ‘three needle/two course Atlas warp knit pattern’ and hence invalid. Something similar appears to be one of the factors underlying the decision in Moody v Tree.232

G. The Circular Beach Towel Revisited It will hopefully now be apparent that there is no per se bar to coexistence of patents and 2.136 designs, that Claim 2 of your patent is not invalid as purely aesthetic, and that the existence of the parallel design poses no threat to the patent. Is the reverse also true? The product concerned is used to dry, and to lie on. The circular 2.137 design does not monopolize these primary functions—there is no separate market in circular beach towels. It is used openly, so appearance is not irrelevant. It is probably bought partly for aesthetic reasons, as a poncho, or perhaps simply to look striking amidst a beachful of rectangles. The granted patent is no guarantee that every feature of every claim meets all the requirements for patentability. The ‘technical’ advantage attributed to the shape in the patent may just be patent attorney’s puffery or pipedreams.

226 Vandervell v Lundberg (1915) 33 RPC 60, and Tecalemit Limited v Ewarts Limited (No 2) (1927) 44 RPC 503 for example. 227 And still widely used in other countries. 228 Either because incompletely portrayed as in Bayer, or because of broadening text as in Pugh v Riley. 229 See Landor v Hawa International [2007] FSR 181, [2006] ECDR 31, and the various authorities cited therein. 230 (1908) 25 RPC 56 (HL) Lord MacNaghten at 59–60. 231 [2006] EWPCC 5, [2007] FSR 1. 232 (1892) 9 RPC 333, concerning the design of the pattern of a basket, but with a more generic written statement requiring the osiers to be worked in singly with all the butt ends being outwards.

55

Chapter 2: The Overlap between Patent and Design Protection 2.138 The patent does highlight the fact that, whilst a circle is not the only shape that avoids having

to stand up and move around with the sun, it is the most economical in terms of material (when compared with, say, a big square towel) and is hence, in this sense, technically the ‘best’ design. This advantage requires the circular shape, even if it is also aesthetically pleasing. 2.139 But isn’t the material saved (from the cut-off corners) in a useless shape? And isn’t the round

towel more difficult to make than a square one? Cannot an economic disadvantage offset a functional advantage? 2.140 Although the court in Franek v Franco, on which this scenario is based, found the trade dress

concerned to be functional and therefore invalid, it is not certain that the same economic analysis should underlie design law. Should the presence of some technical advantage (if facilitating indolence can really be said to be such a thing) trump the presence of eye appeal, merely because a competitor might want to offer something similar? Until some court gets around to deciding these circular arguments, there is no clear answer.

56

3 PATENTS AND TRADE SECRETS Lionel Bently, University of Cambridge1

A. Hypothetical B. Introduction C. Preferring Trade Secrecy to Patents

(5) The effect of wrongful use or disclosure on confidentiality (6) Policy considerations

3.01 3.04 3.06

(1) The prevalence of a preference for trade secrecy (2) Confidentiality and the risk of disclosure by the confider itself (3) The effect of independent generation of the same information on confidentiality (4) The effect of reverse engineering on confidentiality

D. Trade Secrecy Prior to Patenting (1) Secret use and patenting (2) Self-disclosure (3) Disclosure in breach of confidence

3.06 3.28

E. Trade Secrecy Alongside Patents F. Conclusion

3.31

3.45 3.52 3.58 3.60 3.62 3.72 3.78 3.82

3.41

A. Hypothetical A number of reputed scientists the world over have, for several years, been working on a 3.01 method to prevent the degradation of ‘Anandamide’ in the body. ‘Anandamide’ is a naturally occurring bodily protein that triggers feelings of well-being and pleasure. However, it is susceptible to easy degradation and does not last long in the body. The closest alternative is Cacao which contains an ingredient ‘E’ that is similar to ‘Anandamide’. Unfortunately, the amount of ‘E’ in Cacao is negligible and one would need to ingest large amounts of Cacao before experiencing any discernible effect on well-being. X discovers a way of synthesizing ‘E’ in large doses in the lab. However, rather than patenting 3.02 the said process, he opts to retain it as a secret known only to X and his colleague Y to whom he discloses the idea in confidence. Using this confidential information, Y produces and commercializes a chocolate that soon 3.03 becomes a best seller. Upon being sued by X for breach of confidence, Y claims that by not

1 Some of this paper is based on Lionel Bently and Brad Sherman, Intellectual Property Law 3rd edn (Oxford: OUP, 2008) and Tanya Aplin, Lionel Bently, Phill Johnson, and Simon Malynicz, Gurry on Breach of Confidence (Oxford: Oxford University Press, 2012). My thanks go to my co-authors and OUP for permission to use this material and to Shamnad Basheer for providing the problem and comments on the paper.

57

Chapter 3: Patents and Trade Secrets electing to patent the invention (the process of synthesizing ‘E’ in the lab), X ought not to be able to enforce a claim for breach of confidence/trade secrecy over the very same invention.

B. Introduction 3.04 In most legal systems, patents and trade secrecy represent alternative legal mechanisms for

the protection of the results of innovative technical research.2 Patents, which must be applied for, give the holder a term of absolute exclusivity over all use of the claimed innovation. Confidentiality (or trade secrecy),3 in contrast, offers a more informal means of protection, merely requiring the innovator to maintain the (relative) secrecy of the invention. Although there are circumstances in which only trade secrecy protection will be available, because the innovation does not fall within the category of protectable subject-matter,4 or does not reach the relevant thresholds of patentability (novelty, inventiveness, and industrial applicability),5 in other cases, an invention might qualify under both regimes. This would likely be the case in the example of X’s invention of a process for the manufacture of ‘E’.6 In such circumstances, the two appropriation mechanisms are thought of typically as alternative (rather than cumulative) ways to protect the innovation, in part because patenting requires disclosure of the invention to the public (via the specification),7 so that such information would no longer be secret (and protectable by confidentiality).8 If a person chooses protection by way of a patent, the possibility of using trade secrecy (at least in relation to the identical invention) will no longer exist.9 In the scenario above, X has chosen to rely on trade secrecy rather than to patent the process for making ‘E’. The practical and legal considerations 2 Requirements to offer protection via patents and trade secrecy are imposed on all parties to the WTO, via the TRIPs Agreement: Arts 27 ff (patents) and Art 39 (‘undisclosed information’). The Agreement does not speak explicitly to the interrelationship between the regimes, though if a country excluded patentable, but undisclosed, material from protection, it would be doubtful whether there would be full compliance with Article 39. A country that permitted the same information to be protected both by secrecy and patents would, it seems, breach Article 29, which requires members to ‘require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art.’ There are, of course, exceptions from this principle for national security in domestic law (eg, Patents Act 1977, s 22) that are permitted by TRIPS, Art 73. 3 In England, trade secrets are protected by the law of confidentiality. In the United States, many states have sui generis statutory trade secret regimes, often operating alongside general principles of contractual confidentiality and tortious misappropriation. 4 In most European countries, the exclusions from patentability are contained in Articles 52 and 53 of the European Patent Convention, and the Implementing Regulations. In the UK, the same exclusions are embodied in the Patents Act 1977, s 1(2) and (3) as well as in Sch 1A. In the US, there is a positive definition of patentability, with only a few judicially developed exclusions for laws of nature, physical phenomena, and abstract ideas: USC Title 35, s 101; Parker v Flook, 437 US 584, 589–90 (1978); Bilski v Kappos, 130 S Ct 3218, (2010, US S Ct) (per Kennedy J. at para 4). 5 European Patent Convention, Arts 52(1), 54 (novelty), 56 (inventive step), 57 (industrial applicability); Patents Act 1977, s 1(1), s 2 (novelty), s 3 (inventive step), s 4 (industrial applicability); USC Title 35, s 101 (new and useful), s 102 (novelty), s 103 (non-obviousness). 6 In most situations, it is possible to take different views about the inventiveness (or non-obviousness) of an alleged invention. Here, the goal of improving feelings of well-being by chemical mechanisms is clearly one which scientists have been pursuing, but hitherto they have focused attention on reducing the degradation of ‘Anandamide’ rather than boosting the intake of ‘E’. Consequently, they have neglected to pay attention to whether ‘E’ can be synthesized artificially. 7 European Patent Convention, Art 83; Patents Act 1977, s 14(3); USC Title 35, s 112. 8 Van Products Co v General Welding and Fabricating Co, 419 Pa 248, 265; 213 A. 2d 769 (1965). 9 This was not always so. The requirement of disclosure by way of a specification was in fact only introduced in the early 18th century. Before that, it seems, patent infringement actions and complaints as to appropriation

58

C. Preferring Trade Secrecy to Patents surrounding such an election are considered in Section C, along with some discussion of the policy underpinning the practice of allowing an innovator to elect to rely on trade secrecy in preference to patenting. However, patents and trade secrets are not always alternatives in the way that X has 3.05 understood them. In many cases, a person will protect an invention as a trade secret in the period before the patent is published. In these circumstances, confidentiality and patenting are complementary. The legal considerations applicable to such an approach are considered in Section D. In yet further situations, a person will use both trade secrecy and patents alongside one another. This will not be possible for exactly the same information. But, in many cases, it is possible for a person to patent inventive aspects of an innovation, while protecting all sorts of tangential information about how best to perform the patented process, or make the patented product. In these cases, it is common to refer to the information as ‘know-how’. The ramifications of this sort of exploitation of technology are considered in Section E.

C. Preferring Trade Secrecy to Patents (1) The prevalence of a preference for trade secrecy X’s decision to rely on trade secrecy protection, rather than to patent the process of making 3.06 ‘E’, is by no means unusual: the primary importance of trade secrecy as a mechanism for protecting innovators is now firmly established in empirical literature, with respect to the US,10 Canada,11 European Union,12 and the United Kingdom.13 According to Anthony Arundel,14 these surveys ‘consistently show that manufacturing firms give secrets a higher average rating [than patents] as an appropriation method for both product and process innovations.’ Arundel analysed data collected in the 1993 (European) Community Innovation Survey. 3.07 Taking a subset of 2849 respondent businesses that reported that they perform R&D on a continuous basis, Arundel analysed replies to the question ‘evaluate the effectiveness of the following methods for maintaining and increasing competitiveness of product [or process] innovations introduced during 1990–1992’. The methods included lead-time, secrecy, complexity, patents, and design registration, and the respondents were asked to grade the significance from ‘insignificant’ to ‘crucial’ on a five point scale. Most gave the highest rating to lead time, but 19.8 per cent rated secrecy as ‘crucial’ for process innovations, while 16.9 per cent rated secrecy ‘crucial’ for products. This surpassed the relevant figures for patents which were 7.3 per cent (process) and 11.2 per cent (products). Recognizing problems with the approach of trade secrets, could exist side by side. See Christine Macleod, Inventing the Industrial Revolution, (Cambridge: CUP, 2002) 52. 10 R. Levin, A. Klevorick, R. Nelson and S. Winter, ‘Appropriating the Returns from Industrial R&D’, Brookings Paper on Economic Activity, 783–820 (1987) (the ‘Yale survey’); W. Cohen, R. Nelson and J. Walsh, ‘Protecting their intellectual assets: appropriability conditions and why US manufacturing firms patent (or not)’, NBER Working Paper No 7552. 11 N. Amara, R. Landry, N. Traoré, ‘Managing the Protection of Innovations in Knowledge-Intensive Business Services’, (2008) 37 Research Policy 1530–1547, 1537, 1542. 12 A. Arundel, ‘The relative effectiveness of patents and secrecy for appropriation’, (2001) 30 Research Policy 611–624. 13 See also N. Harabi, ‘Appropriability of Technical Information’, (1995) 24 Research Policy 981–992 (study of Swiss businesses). 14 Arundel, see n 12, at 612. See also Nisvan Erkal, On the Interaction Between Patent and Trade Secret Policy, (Melbourne: AIPRC, 2004) 9.

59

Chapter 3: Patents and Trade Secrets taken in collating these figures, Arundel took the raw data to examine the relative rating of patents and secrecy by each respondent. 44.3 per cent rated secrecy more important than patents, and only 17.5 per cent thought patents were more important than secrets. 3.08 Similar results in the UK are apparent from the Innovation Survey 2007. The UK survey

sampled over 28,000 UK enterprises (with a 53 per cent response rate). The survey asked respondents to rank the importance of the different methods that were used to protect product innovation during the three year period from 1 January 2004 through to the end of 2006.15 Confidentiality agreements ranked as the most important, with lead time and ‘secrecy’ second.16 In all sectors, 15 per cent ranked confidentiality as highly important, 10 per cent ranked secrecy as highly important, while only 7 per cent ranked patents. In the knowledge intensive industries, 32 per cent ranked confidentiality as highly important, while 19 per cent rated secrecy: only 10 per cent ranked patents as highly important. 3.09 The scenario which concerns us, then, is far from atypical. But, why would a person such as

X choose trade secrecy over patents? What are the benefits of so doing? What are the risks? What remedies if any would he have against Y? What would happen if Y patented the chocolate containing ‘E’? Can X prevent this? Claim ownership? Does X’s trade secret continue to have any force? (a) The benefits of secrecy 3.10 The benefits of relying on trade secrecy are seemingly obvious: trade secrecy provides protection

informally and cheaply; it keeps critical information from competitors, rather than revealing it to them; and it has the potential to last longer than patent protection. 3.11 Firstly, and most importantly, protection is available cheaply and pretty much automatically.

All that X needs to do is to ensure that the information is kept secret and only revealed in circumstances where the recipient is under an obligation of confidence. According to the seminal English High Court decision in Coco v Clark,17 an action for breach lies where three criteria are satisfied: (1) information having the ‘necessary quality of confidence’ is (2) held by a person under an obligation of confidentiality and (3) is disclosed or used in a manner inconsistent with the obligation. It is worth elaborating on these requirements a little so as to be clear on how much easier it is to protect information through the law of confidentiality. 3.12 Information has the necessary quality of confidence if it is ‘relatively secret’.18 There is no

requirement of novelty or inventiveness. Generating information or even compiling bodies of pre-existing information will (on the whole) suffice.19 However, information that is easily accessible to interested parties would most likely not be regarded as confidential.20 Thus, the threshold is low: anything patentable would, in practice, have the necessary quality of confidence. In our example, X’s innovative process for synthesizing ‘E’ would meet the threshold easily. 15 CIS 5 Questionnaire, Q. 18 last visited 16 March 2012. 16 UK Innovation Survey 2007, Statistical Analysis at last visited 27 February 2012. 17 [1969] RPC 41. 18 Franchi v Franchi [1967] RPC 149, 153 per Cross J; Stephens v Avery [1988] Ch 449, 454H; Attorney General v Guardian (No 2) [1990] 1 AC 109, 177C-E and 282C-D. 19 Schering Chemicals Ltd v Falkman [1982] QB 1. 20 Re Titan Group Pty Ltd and Titan Gym Equipment Pty Ltd v Steriline Manufacturing Pty Ltd; Anthony Mcgregor Sims and Trimtech Pty Ltd [1990] FCA 402 (18 October 1990).

60

C. Preferring Trade Secrecy to Patents A person comes under an obligation if one is specifically undertaken, or if a reasonable 3.13 person receiving information would realize that it was being disclosed in confidence.21 Thus obligations can arise quite informally. Moreover, it is now clear (after some years of uncertainty) that a third party recipient of information in breach of confidence will come under an obligation where he or she is aware that the information is confidential.22 In fact, a ‘stranger’ who acquires confidential information by accident, or deliberately, will be regarded as being under an obligation if he or she appreciates the information is confidential. In a significant development, Lord Goff indicated that a person who found an obviously confidential document in the street would be treated as under an obligation of confidence.23 In the case of employees, in the absence of an express contractual term, an implied contractual 3.14 obligation of confidence arises automatically as a standard incident of the relationship. Sometimes this is described as part of the employee’s broader duty of good faith,24 but it is probably best treated as a freestanding obligation.25 The obligation will survive the termination of employment, so someone in Y’s position cannot relieve themselves of their duty merely by resigning from employment.26 That said, in the post-employment period the obligation is attenuated, and only relates to ‘trade secrets’ or equivalent highly confidential information (and certainly would not encompass confidential matters that had become part of the employee’s ‘skill and experience’.)27 Courts have struggled to define precisely this category of information, though it is clear that where the information relates to a distinct process, such as the process for synthesizing ‘E’, and is treated by the employer and understood by the employee to be highly confidential, for example because its disclosure to a competitor would seriously damage the interests of the former employer, it will fall within the post-employment obligation.28 Information which would be patentable should certainly be regarded as amounting to a trade secret.29 The third requirement, that the information be used or disclosed in breach of the obligation 3.15 (or acquired in circumstances that violated the ‘obviously confidential’ nature of the information), has been less explored. As we will see below, in some ways this (like the requirement of an ‘obligation’) represents a limitation on the action that is not present in the case of patent infringement. But the key point, for the moment, is that, particularly with respect to the creation of obligations, the requirements for the action for breach of confidence are not onerous. Other countries operate similar requirements. In the United States, where trade secrets 3.16 are protected primarily as a matter of state law, the requirements are slightly more taxing. 21

Coco v A.N. Clark (Engineers) [1969] RPC 41, 48. Attorney General v Guardian (No 2) [1990] AC 109, 260, 268; Douglas v Hello! [2008] 1 AC 1, 46–7 (paras 113–115); Tchenguiz v Imerman [2011] 2 WLR 592, 621, (para 74). 23 Attorney General v Guardian (No 2) [1990] AC 109, 281–2 (Lord Goff); Douglas v Hello! [2008] 1 AC 1, 46–7 (paras 113–115); Tchenguiz v Imerman [2011] 2 WLR 592, 618–9 (esp paras 64 and 68). 24 Spafax Ltd v Harrison [1980] IRLR 442, 446 (para 25). 25 Lister v Romford Ice and Cold Storage Co Ltd [1957] 2 WLR 158, 167, 183; Lancashire Fires Ltd v S.A. Lyon & Co Ltd [1996] FSR 629, 648 (Ch); SG & R Valuation Service Co v Boudrais and Others [2008] EWHC 1340, QB. 26 Kirchner & Co v Gruban [1908] 1 Ch 413, 422; Helmore v Smith (1887) 35 Ch D 449, 456, CA. 27 Faccenda Chicken v Fowler [1987] 1 Ch 117, 136B-C, CA. 28 Faccenda Chicken v Fowler [1987] 1 Ch 117, 137–138, CA; Lansing Linde Ltd v Kerr [1991] 1 WLR 251, 260. 29 New Zealand Needle Manufacturers Ltd v Taylor and Anor [1975] 2 NZLR 33, 43–44 (S Ct Auckland). 22

61

Chapter 3: Patents and Trade Secrets Most states model their laws on the Uniform Trade Secrets Act (1979, as amended in 1985) (UTSA),30 which defines ‘Trade Secret’ as:31 information, including a formula, pattern, compilation, program, device, method, technique or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy. 3.17 Like the English law of confidence, the UTSA does not require that the secret be new, only

relatively secret. UTSA merely requires that the information is ‘not . . . generally known to, and not . . . readily ascertainable by proper means by other’ interested persons. The information is thus not regarded as a secret if relevant actors who can obtain economic benefit from the information are aware of it. According to the Committee’s comments, information is ‘readily ascertainable’ if it is available in published materials, trade journals and so on. 3.18 One notable difference between this and the approach taken in England lies in the explicit

requirement that the claimant demonstrate that he has taken ‘reasonable’ efforts to keep the information confidential.32 While the demonstration that the claimant has taken sensible steps to protect the information in his control clearly plays a role in English law (informing, for example a court’s willingness to assist the claimant), there is no requirement that such ‘efforts’ be demonstrated as a precondition for relief. However, it is significant that even in the United States there has been a tendency to play down this requirement.33 3.19 In contrast with the position in relation to confidentiality (in England) and trade secrecy (in

the United States), to obtain a patent in either country, an innovator has to be much more active (and spend much more money). A formal process of application to national registries is required,34 and in turn the inventor needs to draw up documents in a particular form. This typically involves the use of specialist patent agents. Moreover, consideration is needed of precisely where protection is desired, and, while international mechanisms exist to make the process easier (and offer some space to decide whether all the expense is worth making),35 the expense of obtaining protection in a host of national offices is considerable. A good portion of the expense lies with getting the patent documentation translated, since the group of specialist translators who understand cutting edge technology is inevitably somewhat scarce. 3.20 If informality and lack of expense is the first attraction of trade secrecy as an appropriation

mechanism (particularly for SMEs), the second lies in the fact that trade secrecy protection allows the innovator to keep information from his or her competitors. In contrast, as already noted, patenting involves disclosure of details of one’s invention to the public, and thus, to one’s competitors. While recent patent scholarship has emphasized that there may be important 30

45 states have adopted the UTSA. UTSA, s. 1(4). 32 Rockwell Graphic Sys, Inc v Dev Indus, Inc, 925 F 2d 174, 178–80 (7th Cir 1991). 33 Third Restatement of Unfair Competition s. 39 cmt g (1995). 34 For the UK, this would be either to the UK Intellectual Property Office (IPO) or the European Patent Office (EPO); for the United States, to the US Patent and Trademark Office (USPTO). 35 In particular, the Patent Co-operation Treaty (1970). 31

62

C. Preferring Trade Secrecy to Patents benefits that flow to a patentee from such ‘signalling’ that he or she has made an innovation,36 disclosure has tended to be viewed by patentees as a ‘cost’ or disadvantage of patenting. Contemporary surveys of businesses reveal that the same motive plays a very significant role on the choice of trade secrecy over patenting. In our case, it is difficult to predict whether the process of synthesizing ‘E’ would be easy to invent around. A third advantage of secrecy over patenting is found in the potential for trade secrecy to last 3.21 indefinitely, compared with the limited term of patenting (in most countries now 20 years from filing).37 The most notorious example of such a trade secret is, of course, the recipe for the drink, Coca Cola, which has been kept secret, it seems, since the end of the nineteenth century.38 Some of the early nineteenth century cases also bear witness to a host of secrets (particularly relating to the ingredients of recipes) that remained secret for much longer than the term of a patent (then 14 years). Newbery v James,39 for example, was an action heard in 1817 in relation to James’ powders, a supposed cure for gout, rheumatism, and other ailments, which was being exploited at least 70 years earlier. (b) The limits of secrecy If the advantages of secrecy over patenting are relatively obvious, it is perhaps worth observing 3.22 some of the limitations of trade secrecy. For, as Burger CJ has observed in the US Supreme Court,40 ‘[t]rade secrecy law provides far weaker protection in many respects than patent law.’ For the most part these limitations relate to establishing infringement: ‘breach of confidence’ only occurs where a person uses information disclosed to him or her in confidence, and not where he or she independently creates the information (including by reverse engineering); moreover, even if a person has utilized confidential information, it will not always be easy to prove this. In addition, remedies afforded to a claimant who has suffered a breach of confidence (particularly in the United States) are less generous than those offered to a patentee. These limitations raise significant doubts as to the superiority of confidence over patents. First, to establish breach of confidence it is necessary to show that the defendant’s activity 3.23 involves the use of confidential information derived from the confider.41 There must be a causal link.42 Or, looking at it from the position of a defendant, there is no breach of confidence where there has been independent invention.43 In contrast, patent law provides a patentee with the exclusive right to perform the invention that is defined in the claims of the patent.44 There is no requirement of scienter,45 nor derivation, and independent invention is

36

Clarissa Long, ‘Patent Signals’, (2002) 69 Uni Chi Law Rev 625. EPC, Art 63; 35 USC s 154(b). 38 Coca-Cola Bottling Co of Shreveport, Inc v Coca-Cola Co, 107 FRD 288, 289 (D Del 1985) (Chief Judge Murray Schwartz) (Coca-Cola’s distinctive taste attributable to secret combination of ingredients known as ‘Merchandise 7X’). 39 2 Mer 446, 35 ER 1011 (1817). 40 Kewanee Oil Co v Bicron Corp (1974) 94 S Ct 1879, 1890 (US S Ct). 41 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) RPC 203, 213, CA; Chicago Lock Co v Fanberg, 676 F 2d 400, 404 (9th Cir 1981). 42 Seager v Copydex [1967] 2 All ER 415; Talbot v GTV [1981] RPC 1, 17 (S Ct Vict). 43 Glaxo Inc v Novopharm Ltd, 931 F Supp. 1280, 1303 (EDNC 1996) (para 21). 44 Patents Act 1977, s 60; 35 USC s 154(a). 45 R v Patents Appeal Tribunal, ex p Beecham; Bristol-Myers Co v Beecham Group Ltd [1974] AC 646, 677 B-C (Lord Diplock). Breach of confidence, similarly, can occur subconsciously: Seager v Copydex [1967] 2 All ER 415; Talbot v GTV [1981] RPC 1, 17 (S Ct Vict). 37

63

Chapter 3: Patents and Trade Secrets no defence.46 In fields where independent actors are likely to come up with similar breakthroughs at similar times,47 an intellectual property right that covers even the acts of independent inventors offers considerably greater security.48 3.24 Second, and related, in a breach of confidence action a claimant must prove derivation. Such

proof can sometimes be straightforward: a defendant can be shown to have copied relevant materials and used them in his or her activities.49 However, proving derivation is frequently more difficult.50 For example, a court may be asked to infer derivation from peculiar features of the claimant and defendants’ activities,51 or from the speed with which a defendant came up with the same breakthrough or innovation after having access to certain information.52 Of course, in a patent action, evidence that the defendant drew upon the patentee’s invention will be of assistance (and may help to establish some sort of ‘prejudice’ against the defendant), but it is certainly not necessary. 3.25 Third, even if a claimant succeeds in establishing breach of confidence, the suite of remedies

on offer may be weaker than if the innovation had been patented.53 This is particularly so in the United States, where the Patents Act provides for the possibility of ‘treble damages’, that is a damages award equivalent to three times the value of the harm suffered by the patentee.54 In contrast, the UTSA makes provision for ‘double damages’ for cases of wilful and malicious appropriation.55 In England, after some uncertainty, it seems that in general the controller of confidential information is entitled to injunctive relief to prevent a breach of confidence (subject to the conventional rules of equity),56 and may elect between an account of profits and compensatory damages.57 Consequently, there does not appear to be any significant disadvantages to relying on secrecy, as these remedies seem exactly to parallel those available for patent infringement. Indeed, the Court of Appeal has held that the provisions of the European Union’s Enforcement Directive apply to cases of breach of commercial confidence as much as to cases of patent infringement.58

46

Mark Lemley, ‘Should Patent Infringement Require Proof of Copying?’, (2007) 105 Mich L Rev 1525. See Kewanee Oil Co v Bicron Corp (1974) 94 S Ct 1879, 1890 (US S Ct). See Samson Vermont, ‘Independent Invention as a Defense to Patent Infringement’, (2007) 105 Mich L Rev 475, 478–9 (light bulb, telephone, telegraph, telescope, integrated circuit); Mark Lemley, ‘Should Patent Infringement Require Proof of Copying?’, (2007) 105 Mich L Rev 1525, 1528 (steamboat, aeroplane, laser, polypropylene). 48 Evans v General Motors Corpn, 976 A. 2d 84, 92; 51 Conn Supp 44, 55 (Sup Ct Conn 2007) (paras 2, 3, 4). 49 CMI-Centers for Medical Innovation v Phytopharm [1999] FSR 235, 257–8. 50 Kewanee Oil Co v Bicron Corp (1974) 94 S Ct 1879, 1890 (US S. Ct). 51 CMI v Phytopharm, [1999] FSR 235, 258; Talbot v General Television Corp [1981] RPC 1, 17; Berkeley Administration v McClelland [1990] FSR 505, 528, QB. 52 CMI v Phytopharm, [1999] FSR 235, 257–8. 53 But note the possibility of criminal liability in the United States under the Economic Espionage Act of 1996, Pub L No 104–294, 110 Stat. 3488 (codified at 18 USC §§ 1831–1839). There is no criminal liability for patent infringement. 54 35 USC s 284. 55 UTSA, s 3(b). 56 Vestergaard Fransen S/A (and others) v Bestnet Europe Ltd [2009] EWHC 1456 (Ch), [2010] FSR (2) 29 (para 41) (Arnold J). 57 Orthodox thought suggested that the financial remedy for breach of a contractual obligation of confidence was compensatory damages, whereas an account of profits was to be awarded where the obligation was non-contractual (ie, equitable). However, remedial flexibility was embraced by the House of Lords in Attorney General v Blake [2001] AC 263, HL, and Vercoe v RFML [2010] EWHC 424 (Ch) (Sales J.) (paras 339–344). 58 Vestergaard Fransen S/A (and others) v Bestnet Europe Ltd [2011] EWCA Civ 424 (para 56). 47

64

C. Preferring Trade Secrecy to Patents The fourth limitation on breach of confidence relates to the degree to which such information 3.26 can be subject to licensing and assignment. Patents are statutory property rights that can be assigned and licensed (subject to certain demands as to formalities).59 Confidential information, though long the subject of similar commercial arrangements, is not on the whole regarded as ‘property’ (at least under English law). The effect of an assignment can be achieved where a person (A) in control of information discloses it to another (B), and undertakes that he (A) will not use or disclose the information. In such circumstances, B becomes the exclusive controller of the information, and further recipients or acquirers will owe obligations to B. Formally, there is no assignment; but the effect is similar. Moreover, it may well be that similar arrangements to licensing can be achieved by sharing confidential information.60 (c) The risks of secrecy Although there are a number of benefits to relying on trade secrecy, as opposed to patenting, 3.27 there are also considerable risks. Probably the most obvious risk is that the secret will come out.61 Should it do so, the information loses its protection, and becomes part of the public domain. There are four common ways in which the information might lose its quality of confidence: first, the controller of the information might publish it (for example, by applying for a patent); second, the information might be independently generated and made available to such an extent that the information loses its quality of confidence; third, the information might be accessed by legitimate means, in particular, through reverse engineering, and thus enter the public domain; or fourth, the information might be disclosed by a confidant in breach of confidence to such an extent that it loses its confidential character. (2) Confidentiality and the risk of disclosure by the confider itself There have been cases in which the holder of information undermined its own protection by 3.28 patenting the information: the House of Lords decision in Mustad v Dosen is the classic example.62 In this case, Mustad was a Norwegian manufacturer of fish-hooks. On liquidation of another manufacturer called Thoring in 1923, Mustad had purchased the trade secrets and benefit of obligations of secrecy. Fearing disclosure of secret details of Thoring’s machines by Dosen, a former employee of Thoring, to a competitor, Allcock Ltd, in 1925 Mustad commenced an action for interim injunctive relief, and sought to have the order made perpetual. Between commencing the action and the time of the hearing, Mustad had applied for a patent, first in Germany and then, on the basis of the German priority date, in the UK. The patent specification was published in due course. The Court of Appeal ordered that the injunction be dissolved, and the House of Lords affirmed. In the Court of Appeal, Atkin LJ observed,63 It seems to me, therefore, that there was a complete publication to the public of the construction and operation of the machine, the constructions and operation of which was alleged in the proceedings to be a trade secret, and from that moment it appears to me quite plain that that 59

EPC, Arts 71–74; Patents Act 1977, s 30; 35 USC s 261. Douglas v Hello! [2008] 1 AC 1, 47 (para 117) (per Lord Hoffmann). 61 Kewanee Oil Co v Bicron Corp (1974) 94 S Ct 1879, 1890 (US S Ct) (Burger CJ) (‘Where patent law acts as a barrier, trade secret law functions relatively as a sieve.’). See also Painton & Co v Bourns, Inc, 442 F 2d 216 at 224 (2nd Cir, 1971). 62 Mustad v Allcock and Dosen (1928) [1964] 1 WLR 109, HL. 63 The transcript of the Court of Appeal judgment is held at the Lincoln’s Inn Library. The quote, at pp 287–288, is set out in EPI Environmental Technologies Ltd v Symphony Plastic Technologies plc [2005] 1 WLR 3456 at 3466–7. 60

65

3.29

Chapter 3: Patents and Trade Secrets which before might have been a trade secret, was a trade secret no longer. Now, what is the result of that? It appears to me that the result is that there is no longer any subject matter upon which the agreement could operate. . . . [T]hree or four or five months after the action was brought, the trade secret had disappeared. From that time it seems to me it was quite impossible for the plaintiffs to obtain an injunction or to claim damages in respect of any act done after that date. That seems to me quite sufficient to determine this case. . .

Lord Buckmaster, with whom the other Lords agreed, explained,64 [T]he important point about the patent is not whether it was valid or invalid, but what it was that it disclosed, because after the disclosure had been made by the appellants to the world, it was impossible for them to get an injunction restraining the respondents from disclosing what was common knowledge. The secret, as a secret, had ceased to exist.

In the Mustad case the specification was published, so the information was simply no longer secret, and the obligation no longer enforceable.65 3.30 The position appears to be the same in the United States.66 In Timely Products Corp v Arron,67

the plaintiff had disclosed his idea for a warming sock to the defendant, and in due course the plaintiff filed for a patent. When the defendant started to manufacture the sock, the plaintiff sued for infringement of the patent and misuse of the trade secret. The patent action failed, the patent being held invalid as obvious. The trade secret action failed too, because the patent itself had disclosed the secret.68 (3) The effect of independent generation of the same information on confidentiality 3.31 If X relies on secrecy for protection, but the invention is independently made by a third party

Z, and Z applies for a patent, then X’s position is rather uncomfortable.69 Three questions arise. Firstly, can X rely on its use to invalidate Z’s patent? Secondly, can X rely on its trade secret after Z’s patent application has been published? Third, if Z’s patent is granted, does X have a defence to an infringement action? 3.32 Firstly, at least in Europe, X will not be able to rely on its own use to invalidate Z’s patent. As

was made clear long ago, a man who makes an invention and confines it to his closet cannot claim to have anticipated a later patent.70 In order to invalidate a patent, a prior use must be such as to make the invention available to the public.71 64

[1964] 1 WLR 109, 111 (Lord Buckmaster). Publication occurs under UK and European law automatically 18 months after the priority date: EPC, Art 91; Patents Act 1977, s 16; Patents Rules 1977, SI 2007/3291, r 26. 66 But cf Shellmar Products Co v Allen-Qualley Co, 87 F 2d 104, 108 (7th Cir 1936), cert. denied, 301 US 695, 57 S Ct 923, 81 L Ed 1350 (1937). The Shellmar principle probably does not survive in states which have adopted the UTSA, which seems to require that the information not be generally available or readily ascertainable. See further, D. Kirk Jamieson, ‘Just Deserts: A Model to Harmonize Trade Secret Injunctions’, (1993) 72 Neb Law Rev 515, 531 ff. 67 523 F 2d 288, 187 USPQ 257 (CA 2 1975). See also Ferroline Corp v General Aniline & Film Co 207 F 2d 912, 921; 99 USPQ 240 (7th Cir 1953). 68 523 F 2d 288, 304. See also Evans v General Motors Corpn, 976 A 2d 84, 92–96; 51 Conn Supp 44, 56–61 (Sup Ct Conn 2007) (paras 5, 6, 7, 8). 69 See Frank Robbins, ‘The Rights of the First Inventor-Trade Secret User as Against Those of the Second Inventor-Patentee (Part I)’, (1979) 61 JPTOS 574; Karl Jorda ‘The Rights of the First Inventor-Trade Secret User as Against Those of the Second Inventor-Patentee (Part II)’, (1979) 61 JPTOS 593. 70 Dolland’s Case (1766) 2 H Bl 470, 1 Webster’s Patent Cases 43, 1 Carpmael’s Patent Cases 28; Carpenter v Smith (1841) 1 Webster’s Patent Cases 530, 534–5 (Lord Abinger CB). 71 Patents Act 1977, s 2; EPC, Art 54. 65

66

C. Preferring Trade Secrecy to Patents The position is more complex in the United States, where two provisions present the 3.33 possibility of non-disclosing uses being a basis for invalidity.72 Firstly, reflecting the fact that the US system remains committed to the ‘first to invent’ principle, an earlier inventor may be able to invalidate a later patent application. Section 102(g) states that, A person shall be entitled to a patent unless . . . before such person’s invention thereof was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

Thus, if X had invented the invention first, he will be able to invalidate Z’s application, either 3.34 by applying for a patent and prompting an ‘interference action’,73 or by way of an invalidity attack (typically as retaliation to an action for infringement). X will succeed unless Z is able to demonstrate that X ‘abandoned, suppressed or concealed’ the invention. A decision by X to exploit the process by selling the products thereof, but keeping the process secret, might be treated as concealment.74 However, merely keeping the invention secret while perfecting it before bringing it to market, does not count as ‘concealment’.75 A prior secret use, then, in the United States can be the basis of an invalidity claim.76 The second provision that might enable invalidation of a US patent based on a non-disclosing 3.35 use is the so-called ‘sale bar’. Section 102(b) provides that a patent is invalid if the invention ‘was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent’. This provision, which we discuss further, means that in certain circumstances a patent will be invalidated in the face of earlier non-disclosing use which is more than a year old.77 If X has been selling E for more than a year before Z makes its application, X might be able to rely on s 102(b) to invalidate Z’s patent. However, in contrast to the situation where Z is found to have been selling the product of a process invention, where s 102(b) is applied to sales of products by third parties (such as Y), it has been held that sale of the product will not invalidate a later patent for the process unless the public could learn the process from examining the product.78 The US position is, however, soon to move much closer to that in the EU. Under the Smith- 3.36 Leahy America Invents Act,79 enacted on 16 September 2011, the US will move towards a ‘first to file’ system starting in March 2013.80 Accordingly, novelty will thenceforth be determined primarily by reference to material that was available to the public at the priority date 72 The inquiries under s 102(b) and (g) are independent: Eolas Technologies Inc v Microsoft Corp, 399 F 3d 1325, 1334; 73 USPQ 2d 1782 (CAFC, 2005) (paras 9–10) (Circuit Judge Rader). 73 35 USC s 135(a). 74 Fujikawa v Wattansin, 93 F 3d 1559, 1567 (CAFC 1996); Gillman v Stern 114 F 2d 28, 31; 46 USPQ 430 (2nd Cir 1940), cert. denied, 311 US 718 (1941) (paras 6–8) (Judge Learned Hand). 75 Eolas Technologies Inc v Microsoft Corp, 399 F 3d 1325, 1333; 73 USPQ 2d 1782 (CAFC, 2005) (para 7). Moreover, even if an invention was initially ‘concealed’, later public use might allow the inventor to object to a later patent by relying on s 102(g): Apotex USA, Inc, v Merck & Co, Inc 254 F 3d 1031, 59 USPQ 2d 1139 (CAFC, 2001). 76 Dow Chemical Co v Astro-Valcour Inc, 267 F 3d 1334 (CAFC 2001); Benedict v General Motors 184 F Supp 2d 1197 (ND Fla 2002). 77 Gillman v Stern, 114 F 2d 28, 31 (2nd Cir 1940), cert. denied, 311 US 718 (1941) (paras 6–9) (Judge Learned Hand). However, note that a non-disclosing public use might invalidate a later application: Dunlop Holdings Ltd v Ram Golf Corp, 118 USPQ 481 (7th Cir 1975), cert. denied, 189 USPQ 256 (1976). 78 W.L. Gore & Associates, Inc, v Garlock, Inc, 721 F 2d 1540, 1550; 220 USPQ 303 (CAFC, 1983) (Chief Judge Markey). 79 PL 112-29. 80 Section 3(n). For an introduction, see T. Takenaka, ‘Harmony With the Rest of the World? The America Invents Act’, (2012) 7 JIPLP 4.

67

Chapter 3: Patents and Trade Secrets (in US language, the ‘effective filing date’).81 Mere prior invention will thus not constitute a basis for an invalidity action. 3.37 If X is unable to invalidate Z’s patent, what becomes of X’s trade secret? In Europe and the

US, the patent process will lead to publication of Z’s patent. At this stage, Z’s patent will disclose the information as to how to make ‘E’ thus depriving X’s information of its former ‘quality of confidence’ (though X may retain some relevant confidential information as to the precise technique or ingredients it employs). 3.38 If Z’s patent in granted (and cannot be invalidated), will X become an infringer of Z’s patent?

Different answers to this would be given in countries, such as the UK, where a ‘prior use’ defence exists, compared with the United States, where no such defence exists.82 3.39 Section 64(1) of the Patents Act 1977 provides those who were using an invention in good

faith in the United Kingdom with a personal defence.83 This means that a person such as X, who has formerly exploited a trade secret, will not suddenly find he or she faces a patent infringement action by Z. But X will find his future actions constrained in at least two respects. First, the defence is limited to the continuation of acts of the same sort as those already carried out. If, for example, X has merely been making ‘E’ at the time Z applies for a patent for the same process, X will not thereafter be able to move into the field of making and selling chocolate that contains ‘E’.84 Secondly, as the past-secret-use defence is a personal defence, the continued use must be by the same person (or partner). X would also have the right to assign that right or to transmit it on death to any person who acquires the part of the business in the course of which the act was done or the preparations were made.85 Importantly, the defence does not extend to include licensees.86 3.40 No such prior use defence exists at present in the United States as a general matter (though

there is a specific defence in relation to business method patents).87 However, when the Leahy-Smith America Invents Act comes into force, this will change. A new s 273 would provide a defence to a person who ‘acting in good faith, commercially used the subject matter in the United States, either in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use’; and such commercial use occurred at least one year before either the effective filing

81 Section 3(b) repealing and replacing definitions in s 102 of 35 USC. The prior art also includes prior unpublished filings: s 102(a)(2). It does not include the inventor’s own disclosures made in the year preceding the priority date: s 102(b). 82 Art 4(B) of the Paris Convention, and TRIPS Art 30, leave such matters to the domestic legislation of contracting states. 83 Patents Act 1977, s 64. 84 Helitune Ltd v Stewart Hughes Ltd [1991] FSR 171, 206 (Pat Ct); Lubrizol Corp v Esso Petroleum Co Ltd [1992] RPC 281, 295 (Pat Ct); Lubrizol Corp v Esso Petroleum Co Ltd [1998] RPC 727 (CA). 85 Patents Act 1977, s 64(2) provides an equivalent to exhaustion when a previous user disposes of the product. The person who acquires the product is entitled to deal with the product in the same way as if it had been disposed of by a sole registered proprietor. 86 Patents Act 1977, s 64(3). 87 35 USC s 273 (as amended by the First Inventor Defense Act of 1999) offers a defence to infringement of business method patents where the defendant can show it had used the business method at least one year before the application was filed. For discussion of the general position, see Karl Jorda, n 69, 604–606 (1979); Karl Jorda, ‘Patent and Trade Secret Complementariness: An Unsuspected Synergy’, (2008) 48 Washburn Law Jo 1, 27–28.

68

C. Preferring Trade Secrecy to Patents date or the date of disclosure of the invention for the purpose of the grace period in s 102(b).88 (4) The effect of reverse engineering on confidentiality If X relies on secrecy for protection of the process of synthesizing ‘E’, and Z reverse engineers 3.41 ‘E’ which X has marketed and works out from that how to make ‘E’, X will not be able to rely on the law of confidence or trade secrecy to prevent Z from making or selling ‘E’ or products containing ‘E’. The English courts have been clear: even though, as a general proposition, a person comes under an obligation where they appreciate information is regarded as confidential, they do not do so where they access technical information from publicly disseminated products by legitimate means. The leading case is Mars v Teknowledge,89 a breach of confidence action brought in relation to 3.42 encrypted information embodied in the coin-receiving and -changing mechanisms used in vending machines. The question arose as to whether a person buying a machine that contained the encrypted information was under an implied duty of confidentiality in relation to the information. In effect the question was whether a reasonable recipient would consider the fact that the information had been encrypted to mean that they were under an obligation of confidentiality in relation to the information. Applying the reasonable person test, Jacob J said that the information embodied in the machine was not obviously confidential. More specifically Jacob J said, I cannot see why the mere fact of encryption makes that which is encrypted confidential or why anyone who de-crypts something in code, should necessarily be taken to be receiving information in confidence. He will appreciate that the source of the information did not want him to have access, but that is all.90

Reverse engineering is also regarded as permissible in the United States.91 Indeed, the 3.43 Supreme Court in Kewanee Oil Co v Bicron Corp observed that ‘trade secret law does not forbid the discovery of the trade secret by fair and honest means eg independent creation or reverse engineering.’92 Under the UTSA, a person only is liable if they acquire a trade secret of another by ‘improper means’ (or having reason to know it was acquired by improper means). The comment to s 1 states that ‘proper means’ include discovery by reverse engineering, that is, ‘by starting with the known product and working backward to find the method by which it was developed.’ Some states have even made this principle explicit in their enactments of the UTSA.93 Although some doubts have arisen as to whether the same exemption 88

PL 112-29, s 5 (amending 35 USC s 273). [2000] FSR 138. 90 [2000] FSR 138, 150. In Cray Valley v Delltech [2003] EWHC 728 (para 54) Jacob J clearly assumed that ‘reverse engineering’ is a legitimate way to access confidential information. For older authority, see Estcourt v Estcourt Hop Essence Co (1874–5) LR 10 Ch App 276, 279 (Cairns LC). 91 For a comparison of US and German law, see Ansgar Ohly, ‘Reverse Engineering: Unfair Competition or Catalyst for Innovation?’, in W. Prinz du Waldeck und Pyrmont, M. Adelman, R. Brauneis, J. Drexl, and R. Nack (eds) Patents and Technological Progress In a Globalized World: Liber Amicorum Joseph Straus, (Berlin: Springer, 2009) 535–552. Available at SSRN: . 92 (1974) 94 S Ct 1879, 1890 (US S Ct). See also Chicago Lock Co v Fanberg, 676 F 2d 400, 405 (9th Cir 1981) (para 7); Sinclair v Aquarius Electronics, Inc, 42 Cal App 3d 216, 116 Cal Rptr 654, 661 (CA Cal 1974) (paras 15, 16); Angell Elevator Lock Co v Manning (1965) 348 Mass. 623, 626; 205 NE 2d 245, 248 and Bonito Boats Inc v Thunder Craft Boats, Inc, 489 US 141, 155, 160 (1989). 93 Craig L. Uhrich, ‘The Economic Espionage Act—Reverse Engineering and the Intellectual Property Public Policy’, (2001) 7 Mich Tel & Tech Law Rev 147, 167 n 161. 89

69

Chapter 3: Patents and Trade Secrets exists under the federal Economic Espionage Act,94 commentators are united in their view that it should be interpreted as permitting reverse engineering.95 3.44 If reverse engineering is permissible, and does not give rise to any obligation on the part of

the person who does the engineering, what is the effect on the status of the information as a trade secret? The answer depends on precisely what the person who carries out the reverse engineering does with the information.96 If the information is widely disseminated then the secret may simply cease to exist. But it is conceivable that someone (Z) who reverse engineered ‘E’ and thereby worked out how to make it might simply take advantage of that knowledge himself. If that occurred, X could not object to Z’s activities, but X might retain an enforceable secret itself.97 This is because confidentiality only requires that the information remain relatively secret.98 Thus X might continue to be able to enforce obligations of confidentiality against those to whom he disclosed the information about the process of making ‘E’ in confidence (such as its employees). Some people have referred to this as the ‘springboard doctrine’,99 though it might be argued that this phrase is best reserved for other circumstances.100 (5) The effect of wrongful use or disclosure on confidentiality 3.45 What if X protects the process for making ‘E’ as a trade secret, but X’s colleague Y uses or

discloses the secret process in breach of confidence? In these circumstances, X certainly has some remedy against Y, but precisely what will depend on exactly what Y has done. 3.46 If all Y has done is to exploit the process by making the chocolate containing ‘E’, X should be

able to obtain injunctive relief preventing Y from continuing to do so. As we have observed, the information about how to make ‘E’ possesses the necessary quality of confidence and Y received it in circumstances importing an obligation of confidentiality. Y’s use of the process to make chocolate is a clear use of the information contrary to the obligation owed to X. 94 Economic Espionage Act of 1996, Pub L No 104–294, 110 Stat 3488 (codified at 18 USC §§ 1831–1839). 95 James H.A. Pooley, Mark Lemley and Peter Toren, ‘Understanding the Economic Espionage Act of 1996’, (1997) 5 Texas IP Law Jo 177, 195–7; Craig L. Uhrich, ‘The Economic Espionage Act—Reverse Engineering and the Intellectual Property Public Policy’, (2001) 7 Mich Tel & Tech Law Rev 147, 152, 168; Rochelle Cooper Dreyfuss, ‘Trade Secrets: How Well Should We Be Able To Hide Them? The Economic Espionage Act of 1996’, (1998) 9 Fordham IP, Media and Ent Law Jo1, 15–17; Pamela Samuelson and Suzanne Scotchmer, ‘The Law and Economics of Reverse Engineering,’ (2002) 111 Yale Law Jo 1575, 1577–8. 96 If reverse engineering occurs very readily, it might mean that the information in not secret or confidential at all. In the United States, this could be on the basis that the information is generally accessible or that reasonable efforts have not been made to keep the information secret: Acuson Corpn v Aloka Co Ltd, 209 Cal App 3d 425, 257 Cal Rptr 368, 10 USPQ 2d 1814 (CA Cal). 97 Re Titan Group Pty Ltd and Titan Gym Equipment Pty Ltd v Steriline Manufacturing Pty Ltd; Anthony Mcgregor Sims and Trimtech Pty Ltd [1990] FCA 402 (18 October 1990) (para 91). But X could not then, it seems, apply for a patent at the EPO which takes the view that if the information was ascertained by a person through reverse engineering of a product placed on the market, that information forms part of the state of the art. See T 681/01 Hunter Douglas Industries BV/Treated Fabric (Opposition by Junkers & Müllers GmbH (28 November 2006) (para 2.8). 98 Note also the comment to the UTSA s 1: ‘if reverse engineering is lengthy and expensive, a person who discovers the trade secret through reverse engineering can have a trade secret in the information obtained from reverse engineering.’ 99 Vestergaard Fransen S/A (and others) v Bestnet Europe Ltd [2009] EWHC 1456 (Ch), [2010] FSR (2) 29 (paras 46, 50, and esp 78) (Arnold J). 100 In particular, the temporary use of injunctive relief to prevent a wrongdoer from gaining an advantage: see, eg, UTSA, s 2(a).

70

C. Preferring Trade Secrecy to Patents It does not appear that it is necessary for X to prove damage, but it would, in any event, seem relatively easy to establish that Y’s use of the secret is preventing, or will prevent, X from making relevant sales or entering relevant commercial arrangements for the exploitation of the secret process. If Y has disclosed details of the process to the world, X will not be able to get injunctive relief. 3.47 This is because the information will have ceased to have the quality of confidentiality. As Lord Goff explained in the Spycatcher case,101 [O]nce it has entered what is usually called the public domain (which means no more than that the information in question is so generally accessible that, in all the circumstances, it cannot be regarded as confidential) then, as a general rule, the principle of confidentiality can have no application to it.

This is a question of fact, and it does not matter whether the information came in to the 3.48 public domain through the plaintiff’s act, the acts of a third party, or those of the defendant. As Arnold J recently explained, publication of the confidential information brings the obligation of confidence to end. It matters not whether the information has been published by the confider, by a stranger or by the confidant himself.102

The position in the United States appears to be similar, except that UTSA specifically recog- 3.49 nizes ‘springboard relief ’ to prevent a confidant from gaining an unfair advantage as a result of its own wrongdoing.103 Section 2(a) of UTSA states: Actual or threatened misappropriation may be enjoined. Upon application to the court, an injunction shall be terminated when the trade secret has ceased to exist, but the injunction may be continued for an additional reasonable period of time in order to eliminate commercial advantage that otherwise would be derived from the misappropriation.

If Y uses the trade secret disclosed to him by X in breach of confidence, and obtains a patent 3.50 for the invention, the question arises whether X can invalidate the patent or, better still, have it transferred into X’s name. Unfortunately, X would not be able to invalidate the patent on the basis that Y’s invention lacks novelty, because X has himself concealed the information from the state of the art.104 Moreover, because the patent specification would publish the trade secret, X would not, thereafter, be able to make any claim based upon trade secrecy or confidentiality.105 What then of X’s claim to ownership? While the Patents Act 1977 provides that anyone is 3.51 entitled to apply for a patent,106 s 7(2) goes on to say that patents should only be granted to a limited category of persons.107 Section 7(2)(a) provides that the right to be granted a patent 101

AG v Guardian (No 2) [1990] AC 109, 282 C-D. Vestergaard Fransen S/A (and others) v Bestnet Europe Ltd [2009] EWHC 1456 (Ch), [2010] FSR (2) 29 (para 76). 103 UTSA, s 2(a). 104 But see this Chapter, para 3.35, for the US law on the ‘sale bar’. 105 If such publication fell within the exclusion in Patents Act 1977, s 2(4) or EPC Art 55, then X would be able to apply for a patent and the publication by Y would not prejudice the novelty of X’s application: see Guidelines for Examination (2010), Part C, Ch. IV, section 32, para 10.3. 106 Patents Act 1977, s 7(1). 107 Patents Act 1977, s 7(4) creates a rebuttable presumption that the person who applies for a patent is the person who is entitled to grant of a patent. The grounds on which this presumption may be rebutted are set out in the Patents Act 1977, s 7(2), which exhaustively sets out the parties to whom a patent may be granted. 102

71

Chapter 3: Patents and Trade Secrets is primarily given to the inventor or joint inventors.108 The decision as to whether a person is properly entitled to grant of a patent turns solely on precisely who came up with the inventive concept. In this scenario, it appears that, if the patent relates to the process for making ‘E’, then X was indeed the deviser of the inventive concept. In so far as Y’s patent relates to a use of ‘E’ (if use in chocolate is inventive), then it might be that Y is to be regarded as the inventor. In such a case, Y is entitled to the patent unless X can establish that the remedy for Y’s breach of confidence in using the information about the process of making ‘E’ could justify an award of a constructive trust over the patent. The case law contains some basis for such a claim,109 though at least one academic has argued strongly against the use of such a remedy for breach of confidence.110 US courts have been willing to order the assignment of patent applications which have been made by recipients on the basis of trade secrets that have been improperly obtained.111 (6) Policy considerations 3.52 The use of trade secrecy as an alternative to patenting raises complex policy issues. As should

be clear, one of the goals of patent law is to promote disclosure of technical information. However, the availability of trade secrecy protection runs to some extent against that goal: if, given the alternatives, an innovator such as X chooses trade secrecy, there is a danger that the public will never come to know about the invention. It is precisely this concern which Y has raised as a defence, and which was considered in the United States by the Supreme Court in Kewanee Oil Co v Bicron Corp.112 3.53 The case concerned trade secrets relating to the manufacture of crystals for use in the detec-

tion of ionizing radiation. The claimant, Harshaw Chemical Co, had been involved in researching the field for over 20 years, and had developed a number of secret processes. The claimant required its employees to sign confidentiality agreements. The defendant company, Bicron, which was established in 1969, employed a number of former employees of Harshaw. Within a year, Bicron had achieved similar feats in the field to those of Harshaw. Harshaw’s parent company, Kewanee, brought an action claiming misappropriation of trade secrets contrary to Ohio’s trade secrecy law. The District Court for the Northern District of Ohio granted an injunction, but the Court of Appeals for the Sixth Circuit reversed, finding Ohio’s trade secret law to be in conflict with federal patent law.113 The holding was at odds 108 Rhone-Poulenc Rorer International Holdings v Yeda Research and Development Co Ltd [2007] UKHL 42, [2007] All ER (D) 373, HL, para 18 (s 7(2) and s 7(3) provide an exhaustive code for determining who is entitled to the grant of a patent). In so ruling, the House of Lords rejected the argument that to prove entitlement, it was not enough for a person (A) to show that they and not the person (B) named on the patent were the actual inventor. In particular, the House of Lords rejected Jacob LJ’s comment in Markem Corp v Zipher [2005] RPC 31 (para 79), CA that ‘[A] must be able to show that in some way B was not entitled to apply for the patent, either at all or alone. It follows that A must invoke some other rule of law’—typically by virtue of contract or breach of confidence—‘to establish his entitlement—that which gives him title, wholly or in part, to B’s application’. 109 AG v Guardian (No 2) [1990] AC 109, 139, 211, 286. 110 Matthew Conaglen, ‘Thinking about proprietary remedies for breach of confidence’ (2008) IPQ 82; Tang Hang Wu, ‘Confidence and the Constructive Trust’, (2003) 23 LS 135. 111 Colgate-Palmolive Co v Carter Products Inc, 230 F 2d 855, 865 108 USPQ 383 (CA 4 1956) (paras 12, 13, 14). 112 (1974) 94 S Ct 1879 (US S Ct). For a recent re-examination of the decision, see Sharon Sandeen, ‘Kewanee Revisited: Returning to First Principles of Intellectual Property Law to Determine the Issue of Federal Preemption’, (2008) 12 Marq IP Law Rev 299. 113 478 F 2d 1074 (CA 6th Cir, 1973).

72

C. Preferring Trade Secrecy to Patents with that offered in other circuits,114 so the Supreme Court reviewed, and reversed the decision. It found that there was no conflict between Ohio’s law and the federal patent law. Chief Justice Burger gave the decision of the Court. Whether there was a conflict depended 3.54 on whether trade secret law would be an obstacle to the accomplishment of Congress’ goals in establishing the Patents Act. The goal was promotion of the useful arts, by providing an incentive to research and by requiring disclosure. Trade secrecy law had, it was said, different aims: to maintain standards of commercial ethics and to encourage invention.115 In so far as trade secrecy laws protect matters which could not be patented, the court saw no conflict: the trade secrecy laws provided incentives to research into sub-patentable and non-patentable ideas, and the existence of these laws did not inhibit the disclosure of patentable inventions.116 The greatest tension between the two regimes related to the goal of encouraging disclosure of potentially patentable material,117 If a State, through a system of protection, were to cause a substantial risk that holders of patentable inventions would not seek patents, but rather would rely on the state protection, we would be compelled to hold that such a system could not constitutionally continue to exist.

However, the Court found that the conflict was more apparent than real: in the case of trade 3.55 secrets law, ‘no reasonable risk of deterrence from patent application by those who can reasonably expect to be granted patents exists’. This was because trade secret protection was so much weaker than patent protection that the choice of trade secrecy over patents was ‘remote indeed’.118 While the Court acknowledged that ‘the rare inventor’ might select secrecy over patenting, it did not think this raised serious concerns, given the likelihood of simultaneous invention by other researchers. Justices Douglas and Brennan dissented. According to Justice Douglas, the conflict was 3.56 ‘obvious’ and the Court’s opinion, in supporting state trade secrecy laws, exhibited ‘a vigorous activist anti-patent philosophy’. The patent regime, the dissenters argued, represented a federal policy choice favouring disclosure of inventions. If injunctive relief is available for misappropriation of trade secrets, that would prevent such disclosure. The dissenting minority would have affirmed. The decision in Kewanee has been questioned by some, not least for the dubious factual 3.57 premise on which the Court’s judgment was based: that the preference for ‘trade secrecy’ over patents is rare. In fact, the empirical evidence (discussed above) highlights the fact that trade secrecy is widely used and patents much less so, and must cast doubt on the validity of the factual assumption. Nevertheless, Kewanee has gained some support from at least three subsequent developments. First, the Supreme Court’s decision in Bonito Boats seems to confirm the approach. Second, Congress’s action in passing the federal Economic Espionage Act, which contains an express indication that state laws of trade secrecy are not pre-empted, 114

eg, Painton & Co v Bourns, Inc, 442 F 2d 216 (CA 2nd Cir 1971). (1974) 94 S Ct 1879, 1892 (US S Ct). 116 (1974) 94 S Ct 1879, 1887 (US S Ct). 117 Ibid. 118 Justice Marshall disagreed with this analysis, but found no pre-emption. This was because he considered the question to be whether Congress intended patent law to occupy the field exclusively: and, given that trade secrecy laws had existed alongside patent laws for ‘many, many years’ that was not the case. See also Sandeen, n 112, at 334, 345–347; Daniel Munson, ‘The Patent-Trade Secret Decision: An Industrial Perspective’, (1996) 78 JPTOS 689, 708. 115

73

Chapter 3: Patents and Trade Secrets might be taken as indicating its recognition that such trade secret laws are not in conflict with other aspects of federal law.119 Third, the US has become a party to TRIPS, which seems to require recognition of protection for all ‘undisclosed information’ (as Article 39 puts it), without leaving the possibility to exclude from protection undisclosed patentable inventions. The result in Kewanee is thus, now, internationally required.

D. Trade Secrecy Prior to Patenting 3.58 So far we have considered trade secrecy as an alternative to patenting. However, an important

role for trade secrecy is complementary to patenting, that is, the use of trade secrecy to protect an invention prior to patenting. It is quite clear that in many cases important inventive breakthroughs are preceded by very considerable levels of research and development, typically conducted in confidential environments. Patenting only comes to be considered once an exploitable invention is in sight: indeed the ‘industrial applicability’ and ‘utility’ requirements of European and US patent law respectively envisage that patenting should only be possible if a discovery has some sort of specific and substantial use. Even once an industrially applicable invention is made, a patentee will often keep it secret in the period when it is deciding whether to make an application at all. Consequently, most patentees will inevitably rely on secrecy some of the time. Indeed, Katrin Hussinger suggests that the widespread use of secrecy described above becomes explicable on the basis that this is the form of protection used primarily during the pre-marketing stage, rather than as an alternative to patenting.120 3.59 The use of trade secrecy prior to patenting raises a number of different legal issues. First, is

there any objection to the indefinite use of secrecy? Second, what happens if the information comes to be disclosed? Third, what happens if a third party applies for a patent first? (1) Secret use and patenting 3.60 In principle, under UK law (and under the EPC), there is nothing to prevent a person from

exploiting an invention secretly and later obtaining a patent for the invention. As long as the invention has not been made available to the public at any time prior to the application for the patent, then the invention will be regarded as new.121 In contrast, under the Patents Act 1949, secret prior use of the invention would invalidate a patent unless it fell within one of a number of specific exceptions.122 Moreover, as we have seen, under US law, the sale of the invention more than one year prior to the priority date might invalidate the patent (even if

119 Economic Espionage Act of 1996, Pub L No 104–294, 110 Stat 3488 (codified at 18 USC §§ 1831– 1839), s 1838. See Pooley, Lemley and Toren, n 95; Dreyfuss, n 95. 120 K. Hussinger, ‘Is Silence golden? Patents versus secrecy at the firm level’, Governance and the Efficiency of Economic Systems (GESY), Discussion Paper No 37 (March 2005). 121 Merrell Dow v Norton [1996] RPC 76, HL. 122 Patents Act 1949, s 32(1)(l), (2); Patents and Designs Act 1907 (as amended by the Act of 1932), s 25(2) (o). See, eg, R v Patents Appeal Tribunal, ex p Beecham; Bristol-Myers Co v Beecham Group Ltd [1974] AC 646; Wheatley’s Application [1985] RPC 91, CA; W.L. Gore & Associates Inc v Kimal Scientific Products Ltd [1988] RPC 137, Pats Ct; Lux Traffic Controls v Pike Signals [1993] RPC 107, 133 (Aldous J, describing ‘old’ law).

74

D. Trade Secrecy Prior to Patenting the sale did not disclose the invention).123 Judge Learned Hand explained the philosophy of the US law thus, it is a condition upon the inventor’s right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy or legal monopoly.124

This means that, at present, there is much less opportunity in the US, compared to Europe, 3.61 to cumulate secret exploitation with the patent monopoly. The sale by the inventor of a product more than 12 months prior to a patent application even prevents the patenting of the process by which the product was made.125 Indeed, as US inventors benefit from a grace period for that same 12 months that precedes an application, even during this period there is nothing like the need (which exists in Europe) to rely on secrecy.The US position will change, when the America Invents Act 2011 comes into operation in 2013, and will become much more like that in the EU: exploitation by the inventor before the patent is granted will not affect the validity of the patent unless those acts place the invention on sale or otherwise make it available to the public.126 If that is the case, the patent will lack novelty unless the acts fall within the 12 month grace period. (2) Self-disclosure A potential patentee should be careful to avoid disclosure of the invention prior to making 3.62 an application. In contrast with the position in the United States,127 where certain disclosures by an applicant are deemed to fall outside the state of the art, applicants for UK and European patents are not provided with a ‘grace period’.128 Consequently, patents are frequently anticipated and thus rendered invalid for want of novelty as a result of the applicant’s own acts and disclosures.129 The priority date is thus important not just because it is the date at which novelty is assessed, but also because it is the date from when inventors are able to exploit their inventions without jeopardizing any potential patents.130

123 35 USC s 102(b). For a review see Patrick Barrett, ‘New Guidelines for Applying the On Sale Bar to Patentability’, (1971–2) 24 Stan L R 730. 124 Metallizing Engineering Co v Kenyon Bearing and Auto Parts Co, 153 F 2d 516, 520 (Court of Appeal for Second Ct), cert. denied, 328 US 840, 66 S Ct 1016, 90 L Ed 1615 (1946). See also King Instrument Corp v Otari Corp, 767 F 2d 853, 860 (Fed Cir 1985), cert. denied 475 US 1016, 106 S Ct 1197, 89 L Ed 2d 312 (1986). 125 Seal-Flex, Inc v Athletic Track and Court Construction, 870 F Supp 753, 32 USPQ 2d 1676 (US D Ct, ED Mich 1994); Metallizing Engineering Co v Kenyon Bearing and Auto Parts Co, 153 F 2d 516, 520 (2d Ct), cert. denied, 328 US 840, 66 S Ct 1016, 90 L Ed 1615 (1946). 126 Section 102(a)(1) indicates that the invention will be anticipated where it was ‘patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date.’ The formulation is not as simple as in Europe, and it seems that the placing on ‘sale’ of the invention, even if not in public, could be said to invalidate. 127 35 USC s 102(b). 128 See Joseph Straus, Grace Period and the European and International Patent Law (Munich: IIC Studies, Vol 20, 2001). 129 Fomento Industrial SA v Mentmore Manufacturing Co Ltd [1956] RPC 87; Lux Traffic Controls v Pike Signals [1993] RPC 107, 132–5; Research Corporation/Publication, T381/87 [1990] OJ EPO 213; [1989] EPOR 138, TBA; T830/90 Macor Marine Systems/Secrecy Agreement (Opposition by Kvaerner Brug) [1995] EPOR 21, TBA; T77/94, Lefebvre/Sealing Complex [2001] EPOR (52) 412, TBA. 130 Asahi Kasei Kogyo KK’s Application [1991] RPC 485, 529, HL. In the USA, experimental use will not invalidate a patent even though the invention was in public use or on sale more than a year before the priority date.

75

Chapter 3: Patents and Trade Secrets 3.63 To understand fully the question of self-disclosure, it is important to appreciate the way in

which novelty is understood. Under the EPC and UK Patents Act, an invention is not to be regarded as new if it forms part of the ‘state of the art’.131 In turn, the state of the art is defined as including all information made available to the public. There are no limits on when, where, or how the disclosure has been made.132 Relevant disclosures thus include oral disclosure, disclosures by exposing products to the world, and so on. To anticipate, the disclosure must map precisely on to the invention over which it is sought to obtain a patent: the UK courts here tend to deploy the ‘reverse infringement test’, asking whether, were the patent granted, would the material (or activity) previously disclosed constitute an infringement? In addition,133 the prior disclosure must be ‘enabling’, that is, it must be one that the person skilled in the art could make or do. Thus, for example, the prior disclosure of a chemical formula would not anticipate an application for a patent for the invention of the chemical if it were not possible for the person skilled in the art to make the chemical represented by the formula.134 3.64 For purposes of understanding the complementary relationship between confidentiality and

patenting, however, the key aspect of the novelty inquiry is that the state of the art is confined to material which has been made available ‘to the public’. If a disclosure occurs in confidence, then the material is not to be regarded as falling within the state of the art.135 This is because, at least as far as English courts are concerned, material is only available to the public if the recipient is ‘free in law and equity’ to divulge its contents.136 A recipient of information disclosed in confidence is not free in law or equity to use or further disclose that information. 3.65 A good example is provided by the High Court decision in Strix v Otter.137 In this case, the

claimants had a patent for a mechanism that automatically switched off a plastic electric kettle in the event of overheating (a so-called ‘third-level control’). Phillips and Strix had been in discussions with a view to Strix supplying controls to Phillips, a kettle manufacturer, since the first half of 1984. Initially, Strix had investigated the use of a different mechanism (‘creep bimetal’), but when it became apparent that this mechanism was not going to be reliable enough, an employee of Strix devised an alternative in July 1985. Thereafter, a number of the mechanisms had been supplied to Phillips in July and September 1985. In due course, Strix filed for a patent, claiming priority from 4 October 1985. The defendant alleged that 131

Patents Act, s 2; EPC, Art 54. Thus ‘disclosure in a document written in Sanskrit and misplaced in the children’s section of Alice Springs public library’ would be part of the relevant art: Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 384, [2007] FSR (25) 635, 649 (para 46). 133 Synthon BV v SmithKline Beecham plc [2005] UKHL 59, [2006] 1 All ER 685. 134 Asahi Kasei Kogyo KK’s Application [1991] RPC 485, 539 (Lord Oliver), HL; Synthon BV v SmithKline Beecham plc [2005] UKHL 59, [2006] 1 All ER 685 (paras 26–27). 135 The principle works to protect the inventor from being found to have disclosed his or her own invention, but also plays a role where the disclosure is by others. See, eg, In re Dalrymple’s Application for a Patent [1957] RPC 449; In re Gallay Ltd’s Application for a Patent [1959] RPC 141, Pat Ap Trib, Lloyd-Jacob J; T782/92, Tokai/Dual-Type Damper (Opposition by Freudenberg) [1996] EPOR 207, TBA; T1085/92, Robert Bosch/ Electrical Machine (Opposition by Siemens) [1996] EPOR 381, TBA. 136 Humpherson v Syer (1887) 4 RPC 407, 413, CA; In the Matter of an Application for a Patent by The Underfeed Stoker Co Ltd and Ernest William Robey (1924) 41 RPC 622, 625; Bristol-Myers Co’s Application [1968] FSR 407, [1969] RPC 146, Div Ct; James Industries Ltd’s Patent Application [1987] RPC 235, 238, Patent Office; Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83, 126–7; PLG Research Ltd v Ardon International Ltd [1993] FSR 197, 226 (Aldous J); Strix Ltd v Otter Controls Ltd [1995] RPC 607, 629. 137 [1995] RPC 607, 633–4. See also In re Gallay Ltd’s Application for a Patent [1959] RPC 141, Pat Ap Trib; James Industries Ltd’s Patent Application [1987] RPC 235, 238–9, Patent Office. 132

76

D. Trade Secrecy Prior to Patenting the invention lacked novelty, because the supply of the mechanism to Phillips had made it available to the public. Examining the dealings between Strix and Phillips more closely, Ferris J rejected that conclusion, finding that the disclosure from Strix to Phillips was in confidence. Although the evidence as to any oral agreement of confidentiality was inconclusive, Ferris J based his conclusion on some indications in correspondence and the ‘general circumstances of the transaction’. Three factors were particularly important. First, there were some express statements as to the confidentiality of information that were made in correspondence. Otter suggested that these only related to specific suggestions concerning the ‘creep bimetal’ mechanism, and not the dealings more generally, but the Judge disagreed. Secondly, Otter tried to characterize the relation between Strix and Phillips as that between a supplier and customer. The Judge was not persuaded, preferring the view that the relationship was really one in which the parties were jointly developing a product, and that each accepted a mutual obligation of confidence until development was completed by the successful release of the new kettle on to the market. Thirdly, one of Phillips’ employees had testified that he did not regard himself free to disclose Strix’s work to Otter because it would be contrary to ‘business ethics’ (rather than law). Ferris J observed that, in this field ‘ethics, or as equity prefers to describe it conscience, goes hand in hand with, and is the foundation of the obligation’. The evidence thus supported the conclusion that an obligation of confidence existed.138 Strix can be contrasted with Carflow Products v Linwood Securities.139 Here the question arose 3.66 as to whether the claimant’s registered design for a car-lock device had been anticipated by the defendant’s disclosure of a prototype of its car-lock to one of its potential customers (Argos). The claimant suggested that the demonstration of a car-lock device took place in circumstances of confidence so that the customer was not ‘free in law and equity’ to disclose it further. Jacob J rejected that submission. The evidence of the defendant was (not surprisingly) that it had no expectation that Argos would keep the sample secret; and the evidence of the Argos buyer was that, while it would not have shown the device to Linwood’s competitors, it was not obliged not to do so. The evidence suggested that neither party felt subjectively bound by an obligation, and the Court took the view that there was no reason why, assessed objectively, a different view of the parties’ obligations should have been reached. Jacob J explained,140 I cannot think that on an objective basis the reasonable man would think an obligation of confidence was being imposed merely because a prototype of what was being offered for sale was shown. Furthermore I think it would lead to much difficulty if the position were otherwise. People are habitually showing things they have designed or invented to would-be manufacturers. If the latter are put under an obligation of confidence merely by seeing a prototype—which they would as reasonable men know could be the subject of independent protection—then they would be far less willing to look at things. The reasonable man will not look at the transaction myopically, blinding himself to the panoply of potential intellectual property rights the law provides.

138 139 140

[1995] RPC 607, 634. [1996] FSR 424. [1996] FSR 424, 429–30.

77

Chapter 3: Patents and Trade Secrets 3.67 Strix v Otter was not cited, nor discussed. However, the cases are at least distinguishable on

the basis that in Strix the parties were co-operating in the development of the product, whereas Carflow v Linwood is merely a case of supplier and customer.141 3.68 A similar approach to when material is ‘made available to the public’ is evident at the

European Patent Office. Material is not regarded as ‘made available to the public’ where it is disclosed in confidence.142 This is understood as requiring either an express contractual obligation of confidentiality or a ‘tacit agreement’.143 The Technical Board of Appeal (TBA) has been willing to infer such ‘tacit agreement’ from the practices in the sector. As in the UK, if the parties are co-operating in the joint development of a product, that will be regarded as in confidence.144 Moreover, the submission of details to a potential funder of further research is usually regarded as imposing an obligation of confidence,145 and a supply of samples for trial is understood usually as taking place in confidence.146 3.69 However, as with the Carflow case in England, the EPO has also made clear that no such tacit

agreement as to confidentiality is to be inferred merely from the supply of a product, there must be something in the circumstances that suggests that a confidential relation existed before a delivery which appears to be the result of an ordinary commercial transaction can be disregarded as not making the delivered goods available to a member of the public.147 3.70 Consequently, the TBA held that the sale of 200 kilogrammes of Sepigal H400 constituted

a making available, even though the amount of the product was unsuitable for commercial use. The Board found that there was no express secrecy agreement between the parties and no indication of any special relationship. In particular, the parties did not supply each other with technical information, nor undertake to do so, and the recipient paid for the product. The purchaser had 18 months earlier received a small sample for testing, and the circumstances suggested that the testing stage of the product had come to an end. The product had been given a trademark and had been offered to others than the purchaser. The Board

141 Jacob J also emphasized that the design might be understood to be protected by other means. Cf Humpherson v Syer (1887) 4 RPC 407, 415. 142 Case-Law of the Boards of Appeal of the EPO 6th edn (Munich: EPO, 2010) 77ff, Part IC1, para 1.8.9. The EPO rarely, if ever, concerns itself with the question of what is applicable law in relation to the issue of confidentiality. Presumably, it understands confidentiality in contrast to making available, and thus a concept with an autonomous meaning under the EPC. 143 European Patent Office, Guidelines for Examination in the EPO, (2010 edition) Part D, Ch V, para 3.1.3.2; T830/90 Macor Marine Systems/Secrecy Agreement (Opposition by Kvaerner Brug) [1995] EPOR 21, 28, TBA. For a remarkable example of an express agreement, see T838/97 Research Foundation of SUNY/Gene Translation Inhibitor (14 November 2001) (paras 6–7) (oral presentation of an invention to a conference of 100). 144 T830/90 Macor Marine Systems/Secrecy Agreement (Opposition by Kvaerner Brug) [1995] EPOR 21, 27, TBA. See also T1086/02 Hosokawa Ter Braak BV/Method for Preparing Confectionery (Opposition by Klöckner Hänsel Prozesstechnik GmbH (21 December 2005), TBA. 145 T818/93 Palmaz/Expandable Intraluminal Vascular Graft (Opposition by Advanced Surgical Intervention, Inc) (2 April 1996), TBA (para 4.1). 146 T782/92, Tokai/Dual-Type Damper (Opposition by Freudenberg) [1996] EPOR 207, 212 (para 2.2), TBA. See also T480/95 Ushio-Denki/Method of Treating Photo-resists (Opposition by Fusion Systems Corp) (5 November 1996) [1997] OJ EPO 20–21, TBA (para 2); T 906/01 De Puy Spine Inc/Spinal Column Retaining Apparatus (28 September 2004), TBA (paras 3.5–3.6). 147 T 681/01 Hunter Douglas Industries BV/Treated Fabric (Opposition by Junkers & Müllers GmbH (28 November 2006) (para 2.8); T 602/91 Bayer/Plasterboard (Opposition by Rigips and Wacker-Chemie) [1996] EPOR 388, TBA; T 1464/05 Prysmian/Hydrogen-Absorbing Composition [2010] EPOR 1, 18–19 (para 4.2 of decision, paras 58–59 of the report), TBA.

78

D. Trade Secrecy Prior to Patenting concluded that this was ‘a regular and unrestricted commercial transaction without implicit obligation of confidentiality’.148 If information has been disclosed in confidence, but the obligation of confidence lapses, the 3.71 information is not ipso facto regarded as having been made available to the public: although the former confidant is free in law and equity to use the information, the EPO has indicated that the information is only made available if there is some further use or disclosure of the information.149 The position of the former confidant is thus treated as equivalent to that of an independent inventor who has kept his invention secret: only if the independent inventor discloses the invention or uses it publicly would it be regarded as potentially invalidating a later patent application (by the inventor or a third party). (3) Disclosure in breach of confidence What happens if, before the priority date, the invention is disclosed to the public in breach 3.72 of confidence? As far as the EPO is concerned information which is obtained unlawfully or is disclosed as a result of a breach of confidence is probably excluded from the ‘state of the art’. Under Article 55 of the EPC, information is excluded from the state of the art where it was disclosed within six months prior to the application ‘due to, or in consequence of, the evident abuse in relation to the applicant or his legal predecessor’.150 The exclusion only applies to disclosures that result from an ‘evident abuse’ and this in turn requires that the state of mind of abuser to be influenced by its specific relationship with the applicant. The Technical Board has indicated that this would include breach of confidentiality. However, early publication by the Brazilian Patent Office, as a result of lamentable error, was unfortunate and detrimental but not an evident abuse within Article 55.151 The UK Patent Act elaborates further excluding disclosures from the state of the art 3.73 where,152 (a) the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by any person— (i) from the inventor or from any other person to whom the matter was made available in confidence by the inventor or who obtained it from the inventor because he or the inventor believed that he was entitled to obtain it; or (ii) from any other person to whom the matter was made available in confidence by any person mentioned in sub-paragraph (i) above or in this sub-paragraph or who obtained it from any person so mentioned because he or the person from whom he obtained it believed that he was entitled to obtain it; (b) the disclosure was made in breach of confidence by any person who obtained the matter in confidence from the inventor or from any other person to whom it was made available, or who obtained it, from the inventor.

148 T 1464/05 Prysmian/Hydrogen-Absorbing Composition [2010] EPOR 1, 20 (para 4.2 of decision, para 63 of the report), TBA. 149 T1081/01 New Japan Chemical Co Ltd/Method of Producing Acetals (27 September 2004), TBA (paras 7–8). 150 EPC 2000 Art 55(1)(a) EPC 1973. 151 T 585/92 Unilever/Deodorant Detergent [1996] OJ EPO 129 (paras 6.4–6.6). Cf Microsonics Corpn’s Appn [1984] RPC 29, PO. 152 Patents Act 1977, s 2(4)(a)(b).

79

Chapter 3: Patents and Trade Secrets 3.74 Under the EPC and the UK Act, the exclusions from the state of the art for disclosures in

breach of confidence only apply to disclosures that are made in the six-month period immediately preceding the date of filing the claim for the invention in question.153 Any disclosures that are made outside of this period will not be caught by the exceptions and will thus form part of the state of the art for the purposes of assessing novelty. 3.75 In the United States, this is less of a concern because of the grace period of 12 months. But it

can still be a problem if the breach of confidence occurred more than 12 months before the filing. In Evans Cooling Systems, Inc v General Motors Corp,154 a patent was held invalid on the basis of the sale of a product more than 12 months before the priority date where that sale was effected in breach of confidence. The patented invention, for an aqueous reverse flow cooling system for internal combustion engines, was conceived in 1984, reduced to practice in 1986, and a patent application was filed in 1992. When Evans brought an infringement action against General Motors, the latter claimed that the invention had been put on sale (as an attribute of its Corvette car) by its dealers more than a year prior to the application for the patent. Evans countered that General Motors had developed its cooling system in breach of confidence, Evans having demonstrated his invention to them in 1989, and GM’s employees having told Evans that they intended to steal the invention! The Court of Appeal for the Federal Circuit nevertheless held, in the light of existing authority, that the patent was invalid. While recognizing such a result might not seem fair, the Court observed that Evans could have gained a patent had he applied within a year of his disclosure to GM, and, in any case, retained the right to sue GM under state law for misappropriation of his trade secret. 3.76 The recent amendments to the US Patent Act should not materially affect the position.

Under the amended s 102, the cooling system would have been on sale or otherwise available to the public before Evans’ effective filing date. The disclosure to and by GM would be covered by the grace period, but only in so far as Evans’ filing occurred within 12 months of the disclosure. Probably, Evans’ disclosure to GM was not novelty destroying,155 so the 12 months would run from GM’s sale or disclosure of the cooling system. 3.77 Overall, however, it is fair to say that UK, EPO, and US law is sympathetic to an inventor

who chooses to rely on secrecy prior to patenting. For the most part, the laws facilitate use and disclosure in confidence by excluding them from the prior art or protecting them via a grace period. However, as we have seen, there are limits to the support offered by the law where confidential information gets out: in both the US and Europe, time limits promote prompt patenting as a response to such wrongful disclosure.

153 Patents Act 1977, s 2(4) refers to the period preceding the application date. According to the Enlarged Board of Appeal of the EPO, under EPC Art 55(1) the ‘relevant date is the date of the actual filing of the European patent application; the date of priority is not to be taken into account in calculating this period’. G3/98 University Patents, [2001] OJ EPO 62, EBA. 154 125 F 2d 1448, 44 USPQ 2d (BNA) 1037, 155 ALR Fed 645 (CAFC 1997), cert. denied, 118 S Ct 1050, 140 L Ed 2d 113 (US 1998). 155 Section 102(a)(1) (as amended by the America Invents Act 2011).

80

E. Trade Secrecy Alongside Patents

E. Trade Secrecy Alongside Patents The third way in which trade secrecy and patents may be deployed is side-by-side. That is, 3.78 where patenting and trade secret protection is available, many firms will use both.156 A patent will be obtained for some of the patentable material, and will contain the required disclosure, but tangential information relating to how the inventor would practise the process or make the product himself would be held back and disclosed to licensees through specific agreement. In Europe, such use seems to raise no concerns at all.157 In the US, a question might (until 3.79 recently) have arisen as to whether a ‘know-how’ licence might suggest that the patentee has failed to comply with the requirement that it disclose the ‘best mode’ of ‘carrying out’ the invention.158 According to Judge Rich in the Court of Customs and Patent Appeals in Re Gay,159 the purpose of the requirement is to ‘restrain inventors from applying for patents while at the same time concealing from the public preferred embodiments of their inventions which they have in fact conceived’. If it could be shown that an inventor knew of, but concealed, a better way of carrying out the invention than was disclosed in the specification, the patent would have been liable to be declared invalid. Attacks on this basis were said to have become increasingly common over the last 50 years.160 Here is not the place to investigate that case law,161 but three points are worth noting. First, the best mode that must be disclosed is the inventor’s best mode: it is a subjective inquiry.162 3.80 If immediately after filing, an inventor has licensed a patent along with know-how, and the know-how can be taken to reveal the inventor’s best mode, that would be compelling evidence of a violation of the standard. Usually, however, the evidence that the patent failed to reveal his or her ‘best mode’ is found through the disclosure process. Second, the best mode requirement relates to the time of filing.163 If the inventor has found better ways to implement the invention after filing, there is no duty to include these in the patent. Equally, a know-how licence entered after filing may not raise concerns of failure to satisfy the best mode requirement if the content of the know-how is founded on post-filing conclusions. Third, the mere existence of a know-how licence with detailed recommendations as to ingredients that are not contained in the patent is not necessarily an indication that there has not been disclosure of the best mode. As has frequently been observed, the best mode requirement 156

Arundel, see n 12, at 613. The UK formerly operated a best method standard. See Wood v Zimmer (1815) 1 Holt NPC 58; Patents Act 1949, s 4(3)(b), s 32(1)(h); 1907 Act s 25(2)(j). 158 35 USC s 112. For the US history, see Christopher Marchese, ‘Confusion, Uncertainty and the Best Mode Requirement’, (1992) 2 Fed Cir Bar Jo 1, 5, 10–13. 159 309 F 2d 769, 772 (CCPA 1962). 160 Christopher Marchese, see n 158, at 46 (‘defence of choice’). Cf Wesley Markham, ‘Is Best Mode the Worst? Dueling Arguments, Empirical Analysis and Recommendations for Reform’, (2011) 51 IDEA 129, 150–1 (best mode requirement does not play a significant role). 161 For reviews, see Christopher Marchese, n 158; Donald S. Chisum, ‘Best Mode Concealment and Inequitable Conduct in Patent Procurement: A Nutshell, a Review of Recent Federal Circuit Cases and a Plea for Modest Reform’, (1997) 13 Santa Clara Comp & High Tech Law Jo 277; Dale L. Carlson, Katarzyna Przychodzen and Petra Scamborova, ‘Patent Linchpin for the 21st Century?—Best Mode Revisited’, 45 IDEA 267 (2005). 162 Bayer AG v Schein Pharmaceuticals, Inc, 301 F 3d 1306, 1314; 64 USPQ 2d 1001 (CAFC, 2002). 163 Glaxo Inc v Novopharm Ltd, 931 F Supp. 1280, 1298 (EDNC 1996) (paras 11–12). 157

81

Chapter 3: Patents and Trade Secrets does not demand that the patent specification be turned into a ‘production schedule’.164 Consequently, as one commentator has observed the best mode requirement ‘is actually no impediment to the coexistence of patents and trade secrets for almost any invention’.165 3.81 Whatever the potential difficulties of the ‘best mode’ inquiry, the possibility of using it as a

basis for claiming invalidity no longer exists: the America Invents Act 2011 introduced amendments, effective from 16 September 2011,166 to the effect that ‘failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.’ The ‘best mode’ requirement has been left purely as a matter to be determined at the date of grant.

F. Conclusion 3.82 In contrast with other areas of law which are reviewed in this book, such as the copyright-

designs interface, where there has been specific legislative action to regulate (and often minimize) overlap between regimes, the issue of overlap between patents and trade secrecy has only occasionally attracted the attention of courts or legislators. In fact, for the most part, it is assumed that there is a choice between the two regimes, and that this choice is essentially a strategic one for the inventor.167 Although questions have arisen as to whether widespread use of secrecy could undermine some of the public disclosure goals of patents, those questions have tended to be answered by highlighting the very different goal of confidentiality in the preservation of certain behavioural norms (commercial ethics). Moreover, in the period before the inventor makes the decision to patent, courts tend to view the two regimes as complementing one another, a view given effect to by a willingness to recognize that most pre-patenting uses of confidentiality should not jeopardize patenting. In the light of this role, it is difficult to see how any principle of patent pre-emption could be made workable. Indeed, international intellectual property obligations now could be said to require states to recognize parallel roles for confidentiality and patents.

164 In Re Gay 309 F 2d 769, 773 (CCPA 1962); Wahl Instruments Inc v Acvious Inc, 950 F 2d 1575, 1581 (CAFC 1991) (Chief Judge Nies); Donald S. Chisum, see n 161, at 286. 165 Karl Jorda, ‘Patent and Trade Secret Complementariness: An Unsuspected Synergy’, (2008) 48 Washburn Law Jo 1, 21. 166 s 15(c). 167 See, eg, Daniel Munson, n 118.

82

4 INTERFACES IN PLANT INTELLECTUAL PROPERTY Mark D. Janis, Indiana University Maurer School of Law

A. Hypothetical B. Conceptual Overview C. Analysing Interface Issues in Plant Intellectual Property

(2) The US approach to the patent/plant variety protection interface (3) The European approach to the patent/ plant variety protection interface

4.01 4.02 4.06

(1) International standards for the patent/plant variety protection interface

D. Conclusion E. Summary

4.06

4.16 4.37 4.61 4.62

A. Hypothetical Suppose that a seed company has developed inbred corn varieties designated P1, P2, P3, and 4.01 P4. Using conventional breeding techniques, the company crosses P1 and P2 to create a commercial hybrid corn variety designated X12. Similarly, the company produces another hybrid X34 from inbred lines P3 and P4. The company subsequently uses genetic transformation methodologies to develop X34T, a transgenic variety. Potentially useful innovations arising from the company’s breeding program include the four inbred plants (and their seed), the hybrid plants (and their seed), the exogenous gene construct used in the X34T hybrid, and various methodologies used in developing the varieties. Plant variety protection (plant breeders’ rights) may be available for the company’s plants in a number of countries. Utility patent protection for the plants also may be available in some countries. The interface between these forms of protection is complex.

B. Conceptual Overview Plant intellectual property presents a classic example of potentially overlapping claims of 4.02 intellectual property protection. As the hypothetical suggests, ‘plant intellectual property’ might comprise claims to the plants themselves, plant components (especially seeds), and breeding methodologies. It might also include numerous tools, techniques, and compositions associated with biotechnology research, whether or not specific to plants. While it has become conventional in most patent systems to extend utility patent protection to many sorts of claims to biotechnology innovations, questions have lingered in many parts of the 83

Chapter 4: Interfaces in Plant Intellectual Property world over whether plants themselves (along with seeds and other plant parts) fit comfortably within the utility patent scheme. Such concerns, whether well-founded in biology or law, gave rise to the plant patent regime in the United States1 and, later, to The International Convention for the Protection of New Varieties of Plants (UPOV) and the UPOV-style plant variety protection regimes.2 4.03 This chapter focuses on intellectual property protection for plants themselves. The principal

question of overlapping intellectual property protection for plants concerns the interface between UPOV-style plant variety protection regimes and utility patent regimes. Approaches to this interface vary greatly in the major patent jurisdictions. 4.04 Three general strategies for regulating intellectual property interfaces can be discerned, and

illustrations of each may be found among the rules of plant intellectual property law. These strategies (except the first) take on the task of directing particular types of innovation towards particular intellectual property regimes, usually based upon preconceived notions about the best subject-matter fit or fears about cumulative protection.3 1. Do nothing. Although the very term ‘overlap’ is mildly argumentative, in fact an overlap between intellectual property rights is not intrinsically problematic.4 Intellectual property regimes may (and generally do) seek to serve different social goals, using different incentive structures to achieve those goals. Some combinations of intellectual property regimes may fairly be characterized as complementary, not cumulative. On the basis of this reasoning, for example, the US Court of Customs and Patent Appeals held that it was not problematic for a product to be protected as trade dress and by a design patent.5 2. Create subject-matter limitations. Another response to overlapping intellectual property protection is to create subject-matter limitations within either one or both of the apparently overlapping regimes. There are numerous alternatives: (a) exclusivity provisions: An intellectual property regime might be designated as the exclusive form of intellectual property protection for particular types of subjectmatter. (b) eligibility provisions: An intellectual property regime might incorporate eligibility exclusions that channel specified types of subject matter away from particular intellectual property regimes—ie, ‘plants are excluded from utility patent protection.’ (c) election requirements: Intellectual property rules may be facially neutral as between multiple overlapping intellectual property regimes, but may force applicants to elect between available forms of protection, foregoing the others—ie, ‘plants are eligible for protection under IP regime A and IP regime B, but not both for the same plant.’

1 Currently codified at 35 USC §§ 161–64. The plant patent regime is outside the scope of this Chapter; for relevant background, see Mark D. Janis, Herbert H. Jervis and Richard C. Peet, Intellectual Property Law of Plants, Ch 9 (forthcoming). 2 See last visited 27 February 2012. 3 See Mark P. McKenna, ‘An Alternate Approach to Channeling?’, (2009) 51 Wm & Mary L Rev 873 (discussing the channelling function of interface doctrines). 4 For an argument along these lines, see Gideon Parchomovsky and Peter Siegelman, ‘Toward an Integrated Theory of Intellectual Property’, (2002) 88 Va L Rev 1455. 5 In re Mogen David Wine Corp, 328 F2d 925 (CCPA 1964). Additionally, the protected design for trade dress purposes may not be precisely the same as the protected design for design patent purposes, even though those designs may be embodied in one tangible item.

84

C. Analysing Interface Issues in Plant Intellectual Property 3. Create policing doctrines. A third strategy is to develop rules that withhold protection or restrict enforceable scope on a case-by-case basis, usually based on an explicit anti-overlap rationale and invariably reflecting a normative judgment about which subject-matter should be channelled to which regime. One example is the doctrine of functionality in trademark law, which attempts to police the boundary between the trademark and utility patent regimes.6 The following sections analyse interface rules in plant intellectual property regimes, using 4.05 the above doctrinal taxonomy as a framework.

C. Analysing Interface Issues in Plant Intellectual Property (1) International standards for the patent/plant variety protection interface There is no international consensus on how to treat the patent/plant variety protection 4.06 interface. Indeed, there has been a substantial variation in the availability of patent and plant variety protection for plants worldwide. Many developing countries offered no intellectual property protection for plants at all prior to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)7 agreement. Developed countries have taken disparate approaches, some privileging plant variety protection under the auspices of the UPOV agreement, others offering some combination of utility patent protection and plant variety protection.8 The TRIPS agreement allows its members substantial discretion to choose among protection options. The TRIPS and UPOV (1991) agreements together permit members wide discretion to fashion national rules to regulate the patent/plant variety protection interface where both patent and plant variety protection are available. (a) The interface under UPOV The interface issue arose in early negotiations over international standards for plant intel- 4.07 lectual property rights. The first international treaty regarding plant intellectual property rights—the UPOV treaty—was drafted in the mid-twentieth century; its initial incarnation appeared in 1961.9 At the time, the US had enacted plant patent legislation but had no plant variety protection and had not resolved whether utility patent protection extended to plants. In Europe, Germany had experimented with a variety protection law,10 but there was no regional form of variety protection, nor had the European Patent Convention (EPC) come into existence.

6 TrafFix Devices, Inc v Marketing Displays, Inc, 532 US 23 (2001). In addition, one should not discount the possibility that some of these doctrinal strategies might be overridden by private contractual arrangements. See Elizabeth I. Winston, ‘What if Seeds Were Not Patentable?’, (2008) Mich St L Rev 321 (offering such an argument in the context of the patent/plant variety protection interface). 7 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Results of the Uruguay Round, 1869 UNTS 299, 33 LLM 1197 (1994), available at last visited 27 February 2012. 8 See paragraphs 4.16 et seq (analysing the US approach). 9 International Convention for the Protection of New Varieties of Plants, 2 December 1961, 33 UST 2703, 815 UNTS 89 [hereinafter UPOV (1961)], available at last visited 27 February 2012 (English text of the 1961 Convention). 10 See Hans Neumeier, Sortenschutz und/oder Patentschutz fur Pflanzenzuchtungen (1990) (discussing the 1953 German proposal).

85

Chapter 4: Interfaces in Plant Intellectual Property 4.08 The 1961 UPOV included a ban against dual patent/plant variety protection,

Each member State of the Union may recognize the right of the breeder provided for in this Convention by the grant either of a special title of protection or a patent. Nevertheless, a member State of the Union whose national law admits of protection for both of these forms may provide only one of them for one and the same botanical genus or species.11 4.09 A leading commentator on the negotiating history of the UPOV concludes that a consensus

had emerged in UPOV negotiations to leave the interface question open, to be resolved under national law.12 However, in concurrent negotiations to create a European patent system, a controversy had emerged over whether utility patent protection should be permitted for plants. To deal with that controversy, drafters had incorporated a provision excluding plant varieties from patent protection, as detailed in paragraphs 4.37 et seq. Accordingly, the dual protection prohibition in the original UPOV treaty can be seen as an artefact of the need to harmonize the UPOV and the EPC, rather than a firm normative commitment to the proposition that dual protection was problematic.13 4.10 Further evidence of the ambivalence with which the early UPOV treaties approached the

interface question can be found in the 1978 revision to UPOV.14 UPOV 1978 not only carried forward the dual protection prohibition of Art 2(1),15 but also added a set of ‘exceptional rules’ applicable to member states that had previously provided dual protection and wished to continue doing so.16 Under the rules, member states could continue to provide dual protection if they notified the UPOV Secretary-General of that fact.17 A separate provision confirmed that where such member states provided patent protection for plant varieties, ‘the said State may apply the patentability criteria and the period of protection of the patent legislation to the varieties protected thereunder’, even though other UPOV provisions called for different conditions of protection and a different term when protection was offered in the form of plant variety protection.18 4.11 By the early 1990s, support for the mandatory dual protection ban had waned, undoubtedly

as a result of US pressure.19 While the US had become a party to the UPOV in 1981 by executive agreement, successive administrations declined to submit the treaty to the Senate 11

UPOV (1961), note 9, at Art 2(1). Andre Heitz, The History of the UPOV Convention and the Rationale for Plant Breeder’s Rights, in 1991 Seminar on the Nature and Rationale for the Protection of Plant Varieties Under the UPOV Convention 25–26 (UPOV 1994). 13 See Mark D. Janis and Jay P. Kesan, ‘U.S. Plant Variety Protection: Sound and Fury . . .?’, (2002) 39 Hous L Rev 727, 741 n 69. 14 International Convention for the Protection of New Varieties of Plants, 2 December 1961, as amended 10 November 1972 and 23 October 1978 [hereinafter UPOV (1978)], available at last visited 27 February 2012 (English text of the 1978 Convention). 15 Ibid., at Art 2(1). 16 Ibid., at Art 37. 17 Ibid., at Art 37(1) (providing that ‘[n]otwithstanding the provisions of Art 2(1), any State which, prior to the end of the period during which this Act is open for signature, provides for protection under the different forms referred to in Art 2(1) for one and the same genus or species, may continue to do so if, at the time of signing this Act or of depositing its instrument of ratification, acceptance or approval of or accession to this Act, it notifies the Secretary-General of that fact.’). The member state could also withdraw its Art 37(1) notification at any time. Ibid., at Art 37(3). 18 Ibid., at Art 37(2). 19 See P.A.C.E. van der Kooij, Introduction to the EC Regulation on Plant Variety Protection 149 (1997) (commenting on US lobbying efforts, citing Doc No CAJ/XXIII/2 UPOV (13 July 1988)). 12

86

C. Analysing Interface Issues in Plant Intellectual Property until 1995.20 Not until early 1999 did the US ratify the treaty and deposit its instrument of ratification.21 By this time, the text of the UPOV no longer contained a dual protection ban. Art 2(1) (and 4.12 associated exceptional rules) disappeared from the 1991 version of UPOV.22 Barry Greengrass, Vice Secretary-General of UPOV at the time, noted that as a consequence of the elimination of Art 2(1), member states could decide to offer utility patent protection for plant varieties, and could also decide whether to force applicants to elect between forms of protection for a given variety.23 Moreover, if a patent and a plant variety protection certificate were awarded for the same variety, ‘the resolution of any conflict between the two kinds of protection is left to the legislation and courts of the member state’ awarding the protection.24 UPOV (1991) also added protection for essentially-derived varieties, motivated in part by considerations of the patent/plant variety protection interface.25 Accordingly, UPOV (1991), the most recent version of the UPOV treaty, is deliberately 4.13 agnostic as to the dual protection issue. It permits member states to authorize patent protection for plants in addition to plant variety protection, and does not require applicants to elect between forms of protection for any given plant variety. (b) The interface under TRIPS Art 27(3)(b) The TRIPS agreement, like UPOV (1991), reflects an unwillingness to mandate any particu- 4.14 lar approach to the patent/PVP interface, while also hinting at the political delicacy of the issue. TRIPS Art 27(1) embodies a commitment to the principle that patent systems should not discriminate on the basis of technology area, specifying that patents shall be available for ‘any inventions, whether products or processes, in all fields of technology . . .’ provided they meet standard patentability prerequisites. Yet, TRIPS Art 27(3)(b) permits Members to derogate from that principle for plants, albeit only in a limited way. Members may interpose two relevant eligibility restrictions: they may exclude ‘plants . . . and essentially biological processes for the production of plants’ from utility patent protection.26 However, Members must nevertheless ‘provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof . . .’27 The language of TRIPS Art 27(3)(b) is notably asymmetric: the exclusion extends to ‘plants’, but the caveat only requires protection for ‘plant varieties’. The distinction between the two concepts has proven important in European law, as discussed at paragraphs 4.37 et seq. Accordingly, as it concerns the patent/PVP interface, TRIPS is neutral as to the intellectual 4.15 property interface strategies listed above. TRIPS Art 27(3)(b) permits WTO member states to impose subject-matter limitations or election requirements. Significantly, however, TRIPS does not require them to do so, instead permitting member states to use ‘any combination’

20

Convention for the Protection of Plants, S. Exec Rep No 105–15, at 1 (1998). See Janis and Kesan, n 13 at 745 n 89 (citing relevant legislative sources). 22 International Convention for the Protection of New Varieties of Plants, 2 December 1961, amended 19 March 1991 (hereinafter UPOV (1991)), available at last visited 27 February 2012 (English text of the 1991 Convention). 23 Barry Greengrass, ‘The 1991 Act of the UPOV Convention’, (1991) 13 Eur Intell Prop Rev 466, 467. 24 Ibid. 25 See paragraphs 4.17 et seq (describing the implementation of the EDV provisions in US law). 26 TRIPS Art 27(3)(b). 27 Ibid. 21

87

Chapter 4: Interfaces in Plant Intellectual Property of protections.28 Although the most obvious combination is patent protection (under a utility patent regime, a plant patent regime, or both) and UPOV-compliant plant variety protection, the TRIPS agreement does not explicitly reference the UPOV agreement. Member states are free to design their own non-UPOV sui generis protection systems to operate exclusively or as part of a combination of intellectual property protections for plants, as long as the sui generis system is ‘effective’.29 Indeed, the freedom permitted by Art 27(3)(b) is such that additional forms of intellectual property protection for traditional knowledge would be permissible as components of a ‘combination’ of intellectual property protections available for plants.30 As a practical matter, it seems likely that UPOV systems will serve as the primary frame of reference for sui generis plant IP protection in the near term, but the freedom that Art 27(3)(b) permits is largely unconstrained.31 (2) The US approach to the patent/plant variety protection interface 4.16 United States law to date has treated the patent/plant variety protection interface as unprob-

lematic. In the US, the hypothetical inbred parent lines P1 through P4, and the commercial hybrid progeny X12 and X34, could all be claimed in utility patents, and could concurrently be the subject of plant variety protection certificates. The same is true of transgenic variety X34T. Efforts to impose judicially-constructed subject-matter limitations on utility patent protection for plants through litigation have failed.32 Similarly, judges have resisted efforts to use existing doctrine to attempt to harmonize infringement exceptions between the patent and plant variety protection regimes, particularly the seed-saving exception. Legislative proposals to accomplish this goal have been introduced.33 (a) The US Plant Variety Protection Act (PVPA) 4.17 The US offers plant variety protection under the Plant Variety Protection Act (PVPA),34

which is intended to conform to UPOV (1991). The purpose of PVPA protection is ‘to afford adequate encouragement for research and for marketing when appropriate, to yield for the public the benefits of new varieties.’35 Because these objectives closely track those of the utility patent system, it is quite reasonable to examine the question of potentially overlapping protection between PVP and utility patent systems. 4.18 The PVPA offers protection for varieties36 that are new and meet the criteria of distinctness,

uniformity, and stability.37 To obtain protection, an applicant must submit an application to 28

Ibid. Ibid. 30 Michael Blakeney, ‘Stimulating Agricultural Innovation’, in Keith E. Maskus and Jerome H. Reichman (eds), International Public Goods and Transfer of Technology Under a Globalized Intellectual Property Regime, 382 (2005). 31 UPOV remains unchallenged as the leading model for plant variety protection. For an argument that the foundational premises of UPOV-style systems should be reexamined in view of advances in molecular markers and similar technologies, see Mark D. Janis and Stephen Smith, ‘Technological Change and the Design of Plant Variety Protection Regimes’, (2007) 82 Chicago-Kent L Rev 1557. 32 See paragraphs 4.26 et seq. 33 Ibid. 34 7 USC § 2321 et seq. See Janis, Jervis and Peet, n 1, at Ch 6. 35 7 USC § 2581. 36 ‘Variety’ is a term of art in the PVPA, defined in relevant part as ‘a plant grouping within a single botanical taxon of the lowest known rank’ which ‘may be represented by seed, transplants, plants, tubers, tissue culture plantlets, and other matter.’ 7 USC § 2401(a)(9). 37 7 USC § 2402(a)(1) (novelty); 7 USC §§ 2402(a)(2), (3), (4) (distinctness; uniformity; stability). 29

88

C. Analysing Interface Issues in Plant Intellectual Property the US PVP Office, an arm of the US Department of Agriculture (USDA), which examines the application for compliance with substantive protectability prerequisites.38 The applicant must also deposit samples of the seed to be protected.39 The application is required to contain only a limited disclosure compared to the utility patent document. A PVP application must contain a ‘statement of the basis of the claim of the applicant that the variety is new’,40 a ‘description of the variety setting forth its distinctiveness, uniformity, and stability’,41 and a ‘description of the genealogy and breeding procedure, when known.’42 For most varieties, a PVP certificate remains in force for twenty years, starting from the date of certificate issuance.43 The scope of protection under the PVP superficially resembles that under the utility patent 4.19 scheme. The PVP holder can prevent others from engaging in a wide range of activities in regards to the protected variety—marketing, selling, shipping, propagating, and conditioning for propagation, among a number of other activities.44 However, the scope of protection under the PVPA ‘more resembles copyright law than patent law’, as the PVP legislative history indicates.45 There are several reasons why. First, the PVP scheme affords no opportunity for drafting 4.20 claims of the types found in utility patents. Instead, the scope of protection is defined in reference to the disclosed variety and its ‘essentially derived varieties’, a concept explored further below. Second, PVP rights are subject to a multiplicity of limitations and exceptions that extend 4.21 well beyond those found in the utility patent regime. The PVPA includes an explicit statutory safe harbour provision shielding from infringement ‘any act done privately and for noncommercial purposes’,46 and also includes a separate provision exempting from infringement ‘[t]he use and reproduction of a protected variety for plant breeding or other bona fide research.’47 The PVPA explicitly allows the use of a protected variety in ‘developing’ a hybrid or different variety, although it prohibits the use of a protected variety in ‘producing’ a hybrid or different variety.48 For those who are concerned about the patent/plant variety protection 38

See last visited 27 February 2012. Ibid., at § 2422(4). 40 Ibid., at § 2422(3). 41 Ibid., at § 2422(2). 42 Ibid. 43 See generally ibid., at § 2483(b); see also ibid., at § 2483(b)(1)(B) (providing a term of 25 years for trees and vines). 44 Ibid., at § 2541(a). 45 S Rep No 91-1138, at 11 (1970). 46 7 USC § 2541(e). Arguably, this provision is analogous to the common law experimental use exception in US utility patent law. 47 Ibid., at § 2544. 48 Ibid., at § 2541(a)(4). According to the PVPA legislative history: Producing (as distinguished from developing) a hybrid or different variety means that use of the protected variety in producing the commercial class of seed of a variety constitutes infringement. Use of the protected variety as one source of germ plasm to breed a novel variety is permissible. As an example, the use of a protected inbred line of corn to cross it with another inbred line to produce a hybrid for commercial use, or production of a composite variety which is repeatedly reconstituted for commercial sale by intercrossing a set of seed lines one of which is protected, shall constitute an infringement. The use of such inbred line for hybridization with other materials to develop through breeding a novel inbred line as provided in section 114 [7 USC § 2544, the experimental use provision], however, does not constitute infringement; nor does the production of such new inbred line for the general market constitute infringement.(1970) HR Rep No 91-1605, at 11. 39

89

Chapter 4: Interfaces in Plant Intellectual Property overlap, the asymmetry between US plant variety protection law, with its significant exceptions for breeding activity, and US patent law, which lacks any substantial experimental use exception, presents critical questions about access to germplasm.49 4.22 PVP rights are further limited by a statutory ‘saved seed’ exemption, which allows farmers

who grow protected varieties (obtained through authorized sources) to save the resulting seed for the production of a subsequent crop ‘for use on the farm.’50 The saved seed exemption also allows farmers to engage in ‘bona fide’ sales of saved seed for purposes ‘other than reproductive purposes.’51 The farmer incurs no obligation to pay a licence fee to the PVP owner.52 Because US utility patent law includes no seed-saving exception from infringement, the permissibility of seed-saving has become a focal point in the US for disputes concerning the patent/plant variety protection interface.53 4.23 Still further, PVP rights are also subject to a compulsory licensing provision. The Secretary

of Agriculture may invoke the provision when doing so would be necessary ‘in order to insure an adequate supply of fiber, food, or feed in this country’, where the PVP owner ‘is unwilling or unable to supply the public needs for the variety at a price which may reasonably be deemed fair.’54 Under such circumstances, the PVPA authorizes the Secretary to ‘declare a protected variety open to use on a basis of equitable remuneration to the owner’55 on further conditions prescribed in the statute. 4.24 Since 1994, the PVPA has extended the scope of PVP rights beyond the protected variety to

encompass some varieties that are ‘essentially derived from a protected variety.’56 The Essentially Derived Variety (EDV) provisions came about primarily as a response to a perception that PVP rights could too easily be circumvented by mere ‘cosmetic’ breeding.57 Secondarily, the EDV provisions reflect a concern over the need to facilitate transactions across the utility patent/PVP boundary by giving PVP owners a better negotiating position vis-à-vis patent owners.58 In particular, if one party A owned a utility patent claiming a gene construct, and another party B owned a PVP certificate on a valuable plant variety, both A 49 See, eg, Joseph Straus, Measures Necessary for the Balanced Co-Existence of Patents and Plant Breeders’ Rights—A Predominantly European View, WIPO-UPOV/SYM/02/7 (23 October 2002). 50 7 USC § 2543. 51 Ibid. 52 European practice is less generous, as discussed in paragraphs 4.37 et seq. 53 See paragraphs 4.26 et seq for a discussion of relevant litigation and legislative proposals. 54 7 USC § 2404. 55 Ibid. 56 7 USC §§ 2541(c)(1)(3) (providing that PVP rights extend to ‘(1) any variety that is essentially derived from a protected variety, unless the protected variety is an essentially derived variety; (2) any variety that is not clearly distinguishable from a protected variety; [and] (3) any variety whose production requires the repeated use of a protected variety’). See also 7 USC 2401(a)(3) (defining ‘essentially derived variety’). 57 That is, a breeder might start with another’s PVP-protected variety Y, introduce a trivial trait into that variety (for example, a minor difference in flower colour) to produce Y’, and then claim that Y’ fell outside the scope of PVP rights to Y. 58 Proponents argued that the existence of the EDV provisions would ‘ensure in future that those working as innovators in the field of plants will reach agreement before they undertake a programme of activity which could result in varieties that are essentially derived from protected varieties. It is hoped that in the vast majority of cases amicable arrangements will be made between plant breeders and/or biotechnologists.’ Greengrass, n 23 at 491; see also Rolf Jordens, Legal and Technological Developments Leading to This Symposium: UPOV’s Perspective, WIPO-UPOV/SYM/02/2 (23 October 2002) (referring to the WIPO-UPOV Symposium on the Co-Existence of Patents and Plant Breeders’ Rights in the Promotion of Biotechnological Developments, held in 2002) (touting EDVs as a balancing mechanism between the patent and plant variety protection regimes).

90

C. Analysing Interface Issues in Plant Intellectual Property and B might wish to create a new commercial variety by starting with B’s variety and introducing A’s gene construct. Under the EDV provisions, the new commercial variety would be likely to qualify as an EDV of B’s protected variety,59 such that there would be a basis for an A/B cross-licensing transaction.60 Whether the existence of the EDV provisions has facilitated technology transfer between patent owners and PVP owners is yet unclear. In sum, the US PVPA contains no express interface measures. It avoids any subject-matter 4.25 exclusions or election requirements, although the fact that protection is accorded only for statutorily defined ‘varieties’ does regulate the potential subject-matter overlap with utility patents. It also contains no interface measures in the form of policing doctrines, although the EDV provisions may be motivated in part by concerns about interface issues. (b) Plants under the US Utility Patent Statute Section 101 of the US utility patent statute uses famously unfettered language to lay out the 4.26 categories of patent-eligible subject-matter. Section 101 contains no explicit interface measures (no exclusivity provisions, no eligibility restrictions) directed to plants, or to any other subject-matter. Prima facie, any plant falls within Section 101’s ‘composition of matter’ category, and any plant breeding method qualifies prima facie as a Section 101 patent-eligible ‘process’. Moreover, the Supreme Court has embraced the proposition that the Section 101 categories are to be construed generously, in recognition of the fact that the statutory scheme must be sufficiently flexible to accommodate unforeseeable technological advances.61 Nonetheless, applying Section 101 to plants or other types of biological subject-matter has 4.27 never been quite as straightforward as the foregoing paragraph might suggest. According to the Supreme Court, ‘laws of nature’ and ‘physical phenomena’ are excluded from Section 101.62 In Hibberd,63 the Board of Patent Appeals and Interferences of the USPTO held that a claim to maize seed having specified characteristics (and related claims) did not fall within these exclusions and thus could be eligible for utility patent protection. The US Supreme Court ratified the USPTO’s practice in J.E.M. Ag Supply v Pioneer.64 Pioneer held utility patents claiming various inbred and hybrid corn plants and asserted the patents in an infringement action against J.E.M. Ag Supply. J.E.M. challenged the validity of the patents-in-suit under 35 U.S.C. §101, asserting that sexually-reproducing plants could not constitute eligible subject-matter under the utility patent regime. Pioneer won a summary judgment motion on the issue at the trial court and at the Court of Appeals for the Federal Circuit, but the US Supreme Court granted certioriari. In an opinion written by Justice Thomas, the Supreme Court affirmed; Justice Scalia filed a concurring opinion, and Justices Breyer and Stevens dissented.

59

Assuming that the protected variety is not itself an EDV of some pre-existing variety. See Janis and Smith, n 31 at 1593 n 176. 61 Bilski v Kappos, (2010) 130 SCt 3218, 3227–28. 62 Diamond v Chakrabarty, (1980) 447 US 307. See also Mayo Collaborative Services v Prometheus Labs. Inc., 132 S.Ct. 1289 (2012) (relying on the law of nature exclusion to invalidate claims to medical diagnostic processes). It seems likely that some will argue that claims to plant breeding processes likewise fall into the law of nature exclusion as articulated in Mayo. 63 In re Hibberd, 227 USPQ 443 (BNA) (Bd Pat App Int 1985). 64 J.E.M. Ag Supply, Inc v Pioneer Hi-Bred Int’l, Inc, (2001) 534 US 124 . For a more detailed analysis, see Janis, Jervis and Peet, n 1 at Ch 10. 60

91

Chapter 4: Interfaces in Plant Intellectual Property 4.28 J.E.M. had argued that the Court should recognize the PVPA as the exclusive form of protection

for sexually-reproducing plants. Because neither the PVPA nor the patent statute contained express subject-matter limitations,65 J.E.M. was left to argue that the enactment of the PVPA created an implied subject-matter exclusion for plants from the utility patent statute. The Court rejected J.E.M.’s argument.66 The Court imposed a strict standard for finding that a subsequent statute impliedly altered or repealed an earlier statute: the two statutes had to present an ‘irreconcilable conflict’.67 The PVPA and the utility patent statute presented no such conflict, according to the Court.68 Indeed, the statutes could readily be reconciled because there was ‘a parallel relationship between the obligations and the level of protection under each statute.’69 Whereas utility patent protection required a showing of utility and non-obviousness, plant variety protection under the PVPA required neither.70 While utility patent protection was subject to a fairly rigorous disclosure requirement under 35 USC § 112, the PVPA permitted a much skimpier disclosure.71 And, correspondingly, while utility patents afforded a relatively generous scope of protection, PVP certificates provided more limited rights.72 The Court laid out two differences: (1) the fact that, unlike the utility patent right, the PVP right was subject to research and seed-saving exemptions;73 (2) the fact that the owner of a utility patent claiming a plant variety could exclude others from developing a hybrid based on the claimed variety, while a PVP owner could not.74 Thus, the Court concluded, it 65 See, eg, J.E.M. Ag Supply, 534 US at 140 (confirming that ‘while the PVPA creates a statutory scheme that is comprehensive with respect to its particular protections and subject matter . . . nowhere does it restrict the scope of patentable subject matter under §101’). 66 Likewise, the Court rejected J.E.M.’s additional argument that the enactment of the Plant Patent Act expelled plants from the utility patent regime. The Plant Patent provisions included no explicit exclusion, the Court pointed out, ibid., at 133, and J.E.M.’s arguments did not persuade the Court that the Plant Patent provisions triggered an implied exclusion. First, the fact that Congress may have believed that plants would not meet the utility patent requirements based on prevalent scientific understanding in 1930 (when Congress enacted the plant patent regime) does not prove that Congress decided to foreclose utility patent protection for plants even if scientific understanding shifted. Ibid., at 135 (asserting that ‘[w]hatever Congress may have believed about the state of patent law and the science of plant breeding in 1930, plants have always had the potential to fall within the general subject matter of § 101, which is a dynamic provision designed to encompass new and unforeseen inventions.’). Second, the inclusion of the asexual reproduction limitation in the plant patent statute reflected scientific understandings (that only through asexual reproduction would a plant reproduce trueto-type) and commercial realities, rather than a legislative judgment against utility patents for plants. Ibid., at 135–36. Third, the decision to codify the plant patent provisions separately of Section 101 was ‘essentially a housekeeping matter.’ Ibid., at 137. 67 Ibid., at 142. 68 Ibid. 69 Ibid., at 142. 70 Ibid. 71 Ibid., at 142–43. 72 Ibid., at 143. 73 Ibid. The Court might have been better advised to say that the utility patent right is subject to no comprehensive statutory research exemption. It is subject to a limited statutory research exemption codified in 35 USC § 271(e) (often referred to as a ‘Bolar’ exemption), and to a common law experimental use exemption, although the scope of the common law exemption is extremely narrow. Madey v Duke Univ, 307 F3d 1351 (Fed Cir 2002). 74 More specifically, a utility patent claim to an inbred plant would be infringed by the unauthorized use of the inbred to develop a hybrid by crossing the inbred with another line, because 35 USC § 271(a) forbids the unauthorized ‘use’ of a patented invention. By contrast, a PVP certificate for the same inbred would not be infringed when the protected inbred is crossed with another inbred to develop a new hybrid. 7 USC § 2541(a)(4). However, the contrast is not quite so stark; repeated use of the PVP protected inbred to cross it with another inbred to produce commercial quantities of a hybrid does violate PVP rights. Ibid.; see also 7 USC § 2541(c) (3) (giving the PVP holder the right to prevent others from producing ‘any variety whose production requires the repeated use of a protected variety’).

92

C. Analysing Interface Issues in Plant Intellectual Property was ‘clear’ that there was no ‘“positive repugnancy” between the issuance of utility patents for plants and PVP coverage for plants.’75 J.E.M. had also argued on a more general level that the Court should systematically forbid 4.29 dual IP protection resulting from the apparent overlap between intellectual property statutes.76 Rejecting the argument, the Court offered two responses. First, the Court noted that when two statutes overlapped, the Court had ‘not hesitated’ to give effect to both of them, so long as each statute reached cases that the other did not.77 Here, the Court pointed out, the overlap between the PVPA and the utility patent regime was ‘only partial’.78 For example, some plant varieties that would not satisfy ‘the stringent requirements of §101’ might nevertheless—at least in theory—satisfy the lesser protectability requirements under the PVPA and thus qualify for ‘the lesser protections afforded by the PVPA.’79 Second, the Court observed that it had permitted dual protection in other cases of arguable intellectual property overlap, invoking Kewanee Oil (patent/trade secret overlap)80 and Mazer v Stein (copyright/design patent overlap).81 This is strong language that warrants attention in debates over intellectual property overlaps 4.30 going well beyond plants—or so it might seem, when the J.E.M. case is viewed in isolation. More recent Supreme Court jurisprudence raises some doubts about the strength of the Court’s commitment to permitting intellectual property overlaps. In TrafFix, concerns about the overlap between utility patent and trade dress protection appeared to impel the Court to rule that the disclosure of subject-matter in a utility patent ‘adds great weight’ to the presumption that the subject-matter should be denied trade dress protection on grounds of functionality.82 In Dastar, the Court rejected a theory of reverse passing off grounded in trademark law on the rationale that to permit it would be to create a ‘mutant form of copyright’.83 The Federal Circuit fended off an effort to limit the J.E.M. holding in Monsanto v David.84 4.31 There, Monsanto owned a patent with claims to the Roundup Ready® gene construct and 75 Ibid., at 143 (quoting Radzanower v Touche Ross & Co, 426 US 148, 155 (1976)). The Court also was persuaded by the fact that although the PTO had been issuing utility patents for plants since Hibberd, Congress had not overturned the practice, and indeed may have sub silentio endorsed it by providing that a foreign application for plant variety protection could serve as a priority document for a later-filed US utility patent application—a scenario that would only seem to be meaningful if the utility patent application claimed a plant. J.E.M. Ag Supply, 534 US at 145. 76 J.E.M. Ag Supply, 534 US at 144. 77 Ibid. 78 Ibid. 79 Although it invoked the requirements of Section 101, perhaps the Court intended to refer to the patentability requirements more generally, including such requirements as non-obviousness under Section 103. In theory, a plant variety that failed to satisfy the non-obviousness criterion and thus failed to qualify for utility patent protection might still demonstrate sufficient distinctness, uniformity, and stability to qualify for protection under the PVPA. 80 Kewanee Oil Co v Bicron Corp, 416 US 470, 484 (1974). 81 347 US 201, 217 (1954). The J.E.M. Court also observed that one of the priority provisions in the utility patent statute contemplated that a plant breeders’ right certificate could serve as a priority document for a utility patent. J.E.M. Ag Supply, 534 US at 145, citing 35 USC § 119(f ). The existence of this provision suggested that Congress must have contemplated the prospect that plants could be patent-eligible subject-matter. J.E.M. Ag Supply, 534 US at 145. 82 TrafFix Devices, 532 US at 30. 83 Dastar Corp v Twentieth Century Fox Film Corp, 539 US 23 (2003). 84 516 F3d 1009 (Fed. Cir.), cert. denied, 555 U.S. 888 (2008).

93

Chapter 4: Interfaces in Plant Intellectual Property plant cells containing that construct.85 David, a farmer, had allegedly planted his fields with soybean seeds saved from previous years’ harvests, in contravention of a licence agreement he signed when he had purchased Roundup Ready® seed from Monsanto several years earlier. Monsanto sued for patent infringement, asserting that the planting and growing of the soybean crop from the saved seeds necessarily involved an unauthorized use of the claimed Roundup Ready® gene construct. David argued that the claims to the gene construct and plant cells should not be construed to extend to plants containing the construct or cells. In essence, this was an assertion that J.E.M. had only spoken to the patent eligibility of claims to plant varieties as such. The Federal Circuit summarily rejected this reading of J.E.M., [N]othing in J.E.M. invalidates or limits the [patent-in-suit] or any utility patent on a gene sequence in a seed or a plant. In fact, in J.E.M., the Supreme Court explicitly refused to limit the extent of patentable subject matter. . . . The [patent-in-suit] covering the gene sequence is infringed by planting a seed containing the gene sequence because the seed contains the gene. The gene itself is being used in the planting, an infringing act.86 4.32 J.E.M. and its progeny illustrate that the US has avoided unproductive battles over the use of

subject-matter restrictions as interface measures at the patent/plant variety protection interface,87 and has therefore also avoided concomitant battles over the effectiveness of strategies to draft patent claims around those restrictions. On the other hand, the absence of subject-matter limitations does present a question about whether to interpose other types of interface measures, such as policing doctrines, in view of the asymmetry between the scope of rights afforded under the respective regimes. Pressure to address that question has manifested itself in a series of decisions in which Monsanto has sued farmers for infringing the patent on the Roundup Ready® gene construct when those farmers have saved seed from the harvest and (typically) replanted it themselves or sold it to others.88 4.33 In the first such decision from the Federal Circuit, Monsanto v McFarling (Fed Cir 2002),89

McFarling had purchased and planted Roundup Ready® soybean seed, and admitted saving 1,500 bushels of seed, replanting them the following year, and repeating the process. Monsanto sued for patent infringement, asserting its patent on the Roundup Ready® gene construct. McFarling argued, inter alia, that the seed-saving exemption of the PVPA effectively shielded him from liability for patent infringement. The Federal Circuit rejected this argument on the ground that utility patent and plant variety protection were complementary forms of protection, The PVPA and the Patent Act are complementary forms of statutory protection of plant ‘breeders’ rights.’ Utility patents under Title 35 provide rights and privileges that differ from those provided by Plant Variety Protection certificates. In [J.E.M.], the Court held that utility patents are available to plants and seeds that meet the requirements of patentability, independent of and in addition to rights under the PVPA. The Court observed that one of the differences 85

US Pat No 5,352,605 (filed 28 October 1993). Monsanto v David, 516 F3d at 1014. The court also considered David’s argument to be a new variant on arguments that the Federal Circuit had previously rejected. See n 91 (discussing the McFarling decisions). 87 No similar luxury exists in European law. See paragraphs 4.37 et seq. 88 Indeed, the dissenters in J.E.M. were concerned that recognizing patent rights in plants would effectively prevent farmers from saving seed, an activity that would be exempt from infringement under the PVPA. J.E.M. Ag Supply, 534 US at 155 (Breyer, J, dissenting) (‘The Court has advanced no sound reason why Congress would want to destroy the exemptions in the PVPA that Congress created. And the Court’s reading would destroy those exemptions.’). 89 Monsanto Co v McFarling, 302 F3d 1291 (Fed Cir 2002). 86

94

C. Analysing Interface Issues in Plant Intellectual Property between the two statutes is that ‘there are no exemptions for research or saving seed under a utility patent.’ It is thus established that the right to save seed of plants registered under the PVPA does not impart the right to save seed of plants patented under the Patent Act.90

McFarling sought to have the Federal Circuit reconsider this ruling in subsequent litigation, 4.34 but the court declined, reiterating its reasoning that J.E.M. established the principle that utility patent protection and plant variety protection as embodied in the PVPA could coexist.91 Although McFarling seems to put to rest the argument that the utility patent statute impliedly 4.35 contains a seed-saving exception because the PVPA contains it, seed-saving farmers have pursued alternative strategies. For example, farmers have argued that the patent law’s first sale doctrine precludes patent infringement liability for farmers who replant saved seed, invoking the Supreme Court’s relatively recent first sale case, Quanta Computer.92 To date, courts have continued to enforce contractual prohibitions against seed-saving arising in patent disputes, even after Quanta.93 Proponents of a seed-saving exception from patent infringement have also turned to Congress. The most recent of the pertinent legislative proposals, the ‘Seed Availability and Competition Act of 2011’,94 proposes a policing mechanism: it proposes to subject seed patents to a limited compulsory licence for the replanting of saved seed.95 In particular, it provides that any person who plants patented seed or seed derived from patented seed may retain seed from the harvest of the planted seed for replanting by that person if that person provides a specified notice to the USDA and pays a predetermined fee to a ‘Patented Seed Fund’.96 The USDA would administer the Fund and pay out collected fees to seed patent holders.97 The proposed legislation would also prevent seed patent holders from contracting around the compulsory licence provision in that it would declare that any person, who retains seed under subsection (a) from the harvest of patented seed or seed derived from patented seed shall not be bound by any contractual limitation on retaining such seed, or by any requirement to pay royalties or licensing or other fees, by reason of the patent, for retaining such seed.98

As of the date of this writing, there was no indication that the legislation would progress significantly. To summarize the state of US law on the patent/plant variety protection interface, J.E.M. 4.36 and progeny definitively reject the proposition that the PVPA (and the plant patent system) express Congress’ intent to impose a subject-matter limitation on the utility patent system. In addition, the Monsanto cases reject the notion that because the seed-saving exemption 90

Ibid., at 1299. McFarling v Monsanto Co, 363 F3d 1336, 1344 (Fed Cir 2004) (‘In light of the Supreme Court’s interpretation of Congress’s intent, we conclude that Congress did not intend to prohibit owners of utility patents from enforcing seed-saving prohibitions in their licenses’). 92 Quanta Computer, Inc v LG Electronics, Inc, 553 US 617 (2008). Farmers have also asserted antitrust violations, starting in the McFarling cases. 93 See, eg, Monsanto Co v Bowman, 657 F 3d 1341 (Fed. Cir. 2011), pet. gov. cert filed. Dec. 20, 2011, No. 11–796. 94 HR 307, 112th Cong, 1st Sess, introduced 18 January 2011. 95 Ibid., at § 2. 96 Ibid., at § 2(e)(1). 97 Ibid., at § 2(e)(2). 98 Ibid., at § 2(f ). 91

95

Chapter 4: Interfaces in Plant Intellectual Property exists in the PVPA, it should be engrafted judicially onto the utility patent scheme. J.E.M. and the Monsanto cases together arguably establish the broader principle that the asymmetry between infringement exemptions in the patent and plant variety protection regimes is not a problem—or, at least not a problem that calls for judicial redress. This is of particular importance for debates that may yet arise over experimentation and breeding activities involving protected varieties, given the fact that the breeder’s exemptions in the PVPA are robust while the common law experimental use exception in US utility patent law is extremely narrow at best. Debates over the saved seed exemption should be viewed in this context—not as an independent value judgment about the desirability of seed saving, but rather as one manifestation of the broader debate over the propriety of dual protection under patent and plant variety protection schemes. (3) The European approach to the patent/plant variety protection interface 4.37 European law has long reflected a special solicitude for plant variety protection regimes.

In Europe, the seed company described in the introductory hypothetical would be likely to rely primarily on plant variety protection to secure intellectual property rights in the parent inbred lines and the commercial hybrids, perhaps under the Community Plant Variety regime. Utility patent protection under the EPC would be unavailable for the varieties claimed as such. However, broader claims to a class of transgenic plants including the gene construct would be likely to define patent-eligible subject-matter, even though such a claim would encompass commercial hybrids such as the hypothetical X34T. (a) Plant breeder’s rights: The Community Plant Variety Rights Regime (CPVR) 4.38 As noted, UPOV (1991) dispensed with its mandatory prohibition against dual protection.99

By that time, national plant breeders’ rights systems in Europe had become well-established under prior versions of UPOV that prohibited dual protection. Thus, although the system of EU-wide plant variety protection did not arrive until the mid-1990s, it is not surprising that the system carried forward established practices from national systems. 4.39 Effective in 1994, the Community Regulation on Plant Variety Protection established a

system of EU-wide plant variety protection,100 administered by the Community Plant Variety Office, located in Angers, France. The Community Regulation on Plant Variety Protection Regulation adopts the dual protection ban.101 Art 92(1) of the Regulation provides that ‘[a]ny variety which is the subject matter of a Community plant variety right shall not be the subject of a national plant variety right or any patent for that variety.’ This is a subject-matter restriction in the form of an election requirement.102 As van der Kooij points out, such an approach was considered necessary in order for the Community plant variety

99

See paragraphs 4.06 et seq. Council Regulation 2100/94, Community Plant Variety Rights, 1994 OJ (L 227) 1 (EC) [hereinafter ‘Regulation 2100/94’]. The Community Plant Variety system did not displace national plant breeders’ rights regimes, but may eventually supersede them in practical importance. 101 See n 99 and accompanying text (describing the dual protection ban as embodied in UPOV (1978)). Because UPOV (1991) is silent on the issue of dual protection, the CPVR complies with UPOV(1991) even though it incorporates the dual protection ban. 102 It is not an election requirement in the purest sense, because applicants could not elect utility patent protection for claims to varieties as such, as discussed at paragraphs 4.42 et seq. 100

96

C. Analysing Interface Issues in Plant Intellectual Property regime to harmonize with the EPC’s exclusion of plant varieties from patent protection, discussed below.103 The CPVR incorporates many of the innovations of UPOV (1991). For example, it extends 4.40 protection to EDVs.104 It also includes a breeder’s exemption and a seed saving exemption.105 The latter is considerably more restrictive than the counterpart seed-saving exemption under the US PVPA.106 For example, the CPVR seed-saving exemption does not apply to any ‘hybrid or synthetic variety’,107 can only be invoked in connection with specified varieties listed in the Regulation,108 and may require the farmer to pay ‘equitable remuneration’ to the plant variety protection owner.109 Art 14(3) of the Regulation calls for the promulgation of implementing rules to govern claims under the seed-saving exemption, and these rules were quickly put into place in the form of an Agricultural Exemption Regulation.110 Thus, the CPVR expresses a fundamentally different approach to the patent/plant variety 4.41 protection interface than does US law. European law accepts the proposition that concurrent protection of a plant variety under both utility patent and plant variety law is problematic. Read in connection with European patent principles as discussed below, the CPVR channels plant innovation away from the utility patent scheme, at least insofar as that innovation is realized in the form of a particular plant variety. In addition, CPVR rights are subject to certain policing mechanisms emanating from the European Biotech Directive, as discussed in the following section. (b) Utility patents on plants under the EPC and European Biotechnology Directive Perhaps the most potent illustration of the frailties of using subject matter limitations to 4.42 regulate intellectual property interfaces arises from the case law interpreting Art 53 (b) of the EPC. Art 53(b) imposes the following subject-matter limitation on plant varieties: European patents shall not be granted in respect of,

4.43

(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision does not apply to microbiological processes or the products thereof.111

This eligibility provision was probably thought to be a straightforward counterpart to the 4.44 dual-protection prohibition in early versions of the UPOV (carried over into the Community Plant Variety Regulation as discussed). In application, Article 53(b)’s exclusion for ‘plant . . . varieties’ has proven to be anything but straightforward.112 103

van der Kooij, n 19 at 149–50 (commentary on Art 92(1)). Regulation 2100/94, see note 100 at Art 13(5). 105 Ibid., at Art 15 (breeder’s exemption); ibid., at Art 14 (seed-saving exemption). 106 See paragraphs 4.17 et seq. 107 Ibid., at Art 14(1). 108 Ibid., at Art 14(2). 109 Ibid., at Art 14(3). 110 Commission Regulation No 1768/95, Implementing Rules on the Agricultural Exemption Provided for in Article 14(3) of [Regulation 2100/94] (24 July 1995) (EC). The Implementing Rules are at issue in Case C-509/10, Geistbeck v Saatgut-Truehandverwaltungs GmbH, OJ C 30/15 (29 January 2011) (reference from the Bundesgerichstof for a preliminary ruling). 111 Convention on the Grant of European Patents, Munich, 5 October 1973 (as revised), available at last visited 27 February 2012. 112 The exclusion for ‘essentially biological processes for the production of plants’ has also generated some controversy. See G 0001/08, State of Israel-Minister of Agriculture/Tomatoes (Enlarged Board 9 December 2010) (concluding that a plant breeding process ‘which contains or consists of the steps of sexually crossing the whole 104

97

Chapter 4: Interfaces in Plant Intellectual Property 4.45 In the crucial case, G 01/98 Novartis,113 the applicant had sought claims relating to transgenic

plants, such as the following: 17. A transgenic plant comprising recombinant DNA sequences encoding one or more cell membrane-degrading components and one or more hydrolytic enzymes.114 4.46 The claims had been rejected as falling within the Art 53(b) exclusion for plant varieties.

Among the questions referred to the Enlarged Board of the European Patent Office (EPO) was the following: Does a claim which relates to plants but wherein specific plant varieties are not individually claimed ipso facto avoid the prohibition on patenting in Article 53(b) EPC even though it embraces plant varieties?115 4.47 In response to this question, the Enlarged Board ruled that ‘[i]n the absence of the identifica-

tion of a specific plant variety in a product claim, the subject-matter of the claimed invention is not directed to a plant variety or varieties within the meaning of Art.53 (b) EPC.’116 As a consequence, in the EPO, a claim to a single plant variety such as the hypothetical X1T is deemed to be excluded from utility patent protection, while a claim drawn to a class of transgenic plants encompassing X1T and many other varieties avoids the Art 53 (b) exclusion.117 4.48 The Enlarged Board invoked both formal legal rationales and instrumental rationales in

support of its holding, but—typical of many rulings on intellectual property interfaces—the instrumental concerns seemed to drive the result. Among formal rationales, the Board sought support in the text and negotiating history of the EPC to support a distinction between ‘plants’ and ‘plant varieties’. The Enlarged Board observed that the Art 53(b) exclusion at issue was directed to plant ‘varieties’, whereas the Art 53(b) exclusion for biological processes referred to ‘plants’.118 The Board also asserted that the term ‘varieties’ in Art 53(b) EPC should be defined in accord with the UPOV (1991) definition of plant variety: ‘a plant grouping within a single botanical taxon of the lowest rank’ which meets additional specified criteria.119 In contrast, the Board reasoned, a ‘plant’ should be understood not as ‘a concrete living being or grouping of concrete living beings’ but rather should be given ‘an abstract and open definition embracing an indefinite number of individual entities defined by a part of its genotype or by a property bestowed on it by that part’.120 genomes of plants and of subsequently selecting plants is in principle excluded from patentability’ under Art 53(b)); G0002/07, Syngenta Participations AG/Broccoli (Enlarged Board 9 December 2010) (same). 113 G 0001/98, NOVARTIS II/Transgenic Plant, [2000] EPOR 303. 114 Anti-pathogenically effective compositions comprising lytic peptides and hydrolytic enzymes, EP 0448511 (published 25 September 1991). 115 G 01/98, [2000] EPOR at 303 (question 2). 116 Ibid., at ¶ 3.10. 117 Ibid. (asserting that because Art 53(b) specifically excludes varieties, ‘it is . . . in agreement with the rules of logic that a patent shall not be granted for a single plant variety but can be granted if varieties may fall within the scope of its claims’). 118 The process exclusion of Art 53(b) excludes ‘essentially biological processes for the production of plants or animals’ (emphasis supplied). G 01/98, [2002] EPOR at ¶ 3.3.1. 119 UPOV (1991), see note 22, at Art 1(vi). The additional criteria are that the grouping can be: defined by the expression of the characteristics resulting from a given genotype or combination of genotypes, distinguished from any other plant grouping by the expression of at least one of the said characteristics and considered as a unit with regard to its suitability for being propagated unchanged . . . (Ibid.) 120 G 01/98, [2002] EPOR at ¶ 3.1.

98

C. Analysing Interface Issues in Plant Intellectual Property The Board also summoned additional legislative background to bolster its conclusion that 4.49 EPC Art 53(b) should not be read as a ban on patents for plants. The Strasbourg Convention, a mid-twentieth-century effort at European patent lawmaking that largely preceded the EPC,121 had permitted contracting states to decide as a matter of national law whether to allow patent protection for plant varieties.122 Accordingly, the Strasbourg Convention had accommodated the UPOV (1961) dual protection ban without mandating it. Certainly, the Strasbourg Convention did not prohibit altogether the grant of patents for plants. Such a prohibition would have been problematic, because UPOV (1961) called for plant variety protection across only a limited set of botanical genera, and some European countries were granting patent rights for at least those plants that fell outside the limited set and therefore would have been ineligible for plant variety protection.123 Likewise, according to the Board, EPC Art 53(b) should be read as an effort to accommodate the UPOV (1961) dual protection ban without necessarily prohibiting patents for plants altogether.124 While EPC Art 53(b) requires all signatories to exclude plant varieties from patent protection, this exclusion should not reach subject-matter that would have been denied protection under the plant variety system.125 Stated another way, varieties ‘ineligible for protection under the plant breeders’ rights system were intended to be patentable under the EPC provided they fulfilled the other requirements of patentability’.126 Fundamentally, however, the Novartis decision rests upon the Board’s policy views about the 4.50 adequacy of patent scope for agricultural biotechnology innovations. Protection for transgenic plant innovations would be too narrow if the plants could only be protected under plant variety protection regimes, the Board opined, because the protection would be limited ‘to a few varieties’ even though the plant biotechnologist may have provided the means for inserting an important transgene into ‘all appropriate plants’.127 This is a standard channelling manoeuvre, in which the court shapes rules to satisfy its normative vision about which regime provides a more satisfactory subject-matter fit and set of incentives for particular classes of innovation. For the Board, these considerations were apparently strong enough to justify a decision that otherwise might have seemed counterintuitive or even illogical, excluding

121 Strasbourg Convention on the Unification of Certain Points of Substantive Law on Patents for Invention (27 November 1963) (‘Strasbourg Convention’), text available at last visited 27 February 2012. For background, see Christopher Wadlow, ‘Strasbourg, the Forgotten Patent Convention, and the Origins of the European Patents Jurisdiction’, (2010) 41 Int’l Rev Intell Prop & Copyrt 123. 122 G 01/98, [2002] EPOR at ¶ 3.4, citing Strasbourg Convention Art 2(b) (‘the Contracting States shall not be bound to provide for the grant of patents in respect of plant varieties’). 123 G 01/98, [2002] EPOR at ¶ 3.4. 124 Ibid., at ¶ 3.6. 125 Ibid., at ¶ 3.7. 126 Ibid., the Enlarged Board also noted that ‘There is nothing in the travaux préparatoires to suggest that Art 53(b) EPC could or even should exclude subject-matter for which no protection under a plant breeders rights’ system was available.’ Ibid. 127 G 01/98, [2002] EPOR at ¶ 3.8. The Board also supplied an additional rationale: the development of specific varieties might not lie within the plant biotechnologist’s field of activity, ibid.This proposition may be in some tension with the established principle of patent law insisting that inventors demonstrate the utility (or industrial applicability) of their inventions.

99

Chapter 4: Interfaces in Plant Intellectual Property narrow claims to a variety while permitting broad claims that would encompass that variety and many others.128 As the Board saw it, Article 53(b) EPC defines the borderline between patent protection and plant variety protection. The extent of the exclusion for patents is the obverse of the availability of plant variety rights. The latter are only granted for specific plant varieties and not for technical teachings which can be implemented in an indefinite number of plant varieties. This is not a question of arithmetical logic but based on the purpose of plant variety rights to protect specific products which are used in farming and gardening.129 4.51 Two concluding observations are in order about the Novartis Board’s approach to the inter-

face issue. First, subject-matter exclusions in utility patent regimes are readily manipulable as a consequence of the patent drafter’s relative freedom to draft claims around rules. Notwithstanding the EPO’s protestations,130 the Novartis ruling does place a premium on the form of the claims. Those who advocate the aggressive deployment of subject-matter restrictions to police intellectual property interfaces should carefully consider the jurisprudence of the plant intellectual property regimes in Europe. 4.52 Second, the debate in Novartis illustrates that subject-matter exclusions may not have

the effect of isolating one intellectual property regime’s rule set from another’s; indeed, the exclusions may have just the opposite effect. For example, because the concept of ‘plant variety’ in EPC Art 53(b) is keyed to the corresponding UPOV definition, a change to the UPOV definition would propagate into the EPO patent rules.131 This concern apparently arose in negotiations over the 1991 revisions to UPOV, which incorporated a new definition of variety.132 Negotiators worried that if the new definition of variety encompassed a plant 128 In other respects, more recent decisions in Europe have confined utility patent rights in plant innovation. In Monsanto Technology LLC v Cefetra BV, Case C-428/08 (CJEU) (6 July 2010), opinion available at last visited 27 February 2012. Monsanto held European patent rights for a class of glyphosate-resistant enzymes that are produced by Monsanto’s Roundup-Ready® soybeans, along with the gene sequence coding for those enzymes. Cefetra sought to import cargoes of soybean meal from Argentina. The meal tested positive for the presence of the patented enzyme and gene sequence, and Monsanto sued in a Netherlands court, the Rechtbank’sGravenhage, for patent infringement. Ibid., at ¶¶ 15–21. Cefetra took the position that the patented material in the soybean meal was not performing its function of conferring glyphosate resistance (even though it had previously performed that function when the plants were growing and might conceivably be extracted and be capable of doing so again). This was important because Art 9 of the Biotech Directive specifies that ‘protection conferred by a patent on a product containing or consisting of genetic information shall extend to all material . . . in which the product is incorporated and in which the genetic information is contained and performs its function.’ The Netherlands court referred the question to the CJEU for a preliminary ruling, and the Court issued a ruling agreeing with Cefetra’s position: Article 9 of the Directive must be interpreted as not conferring patent right protection in circumstances such as those of the case in the main proceedings, in which the patented product is contained in the soy meal, where it does not perform the function for which it was patented, but did perform that function previously in the soy plant, of which the meal is a processed product, or would possibly again be able to perform that function after it had been extracted from the soy meal and inserted into the cell of a living organism. Ibid., at ¶ 50. 129 Ibid., at ¶ 3.10. 130 Ibid., at ¶ 3.1 (‘Clearly, it is not the wording but the substance of a claim which is decisive in assessing the subject-matter to which the claim is directed’). 131 Given the relative intensity of utility patenting compared to plant variety protection, one might expect that the usual (and perhaps more desirable) direction of influence would run the opposite way, from the utility patent scheme to the plant variety protection scheme. 132 Greengrass, n 23 at 467.

100

C. Analysing Interface Issues in Plant Intellectual Property cell line, for example, then the EPC would have to be interpreted to exclude plant cell lines from patent-eligible subject matter.133 Ironically, a subject-matter exclusion used as an interface measure in intellectual property may guarantee a continuing flow of jurisprudence across the interface. The approach of the European Biotechnology Directive134 to the interface issue for plants 4.53 coincides with EPC law on subject-matter eligibility, but goes further in other areas that the EPC does not reach. Art 4(1) excludes patent protection for plant varieties135 and ‘essentially biological processes for the production of plants . . .’136 Consistent with Novartis, Art 4(2) adds that ‘[i]nventions which concern plants . . . shall be patentable if the technical feasibility of the invention is not confined to a particular plant . . . variety’.137 Likewise consistent with Novartis, Art 2(3) of the Directive defines the concept of ‘plant variety’ by reference to the definition in the Community Plant Variety Regulation, which is equivalent to the UPOV (1991) definition. In addition to these subject-matter limitations, the Biotechnology Directive also establishes 4.54 a separate interface measure, a policing mechanism (restricting enforcement) in the terminology employed at the beginning of this Chapter. Art 12 of the Directive contemplates, and seeks to solve, two potential blocking problems. The first arises when one breeder’s utility patent rights to a plant block another party from developing or commercializing a particular plant variety. For example, a utility patent claim to a transgenic plant (such as claim 17 at issue in Novartis) might be infringed by breeding activities directed at commercializing hypothetical variety X34T, protected under a plant variety regime. The second arises when the owner of a utility patent—again, assume a patent claiming transgenic technology—seeks to practise that technology by incorporating the transgene into a plant variety such as hypothetical X34, which is protected under a plant variety regime. Art 12 supplies a compulsory cross-licensing mechanism for addressing patent/plant variety 4.55 blocking situations. Article 12(1) provides that, Where a breeder cannot acquire or exploit a plant variety right without infringing a prior patent, he may apply for a compulsory licence for non-exclusive use of the invention protected by the patent inasmuch as the licence is necessary for the exploitation of the plant variety to be protected, subject to the payment of an appropriate royalty. Member States shall provide that, where such a licence is granted, the holder of the patent will be entitled to a cross-licence on reasonable terms to use the protected variety.138

Art 12(2) provides a comparable licence that is triggered when a breeder cannot exploit a 4.56 patent right without infringing a prior plant variety right.139 133

Ibid. Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions (OJ 1998 L 213, p 13) [hereinafter Biotech Directive 98/44/EC]. 135 Biotech Directive 98/44/EC, see n 134 at Art 4(1)(a). 136 Ibid., at Art 4(1)(b). The Directive also specifies that a process for the production of plants is excluded as ‘essentially biological’ if it ‘consists entirely of natural phenomena such as crossing or selection’. Ibid., at Art 2(2). 137 Ibid., at Art 4(2). 138 The language refers to acquiring or exploiting a plant variety right. Presumably ‘acquiring’ means undertaking breeding activities that might be necessary to develop a variety that will be the subject of plant variety protection. 139 Article 12(2) provides that, ‘Where the holder of a patent concerning a biotechnological invention cannot exploit it without infringing a prior plant variety right, he may apply for a compulsory licence for 134

101

Chapter 4: Interfaces in Plant Intellectual Property 4.57 The language of Art 12 clearly illustrates the difficulties of using a compulsory licence as an

interface policing mechanism. Arts 12(1) and (2) call for the grant of compulsory licences ‘on reasonable terms’ and subject to the payment of an ‘appropriate’ royalty. These are undoubtedly complex calculations which would need to be undertaken on a case-by-case basis by the designated authority140 within a given member state. Moreover, applying Art 12(3)(b)’s limitation would seem to be immensely difficult, requiring a relative determination of whether the licensor’s subject-matter constitutes ‘significant technical progress of considerable economic interest’ compared to that of the licensee. However, it is also attractive in the manner that policing mechanisms usually are: these difficult determinations need not be made at a threshold stage of patent examination, but rather can be postponed, and indeed need be considered only in cases in which a dispute must be resolved. 4.58 Another important consideration may obviate the need for invoking the Art 12 compulsory

cross-licence in any event. Statutory experimental use exceptions are commonplace in national patent laws in Europe.141 The asymmetry existing in US law, where breeding activities involving protected plants may be allowable under the PVPA but not under the utility patent law, is at least much diminished in Europe. Breeding activity that is shielded under the CPVR exemption might, for example, also be shielded from patent infringement under the relevant experimental use provision of national patent law, as Professor Straus has argued.142 4.59 In addition to the compulsory cross-licence, the Directive also supplies a default rule for

seed-saving, which may be understood as another policing mechanism at the patent/plant variety protection boundary. Art 11(1) provides that when a patent holder sells143 or consents to the sale of plant propagating material to a farmer for agricultural use, the farmer is impliedly authorized ‘to use the product of his harvest for propagation or multiplication by him on his own farm’, to the extent permitted by the seed-saving provision of the Community Plant Variety Regulation.144 Accordingly, European law demonstrates greater solicitude for non-exclusive use of the plant variety protected by that right, subject to payment of an appropriate royalty. Member States shall provide that, where such a licence is granted, the holder of the variety right will be entitled to a cross-licence on reasonable terms to use the protected invention.’ 140 Article 12(4) specifies that Member States must designate an authority to grant Article 12 licences, without dictating whether the authority should be a particular administrative or judicial body. See also ibid. (further specifying that ‘[w]here a licence for a plant variety can be granted only by the Community Plant Variety Office’, the compulsory licensing provision of the Community Plant Variety Regulation (Article 29) ‘shall apply’). 141 See Henrik Holzapfel and Joshua D. Sarnoff, ‘A Cross-Atlantic Dialog on Experimental Use and Research Tools’, (2008) 48 IDEA 123 (analysing relevant authorities). 142 Under his analysis, plant germplasm that is the subject-matter of utility patent protection in Europe could be used by a competing breeder for breeding purposes without the patent owner’s authorization: Whether the commercial use of the final outcome of such activities, e.g. a new plant variety will eventually infringe the respective patent, will ultimately depend on, for instance, whether it will still contain the patented gene and whether the gene—the genetic information—will still perform its function. In case the breeder would succeed in removing that patented genetic information—e.g. resistance, from the propagating material of the new variety, the variety would be outside the scope of the patent. Thus, its commercial use would not constitute an infringement. Joseph Straus, Measures Necessary for the Balanced Co-Existence of Patents and Plant Breeders’ Rights—A Predominantly European View, WIPO-UPOV/SYM/02/7 (23 October 2002). 143 The Article is not limited to strictly ‘sales’; it refers to ‘sale or other form of commercialization’. 144 For the seed-saving provision, see Community Plant Variety Regulation (EC) No 2100/94, n 100, at Art 14.

102

E. Summary plant variety protection than does US law, and, subconsciously or otherwise, seems to accept the proposition that the seed-saving exemption is not just a derogation from plant variety protection rights, but an independent value to be preserved as against claims of utility patent infringement. In principle, this is a fundamentally different approach to the patent/plant variety protection interface than US law takes, as exemplified by the Monsanto RoundupReady® soybean cases. In practice, the differences may not be quite so stark. The seed-saving exemption in the Community Plant Variety Regulation applies only to a limited range of crops, and, notably, soybean is not one of them. In addition, the Directive’s default rule refers to implied authorization, leading one to wonder whether an express patent licence restriction against seed-saving would trump the Directive’s rule. In sum, European law takes seriously the concept that protection under both utility patent 4.60 and plant variety protection schemes could be problematic. European law regards the interface as one in need of regulating, and uses a combination of subject-matter limitations and some policing doctrines to accomplish that regulation.

D. Conclusion There is no uniform approach at the international level to patent/plant variety protection 4.61 interface measures. Both the UPOV Treaty and the TRIPS agreement leave the matter to national law. The approaches of the United States and Europe, respectively, differ in fundamental ways.

E. Summary The approaches of the US and Europe are summarized with reference to the hypothetical 4.62 presented in the Introduction: • under US law • varieties P1, P2, P3, and P4, and varieties X12, X34, and X34T, would all be eligible for protection under the Plant Variety Protection Act • PVP rights to the varieties are subject to numerous exemptions, including a seed-saving exemption (requiring no remuneration to the PVP rights holder) and a breeder’s exemption • varieties P1, P2, P3, and P4, and varieties X12, X34, and X34T could also be claimed as such under US utility patent law • contractual restrictions against the saving and replanting of patented plant material are likely to be upheld • breeding activities that involve the unauthorized use of patented plant material are likely to be deemed infringing (ie, are not likely to fall within the common law experimental use exception) • under European law • varieties P1, P2, P3, and P4, and varieties X12, X34, and X34T, would all be eligible for protection under the Community Plant Variety Regulation • CPVR rights in specified varieties are subject to a seed-saving requirement (although remuneration to the CPVR rights holder may be required), a breeder’s exemption, and other limitations 103

Chapter 4: Interfaces in Plant Intellectual Property • varieties P1, P2, P3, and P4, and varieties X12, X34, and X34T could not be claimed as such under the law of the EPC, although a class of transgenic plants encompassing variety X34T and others could be claimed • patented plant material is subject to the seed-saving exemption as defined in the CPVR, according to the Biotech Directive • breeding activity involving the unauthorized use of patented plant material may be shielded from patent infringement under the statutory experimental use exception in national law, and breeders may also be able to invoke the compulsory cross-licence provision of the Biotech Directive.

104

5 PATENTS AND UTILITY MODELS Robert Harrison, 24IP Law Group

A. B. C. D. E. F.

Hypothetical The Utility Model Protection in Germany Utility Models Worldwide The Australia Innovation System A European Proposal

5.01 5.04 5.06 5.11 5.16

G. H. I. J. K.

Examination Division/Branching Level of Inventiveness Conclusion Summary

5.27 5.31 5.35 5.41 5.44

5.22

A. Hypothetical It’s not every day that scientists and engineers develop a novel type of medical diagnostics 5.01 device, combining innovations in electronics design, mechanical parts, and innovative biotechnology as well as a new diagnostic method. The device—let’s call it the EMB product— uses a new biotech compound to detect a cancer much earlier than similar products. The biotech compound is novel and has never been used before, but is difficult to detect. A novel electronic circuit coupled to an innovative capillary tube ensures that changes in the biotech compound indicating the cancer can be detected. The results are impressive—much more accurate than existing commercial products and the whole device is much easier to use. It could save the health services worldwide millions by identifying cancers at a much earlier stage than prior art devices. The only problem is that it requires commercial development and the inventors and 5.02 engineers behind the device have no money. Clearly, it is a project calling for venture capital to fund the development work to bring the EMB device beyond the proof of concept stage to a commercial product. Venture investors want returns on investments. They want to see and understand how the 5.03 market for their investment can be sustainably maintained. A first mover advantage in bringing a product quickly to the marketplace is one aspect, but sustaining that advantage over a longer term requires planning. Protecting the inventions is one aspect in maintaining that sustainable advantage—the question is: how? With limited funds, patent protection worldwide is clearly not an option. But could the ‘lesser’ protection granted by ‘utility models’, ‘petty patents’, or ‘innovation patents’ be the answer? 105

Chapter 5: Patents and Utility Models

B. The Utility Model 5.04 The concept of patent protection is generally known. But what is exactly a ‘utility model’? Unlike

patents there is no common understanding of the concept. It is known and implemented in some countries (as listed in Table 5.1). Other countries do not have any such protection. Table 5.1 List of Countries having Utility Model Protection Country

Duration of Protection

Albania Angola Andean Community Argentina ARIPO—African Regional IP Organization Armenia Aruba Australia Austria Belgium (now abandoned) Belarus Belize Bolivia Brazil Bulgaria Colombia Chile China Costa Rica Czech Republic Denmark Ecuador Estonia Ethiopia Finland France Georgia Germany Ghana Greece Guatemala Honduras Hungary Indonesia Ireland Italy Japan Kazakhstan Kenya Kuwait Kyrgystand Korea Laos Lesotho Macau

10 years 10 years 10 years 8 years 6 years 8 years 10 years 6 years 8 years 7 years 10 years 10 years 10 years 10 years 10 years 10 years 10 years

8 years 6 years 10 years 7 years 10 years 10 years 5 years 10 years 10 years 15 years

15 years

106

B. The Utility Model Table 5.1 List of Countries having Utility Model Protection (cont.) Country

Duration of Protection

Malaysia Mexico Moldova Netherlands (abandoned) OAPI—Organisation Africaine de la Propriété Intellectuelle Panama Peru Philippines Poland Portugal Russia Sierra Leone Slovakia Slovenia Spain Taiwan Tajikistan Thailand Tangier Zone/Morocco Tonga Trinidad and Tobago Turkey Ukraine Uruguay Uzbekhistan Venezuela Vietnam

15 years 10 years 6 years 8 years 10 years 10 years 15 years 10 years 8 years 10 years 10 years 12 years 10 years

10 years 8 years 10 years 8 years

Source: WIPO, Ladas & Parry, Kluwer: Manual for the handling of applications for patents, designs and trademarks throughout the world (various updates), Wikipedia. Note: The table above represents a summary collated from a variety of information sources. The blank spaces (for number of years) against certain countries indicate that the data is either not available or has not been validated from more than one source.

The term ‘utility model’ is used by the World Intellectual Property Organization (WIPO) 5.05 and others to indicate a type of exclusive right granted (or registered) on an invention which is ‘different’ than patents.1 The concept goes under different names in different countries but there are common elements: • The requirements for filing and registering a utility model are generally less stringent than for patents. While the requirement of ‘novelty’ is always to be met for both patents and utility models, the requirement of ‘inventive step’ or ‘non-obviousness’ may be much lower or absent altogether. • The term of protection for utility models is generally shorter than for patents and varies from country to country (usually between seven and ten years2 without the possibility of extension or renewal beyond that date).

1 See last visited 27 February 2012. 2 Some countries have systems up to 15 years as shown in Table 5.1.

107

Chapter 5: Patents and Utility Models • In most countries where utility model protection is available, patent offices do not examine applications as to substance prior to registration. This means that the registration process is often significantly simpler and faster, taking, on average, six months. • Utility models are much cheaper to obtain and to maintain. • In some countries, utility model protection can only be obtained for certain fields of technology and only for products but not for processes.3

C. Protection in Germany 5.06 This concept of the utility model was first developed in Germany. A Commission of Enquiry

set up in 1886, noted that German inventors and industry required a ‘minor’ degree of protection for ‘lesser’ inventions and technical designs for which the costs and the time for prosecution of a patent could not be justified.4 The Commission recommended the passage of the first law on Utility Models (‘Gebrauchsmuster’) in 1891 to fulfil these aims.5 Reading the report today, one is struck by how the nineteenth century comments on the costs of patents and the need to further the interests of local industry by offering a low-cost alternative, reflect modern discussions on the role of the patent system, The gentlemen (sic) desire the so-called utility model for certain things, for which the proceedings to obtain an invention patent are too complex, too difficult, too expensive and too time-consuming, and having a shorter proceedings which allows the utility model to forego the complexity and cost of the patent system but to be supported by the other law.6 07–5.08 The resulting Act on Utility Models was the first worldwide to establish the concept of the

utility model and it contained certain provisions intended to distinguish the utility model from the similar provisions in the Patent Act. At the time, a utility model could only be registered for an invention that had a so-called ‘Raumformerfordernis’ (spatial form requirement).7 The need to ensure that protection was only granted to innovations which could be implemented in a three-dimensional form would be a defining feature of the German system for almost a century, until it was removed in 1986.8 5.09 For our EMB developers, this seems good news: a legal tool developed in Germany at the end

of the nineteenth century seems the ideal way to protect their twenty-first century innovation in an inexpensive and quick manner. The protection is open to non-German inventors and can even be obtained through an international patent application9 or by filing a Paris convention application based on a non-German patent application.10 There is, however, a problem. The 1986 revision of the Utility Model Act removed the spatial form requirement,

3

Ibid. Bericht der Enquête Kommission zur Revision des Patentgesetzes (1887), cited in Benkard, Patentgesetz, Gebrauchsmustergesetz, 10th edn (Munich: C.H. Beck, 2006), Vorbemerungen zum Gebrauchsmustergsetz, para 1. 5 Ibid. 6 Bericht der Enquête Kommission zur Revision des Patentgesetzes (1887), page 20 (translation by author). 7 Asendorf, ‘Herkunft und Entwicklung des Raumformerfordernisses im Gebrauchsmusterrecht’, (1988) GRUR 83–87, discusses this point in detail. 8 Gesetz zur Bekämpfung der Produktpiraterie, s 1, para 1. 9 Gesetz über internationale Patentübereinkommen, s 4. 10 Gebrauchsmustergestetz, s 6 paras 1, 2. 4

108

D. Utility Models Worldwide but added a new restriction: German utility models may not be filed for processes or methods.11 So the EMB innovations in the electronic circuit and the mechanical design of the capillary tube can be protected by the German utility model. The novel diagnostic method however, cannot be protected. What about biotechnology? A subject that was almost unknown when the 1886 Commission 5.10 sat. Until 2005, the situation was not clear. As long as a method or process was not being protected, then utility model protection was at least feasible, even if apparently rarely requested. A 2005 amendment to the Act added a restriction that biotechnology inventions could not be protected by utility models.12 The justification for this restriction is given in the explanatory memorandum accompanying the amending law.13 This states that the nonexamined nature of the utility model makes it ‘inappropriate for protection by utility models’ and that biotechnology inventions should be filed as patent applications.14 Fortunately for our EMB developers, this restriction is limited to protection on utility models, however. Patent protection is explicitly allowed.15

D. Utility Models Worldwide Germany remained for many years the sole country to have implemented the concept of 5.11 utility models as a secondary form of intellectual property protection. As far as is known, Japan was the next country to adopt a similar law in 1909 and this law was based on the German system.16 The concept of utility model protection in other countries remained, however, a rarity until the 1980s.17 The patent system, on the other hand, developed much more quickly. Countries began to harmonize the requirements for filing patents and the 1963 Strasbourg Convention introduced the now-common concepts that a patent has to be novel, inventive, and industrially applicable.18 The definition of ‘prior art’ was harmonized so that prior art worldwide was relevant (and not just art published in the country).19 Today almost all countries have substantially the same concepts and interpret them in the same way. The 1970 Patent Cooperation Treaty (PCT) substantially simplified the filing of patents in many countries and came into force in 1979. These developments in the patent system have benefitted our EMB innovators. Whereas in 5.12 the 1960s and 1970s patent protection outside of one or two countries was almost ruinously expensive for many small companies, an international application under the PCT gives 11 Gebrauchsmustergesetz, s 2, no 3. Utility models are also not granted on inventions which would be contrary to public policy or morality, or on plant or animal varieties. 12 Gebrauchsmustergesetz, s 1, para 1, no 5. 13 The German executive presents to the German Parliament an explanatory memorandum discussing the reasons for the proposed law. This is similar to ‘travaux préparatoires’ known from international public law and is often cited in court cases to help define the intended meaning of any unclear provisions. 14 Bundesgesetzblatt (Federal Law Journal) 05, 99–101. 15 German Patent Law, s 1, para 2. 16 Japan Utility Model Act. 17 John Richards ‘Petty Patent (Utility Model) Protection’, Introduction, available at last visited 27 February 2012. 18 Article 1, available at last visited 27 February 2012. 19 Art 4, para 1, of the Convention legislates that the state of the art (ie, prior art) shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of the patent application or of a foreign application, the priority of which is validly claimed.

109

Chapter 5: Patents and Utility Models additional time to test and develop a product before committing to substantial costs for patent protection. The crunch still comes, however, 30 months after the first patent filing.20 The costs for filing patents in the national countries still had to be incurred. 5.13 The 1980s saw an expansion in the number of countries adopting a utility model system.21

The goal, just like the nineteenth century aim in Germany, was to provide a lesser degree of protection at lower cost for less import-important inventions and, in particular, to help local industry. Table 5.1 shows the current list of countries known to the author as currently having utility model protection. In many—but not all—of these countries protection as utility models can also be obtained through the PCT. In other words, the initial international application can be converted into a national utility model registration. 5.14 The fall of communism and the establishment of a market economy in a number of countries

(particularly in Central and Eastern Europe) seems to have been one of the major factors in the establishment of local utility model systems. Under the previous socialist economies, the main function of the patent system had been to acknowledge and reward inventorship—the concept of a patent as a monopolistic right was foreign to an economy controlled by the state. The modernization of business laws following the establishment of market economies also led to the modernization of intellectual property laws. Many countries appear to have seen the need to introduce a low-cost right for the protection to help encourage and develop local industry.22 The extent of use of the German model by small and medium-sized enterprises seems to have been one of the major factors in encouraging countries to introduce their own utility model protection system.23 5.15 Statistics issued by the WIPO in September 201024 suggested, on the other hand, that the

use of the utility model system in many countries has not been very high. Indeed utility models or petty patents have not been well-used in many countries—the major exceptions being China, Germany, Japan, Korea, Russia, and the Ukraine. In all countries, standard patent protection system has been used more extensively and only a handful of utility models have been filed.25

E. The Australia Innovation System 5.16 In Australia, legislation for a petty patent system was introduced in 1979.26 The term ‘petty’

comes from the French word ‘petit’ meaning small and indicates the rationale behind the adoption of the petty patent (utility model) laws as a lesser variation of the patent. 20

Patent Cooperation Treaty, Art 22, para 1. John Richards, Petty Patent (Utility Model) Protection, Introduction, available at last visited 27 February 2012. 22 The UK Government’s Commission on Intellectual Property Rights recommended in its Final Report, page 121, that lawmakers in developing countries introduce a system of utility models to foster innovation (see last visited 27 February 2012). The report recommended that lawmakers in developing countries intoduce a utility model system to protect the incremental type of innovations that predominate in many such countries. 23 The German Patent and Trade Mark Office helped a number of Eastern European countries modernize their patent systems in the 1990s (see Annual Reports). 24 See last visited 27 February 2012. 25 Ibid. 26 Introduced by the Patents Amendment Act 1979 (Cth). 21

110

E. The Australia Innovation System Indeed during the debate on the modernization of the utility law in 1989 one of the members of the German Bundestag (Parliament) referred to the utility model using the words ‘kleines Patent’ (‘small patent’) in respect to the modernized German utility model system.27 Once again, the aim behind the Australian petty patent system was to encourage low cost 5.17 protection for inventions with a short commercial life. A Parliamentary Committee28 reported in 1973 that it saw a need for such a short-term, low-cost protection that ultimately matured into the petty patent system. The original Australian petty patent system was, in the end, not well used. The time and effort involved in the preparation of the application was almost as much as a regular patent and the requirement to file only a single claim meant that the chance of avoiding infringement was high, since prior art could often be found to invalidate an overly broad claim. It was possible to file multiple petty patents for different aspects of the invention—but this 5.18 defeated the purpose of the low-cost system. Our EMB innovators would not have been impressed; their product had different innovations in a number of technical fields. They would have had to file several petty patents with the associated additional costs. On the other hand, the German utility model has no requirement to limit the number of claims—and indeed many utility models had a substantial number of claims, covering different aspects of the invention, to ensure that at least some would be upheld in any revocation action. Hence, the German utility model is a much better system for a multiple innovative product such as the EMB device. The Australian Advisory Council of Intellectual Property29 looked into the workings of the 5.19 petty patent system and produced a report with a number of recommendations on improvements in 199530. The Council concluded in its report that the original petty patent system should be replaced with an innovation patent system. The innovation patent would have a lower level of inventiveness than standard patents (or the previous petty patents) as well as a longer lifetime (eight years) than petty patents. The Australian Government substantially agreed31 with the conclusions of the report, The innovation patent system will provide Australian inventors with a means of protecting their lower level or incremental inventions. The Advisory Council on Industrial Property (ACIP) review demonstrated a clear need for such a system. In responding to this recommendation, the Government notes that many other countries have introduced such systems over recent years. The Government believes that a patent system for lower level inventions is in the interests of Australia’s small and medium business enterprises. The innovation patent system should help these firms obtain quick, relatively cheap rights for incremental inventions that could not be protected under either the petty or standard patent system.

27 The 1989 revision of the Act on Utility Models removed the‘Raumformerfordernis’ spatial requirement and thus removed the main difference between utility models and patents as well as severing the last link with design right protection. 28 Commonwealth, Deigns Law Review Committee (Franki Committee), Report relating to Utility Models (Second Term of Reference), Parliamentary Paper no 121 (1973). 29 See last visited 27 February 2012. 30 See last visited 27 February 2012. 31 Government response to the Recommendations of the Advisory Council on Industrial Property (ACIP) Report ‘Review of the Petty Patent System’ available at last visited 27 February.

111

Chapter 5: Patents and Utility Models 5.20 Australia introduced the innovation patent in 2001. The term ‘innovation patent’, rather

than utility model, was chosen as a forward-looking name, as the government emphasized, The innovation patent system will bring new advantages to business. It needs a name that projects a forward looking and positive image. Retaining the ‘petty patent’ name would be counter productive as this might imply that little or nothing had changed. Similarly, using the term ‘utility model’ could be misleading, as this term generally refers to mechanical or electrical inventions and excludes process and chemical/biochemical inventions. The term ‘innovation’ could apply equally to inventions protectable under the standard patent system. However, the market for standard patents is already well developed and the sophisticated users of the standard patent system are unlikely to be confused by the term ‘innovation patent’ for the second tier system, or to assume that it implies standard patents are not innovative.32 5.21 This new Australian system clearly benefits the EMB device. Compared to Germany there

are fewer restrictions on the type of inventions that can be filed (as the government noted). Methods and microbiological processes can be protected33 and not only that, the level of inventiveness is lower than that required for patents. The only downside is the eight year time limit (being ten years in Germany).34 It may not be long enough to protect a medical diagnostic device given the time required for marketing approval to be granted.35

F. A European Proposal 5.22 An attempt in the European Union (EU) to establish an EU-wide utility model system was

ultimately unsuccessful. The costs associated with the EU utility model system would have been substantially lower than comparative costs for a European patent under the current system. A proposal36 for a directive was presented in 1997 and revised in 1999.37 The explanatory memoranda and the press release issued by the European Commission discussed the value of a system for smaller innovators such as the EMB innovators, Utility models are registered industrial property rights which confer on proprietors exclusive protection of their technical inventions, particularly those with a limited degree of inventiveness or a relatively short period of exploitation. They offer more flexible and less burdensome protection than that offered by patents. Utility models are therefore an effective tool wellsuited to enterprises—particularly SMEs—which are active in certain fields of innovation. 5.23 The planned system would have the following features: the field of application would cover

products as well as processes, but would exclude biological material and chemical or pharmaceutical products and processes, owing to the special features of these sectors. As in the case

32

Ibid. Australian Patent Acts 1990, s 19(3) states that for the purposes of an innovation patent, plants and animals, and the biological processes for the generation of plants and animals, are not patentable inventions, but s 19(4) states that this does not apply if the invention is a microbiological process or a product of such a process. 34 Australian Patents Act 1990, s 68; German Gebrauchsmustergestetz s 23, para 1. 35 The time taken for marketing approval of a medical diagnostic device depends on country to country but can be five years. There is often a further hurdle to overcome to ensure that the product is available through the local health service or that insurance companies will reimburse the costs of the product. 36 See 16 December 1997 proposal, available at last visited 27 February 2012. 37 Amended proposal of 25 June 1999, available at last visited 27 February 2012. 33

112

G. Examination of patents, inventions which could be protected by utility model would have to be new, involve an inventive activity, and be capable of industrial application. However, the level of inventiveness required would be lower than that for patents. Inventions 5.24 would be considered as involving inventive activity if they represented an advantage and, from the point of view of those in the particular fields, were not derived in a very obvious way from the state of the art. The definition of inventive activity is a key element in the proposed Directive, as it enables the utility model to be distinguished from the patent.38 The proposal met with criticism. Many thought it was unnecessary whilst others thought 5.25 that the European Commission should concentrate its work on adopting a Community Patent.39 No consensus was reached and the work was not continued. Since then, the European Commission has been pushing for the adoption of a Community Patent (which might possibly be realized in 2012–2013 for most European Union member countries). The Community Patent would achieve at least some of the aims of the European Utility Model in providing a cheaper form of protection than for filing a patent in all EU member countries. Not only that, the Community Patent could be litigated in a single court for all EU countries. The costs of patent protection will, however, still be high due to the need to pay for prosecution of the patent through the European Patent Office, rather than relying simply on registration. The idea of the European Utility Model has never formally been dropped and once legisla- 5.26 tion is complete for the Community Patent it is not impossible that the idea might be revived to address the perceived costs of intellectual property protection.

G. Examination One of the attractions of the utility model system common to almost all systems is that the 5.27 utility models are not examined on filing, except for possibly procedural requirements.40 This often results in acceptance and registration of the utility model in a very short time, since no search and examination for novelty and/or obviousness is carried out. It is, for example, possible to obtain protection for an invention within six to eight weeks in Germany. For smaller companies such as the EMB innovators, this can be significant. The costs associated with the detailed substantive examination of a patent application are avoided and a nominally enforceable intellectual property right is quickly obtained.

38 Press Release from European Union: Amended proposal for a Directive on the protection of inventions by utility model IP/99/433 of 30 June 1999. See last visited 27 February 2012. 39 Summary report of replies to the questionnaire on the impact of the Community Utility Model (Paper SEC (2001) 1307), page 4, available at last visited 27 February 2012. 40 The German Act on Utility Models, s 8, para 1 clearly states that an application will be examined on formal grounds, but that an examination for novelty, inventive step, and industrial applicability will not take place. The Australian Patents Act 1990 specifies in s 52 that the Commissioner (of the Patent Office) must undertake a formalities check and must accept the innovation patent requests if the application passes the formalities check. The Australian Commissioner is however given the power under s 101A to examine the innovation patent, whereas the German counterpart has no power to examine a utility model without a request being filed.

113

Chapter 5: Patents and Utility Models 5.28 This quick registration can be great. For potential infringers it is a nightmare. How does one

assess the validity of the (unexamined) utility model? The main claim can be extremely broad and there might be relevant prior art, but this has not been reviewed by the patent office. The utility model is an enforceable right—meaning that its proprietor could go to court and get an injunction. 5.29 The cluttering of the register with a number of utility models that are probably not valid (or

at the very least partially invalid) is in some areas of technology a problem. Not only does this add to the costs of checking that a product infringes no IP rights, but also can lull a holder of a utility model into a false sense of security. The certificate of registration—unlike a regular patent—can never be given the ‘benefit of the doubt’ for validity. Some utility model systems, such as the Australian one, allow or require the proprietor to request complete examination of the utility model.41 Other systems only provide for a search to be carried out at the request of the applicant42 and complete examination is restricted to a revocation request43 or as a counter-claim in an infringement procedure. 5.30 The value to the company of the (unexamined) utility model is also difficult to ascertain if

there is no examination. Venture investors are looking for valuable rights and if no patent examiner has looked at the intellectual property rights in detail, then their value can be uncertain. The EMB developers need the funding to continue with their product and their backers would want strong IP protection. The lack of examination can be overcome at least partly by having a patent expert review the rights—but this lacks the force of law and its costs can easily be higher than the cost of patent prosecution.

H. Division/Branching 5.31 The short period of time between filing of the utility model and its entry into the register has

a significant advantage when the EMB innovators are faced with a copycat product. The current pendency of patent applications in Europe Patent Office44 means that the EMB company might have to tolerate an infringement for some time before grant of the patent—and then possibly wait for an opposition to the grant to be resolved. Similar delays are occurring in the other major patent offices. 5.32 Venture-backed companies, such as our hypothetical EMB company, are dependent on

external financing and finding an outlet for their products. A wait of a few years until the patent is granted can be disastrous for the company as it burns through its funds. An external investor is unlikely to continue funding the company if copycat products begin to emerge and take the market. 5.33 Many utility model systems offer the opportunity to divide applications out of pending

patent applications and thus in effect to accelerate the grant of an intellectual property right. For example, the Australian Patents Act 1990 provides that a divisional application may be

41 Patents Act 1990, s 101A states that the Commission must examine the innovation patent if requested by the patentee or any other person. 42 German Act on Utility Models, s 7, para 1. 43 German Act on Utility Models, s 15, para 1. 44 European Patent Office, 2009 Annual Report, cites an average pendency of 43.1 months.

114

I. Level of Inventiveness made prior to the grant of a standard patent45 or even at any time during the lifetime of an innovation patent.46 The German 1986 Act on Utility Models introduced the opportunity47 to base an application for a utility model on a pending patent application.48 Not only does this ‘branching’ or ‘division’ provide a way around the long pendency of the 5.34 patent application, it also allows any claims in the utility model to be tailored to a known infringing article. Few utility model systems prohibit ‘double protection’ from both patents and utility models. Thus the applicant can continue to pursue patent protection for broader concepts whilst filing for narrow protection relevant to the infringing article as a utility model—a significant advantage for a smaller company prepared to litigate. The narrowly drafted claims can better sustain an attack on the novelty and inventive step of the utility model and litigation is more efficient. Even if the copycat changes its product to avoid the narrowly drafted claims, then a new utility model can be filed to reflect the attempted work-around.

I. Level of Inventiveness The 1886 German Commission clearly stated that utility model protection should be for 5.35 ‘lesser inventions’ and this seems to have been the guiding principle behind the adoption by many of the countries with utility model laws. The Australian government in its response to the Recommendations of the Advisory Council on Industrial Property wrote, The Government agrees . . . that a patent system for lower level inventions is in Australia’s national interest. Overseas experience suggests that, in contrast to the predominantly foreign use of standard patent systems, locally owned SMEs are the major users of lower level patent systems. By providing an exclusive right for lower level inventions, the innovation patent should encourage Australian businesses, particularly SMEs, to develop their incremental inventions and market them in Australia.49

In the 1986 German Act this was reflected by the choice of words in stating that utility 5.36 models will be registered for inventions which are ‘new’ and ‘industrial applicable’ and have ‘an inventive step’ (‘Erfinderischer Schritt’).50 The corresponding provision in the German Patent Act speaks, on the other hand, of patent protection to be granted for inventions which are new, are industrial applicable, and have an ‘inventive activity’ (‘erfinderische Tätigkeit’).51 It had been generally thought in Germany that the difference in words meant that the degree of inventiveness or ‘inventive height’ required to maintain protection for a challenged utility model was therefore lower than that required for patent. This was often cited as being one of the reasons for maintaining the two types of protection, at least in Germany.52

45

Australian Patents Act 1990, s 79B. Australian Patents Act 1990, s 79C. 47 German Act on Utility Models s 5, para 1. 48 This is often termed ‘Abzweigung’ or branching-off. 49 Council on Industrial Property (ACIP) Report ‘Review of the Petty Patent System’ found at . 50 German Patent Act 1986, s 1, para 1. 51 Ibid. 52 Demonstrationschrank (demonstration cupboard), BGH, (2006) NJW 3208, in particular Entscheidungsgründe (Reasons), para 3. 46

115

Chapter 5: Patents and Utility Models 5.37 The German Federal Court—the ultimate appeal court for IP matters—in 2006 put an end

to this misconception in a decision referred to it by the Federal Patent Court in a case based on a request for declaring a utility model to be invalid.53 The Federal Court analysed the meaning of both of the words in the Patent Act and in the Utility Model Act and came to the conclusion that both terms (step/activity) were intended to be used for an identical concept.54 5.38 The decision was a disappointment for many who had chosen utility model protection over

patent protection for their less important inventions. Any small inventions made by our EMB innovators and only filed for utility protection will thus be judged in Germany on the same standard as patents. The decision has indeed been criticized as not being in conformity with the original intentions of the legislator who had clearly chosen different words in the legislation.55 The court based its argument principally on the ground that there had been very few decisions by lower courts as to the level of inventive ‘height’ required to justify protection for the utility model (as compared to numerous decisions about the requirements for patents). The court noted in headnote (c) of the decision, Determination of an inventive step can have recourse to the principles developed in patent law, if account is taken of the differences that result from the fact that the state of the art in utility model law is defined differently in Sec. 3 of the Utility Model Act in terms of oral description and in terms of uses outside the Act’s scope of application. It is not permitted to find that the obvious is based on an inventive step on the grounds that the person skilled in the art could not easily find it on the basis of his general expert knowledge, taking routine account of the state of the art.56 5.39 The court concluded that it could see no obvious test to distinguish between the two levels

of inventiveness. It would therefore be reasonable to harmonize the two concepts to provide clear guidance to the lower courts and the patent office, The various approaches which attempt to measure the inventive contribution in utility model law differently than in patent law have demonstrated in total no convincing reason for a differential approach in the evaluation carried out in patent law apart from the different definition of the prior art. . . Moreover the evaluation criteria for patents and utility models differ only marginally.57 5.40 On the other hand, the introduction of the Australian innovation patent was accompanied

by a discussion of the level of inventiveness that should be accorded to the new form of IP right. The Australian Review clearly noted that one of the disadvantages of the previous petty patent system was the level of inventiveness that was identical to that of a regular patent.58 The Review recommended that a lower level of inventiveness be adopted (an ‘innovative step’ as opposed to an ‘inventive step’) and this was accepted by the Australian government.59 53

Ibid. Ibid., headnote 3. 55 Hüttermann and Storts, ‘Die BGH-Entscheidung Demonstrationsschrank—eine Revolution im gewerblichen Rechtsschutz?’, (2006) NJW 3178. 56 Demonstrationschrank (demonstration cupboard), BGH, (2006) NJW 3208; English translation of headnotes in (2007) IIC 104. 57 Ibid.; Translation of Reasons III 4 c) and d) by author. 58 1995 Australian Council for Intellectual Property Review on the Petty Patent System, Section 1.7, available at last visited 27 February 2012. 59 Government response to the recommendations of the ACIP Review of the Petty Patent System, available at last visited 20 March 2011, Recommendation 2. 54

116

K. Summary The Review noted, for example, that a number of countries have adopted such a lower level (and indeed referred to Germany in this respect). There were other countries, such as France and Belgium60 that had the same level of inventiveness for both regular patents and utility models.61 So for the EMB innovators there is clearly an advantage in innovation patent protection in Australia.

J. Conclusion So what do we advise our EMB innovators? Utility model protection or patent application? 5.41 There are clearly advantages and disadvantages in both forms of protection. For a local company seeking protection in a local market, the utility model, where available, probably offers the best value for money. Once decisions are made to file internationally, then utility model protection has a limited use. The rules governing utility model protection are far from being harmonized worldwide—and not all countries offer utility model protection. The costs involved in obtaining detailed local advice may outweigh the savings in filing for utility models. It may simply be better to file for patent protection to ensure the best form of protection. On the other hand, utility model protection can be valuable in some cases. Just to take the 5.42 example of litigation: a utility model registration can accelerate a court case in Germany. The lower level of inventiveness in Australia (or Italy) can be exploited to enforce rights to an invention more effectively. There is no general advice that one can give to the EMB group. The choice of protection will 5.43 depend on a number of factors—principally their budget and their aims in protection. Worldwide patent protection which is substantially harmonized will give them the best protection in general, but a choice of lower cost utility models where available may supplement their strategy.

K. Summary The following is a useful bullet point summary of this chapter: • Protection of utility models (or similar registered rights) is found in around 70 countries. • Utility patents are designed to be less expensive than regular patents to prepare, obtain, and maintain. • The level of inventiveness required for utility patents has generally been viewed as lower than for patents; however recent case law in Germany has rejected this view. • Utility model protection for some technologies, eg, biotechnology is excluded in some countries, but not in others. • Most countries merely register the utility models, without examining their validity; but third parties can request examination. • The period for utility model protection is generally shorter than regular patents, ranging from six to 15 years, depending on the country.

60

Belgium has subsequently abandoned its utility model system. 1995 Australian Council for Intellectual Property Review on the Petty Patent System, Section 5.1, available at last visited 27 February 2012. 61

117

5.44

This page intentionally left blank

6 PATENTS AND REGULATORY DATA EXCLUSIVITY FOR MEDICINAL PRODUCTS Duncan Curley, Solicitor, Innovate Legal, London, UK and Marleen H.J. van den Horst, Attorney at law, BarentsKrans NV, The Hague, The Netherlands1

A. Hypothetical B. Introduction C. The EU Battleground: Data Exclusivity, Patents, and Supplementary Protection Certificates (1) Data exclusivity (2) Patents

(3) (4) (5) (6) (7)

6.01 6.02

6.10 6.10 6.27

Supplementary protection certificates Overlapping protection? Clopidogrel Galanthamine Escitalopram

D. Conclusion E. Summary

6.28 6.33 6.39 6.44 6.51 6.60 6.61

A. Hypothetical Following the synthesis of compound Z in its laboratories in the mid-1980s, BigPharma Inc. 6.01 discovered that Z had useful biological properties. It patented compound Z and subsequently carried out extensive clinical trials on a medicine containing compound Z as the active substance. The medicine was approved for use in humans in Europe. The clinical trials data package for the medicine containing compound Z was the subject of a period of data exclusivity, but this ran out long before the patent to compound Z expired. In the meantime, BigPharma Inc. had discovered that Z existed in a form comprised of two chemically similar but structurally different isomers. When the individual isomers were separated, it was found that one was much more biologically active than the other. BigPharma filed for a separate patent on the active isomer, which it called iso-Z. It also developed a new medicine containing iso-Z as the active substance and submitted to the relevant European authority an application for a marketing authorization. The regulatory authority was content for BigPharma to rely on much of the clinical data that it had already obtained on the medicine containing the original compound (Z) and granted the marketing authorization. Nevertheless, iso-Z was treated as a new active substance, thereby attracting a further period of data exclusivity. Whilst both patents and data exclusivity may be available to protect such investments in the field of medicines, do these rights overlap and do they always offer bullet-proof protection? 1 The authors gratefully acknowledge the assistance of Annemieke Kooy of BarentsKrans NV in the preparation of this chapter.

119

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products

B. Introduction 6.02 The focus of this chapter is an examination of the laws prevailing in the European Union (the

EU) which relate to data exclusivity and patent protection for medicinal products for human use. We will describe the European system for the grant of supplementary protection certificates (SPCs) for medicinal products, which provides a link between the regulatory and patent frameworks. We will then address the question of any overlap between data exclusivity and patent protection (including SPCs) and compare this to the US position, before concluding with three examples from the EU which illustrate the various topics discussed. 6.03 Maintenance of exclusivity in the market by means of patent protection has historically been

the way in which companies operating in sectors that depend on research and innovation have survived and thrived. The importance of patents for the protection of new medicinal products (both small molecules and biologicals) cannot be over-stated, but the time spent on invention and discovery may represent only a proportion of the time that it actually takes to bring such products to market. In the healthcare field, extensive preclinical and clinical trials must be undertaken to demonstrate a drug product’s quality, safety, and efficacy. A dossier containing the results of these trials is then submitted to the relevant regulatory authority, in order to gain governmental approval to place the drug product on the market. The authority assesses the data for compliance with the regulatory standards in force, before considering whether to grant a marketing authorization that would allow the new medicine to be prescribed by physicians and used to treat illnesses. 6.04 The trialling of active substances for the purposes of regulatory approval will often lead to the

accumulation of valuable data on their biological effects. PhRMA, the Pharmaceutical Research and Manufacturers of America, an industry association of originator companies, states that (on average) $1.2 billion is invested in preclinical and clinical testing of new medicines.2 This is an average figure and clearly the cost of obtaining data on an experimental medicine will vary considerably. 6.05 Clinical trials are by no means restricted only to new active substances that have never been

used before in marketed drug products. Known substances may be re-examined in studies that involve testing a new dosage regime or that seek to discover other biological effects, such as second or further medical uses. For example, in the 1980s, it was discovered that the bisphosphonate compound, alendronate, could be used in the treatment of osteoporosis.3 This use of alendronate was patented in 1982 by the Istituto Gentili research laboratories in Pisa, Italy, which were subsequently acquired by the American pharmaceutical company Merck & Co. Inc. Following clinical trials, Merck launched an approved drug product containing alendronate in 1993. However, patents that claim only uses of a known compound (as opposed to compounds per se) can be weak and may be liable to challenge. Merck discovered this to its cost in relation to alendronate in a number of European countries. In declaring two

2 See PhRMA’s website at: last visited 20 February 2012. 3 See M. Patlak, ‘Bone Builders: The Discoveries Behind Preventing and Treating Osteoporosis’, (2001) 15 The FASEB Journal 1677E-1677e.

120

B. Introduction of Merck’s UK alendronate ‘use’ patents to be invalid in 2003, Jacob, J (as he then was) said, I . . . hold both patents invalid. I do so with some regret. Merck have only had a few years’ exclusive exploitation of alendronate. They must surely have had to make a very considerable investment and incurred considerable risk in bringing it to market. And mankind is better off as a result. But the patent system does not confer monopolies on those who develop obvious or old products, even if they have never been exploited.4

It is clear from the alendronate example (above) that patents cannot always guarantee a 6.06 period of market exclusivity, after regulatory approval of a drug product has been obtained. What about the data that was derived from the clinical trials that must be provided to the relevant regulatory authority in support of the proposed medicinal use of the product? Some degree of legal protection is required, in order to ensure that it cannot immediately be used by others, given the size of the financial commitment that is usually associated with trials and obtaining the data. The concept of data exclusivity—a period of time after the initial registration of a new drug product during which only the entity that developed the data may use it to support additional marketing authorizations—has thus evolved. Data exclusivity is not like other intellectual property rights, such as patents or copyright. 6.07 The latter rights may be enforced privately against infringers in the courts. Data exclusivity is better characterized as a governmental or administrative obligation not to allow data that has been provided to support a registration dossier for a medicine to be used by third parties. Article 39(3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), states as follows, Members, when requiring, as a condition of approving the marketing of pharmaceutical or of agricultural chemical products which utilize new chemical entities, the submission of undisclosed test or other data, the origination of which involves a considerable effort, shall protect such data against unfair commercial use. In addition, Members shall protect such data against disclosure, except where necessary to protect the public, or unless steps are taken to ensure that the data are protected against unfair commercial use.

The protection of data against disclosure as mandated by TRIPS is achieved by means of 6.08 regulatory data exclusivity in the legal frameworks governing the authorization of medicinal products in the EU, the USA, and in many other countries. Data exclusivity does not last in perpetuity. After a prescribed period of time (the data exclu- 6.09 sivity period), another company may seek marketing approval for a ‘generic’ product, by submitting an abbreviated application for registration that relies on the original data that has already been collected and submitted by the originator company. In the USA, a direct link is made between the regulatory approval of generic medicines and the patent protection status of drug products in the Hatch-Waxman Act of 1984 (‘the Hatch-Waxman Act’).5 This link has been said to blur the rewards available through the patent system and drug approval regulation.6 As we shall see, in the EU, the system conferring regulatory data exclusivity and the patent framework are effectively distinct. A legal link between the regulatory approval process 4 GB 2118042 and European patent (UK) no. 0998292: Teva Pharmaceutical Industries Ltd and others v Istituto Gentili SpA and Merck & Co Inc [2003] EWHC 5(Pat). 5 The Drug Price Competition and Patent Term Restoration Act of 1984. 6 R. S. Eisenberg, ‘The Role of the FDA in Innovation Policy’, (2007) 13 Mich Tel & Tech law Rev 345–388.

121

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products and the patent system is established in the mechanism for the grant of patent extensions for authorized medicinal products in the EU (supplementary protection certificates), but this link is purely functional and it does not produce any ambiguity about overlapping rewards.

C. The EU Battleground: Data Exclusivity, Patents, and Supplementary Protection Certificates (1) Data exclusivity 6.10 Directive 2001/83/EC on the Community Code Relating to Medicinal Products for Human

Use (‘the Directive’)7 lays down rules relating to the marketing of medicinal products with which the member states in the EU must comply. The core provision is Article 6, which states that, No medicinal product may be placed on the market of a Member State unless a Marketing authorisation has been issued by the competent authorities of that Member State in accordance with this Directive . . . 6.11 There are several routes that a company may follow in order to obtain a marketing authoriza-

tion in accordance with Article 6: the Centralized Procedure,8 the National Procedure (which may be followed by the Mutual Recognition Procedure),9 and the Decentralized Procedure.10 The choice depends on the type of product and whether a company wishes to obtain a marketing authorization in one, some, or all of the member states, which in turn may depend on timing and strategy considerations. 6.12 An application for marketing authorization may be made on the basis of one of the following

articles in the Directive: • Article 8 (3): ordinary procedure • Article 10 • 10(1): abridged procedure • 10(3): hybrid abridged procedure • 10(4): procedure for biosimilar products

7 The full text of the Directive (as amended) is available at last visited 20 February 2012. 8 Following the Centralized Procedure (CP) will, if all the requirements have been met, result in one marketing authorization valid throughout the EU (in contrast to the other routes described, which result in marketing authorizations valid in one or more member states). An application is made to the European Medicines Agency. For certain specific types of medicinal product (such as those that have been made using biotechnological methods), obtaining a marketing authorization via the CP is mandatory. 9 A National Procedure results in a marketing authorization for one member state only. The application is filed at the national Marketing Authorization Authority in the relevant member state. In the event that the applicant subsequently wishes to obtain marketing authorizations for the same medicinal product in other member states, the national application offers the basis for the first stage of the Mutual Recognition Procedure (MRP). The applicant may ask for the authorization to be recognized by one or more other member states by following the MRP. This procedure is described in Article 28(2) of the Directive and is substantively similar to the Decentralized Procedure. 10 The Decentralized Procedure (DCP) is followed if the applicant decides, from the outset, to obtain marketing authorizations in several member states at the same time. The procedure is described in Article 28(1) of the Directive. The applicant asks the authority of one member state to act as a so-called Reference Member State (RMS). The application is submitted with this authority and the applicant will indicate the other member states in which it wishes to obtain a marketing authorization for the same medicinal product. These other member states are called the Concerned Member States (CMS).

122

C. The EU Battleground: Data Exclusivity, Patents, and SPCs • Article 10 (bis): bibliographic procedure • Article 10 (ter): procedure for new combinations of active substances • Article 10 (quater): approved procedure (where the dossier holder of a previous authorization gives permission for references to studies from this dossier). The distinction between an ordinary procedure (Article 8(3)), an abridged procedure 6.13 (Article 10(1)), and a hybrid abridged procedure (Article 10(3)) pertains to the nature and scope of the data to be submitted (the dossier). An application for a marketing authorization must, in principle, contain all of the data as stated in Article 8(3) of the Directive, namely (inter alia) the results of pharmacological, toxicological, and clinical trials. An application containing all data is called a ‘full’ or ‘complete’ application, or full dossier. This is regardless of the question of whether all of the data are in fact new. A full application can also comprise data that are already part of a different application dossier, for example, if the application relates to a new formulation of a known substance, or a second medical use, or a different dosage regime. As already stated, preclinical and clinical trials are expensive and time consuming and often 6.14 require significant investment from the originator companies. Conducting such trials also implies extensive testing on animals and humans. One of the objectives of the European legislation is to ensure that such trials are not repeated unnecessarily.11 Thus, under certain defined conditions, third parties (ie, generic companies) may refrain from repeating such studies and may refer to the results of the relevant tests in the dossier of the earlier, original registration (the so-called specialité). Under Article 10(1) of the Directive, an applicant does not have to submit a full dossier, but 6.15 is allowed to refer to the data in a marketing authorization dossier for a reference medicinal product. This option exists if the medicinal product for which a marketing authorization is being requested is a ‘pure’ generic (see below) with respect to the reference medicinal product and if a marketing authorization was granted for the latter medicinal product at least eight years before the application date. An application based on Article 10(1) is referred to as an abridged application. Article 10(2) of the Directive defines a generic medicinal product as a medicinal product 6.16 which has the same qualitative and quantitative composition in active substances and the same pharmaceutical form as the reference medicinal product, and whose bioequivalence with the reference medicinal product has been demonstrated by appropriate bioavailability studies. Article 10(2) specifies that different salts, esters, ethers, isomers (including enantiomers), mixtures of isomers, complexes or derivatives of an active substance shall be considered to be the same substance, unless they differ significantly in properties with regard to safety and/or efficacy. Article 10(3) of the Directive describes the so-called ‘abridged hybrid procedure’. An appli- 6.17 cation under Article 10(3) is made for a marketing authorization for a medicinal product that does not satisfy the definition of generic medicinal product in Article 10(2) (see above) or whose biological equivalence cannot be demonstrated by studies or where the active substance(s), the therapeutic indication, the strength, the pharmaceutical form, or the manner of administration are changed, compared to the reference medicine. The abridged 11

See Recital 10 to the Directive.

123

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products hybrid procedure opens up the possibility of referring to data which have already been submitted in the dossier for a reference medicinal product, but requires the submission of additional data that serve to bridge the differences to that reference medicinal product (‘bridging data’). The bridging data may consist of (for example) bioequivalence studies and tests demonstrating the safety and efficacy of the product for which the application is made. 6.18 Whilst the purpose of the abridged procedures laid down in Article 10 is to avoid unneces-

sary repetition of clinical trials, a balance must be found between this imperative and the need to stimulate the originator companies to continue to invest in the development of new medicinal products and accordingly to contribute to human health and well-being. This balance is found in the form of data exclusivity. During the period of data exclusivity, only the marketing authorization holder (that conducted the pharmacological, toxicological, and clinical trials) is allowed to use the data in order to apply for a marketing authorization and/or to use such authorization, once obtained. Thus, it is only after the expiration of this period that third parties (such as those seeking to bring generic medicines to market) are allowed to refer to the original data in the context of the abridged procedures. 6.19 The data exclusivity rules are contained in Article 10(1) of the Directive. In the EU, the

current data exclusivity regime is often referred to by the shorthand ‘8+2+1’, the figures referring to the years that have to elapse before an abridged marketing authorization can be applied for by third parties (eight years) and another two or three years before the marketing authorization can be used by those third parties to market their product. In other words, once (after eight years) a third party has applied for and subsequently obtained a marketing authorization on the basis of an abridged procedure in Article 10, the generic medicinal product may not be marketed before ten years have elapsed, counted from the date when the marketing authorization for the reference product was granted. In some cases, this can be increased to eleven years, if, during the first eight years of those ten years, the marketing authorisation holder [of the reference product] obtains an authorisation for one or more new therapeutic indications which, during the scientific evaluation prior to their authorisation, are held to bring a significant clinical benefit in comparison with existing therapies.12

The ‘8+2+1’ data exclusivity rules (outlined above) apply to those products that have been authorized in the EU after 30 October 2005.13 6.20 Apart from being used to support applications for marketing authorizations, the results of

clinical trials are often published in the scientific literature. The fact that such data are in the public domain does not necessarily mean that they fall outside the ambit of the protection conferred by data exclusivity. It is important to distinguish between the availability of data in the public domain on the one hand and the exclusive right to use such data on the 12

See the last sub-paragraph of Article 10(1). However, data submitted in support of marketing authorizations applied for before this date continue to benefit from the previous (non-harmonized) data exclusivity rules. A good summary of the previous European data exclusivity rules may be found in R.F. Kingham and G.H. Castle, (2000) 55 Food and Drug Law Journal 209–223. 13

124

C. The EU Battleground: Data Exclusivity, Patents, and SPCs other hand. The concept of data exclusivity ordinarily entails (as the word ‘exclusivity’ implies) that the company that acquired the data by conducting relevant trials can, to the exclusion of other parties, use such data for the purpose of marketing the medicinal product involved. Hence, data which is in the public domain can still be protected by a period of data exclusivity. This specific issue arose in both the clopidogrel and the escitalopram cases, which will be discussed further, below. An important concept in the EU regulatory framework when discussing data exclusivity is 6.21 the global marketing authorization. This concept is found in Article 6(1) (second paragraph) of the Directive: . . . When a medicinal product has been granted an initial marketing authorisation in accordance with the first subparagraph, any additional strengths, pharmaceutical forms, administration routes, presentations as well as any variations and extensions shall also be granted an authorisation in accordance with the first subparagraph or be included in the initial marketing authorisation. All these marketing authorisations shall be considered as belonging to the same global marketing authorisation, in particular for the purpose of the application of Article 10(1) (emphasis added).

The concept of a global marketing authorization thus entails that there is a marketing 6.22 authorization with greater scope, based on the first authorization that was granted for the original active substance in the medicinal product. In consequence, all authorizations granted subsequently with regard to the same substance, for instance as a consequence of variations in the active substance, form part of the same, initial marketing authorization. The words ‘variations and extensions’ in Article 6 are taken from the successive variation regulations, the currently valid one being Commission Regulation (EC) No 1234/2008 (‘the Variation Regulation’). Variations to medicinal products are classified in different categories, depending on the level 6.23 of risk to public health and the impact on the quality, safety, and efficacy of the medicinal product concerned. Certain changes, namely those which have the highest potential impact on the quality, safety, or efficacy of medicinal products, require a complete scientific assessment, in the same way as for the evaluation of new marketing authorization applications. Other changes to medicinal products do not require an extensive scientific assessment. According to the Variation Regulation, an extension of a marketing authorization (or simply an ‘extension’) means a variation which is listed in Annex I to the Variation Regulation and which fulfils the conditions specified therein. Every change listed in Annex I of the Variation Regulation is thus an extension, which is also often called a ‘line-extension’. Every authorization granted for an extension thus forms part of the same global marketing authorization as the first authorized version of the active substance(s) in a medicinal product, regardless of whether it is in the form of a new, separate marketing authorization or as an amendment to an existing marketing authorization. The global marketing authorization concept has special significance for the application of 6.24 Article 10 of the Directive and accordingly for the calculation of the period in which data exclusivity can be claimed. The period of data exclusivity is calculated as beginning on the date that the first of all of the authorizations in the group that forms the global marketing authorization was granted. An applicant wishing to base its application on Article 10 of the Directive may refer to each authorization that forms part of the global marketing authorization

125

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products to serve as reference medicinal product in abridged (hybrid) proceedings.14 Therefore, even when an applicant for a marketing authorization based on Article 10(1) or 10(3) refers to the dossier of a specific reference medicinal product (which is for instance another pharmaceutical form than the first authorized version of the reference product), the period of data exclusivity will still be calculated by using the date of the grant of the first, initial version of that medicinal product. 6.25 To summarize, the grant of a marketing authorization by a regulatory authority is an admin-

istrative decision that follows, once the authority has established legal and scientific compliance with all relevant requirements. It does not explicitly include the grant of data exclusivity as such, nor can the decision of the authority be seen as the ‘vesting’ of a right. Whether or not data are protected by data exclusivity is, in practice, something that is assessed and determined at a later moment in time, mostly when third parties apply for a marketing authorization via an abridged procedure, referring to the data in the dossier of the reference product (specialité).15 The regulatory authority in the member state where the application is filed has to assess whether the data can or cannot be referred to and thus to determine whether data exclusivity (still) exists in relation to the original dossier. Given the fact that the concept of data exclusivity is laid down in Article 10 of the Directive (prescribing the requirements for generic applications), it is clear that the issue of entitlement to data exclusivity for specific data only comes into contention when a generic company starts an abridged procedure based on Article 10. 6.26 The ten (possibly eleven) years of data exclusivity that are now available in the EU for new

active substances offers a relatively high level of protection, compared to equivalent regimes elsewhere in the world. The USA offers only an initial five years of data exclusivity for conventional small molecule drug products.16 A recent paper suggests that there are benefits to be gained from giving small molecule drugs a longer period of data protection in the USA, 14 This is stated in Volume 2A, Chapter I Section 5.3.1 of the Notice to Applicants, which is a document to be used as guidance by applicants for marketing authorizations. The Notice to Applicants says: Besides, Article 6(1) contains the notion of global marketing authorisation as the initial marketing authorisation and any additional strengths, pharmaceutical forms, administration routes or presentations, as well as any variations and extensions. Each product within the global marketing authorisation may be chosen as the reference product. The Notice to Applicants determines (on page 35) that the requirement to observe a period of eight years before an abridged application for a marketing authorization for a generic medicinal product can be made does not apply to ‘(line-) extensions’: . . . Even if they are authorised in accordance with the procedure for granting a new marketing authorisation, according to Article 6(1) of Directive 2001/83/EC, when a medicinal product has been granted an initial marketing authorisation, any extension shall be considered as belonging to the same global marketing authorisation, in particular for the purpose of the rules on data and market protection. This means that for an original medicinal product, the start of the data exclusivity period is the date when the first marketing authorisation was granted in the Community. Extensions do not restart or prolong this period; they will have the same end point of the data exclusivity period. 15 We suggest that a generic company is not ‘time-barred’ from objecting to a period of data exclusivity allegedly attaching to a dossier for a medicinal product, several years after the grant of the marketing authorization for the product in question. Generic companies applying for marketing authorizations under the abridged procedure usually do not object to the grant of the (initial) marketing authorization for the reference medicinal product, but rather seek to contest the consequence of data exclusivity that is attached to it by the regulatory authority. 16 Under the Hatch-Waxman Act. Applications for approval of new indications (for uses other than the one for which the drug was originally approved) receive three extra years of data exclusivity.

126

C. The EU Battleground: Data Exclusivity, Patents, and SPCs in terms of spurring innovation and ultimately consumer welfare.17 Although there has on occasion been some suggestion that the number of years of protection for clinical trials data in the USA should be raised,18 these proposals have not gained traction in the US legislature. In contrast however, biologics have now been granted a 12 year data exclusivity period in the Patient Protection and Affordable Care Act of 2010, implemented as part of President Obama’s reforms to the US healthcare system.19 (2) Patents Traditionally, the pharmaceutical industry has operated by synthesizing new chemical 6.27 substances in the laboratory, testing them for biological activity and patenting them. Patent protection is usually sought at an early stage in the life of a product, often long before it is known whether the compound will actually prove useful as an active substance in a marketed drug product. This simple model served the originator companies well for many years, but today, looming patent expirations (the so-called ‘patent cliff’) on a number of big-selling products based on small molecule active ingredients and an increased intensity of competition from the manufacturers of generic products afflict many of the companies that are active in this sector.20 In the 1980s, small molecule drug discovery programmes were supplemented by rapid advances in the manipulation of biological material, leading to the patenting of biotechnology-derived products. Today, biological products are a boon to the life sciences sector, although the manufacturers of so-called follow-on biologics (or similar biological products, or biosimilars) pose a threat to some of the blockbuster biopharmaceutical products, in some markets, in the near to medium term. (3) Supplementary protection certificates It is often—but not always—the case in the EU that patents will protect the market exclusivity 6.28 for both small molecule-based drug products and biologicals for longer than the data exclusivity period,21 by virtue of the European system for the grant of extensions to patent rights, which are called supplementary protection certificates (SPCs) in Europe.22 SPCs sit in a class of their own (as sui generis legal instruments) between the regulatory and 6.29 the patent systems. SPCs extend certain rights conferred by a patent after its expiry, for a 17 D.P. Goldman, D.N. Lakdawalla, J.D. Malkin, J. Romley and T. Philipson, ‘The Benefits from giving makers of conventional “small molecule” drugs longer exclusivity over clinical trials data’, (2011) 30(1) Health Affairs 84–90. The article reports on the results of research funded (in part) by INTERPAT, an association of originator pharmaceutical companies. 18 For example, from GlaxoSmithKline, who have proposed that new drugs should receive 14 years of data exclusivity. 19 Part of the quid pro quo for this concession to the originator companies was to pave the way for a regulatory framework for the speedier authorization by the FDA of follow-on biologics, although at the time of writing, this framework has not been implemented and the EU remains well ahead of the game, with a regulatory pathway for biosimilars that is being used successfully and a number of biosimilar products already having been launched successfully on to EU markets. 20 A good summary of the present situation in the EU is to be found in the European Commission’s Pharmaceutical Sector Inquiry—Final Report (8 July 2009), available at last visited 20 February 2012. 21 The European Federation of Pharmaceutical Industries and Associations (EFPIA) publication, ‘Intellectual Property and Pharmaceuticals’, page 21 (June 2008), available at . 22 For an overview of the European system for the grant of supplementary protection certificates for medicinal products, see D. Curley, ‘Extending Rewards for Innovative Drug Development’, (2007) Intellectual Property Institute.

127

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products period of up to five years.23 The European regime for the grant of SPCs for medicinal products for human and veterinary use was first proposed in a European Commission Explanatory Memorandum in 1990, in response to patent extension legislation in the USA and Japan.24 The original regulation subsequently came into force on 2 January 199325 and was followed in February 1997 by a similar regulation for plant protection products.26 6.30 The jurisprudence on SPCs is still evolving, but from the Explanatory Memorandum and

the preamble to the medicinal products regulation,27 it seems clear that the original purpose of SPCs was to compensate those who obtained patents for novel and inventive research and development for the period of delay that usually occurs between the filing of a patent application and the subsequent grant of a marketing authorization. It may not be until the latter point in time—perhaps a decade or so after the filing of the original patent application—that the patentee is able to start marketing the product and to earn money from exclusive sales of that product. SPCs are thus intended to address the cutting down of the twenty year patent monopoly that affects in particular those in regulated industries that cannot market patented products without first conducting trials on those products and obtaining regulatory approval. 6.31 A common objective in both the medicinal and plant protection products SPC regimes is to

provide a period of exclusivity (by virtue of both patent and SPC) of an overall maximum of 15 years from the time that a product first receives regulatory approval for marketing in the EU,28 thus providing a link between the patent and the relevant regulatory systems. 6.32 As stated above, in the field of human medicines, the combination of granted patent rights

and the protection offered by a SPC will usually provide longer effective market exclusivity in the EU than the period of data exclusivity, although sometimes experimental medicines in the cancer or CNS therapy areas may need to be studied in the clinic over a protracted period of time. Relevant patents may therefore have expired by the time marketing authorization is granted and a drug product is launched, or alternatively, they may expire only a few years after such launch. Data exclusivity may be vital in such circumstances, in order for the originator company to earn a return on its financial investment in the product. (4) Overlapping protection? 6.33 For the manufacturers of generic medicines, an important one-off revenue generating oppor-

tunity is to be derived by being the first to gain marketing approval and launch a generic drug product on to the market. Data exclusivity, patents, and SPCs preserve incentives for the 23 Now extendable by a further six months, subject to the satisfactory completion of approved clinical studies in the paediatric population, by virtue of Regulation (EC) No 1901/2006 of the European Parliament and of the Council of 12 December 2006 on medicinal products for paediatric use, as amended by Regulation (EC) No 1902/2006 of the European Parliament and of the Council of 20 December 2006. 24 European Commission’s Proposal for a Council Regulation (EEC) concerning the creation of a supplementary protection certificate for medicinal products, COM(90) 101 final. 25 Council Regulation (EEC) No 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products. The text of Regulation No 1768/92 underwent extensive amendment and these amendments were brought together in a single, codified text, in Regulation (EC) No 469/2009 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products. 26 Regulation (EC) No 1610/96 of the European Parliament and of the Council of 23 July 1996 concerning the creation of a supplementary protection certificate for plant protection products. 27 In particular Recital (4) of Regulation (EC) No 469/2009. 28 See Recital (9) of Regulation (EC) No 469/2009 and Recital (11) of Regulation (EC) No 1610/96.

128

C. The EU Battleground: Data Exclusivity, Patents, and SPCs originator firms by acting as a bar to generic competition. To that limited extent, data exclusivity and patent rights (including SPCs) may be considered to be overlapping, but the purpose underlying the exclusivity that is conferred by each of them is different. Data exclusivity is intended to stimulate and protect investment in expensive and time-consuming clinical trials. Patents are intended to stimulate and protect inventive activity, but not necessarily labour and investment.29 The essential rationale behind SPCs is to compensate for time lost during the twenty year patent term (patent term erosion), whilst clinical trials are undertaken and regulatory approval is obtained. In both the EU and the USA, data exclusivity is specifically linked to the investment in clinical 6.34 studies that has been made. Only investments that have been made in substantial new studies on the safety and efficacy of new active substances (and not trials on products that involve simple variations to existing drugs, or line extensions) are entitled to the protection. So, in general, clinical research that is intended only to demonstrate the safety and efficacy of variations to existing medicines is not intended to be rewarded with a new extended period of data exclusivity. We will analyse in detail how the limits on data exclusivity play out in practice in the EU, as this is an important and evolving area of the law. In the EU, it is possible to draw a clear distinction between the patent system on the one 6.35 hand and the drug approval system (including the data exclusivity framework) on the other hand. Indeed, the European Commission has actively discouraged the regulatory authorities in the member states from making their consideration of the compliance of generic medicines with regulatory approval standards conditional upon clearance of the patent protected status of active ingredients.30 By contrast, in the USA, the patent regime and the generic drug approval process are 6.36 intertwined, in certain respects at least, by virtue of the Hatch-Waxman Act. A detailed description of the complex legal machinery of Hatch-Waxman is outside the scope of this article, but in brief, it permits generic manufacturers to file an abbreviated new drug application (ANDA) before the patents of the originator companies have expired. A generic manufacturer must certify either that their product does not infringe any relevant patents listed in the Orange Book—a list of approved drug products that is maintained by the US Food and Drug Administration (FDA)—or that the patents in question are invalid or unenforceable.31 This certification usually triggers a lawsuit for patent infringement by the originator company. A 180-day period of marketing exclusivity may be granted to the first generic manufacturer to file an ANDA with an appropriate certification, provided that it wins the subsequent patent dispute, for example by successfully invalidating a relevant patent or by proving non-infringement. The 180-day period of exclusivity is an extremely valuable right 29 Patents are of course available in Europe for novel and inventive therapeutic uses of compounds and sometimes such uses may be discovered during clinical trials. This leaves open the possibility in the EU for double rewards (ie, patents and data exclusivity), based on the same clinical research. However, given the paucity of case law in the EU on the enforcement of such patents and their perceived weakness as effective monopoly rights, we suggest that this particular issue with respect to overlap is at the margins of the present debate. 30 See the European Commission’s Pharmaceutical Sector Inquiry—Final Report, ibid., page 480: ‘The Commission will . . . act against patent linkage, as according to Community legislation, marketing authorization bodies cannot take the patent status of the originator medicine into account when deciding on marketing authorizations of generic medicines’. 31 The Hatch-Waxman Act amended the Federal Food, Drug, and Cosmetic Act, inserting s 505(j) which established the ANDA approval process. An ANDA applicant must include in the ANDA a patent certification, as described in s 505(j)(5)(b)(iv).

129

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products to secure and it has made the US market an attractive one for those seeking to market generic drug products. No such right exists in the EU. 6.37 The balance of incentives conferred by patents and data exclusivity continues to be the

subject of debate in the USA and has been the subject of discussion in the literature, but in the EU, less so. One of the reasons for this may be the lack of a legislative framework (like Hatch-Waxman) that links the patent and regulatory systems with a reward for generics of a fixed period of exclusivity (although this may be a topic of future debate, bearing in mind current pricing and reimbursement pressures on generic medicines in a number of EU member states). 6.38 A financial opportunity for the generic firms presently only exists in national EU markets

between the first launch of a generic product, which may bear a price close to that of the originator product, and the subsequent genericization of the market for that product, caused by the entry of a number of other generic competitors and leading eventually to commodity pricing. In order to secure this first mover advantage, generic firms often adopt the dual tactic of an early regulatory filing, coupled with patent litigation. There is however at present no statutory, fixed reward in the EU for being the first generic to market. Some examples from the case law illustrate the use of the dual strategy that is often necessary to carve out a first-to-market generic product opportunity in the EU and demonstrate the fact that data exclusivity and patents have to be addressed as separate isssues by the generic firms. (5) Clopidogrel 6.39 The blockbuster anticoagulant medicines Plavix® (Sanofi-aventis) and Iscover® (Bristol-Myers

Squibb) contain the active pharmaceutical ingredient (API) clopidogrel hydrogen sulphate. These products were granted marketing authorizations in the EU under the centralized procedure on 15 July 1998. Data exclusivity was expected to continue until July 2008. 6.40 As far as the patent position was concerned, the patent that originally disclosed the clopi-

dogrel molecule had expired, but in the EU, Sanofi-aventis had obtained a further patent on the specific hydrogen sulphate salt form of clopidogrel32 with SPCs expiring in 2013. This patent could be avoided by generic competitors by employing a different salt of clopidogrel, but it was generally assumed that no application for a generic form of clopidogrel could be considered by any competent regulatory authority until after the relevant data exclusivity period had expired. 6.41 On 21 May 2008, the German regulatory authority (BfArM) then granted marketing

authorizations to a company called Yes Pharmaceutical Development Services GmbH33 for an alternative salt of clopidogrel (the besylate) on the basis of a mixed bibliographical application (under Article 10bis of the Directive). In bibliographic applications, preclinical and clinical trial data can be replaced by scientific literature references, provided that the applicant can demonstrate well-established medicinal use within the EU for at least ten years. The ten years of systematic and documented use of clopidogrel were calculated by Yes Pharmaceutical from the date of publication of the results of a pivotal clinical trial. Furthermore, the data required to support the application included the use of information 32

European patent no 0281459 B1. This German company was the agent for Cimex AG, which could not file the application itself because it was based outside the EU. 33

130

C. The EU Battleground: Data Exclusivity, Patents, and SPCs referred to in the European Public Assessment Report (EPAR) that was obtained by Yes Pharmaceutical by means of a Freedom of Information request.34 The EPAR is a document that contains an official scientific assessment by the European 6.42 Medicines Agency (the EMA) of the clinical and other data submitted by an originator when making an application for marketing authorization for a new active substance. Its content is therefore drawn up by reference to the underlying data to which data exclusivity attaches. As indicated above, it would seem that data exclusivity should also attach to the summary of the assessment of the underlying data in the EPAR, even if that summary has been published by the relevant authority (EPARs are in fact now published on the EMA’s website). This was the view of Sanofi-aventis,35 who applied to the Cologne Administrative Court to have the decisions of BfArM reviewed. On 25 July 2008, the court decided—in a preliminary hearing— that the objections to the Yes Pharmaceutical authorizations made by Sanofi-aventis were unfounded. It further decided that the EPAR was not part of Sanofi-aventis’ protected data. The court also decided that a bibliographic application relying on 10 years’ documented use could be submitted prior to the end of the relevant 10 year data exclusivity period and then granted with effect on the first day after the expiry of that 10 year period. The rejection of the arguments of Sanofi-aventis and BMS were upheld on appeal on 26 September 2008. It should be noted that these decisions were only made on a preliminary basis and although 6.43 they seem to be potentially far-reaching in a number of respects, it is probably inadvisable to draw any firm conclusions about the correctness of the actions of BfArM. Nevertheless, the German clopidogrel decisions came as a shock to both sides of the pharmaceutical industry, many of whom had assumed that the term of data exclusivity for new active substances was sacrosanct. (6) Galanthamine Case C-527/07 (Generics [UK] Limited) was referred to the Court of Justice in Luxembourg 6.44 in 2009. It concerned a product called Nivalin containing the API galanthamine that was first authorized to a company called Waldheim in 1963 in Austria for the treatment of polio. The original dossier for Nivalin was never updated in accordance with the requirements of Community law upon the accession of Austria in 1995. Waldheim subsequently withdrew Nivalin from the market, but galanthamine was then resurrected as a drug for the treatment of Alzheimer’s disease. Extensive testing was carried out between 1995 and 1999. This eventually resulted in the submission on 30 March 1999 of a full application for marketing authorization36 for galanthamine. The submission was made to the Swedish competent authority by Janssen-Cilag AB. A Swedish marketing authorization for galanthamine (subsequently sold under the brand name Reminyl®) was granted on 1 March 2000 and its 34 See the summary by Dr Christian B. Fulda in an online publication by the Jones Day law firm, at last visited 20 February 2012. 35 In a press release issued by Sanofi-aventis on 29 July 2008, the company said: Sanofi Aventis considers that these [German] marketing authorizations, which Sanofi-aventis is convinced rely on data originating from Sanofi-aventis/Bristol-Myers Squibb—the originators of Plavix®/Iscover®—should never have been accepted for any review by any EU regulatory agencies until after data protection expired on July 15 [2008]. 36 Pursuant to Article 4 of Directive 65/65, now Article 8 of Directive 2001/83/EC.

131

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products authorization in other member states (including the UK) followed.37 Galanthamine is an example of a molecule for which 10 year periods of data exclusivity (in some countries) and a period of patent protection were achieved in Europe in respect of the new Alzheimer’s indication,38 despite the fact that the compound was both old and already known to have anti-cholinesterase properties. The relevant patent expired in January 2007, but SPCs for galanthamine were granted, including one that was obtained in the UK,39 which was set to expire on 15 January 2012. 6.45 Generics [UK] Limited (‘Generics [UK]’)40 sought to enter the EU market early with a

generic version of Reminyl®. For the regulatory limb of their early market entry strategy, on 14 December 2005, Generics [UK] submitted an application to the relevant UK authority (the MHRA) for a marketing authorization for a generic form of galanthamine, using as the basis of its application Article 10(1) of the Directive and specifying Nivalin as the reference medicinal product. The MHRA rejected the application, stating that Nivalin could not be used as the reference medicinal product for the purposes of Article 10(1), since its dossier had not been updated so as to bring it into compliance with the requirements of Community legislation upon the accession of Austria. Generics [UK] challenged this rejection by means of judicial review of the MHRA’s decision. The administrative court decided to stay the proceedings whilst clarification was sought from the Court of Justice on whether a product such as Nivalin could be a reference medicinal product for the purposes of an abridged application under Article 10(1).

6.46 In a relatively short judgment issued on 18 June 2009, the Court of Justice emphasized that

the purpose of the Community medicines legislation in requiring the results of toxicological and pharmacological tests and clinical trials to be submitted in support of a marketing authorization is to ensure that medicines are safe and efficacious. The abridged procedure in Article 10 has as its objective the avoidance of unnecessary tests on humans and animals, but the essential aim of the rules is to safeguard public health. Only when the competent authority has been provided with all relevant particulars and documents relating to the reference medicinal product and has been satisfied that the generic product in relation to which approval is sought is so similar to the reference product that it does not differ significantly with respect to safety and efficacy may a marketing authorization be granted under the abridged procedure.41 6.47 An interpretation of the requirements of the abridged procedure which in effect amounted

to a relaxation of the standards of safety and efficacy prescribed by the rules was therefore inconsistent with one of the main objectives of the Directive. The Court concluded that in order to get the benefit of the abridged procedure, the applicant had to show that the reference medicinal product was authorized on the basis of Community law in force at the time of the application for the reference medicinal product. Nivalin was not such a product and 37 UK marketing authorization nos PL08557/0039, PL08557/0040, PL08557/0041, and PL08557/0042. Janssen-Cilag have an exclusive licence to market Reminyl® in the EU, apart from the UK and Ireland. Shire Pharmaceuticals have the exclusive rights to the product for the UK and Ireland. 38 European patent no 0236684 B1 claims the use of galanthamine in second medical use form: ‘Use of galanthamine or an analogue or a pharmaceutically acceptable acid addition salt thereof for preparing a medicament for the treatment of Alzheimer’s disease or related dementias’. 39 SPC/GB00/033. 40 Now trading as Mylan. 41 See the description of the abridged procedures under Article 10 of the Directive.

132

C. The EU Battleground: Data Exclusivity, Patents, and SPCs so it could not be a reference medicinal product within the meaning of Article 10(2) of the Directive.42 This case highlights an important issue for applicants seeking abridged (generic) authoriza- 6.48 tions in Europe. Upon accession to the EU, some member states (such as Austria, in this case) did not require the dossiers of existing medicinal products that were already authorized and on the market to be updated, in order to meet the rigorous standards of European pharmaceutical law. It is therefore necessary carefully to examine nationally authorized reference medicinal products to assess their suitability to be a reference medicinal product in an abridged application. Only those products that have been assessed and authorized by the relevant authorities in accordance with the standards specified in the Directive will satisfy the requirement.43 Under the patent limb of their market penetration strategy, Generics [UK] challenged both 6.49 the validity and the term of the UK SPC.44 The case was referred by the English Court of Appeal to the Court of Justice.45 Because of the outcome of the regulatory limb of the strategy, the result of the patent limb became somewhat moot. However, the Court of Justice subsequently held in Generics [UK]’s favour. In a decision issued on 28 July 2011, the Court of Justice decided that the previous authorization of galanthamine (as Nivalin, in Austria) was fatal to the grant of a SPC based on the subsequent Reminyl® authorization.46 Active ingredients (such as galanthamine) that had been marketed in old drug products in the EU that had not gone through the administrative procedures laid down in Community law (ie without having undergone safety and efficacy testing to Community law standards) were not within the scope of Regulation (EC) No 469/2009 for the grant of SPCs. The galanthamine case serves to emphasize the need for generic firms to address separately 6.50 both the data exclusivity and patent regimes within the EU, whilst maintaining an overarching strategy that encompasses both. It also illustrates the necessity for both limbs of the strategy to succeed, in order for the generic firm to achieve a significant first mover advantage over its competitors. (7) Escitalopram A final example of a case in which companies sought to deploy the dual strategy of an early 6.51 regulatory filing and patent nullity proceedings concerns the API escitalopram. Escitalopram is another name for the S-enantiomer of citalopram. Citalopram is a racemate, which means that it exists as a mixture of two enantiomers present in equal proportions, being the R-enantiomer of citalopram and the S-enantiomer of citalopram (escitalopram). Enantiomers differ in one structural aspect only: they mirror each other, like a left hand and a right hand. Yet this difference can have a profound effect on the respective biological activity of each enantiomer. In this case, escitalopram proved to be the biologically active molecule.

42

Paragraph 37 of the judgment. For example, it has been observed that dossiers and authorizations in Germany that underwent the process of ‘Nachzulassung’ according to the relevant provision of the German Medicines Act should be capable of being reference medicinal products in the sense of Directive 2001/83/EC. See the article by B. Friese, (2009) 71(8) Pharm Ind 1335–1337. 44 Case HC 08 CO 0231: Generics (UK) Ltd v Synaptech Inc, relating to SPC/GB00/033. 45 Generics (UK) Ltd v Synaptech Inc [2009] EWCA Civ 1119 (16 October 2009). 46 Case C-427/09: Generics (UK) Ltd v Synaptech Inc. 43

133

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products 6.52 The Danish originator company H. Lundbeck A/S (‘Lundbeck’) was granted a European

patent47 to escitalopram in 1995. SPCs have been granted in a number of countries that extend Lundbeck’s exclusive rights under this patent until May 2014. In 2001, the relevant Swedish regulatory authority granted to Lundbeck a marketing authorization for the drug product Cipralex®— containing escitalopram—following an application for regulatory approval 11 months earlier. 6.53 Before the data exclusivity period for escitalopram had expired and in advance of both patent

and SPC expiry, a number of companies managed to obtain approvals for generic escitalopram products, with a view to bringing these to market. This resulted in a number of legal cases in several European countries, on the validity of the Lundbeck patent to escitalopram and separately on the regulatory and data exclusivity issues arising out of the generic marketing authorizations. 6.54 In the Netherlands, the Dutch part of the European patent for escitalopram was revoked by

the first instance court.48 Lundbeck appealed.49 Despite the revocation of the patent in first instance, the generic companies have not yet been able to sell their products on the Dutch market, because Lundbeck has in the meantime successfully objected to the grant of their marketing authorizations. The main thrust of Lundbeck’s objection was that the generic companies should not have been allowed to refer to data in the dossier of Lundbeck’s 2001 marketing authorization for escitalopram. Because the regulatory proceedings have reached an end in the Netherlands, we will confine ourselves here to a discussion of the main issues in the Dutch regulatory proceedings. 6.55 The generic companies argued that in granting the marketing authorization for escitalopram

in 2001, the Swedish authority had simply assumed—and not substantively investigated— the question of whether escitalopram was a new active substance.50 They contended that escitalopram should be regarded as a line extension of citalopram; the data that Lundbeck had filed in order to obtain its marketing authorization for escitalopram did not relate to research on a new active substance, because a significant portion of that research had already been carried out in support of an earlier application for authorization of the racemate, citalopram, as the drug product Cipramil®. 6.56 A complicating factor was that part of the data to which Lundbeck claimed exclusivity had

already been made public in various literature. The relevant Dutch authority (the CBG) had initially granted the generic authorizations, by allowing reference to this public data, despite the fact (as the CBG initially accepted) that the Lundbeck escitalopram dossier was covered by data exclusivity. Following Lundbeck’s objection, the CBG decided that Lundbeck 47

European patent no 0347066 B1. Decision of the District Court of The Hague of 8 April 2009 in Alfred E. Tiefenbacher GmbH v H. Lundbeck A/S JGR 2009/27. It should be noted that Lundbeck has been successful in a number of other European countries on the related patent validity and SPC issues. 49 Decision of the Court of Appeal of The Hague of 24 January 2012, IEPT20120124. By the time of Lundbeck’s appeal, the patent had expired. The case proceeded on the basis of the invalidity of the Dutch SPC to escitalopram, based both on the invalidity of the basic patent and, by way of a stand-alone attack on the validity of the SPC, for failure to comply with certain provisions of Regulation No 469/2009. The Court of Appeal held product claims 1–5 of the patent invalid, but upheld claims 6 and 7. Therefore, the SPC was confined to claims 6 and 7 only. 50 The facts are summarized in an English translation of the CBG’s decision of 25 February 2010 that is available on its website at last visited 20 February 2012. 48

134

D. Conclusion was correct and refused to allow the generic companies to refer to the published data, thus requiring the generic companies to submit appropriate new bridging data of their own. This decision was appealed. The Dutch regulatory proceedings then focused on the question of whether escitalopram is 6.57 a line extension of citalopram, ie, whether there was a significant difference in safety and efficacy between the single enantiomer escitalopram and the racemate, citalopram. If not, then the marketing authorizations for citalopram and escitalopram are part of the same global marketing authorization. As such, the period of data exclusivity expired when the protection for the citalopram data expired, because the date of the earlier, initial citalopram (Cipramil®) marketing authorization will ‘count’ as the starting point for data exclusivity for every authorization falling within the global authorization. On the other hand, if the marketing authorization for escitalopram does not form part of the same global authorization as citalopram, escitalopram will have its own regulatory data exclusivity period, starting on the day it was granted, in 2001. On re-examination, the CBG made its own substantive assessment and reached the conclusion 6.58 that escitalopram did not differ significantly from citalopram in terms of its safety and efficacy, that escitalopram was a line extension of citalopram and that both marketing authorizations formed part of the same global marketing authorization. However, in a decision issued by the Administrative Division of the Dutch Council of State on 6 July 2011, it was held that the question of whether escitalopram could be regarded as a new active substance had already been decided by the relevant Swedish authority and this decision could not be re-opened,51 regardless of the CBG’s own substantive assessment of the position. As we conclude this chapter, the escitalopram battle in the EU continues. For present purposes, 6.59 we again emphasize that in the EU, the generic firms must tackle patents/SPCs and data exclusivity as separate challenges to be overcome. Whilst there is clearly some overlap—in terms of the subject-matter—between the Dutch patent and regulatory cases on escitalopram, these cases demonstrate once again that the patent and data exclusivity regimes in the EU are separate and distinct—procedurally, substantively, and in terms of the protection that they confer.

D. Conclusion Patents, SPCs, and data exclusivity are the key elements in the EU battleground between the 6.60 originator and the generic companies. Whilst patents and data exclusivity are not strictly overlapping rights, it is usually necessary for a competitor seeking to market a generic drug product in the EU to check both the patent/SPC position and the expiry of the data exclusivity period, for a particular drug product of interest. The rights conferred by patents and data exclusivity in the EU are separate and distinct, but not necessarily bullet-proof. There are significant financial incentives for the generic firms to use patent litigation to avoid or to revoke patents and to deploy early filing (regulatory) strategies in order to carve out a firstto-market opportunity in the EU. The manufacturers of generic medicines continue to test the protection conferred by data exclusivity using the abridged procedures prescribed by EU regulatory law. The clopidogrel, galanthamine, and escitalopram cases are illustrative of the use by the generic firms of such dual patent and regulatory strategies. 51

Decision of the Council of State of 6 July 2011, LJN BR0506, 201000808/1.

135

Chapter 6: Patents and Regulatory Data Exclusivity for Medicinal Products

E. Summary 6.61 • Patents and SPCs continue to be the main form of legal protection for new active

substances (both small molecules and biologicals) in the field of medicines in the EU. • Extensive preclinical and clinical trials may need to be undertaken to demonstrate a drug product’s quality, safety, and efficacy to the relevant regulatory authorities. • In the EU, data that is provided in support of the proposed use of a new active substance in a medicine may benefit from a period of data exclusivity. • Data exclusivity usually lasts for a certain period of time after the initial registration of a new drug product, during which only the entity that developed the data may use it to support additional marketing authorizations. • After the data exclusivity period, it is possible for a third party to seek marketing approval for a generic product, by submitting an abridged application for registration that relies on the data that has already been submitted in support of the original product. • Under Article 10 of Directive 2001/83/EC, an abridged marketing authorization can be applied for by third parties after eight years and the generic medicinal product may be marketed after a further two (or three) extra years: the so-called 8+2+1 rules. • Firms seeking to enter the EU market with generic medicinal products must usually wait until after the relevant data exclusivity period has expired before submitting an abridged application for marketing approval. Even then, there may be patent obstacles to be overcome before the path to market is clear. • Both data exclusivity and patent protection may provide significant barriers to entry for generic firms seeking to enter the EU market. To the extent that both must usually be overcome in order to enter the EU market with a generic drug product, they may be seen in this limited sense as overlapping rights.

136

7 WHEN COPYRIGHT AND TRADEMARK RIGHTS OVERLAP Craig S. Mende, Fross Zelnick Lehrman & Zissu, PC, and Belinda Isaac, Isaac & Co Solicitors1

A. Hypothetical B. Conceptual Overview

7.01 7.03

(1) The different origin, nature, and scope of copyright and trademark laws (2) Where copyright and trademark rights overlap—the theory

C. ‘Reality’—How the Interface Plays Out in the UK and US (1) The UK/European approach to interface issues (2) The US approach to interface issues

7.05 7.31

D. Conclusion E. Summary

7.39 7.39 7.64 7.91 7.95

A. Hypothetical Aroma Inc. instructs Blaggit Inc., a branding consultancy, to help it develop a new brand of 7.01 luxury perfume. Blaggit works with a team of people at Aroma and is responsible for the creation of the brand name, preparation of the written brief to be given to the creator of the fragrance, and the project plan for the development of the new brand. On behalf of Aroma, Blaggit commissions Corey Creatit, a famous marketing and design consultant, to develop the bottle in which the perfume will be sold together with its label, packaging, and marketing materials both above and below the line (that is, on silk scarves, luxury T-shirts, stationery, and printed media). Shortly before the launch of the product the in-house lawyer at Aroma files trademark applications for the brand name Blaggit came up with, ‘Uncommon Scents’, and the logo Creatit created, featuring a fanciful rendering of a pig sniffing for truffles. Following its launch on You Tube and an imaginative viral marketing campaign conceived 7.02 by Creatit featuring the sniffing pig gregariously rolling through a patch of truffles, the brand is an instant success and demand outstrips supply. As a consequence, a wave of third party products using similar names, pig logos, and bottles appear on the market. Aroma would like

1 Any views expressed here are those of the authors and not necessarily those of their firms, organizations, or clients.

137

Chapter 7: When Copyright and Trademark Rights Overlap to take action to stop these ‘free riders’ but what can it do based on its trademarks and copyrights?2

B. Conceptual Overview 7.03 Copyright law and trademark law have different origins, serve different purposes, protect

different subject-matter, and are governed by different rules on ownership, registration, duration, and infringement (see paragraphs 7.05 et seq). At the same time, these two separate forms of intellectual property protection can overlap such that aspects of a product’s appearance—including the name, label, packaging, and promotional materials—may be the subject of both copyright and trademark protection (see paragraphs 7.31 et seq). When overlaps occur, tensions can arise, especially where one party owns the copyright and another owns the trademark rights in the same material, or if the copyright has expired but trademark registrations remain on the register (see paragraphs 7.34 et seq). 7.04 Before we consider the ‘real life’ scenario in the hypothetical above and discuss the practical

consequences and issues that arise from the overlap of the two sets of rights, we need first to take a closer look at the nature of these different rights, the circumstances of the overlap, and the context in which tensions can arise. (1) The different origin, nature, and scope of copyright and trademark laws 7.05 Both copyright laws and trademark laws are intended (directly or indirectly) to benefit the

public, but in different ways: copyright protection by encouraging authors to create new works, which will ultimately enter the public domain for all to use freely; and trademark protection by preventing the deception of consumers as to the source, approval, or quality of particular goods and services. (a) The fundamentals of copyright protection 7.06 Purpose and Subject-Matter of Copyright Protection

The first copyright statute, Britain’s Statute of Anne, dates back to 1709. The Statute was enacted to foster the production and distribution of publishers’ works by providing a limited term monopoly (initially 14 years, with a 14 year renewal term) to printers and authors of books, and prohibited others from copying the books during the term of protection. It was understood that such protection was needed to ensure that printers could recoup their investment in the production of books and thus have a sufficient incentive to operate their presses. As noted recently by the English Supreme Court,3 [T]he original legislative purpose of laws on literary copyright was the protection of the commercial interests of the stationers (the early publishers) and booksellers, and the control of unlicensed (and possibly subversive) publications . . .

7.07 Today, copyright laws focus on rights of the authors, and protect a wide range of ‘works of

authorship’, including not only literary works but also artwork, movies, television programmes, music, videogames, computer software, labels, and other creative works that are fixed in tangible form. As discussed below, the duration of protection has also been extended 2 In this chapter we will only be considering these two forms of protection. We will not therefore comment on any potential registered or unregistered design rights that Aroma Inc. might have. 3 Lucasfilm Ltd v Ainsworth [2011] UKSC 39 (the Star Wars case) at para 14.

138

B. Conceptual Overview significantly since the Statute of Anne; however, in the US at least, the underlying purpose of the copyright laws has remained essentially the same: to serve the public by encouraging the creation of works of authorship.4 As the US Supreme Court explained in the seminal Mazer v Stein decision in 1954, The economic philosophy . . . is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors . . .5

Although a high level of creativity is not required, originality is the sine qua non of copyright 7.08 protection, and in general (at least in the US and UK), some minimum level of creativity is required for a work to be copyrightable (although UK and US courts take pains to avoid the appearance of judging artistic or literary merit). Scope of Copyright Protection Copyright protection does not extend to concepts or 7.09 ideas, but only to the creative ‘expression’ of ideas. For example, the creator of a perfume bottle, shaped like a pig, cannot stop others from copying the idea, and creating their own pig-shaped bottles, but he may be able to prevent others from copying his particular version—to the extent there is originality in the precise shape of his pig rendering, placement of the snout, other facial features, the colouring and shading and so forth. Likewise, there is no copyright protection for facts, such as biographical information about an individual, but the particular expression of those facts—for instance, the overall structure and arrangement of a biography, the selection of points to highlight, and the particular words and sentences used by the author—can be protected.6 The creator’s protection extends not just to exact copies of his or her work, but also to works 7.10 that are ‘substantially similar’. The definition of substantial similarity, which establishes when a work is deemed to infringe, is purposely indefinite. For instance, in the US, the general test is whether an ordinary observer, not seeking to find differences between the two works, would view their ‘aesthetic appeal’ as the same.7 In the UK the test is similar in that the claimant must show that the restricted act8 (whether that be copying, reproducing, adapting, translating, or distributing) was carried out in relation to the work or a substantial part of it and the test of substantiality is a qualitative and not a quantitative one.9 As a general matter, works that embody more creativity receive a wider scope of protection. 7.11 For instance, the author of a novel may be able to prevent distribution of a different work that borrows characters and plot lines even if there is no verbatim copying of any text. By the same token, the copyright owner of a stock product photograph, such as a photo of the perfume bottle used on the box in the hypothetical above, may be able to prevent only virtually identical copies.10 Copyright infringement (unlike trademark infringement) also requires proof of actual copy- 7.12 ing, even if it is only indirect proof established by showing that the accused infringer had 4

Feist Publications, Inc v Rural Telephone Service Co, 499 US 340, 345 (1991). 347 US 201, 219 (1954). 6 Common objects, settings and the like—called ‘scenes à faire’—are also generally unprotectable. 7 Peter Pan Fabrics, Inc v Martin Weiner Corp, 274 F2d 487, 489 (2d Cir 1960) (L. Hand, J) 8 That is, an act which falls within the copyright owner’s control as prescribed by the Copyright, Designs and Patents Act 1988 (‘CDPA’) s 16. 9 Ladbroke vWilliam Hill [1964] 1WLR 273 at 276 (Lord Reid). 10 For a discussion of the link between originality and what needs to be taken to support a finding of infringement see the English case of Kenrick v Lawrence (1890) 25 QBD 99. 5

139

Chapter 7: When Copyright and Trademark Rights Overlap access to the protected work and that there is ‘probative similarity’ between the two works.11 If the defendant can show that the accused work was independently created, without knowledge or actual copying of the plaintiff’s work, then infringement cannot be established even if the works are similar. 7.13 Ownership, Duration, and Registration of Copyrights

In general, copyright in a work is initially owned by the work’s creator, the person who conceived and first put the work into tangible form—the author of a book, the artist who created a painting, the designer of a product label, and so forth. If more than one author jointly created the work, the authors may co-own the work. In the US this means that each joint author would have the right to exploit the work, subject to an obligation to share profits with the other authors, whereas in the UK one co-owner cannot exploit a work that is jointly owned without the permission of the other co-owners.12

7.14 As elaborated in paragraphs 7.65 et seq, US copyright law provides that an employer or, in

some instances, a party commissioning the creation of a work by an independent contractor, may be deemed to be the author under the ‘work made for hire’ rules. This is in contrast to the UK position, where generally speaking, the commissioning party does not own the copyright in the commissioned work absent an agreement or assignment to this effect.13 7.15 Authors may assign the copyright in their work to another party; however, to protect authors,

both US and UK law require that any assignment be in writing and be signed by the author. 7.16 Although the term of protection can be lengthy—as long as 70 years beyond the life of the

author for new works in numerous jurisdictions (including the US14 and the European Union)—copyright protection does not last forever. As noted, the purpose of the protection is to encourage, through the grant of a limited duration monopoly, the creation of expressive works. Part of the bargain is that when the term of protection expires, the work will fall into the public domain to be freely used by any member of the public. 7.17 In most jurisdictions today, including the US and the European Union, copyright protec-

tion automatically attaches to new works from the moment of their creation into a tangible form. The US, which prior to 1978 required registration and renewal to maintain copyright protection, still has a registration system, and provides certain advantages to those who timely register their works—such as the ability to recover attorney’s fees and statutory damages in infringement actions—but registration is no longer a prerequisite to maintaining copyright.15

11 Alan Latman, ‘“Probative Similarity” as Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement’, (1990) 90 Colum L Rev 1187, 1206. 12 CDPA, s 173. 13 Ibid., s 11(1). 14 In a 2003 decision, Eldred v Ashcroft, the US Supreme Court held that while the US Constitution requires that the copyright term be ‘limited’, the length of protection accorded to authors to achieve this purpose is left to the discretion of the federal legislature, which may extend the term for harmonization with other members of treaties. 537 US 186 (2003) (rejecting a challenge to the retroactive application of a 20-year term extension). Over the years, the copyright term in the US has increased significantly, from a maximum 28 years in the first US copyright statute in 1790 to the life of author plus 70 year limit (for individual authors) today. 15 Likewise, since 1989, following the US accession to the Berne Convention, US law no longer requires use of a copyright notice on publicly distributed copies as a precondition to maintaining copyright, although use of

140

B. Conceptual Overview (b) The fundamentals of trademark protection Purpose and Subject-Matter of Trademark Protection Trademarks, whose origins are 7.18 believed to date back to the branding of animals thousands of years ago,16 are indicia of origin that allow manufacturers and sellers to efficiently convey to consumers the identity of the maker or distributor that stands behind the quality of goods or services.17 The focus of the trademark laws is commerce, and trademarks are said to embody the ‘goodwill’ of their owner among consumers who purchase goods and services in the marketplace. For example, the US Trademark (Lanham) Act defines a ‘trademark’ as, any word, name, symbol, or device, or any combination thereof . . . used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.18

As explained in the legislative history of the Lanham Act, trademark law serves two funda- 7.19 mental purposes,19 The purpose underlying any trade-mark statute is twofold. One is to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Secondly, where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. This is the wellestablished rule of law protecting both the public and the trade-mark owner . . .20

Thus, like copyright law, trademark law aims to protect the interests of the public as well as 7.20 the IP owner—although, due to their different origins and purposes, the public interests served are quite different: fostering the creation of works of authorship (copyright) as against preventing deception as to the source of the goods (trademark). As with copyright, the subject-matter of trademark protection has over the years in many 7.21 jurisdictions, including the US and the European Union, expanded considerably to include not just word marks, like NIKE, or ‘design marks’, or ‘device marks’ (logos) like the Nike ‘swoosh’,21 but also: • ‘Service marks’, which identify the source or sponsor of services—such as ‘Delta Airlines’ or ‘Barclays Bank’; • Aspects of entertainment properties, such as ‘[t]itles, character names, and other distinctive features of radio or television programs . . .’;22 and a notice can prevent infringers from seeking a reduction in statutory damages based on a claim of ‘innocent infringement’. 16 See 1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition (hereafter ‘McCarthy’), § 5:1 (2011), and articles cited therein. 17 See, eg, Qualitex Co v Jacobson Products Co, 514 US 159, 163–64 (1995) (by preventing competitors from copying ‘a source-identifying mark’, trademark law ‘reduce[s] the customer’s costs of shopping and making purchasing decisions’ and ‘helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product’) (internal quotation marks and citation omitted). 18 15 USC § 1127. As with current US copyright law, registration of trademarks provides certain advantages to the owner but is not a prerequisite for obtaining protection. 19 See 1 McCarthy, § 2:1 (referring to the ‘dual goals of trademark law’). 20 S Rep No 1333, 79th Cong, 2d Sess, 3–4 (1946) (emphasis added), quoted in Two Pesos, Inc v Taco Cabana, Inc, 505 US 763, 782 n 15 (1992). 21 Wal-Mart Stores, Inc v Samara Brothers, Inc, 529 US 205 (2000). 22 15 USC § 1127.

141

Chapter 7: When Copyright and Trademark Rights Overlap • ‘Trade dress’, which is the appearance of product packaging (such as the famous Tiffany ‘Blue Box’ or ‘Coca Cola’ bottle) or even the product itself (such as certain jewellery designs).23 7.22 Even distinctive sounds, such as the MGM lion’s roar heard at the beginning of that studio’s

motion pictures (registered in the US and elsewhere), or a scent such as ‘a floral fragrance/ smell reminiscent of roses as applied to tyres’ (registered in the UK) have been accorded trademark protection in certain jurisdictions when they have been shown to identify a single product source.24 7.23 However, what defines a trademark is its source-identification function, and for this reason,

protection is sometimes denied where the use of a device or logo is deemed primarily decorative or ‘ornamental’. As noted by the Court of Justice of the European Union (ECJ),25 [T]he exclusive right under [the Trade Marks Directive] was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfill its functions. The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods. 7.24 Scope of Trademark Protection

Since trademark laws are intended to prevent consumer confusion,26 trademark rights are not owned ‘in gross’; they usually extend only to use in connection with the owner’s particular types of goods or services, and closely related product and service areas into which consumers might expect the owner to expand. The general test for trademark infringement is whether consumers are likely to be confused as to the source, origin, or sponsorship of the goods, and factors courts evaluate include not only the similarity of the marks but also the similarity of the goods or services, and the likelihood that the plaintiff will ‘bridge the gap’ and expand into the defendant’s product/service area.27

7.25 For this reason, two different organizations may own trademark rights in the same mark for

different goods or services in the same jurisdiction—such as ‘Delta’ for airlines and sink faucets, ‘Champion’ for sportswear and automobile spark plugs, ‘Ritz’ for an exclusive hotel chain and a cracker sold in supermarkets, and ‘Polo’ for cars, mints, and luxury goods—but it is extremely rare for two different organizations to own rights in the same mark for the 23 The meaning of ‘trade dress’ itself has become expansive, at least in the US. For example, in Qualitex v Jacobson Products, the US Supreme Court upheld the plaintiff’s rights in a ‘special shade of green-gold color’ for its dry cleaning press pads, 514 US 159, 161 (1995); and in Two Pesos v Taco Cabana, the Court upheld trademark protection for a Mexican food restaurant chain’s ‘festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals’. 505 US 763, 765 (1992). 24 See US Trademark Registration No 1395550 (MGM lion’s roar) and UK Trademark registration number 2001416 (fragrance). 25 Arsenal Football Club plc v Reed (C-206/01) [2002] ECR I-10273 (the ‘Arsenal case’) at para 51. Although in the passage quoted above the court appears to suggest that protection is only available where the original function of a trademark is adversely affected the later case of L’Oréal SA v Bellure NV (Case C-487/07) [2009] ETMR 55 (the ‘L’Oréal SA v Bellure’ case) makes it clear that any third party use of a sign which adversely affects, or is liable to adversely affect, other functions of a registered trademark including the advertising, investment, communication, or quality assurance function are also actionable. 26 This chapter does not address the later-developed trademark ‘dilution’ laws or the taking of ‘unfair advantage’ (a concept developed in Europe) which seek to prohibit even non-confusing uses detrimental to the trademark owner in certain circumstances. 27 Courts may consider the defendant’s intent, but a finding of trademark infringement generally does not require actual copying or an intent to copy or deceive.

142

B. Conceptual Overview same goods or services in the same geographic area.28 UK law provides that if a mark is jointly owned, subject to any agreement to the contrary between the parties, each owner is entitled to use the mark independently but is not permitted to grant a licence, charge or assign his share without the consent of the other co-owner.29 Trademark rights are generally deemed stronger, and entitled to a broader scope of protec- 7.26 tion (ie, able to prevent non-exact copies of marks, and uses beyond the owner’s product/ service area), when they are less descriptive. Coined marks like ‘Kodak’ are inherently stronger than descriptive terms like ‘Photo Shooter’. Marks also acquire strength through advertising and use, so that even inherently descriptive marks like ‘American Airlines’ can become strong when they have been heavily used and advertised for many years. Thus, another party would have difficulty operating a hotel under the ‘American Airlines’ mark even though the airline does not offer hotel services. Ownership, Duration, and Registration of Trademarks In both the US and the UK 7.27 (unlike in civil law countries), trademark rights are acquired primarily through use of a mark ‘in commerce’, that is, in connection with the commercial offering, advertising, and sale of goods and services to consumers. Unlike copyright ownership, trademark ownership is not tied to the person or entity that ‘created’ or conceived of the mark. Rather, the party that adopts and uses the trademark in connection with goods and services is the owner, at least in the absence of a contrary agreement. The ‘use’ requirement also accounts for another difference between copyright and trademark 7.28 rights: trademark rights essentially last as long as the mark is in use, so the duration can be infinite. By the same token, trademark rights may be deemed ‘abandoned’ in the US when the owner stops using or licensing the mark for an appreciable period with no intention to resume use, and there is a statutory presumption of abandonment (allowing cancellation of a registration) after three years of non-use.30 In the European Union a trademark registration may become vulnerable to sanctions including revocation if, without proper reason, it is not used for a continuous period of five years.31 So trademark rights can also expire long before a copyright would. Because trademarks provide consumers with information about a product’s source and quality, 7.29 trademark rights are not freely assignable, at least in theory. In the US, they can only be assigned together with the ‘goodwill’ appurtenant to the marks—historically meaning that the acquirer had to use the same product formulae and/or manufacturing facilities, although today it can suffice to simply recite the transfer of goodwill in the assignment document. In the UK, however, even a bare assignment of the trademark without any associated goodwill is permitted.32 In both the US and the UK, trademark owners may expand their ‘common law’ rights (the 7.30 rights acquired by use) to some degree by registering their marks. Registration is not required

28 Where such a situation does arise (invariably as a consequence of the historic division of a single business) some form of co-existence agreement between the parties is an essential requirement to delineate between their respective activities so as to avoid unnecessary consumer confusion. 29 Trade Marks Act 1994, s 23. 30 See 15 USC §1127 (abandonment presumed after three years of non-use). 31 Article 10 (1) Directive 2008/95/EC (‘Trade Marks Directive’). 32 Trade Marks Act 1994, s 24(1).

143

Chapter 7: When Copyright and Trademark Rights Overlap to secure rights (unlike in many civil law countries), but can provide advantages. For instance, in both the US and UK, a national trademark registration provides automatic nationwide rights, even if the owner is only using the mark in a few areas of the country, and a registration constitutes evidence of the owner’s exclusive right to use the mark on the goods and services identified in the registration. In the US and UK, it is also possible to apply for a mark based on an ‘intent to use’, even before actual use has begun, although a registration will not issue in the US until the owner proves actual use in commerce. (2) Where copyright and trademark rights overlap—the theory 7.31 Although copyright and trademark laws serve different purposes, it is possible for both rights

to apply to the same products or works. This cumulation of rights can potentially grant the proprietor a greater degree of protection than that originally intended by statute and indeed, in some situations might defeat the purpose of the statute entirely. 7.32 As noted above there are at least three significant practical differences between copyright and

trademark protection: • Copyright owners can stop anyone whose work is copied from and ‘substantially similar’ to their own work whereas trademark owners, in general, can only stop those whose use of identical or similar marks is likely to cause confusion in the marketplace;33 • Copyrights are, generally speaking, owned by the creators of a work or their assignees whereas trademarks (at common law) are owned by those who use them in commerce in connection with goods and services, or (per intent-to-use laws) who first apply to register them; and • Copyright subsists for a finite period, after which the work falls into the public domain where it can be used by anyone without attribution of authorship, whereas trademark rights can endure for as long as the indicia are used and associated with the owner’s offerings— potentially hundreds of years or more. 7.33 For example, in the hypothetical scenario described at the beginning of this chapter, the

word mark (or ‘brand name’) for the perfume, ‘Uncommon Scents’, could be regarded as a literary work on the face of the copyright statutes (and without application of judicial interpretation) as could the marketing materials and any marketing or advertising slogan. The product label could constitute an artistic work, as could the packaging, the container (in the US at least), and the sniffing pig video clip used on You Tube could also be protectable by copyright as a film and a sound recording. 7.34 At the same time, the brand name, label and appearance of the product and its packaging

could potentially be registered as trademarks as could any marketing slogan (assuming it is sufficiently distinctive). This would mean however that several aspects of the product would benefit from a double layer of protection of potentially unlimited duration, which may positively hinder the ‘system of undistorted competition’ which governments aim to uphold and maintain for the benefit of consumers. 7.35 Considering the different rules as to ownership of the two rights and applying these to our

hypothetical, we can see that although Aroma Inc. may own the trade dress rights in the label 33 Strictly speaking in the UK (and European Union) it is possible for a trademark owner to stop the use of an identical mark on identical goods without showing confusion provided that the use affects or is liable to affect one of the other functions of the mark, see L’Oréal v Bellure case.

144

C. ‘Reality’—How the Interface Plays Out in the UK and US and bottle design, in the absence of a written agreement, Creatit—the design consultant who created the logo, label, and bottle design—will own the copyright in these elements. In such circumstances, who would control the use? And who would control the enforcement against any unauthorized ‘free riders’ who reproduce these elements? What if the free riders use their own names on their knock-offs along with prominent 7.36 disclaimers of affiliation, so that the brand owner cannot prove likelihood of confusion or misrepresentation as to source as required under trademark law and passing off—would the label and bottle designs still infringe the copyrights? Can the copyrights still be enforced, and if so, by whom? And what if it turns out the pig-shaped bottle was based on an old drawing the copyright of 7.37 which is now in the public domain? Can the brand owner still assert trade dress rights in the design to prevent others from using a similarly shaped perfume bottle? Can the owner register the bottle as a three-dimensional trademark and in so doing prolong its monopoly in the shape? These are just some of the copyright/trademark ‘interface’ issues that have come before the 7.38 courts in recent years. Having explained the nature of these two distinct intellectual property rights and the spectra of their potential overlap we now turn to consider how, in practice, the courts have chosen to tackle these issues.

C. ‘Reality’—How the Interface Plays Out in the UK and US (1) The UK/European approach to interface issues In the UK the courts have not hesitated to identify interface issues where they have arisen. 7.39 However, on such occasions their response has tended to be either to distinguish between the two forms of protection as they relate to the subject-matter in dispute finding on the facts only one of them applicable, or to deny any possibility of a dual layer of protection on the grounds of public policy. (a) The court approach to overlaps in relation to words, names, titles, and slogans If we take, by way of example, the position regarding the brand name in our hypothetical, 7.40 ‘Uncommon Scents’, then as noted above, theoretically the name could be protected as a literary work for copyright purposes. But if it were, one consequence would be that without consent from the proprietor, reproduction of the word or the name of the product for any purpose by a third party would give rise to a potential infringement of the copyright. The result would in effect be to remove the availability of certain words from the English language, which would be impractical and undesirable. Accordingly, the English courts have been reluctant to grant copyright style protection to names, invented words, book titles, song titles, and short phrases.34 Where reasons have been given by the courts for refusing protection it is usually stated as the lack of sufficient literary and informative qualities or the absence of sufficient originality, labour, skill, or judgment in the creation or selection

34 Francis Day & Hunter v 20th Century Fox [1940] AC 112; Tavener Rutledge v Trexapalm [1975]; Exxon Corporation v Exxon Insurance [1982] RPC 69, 80; R Griggs Group Ltd and Othrs v Ross Evans and Othrs [2004] ECDR 15; Animated Music Ltd’s Trade Mark [2004] ECDR 27.

145

Chapter 7: When Copyright and Trademark Rights Overlap process35 but so often has the statement been made that one judge observed, ‘There is nothing akin to a copyright in a name. This has been part of our law for a long time’.36 7.41 Although this lack of protection is not enshrined in statute, it has long been accepted to be

the case and is an example of how the courts have reduced the scope of the statute in the face of a potential overlap.37 That said, the English Court of Appeal recently held that titles could be protected by copyright where sufficient skill and labour has been invested in their creation, suggesting perhaps that the restriction is more of a rebuttable presumption that an absolute bar.38 7.42 Thus in general terms, as noted above, in relation to the hypothetical with which we began

this chapter, it would not be possible for Aroma Inc. to rely on copyright as a means of protecting the ‘Uncommon Scents’ brand name. Instead, where there has been copying of the product name, or advertising slogan, Aroma will need to rely on the protection offered by its trademark registrations (if it secures any), or passing off, assuming that the word(s) and/or logo are not so descriptive or non-distinctive that registration would be refused. (b) Cumulative or parallel protection—the interface as it relates to device marks 7.43 Unlike words, device marks (or logos) and two-dimensional packaging can be the subject of

both copyright and trademark protection (registered and unregistered) simultaneously in the UK. As noted above, eligibility for copyright protection has been justified in the UK on the basis that device marks include a graphic element and therefore qualify as ‘artistic’ works.39 Where a device mark incorporates non-distinctive words and a non-distinctive graphic element, copyright protection may still exist if an artist has used his skill and labour to draw a word or phrase in a stylized way, making the logo sufficiently original to be eligible for copyright protection irrespective of whether it is sufficiently distinctive for the purposes of trademark registration. 7.44 In situations where the UK courts have been asked to grant protection to device marks or

labels on the basis of both copyright and trademark rights (registered or unregistered), the courts have tended to find just one cause of action applicable to the facts before them. For example, in a case involving the product Marmite40 and a depiction of the product in a television broadcast by a political party without the permission of the product’s owner, the brand owner was fortunate to be able to rely on copyright in its product label to prevent reproduction of the image of the product (to which the label was attached). As the judge observed at the time, the fact that the defendant was not trading would have presented the brand owner with considerable hurdles had it tried to rely on its trademark rights alone. The case usefully 35 See also Exxon v Exxon Insurance [1982] RPC 69 CA in which, whilst holding that despite the effort involved in creating the word, Exxon did not qualify as a literary work, the court left the door open as to whether that would always be the case for single words. 36 Per Laddie J in Elvis Presley Trade Marks [1997] RPC 543. 37 A similar limitation in relation to the enforcement of copyright in a photograph depicting product packaging was introduced by the ECJ in Parfums Christian Dior v Evora (C-337–95) [1997] ECR I-6013 where the claimant sought to rely on its copyright in a depiction of its perfume product to prevent the defendant advertising the product for sale in a magazine of which the claimant did not approve. The court noted that the protection conferred by copyright as regards reproduction by a reseller in advertising may not be broader than that conferred on a trademark owner in the same circumstances. 38 Newspaper Licensing Agency Ltd v Meltwater Holdings BV [2011] EWCA Civ 890. 39 CDPA, s 4(1)(a). 40 Unilever plc v Griffin [2010] EWHC 899 (Ch).

146

C. ‘Reality’—How the Interface Plays Out in the UK and US demonstrates the complementary nature of the two IP rights as they relate to product labels and packaging and the advantages of having both rights in common ownership. Before we move on to consider situations where tensions arise between the two IP rights, we 7.45 should mention the general approach of the courts in England towards the use of device marks and character marks on promotional goods and/or licensed merchandise such as silk scarves and T-shirts. Prior to the decision of the ECJ in the Arsenal case, the approach of the English courts to disputes involving trademarks and character merchandise was to question whether the unauthorized use of the logo or image complained of, constituted ‘trademark use’, that is to say, use to indicate the commercial origin or manufacturing source of the item. Where the use of the mark was considered decorative it would not be regarded as constituting trademark infringement with the consequence that brand owners had to rely on copyright protection instead.41 In the Arsenal case the ECJ expressed the view that the use of an identical sign on identical 7.46 products is liable to jeopardize the essential function of the trademark, whether the sign is perceived as a badge of support for, or loyalty or affiliation to, the trademark proprietor, and accordingly it was actionable in spite of the disclaimer of affiliation used by the defendant. Only if the use is for a purely descriptive purpose, it was held, would the proprietor of the mark be unable to challenge its use. Although this development was welcomed by brand owners who previously found merchan- 7.47 dise (especially promotional T-shirts) bearing their brand names hard to protect, it raises important questions regarding the cumulation of IP rights, especially where the underlying copyright in the image or device mark has expired. Much may depend on the stage at which registration is sought for the underlying mark, for example whether it is before use has been made of the brand name,42 and whether the actual use can be said to guarantee the origin of the product.43 If it can, then it is likely that the trademark rights will continue to run irrespective of the copyright position. But, as noted below in relation to three-dimensional marks, if the underlying mark is weak—perhaps because the mark is inherently descriptive or nondistinctive or because the character developed a reputation before the application was filed— it is likely that policy considerations will prevail and trademark protection will be refused or curtailed. Applying this to our hypothetical situation, Aroma Inc. would have been prudent to ensure 7.48 that it registered as trademarks its gregarious sniffing pig image (used in its viral marketing campaign) and the insignia used on its silk scarves and T-shirts before these went on sale so that it had the best chance of securing registration before the images became widely known and potentially descriptive. Provided the images used also functioned as indications of source Aroma could potentially rely on trademark protection to stop third parties using confusingly similar images and insignia beyond the term of copyright protection in the underlying drawings and artwork.

41

See Mirage Studios v Counter-Feat Clothing Co Ltd [1991] FSR 145. Linkin Park LLC’s Application [2006] ETMR74 where the Appointed Person found that the word LINKIN and the phrase LINKIN PARK were invented by the band and meaningless at the date they were coined but were descriptive of the band at the date the application was filed and so refused registration. 43 Animated Music Ltd’s Trade Mark [2004] ETMR 79 at para 18 citing Francis Fitzpatrick v Disney Enterprises (951/2001) OHIM Opposition Division. 42

147

Chapter 7: When Copyright and Trademark Rights Overlap (c) Does copyright trump trademarks? 7.49 We observed above that tensions can arise between copyrights and trademarks as a result of

aspects of the context in which they arise or the manner of their use. In a case which turned on the issue of the separate ownership of copyright and trademarks in the same logo, Griggs Group v Ross Evans,44 the Deputy Judge, Peter Prescott QC, justified the potential overlap of rights by reference to the different functions of the two areas of law. He explained (as noted above) that copyright is intended to protect creative skill and labour whereas the function of trademarks is to distinguish the goods or services of one provider from those of another. Trademark law he said ‘has nothing to do with protecting any creative skill and labour in coming up with a trade mark’,45 rather, it is meant to prevent potential confusion among members of the public. 7.50 The Griggs case concerned a situation very similar to our hypothetical, whereby the copyright

and trademark rights in a brand owner’s logo had fallen into separate ownership as a consequence of a third party having been commissioned by a trademark owner to design a new logo. The situation came to a head because the logo’s creator subsequently assigned the copyright to a competitor of the commissioning party/brand owner!46 The brand owner sought a declaration from the court that as the commissioner it owned the copyright in its logo, and not the defendant, who had taken an assignment of the rights from the designer. 7.51 The court held that when a freelance designer is commissioned to create a logo for a client

and the contract is silent about ownership of copyright, it is normally necessary, in order to give business efficacy to the transaction, to imply a term requiring the beneficial assignment of the copyright to the commissioner so that he may prevent others from using the logo. The court did not therefore allow one IP right to trump another, but adopted what might be considered a common sense approach given the circumstances in which the copyrighted work was created. 7.52 Comparing this situation to our hypothetical, we can see that whilst Aroma Inc. might own

the rights to the new brand name, ‘Uncommon Scents’, as a result of its use and/or registration of the name, the fact that the pig logo, label, and packaging were created by a third party (Corey Creatit) means that unless there were written agreements in place with the relevant parties transferring copyright ownership to Aroma, ownership of copyright will remain with Creatit. Such a situation, however undesirable, is sadly not uncommon. Aroma Inc. would be well advised to seek an early assignment of the copyright in its logo from Creatit, failing which Aroma will have to rely either on its trademark rights acquired through registration or its common law rights if it is to prevent third parties from using the same or a similar logo— which may prove more difficult than a straightforward copyright infringement case. 7.53 Other circumstances where copyright ownership can be pitched against ownership of a

trademark include opposition proceedings where one party may seek to prevent registration of a mark by another based on the opponent’s ownership of copyright.47 This is specifically

44

R Griggs Group Ltd and Othrs v Ross Evans and Othrs [2004] ECDR 15 (hereafter ‘Griggs’). Ibid., at para 20. 46 As noted above, in the absence of any written agreement to the contrary, the first owner of copyright in a work is the author of the work whereas the owner of a trademark in relation to specific goods/services is the first person to use the mark in commerce in relation to those goods or services or to obtain registration of it. 47 In accordance with Article 4(4)(c) of the Trade Mark Directive. 45

148

C. ‘Reality’—How the Interface Plays Out in the UK and US permitted by statute in the UK,48 and was the issue in the case involving the ‘Oscar’ trademark49 (albeit determined under the previous UK statute) in which a party tried to register a picture of the famous movie award statuette. Here the copyright holder successfully objected to the trademark registration. (d) The interface as regards three-dimensional products Not since the introduction of the CDPA in 1989 have the owners of three-dimensional 7.54 products in the UK been able to rely successfully on copyright in products (other than artistic works or works of artistic craftsmanship) or their underlying design drawings to prevent their unauthorized reproduction of the three-dimensional article.50 Exceptionally, as in the Star Wars case, attempts are made to rely on copyright in prototypes as works of artistic craftsmanship or works of sculpture but these have generally proved unsuccessful leaving product owners reliant on other IP regimes including trademark registration and passing off. Following the implementation of the Trade Marks Act 1994, in the UK, it became fashion- 7.55 able for proprietors of certain FMCGs51 to seek protection of the appearance of their products and/or their packaging by registering as trademarks two-dimensional representations (usually in the form of photographs) of products or their packaging. The value of such registrations remains largely untested, but two cases involving three-dimensional registrations have been considered by the ECJ. Although the cases do not involve directly, consideration by the court of the potential overlap of copyright and trademark rights per se, we mention them here because the approach of the court is instructive as to how it might approach such an overlap. The first case referred to the ECJ concerned a registration depicting a drawing of a three- 7.56 headed rotary shaver52 which Philips was seeking to enforce against Remington. In the context of the English proceedings questions arose as to the validity of the registration and in particular whether the mark was capable of distinguishing the goods, or devoid of its distinctive character, whether the mark consisted exclusively of a shape which was designed to produce a technical result and which gave substantial value to the goods in contravention of the rules concerning registrable marks. Philips argued that its mark had acquired distinctiveness through use, but the referring court 7.57 questioned whether such use could be relied on since it had taken place at a time when the proprietor had market exclusivity due to the existence of another IP right (in this case a patent right). With regard to the use, the court found the fact that this took place during the period of patent protection did not of itself preclude it from being relied on in support of the trademark application. However, what was important was the nature of the use and in particular whether the use served to identify the manufacturing origin of the product. If the proprietor could show as a matter of fact that a substantial proportion of the relevant class of persons associated the trademark with those goods and no other, or that goods of that shape 48

Trade Marks Act 1994, s 5(4)(b). [1979] RPC173. 50 CDPA ss 51 and 52 provide defences to claims of infringement where three-dimensional articles have been produced from two-dimensional drawings except in relation to artistic works and works of artistic craftsmanship. 51 Fast Moving Consumer Goods. 52 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C-299/990) [2003] RPC 2. 49

149

Chapter 7: When Copyright and Trademark Rights Overlap only came from that trader, then registration is possible provided that the essential functional features of the shape are not solely attributable to the technical result the object is designed to achieve. However, where the mark consists exclusively of the shape which results from the nature of the goods themselves, or they are necessary to obtain a technical effect or give substantial value to the goods, the mark cannot be registered even if it is distinctive of source as a matter of fact.53 7.58 Taken on its own this case suggests that it might be possible to ‘evergreen’ your patent or

copyright protected work by means of trademark registration, but as the next case will demonstrate the distinctiveness barrier for three-dimensional marks set by the ECJ is higher than might, at first, appear. 7.59 In the most recent case concerning the trademark registration of the well-known Lego brick,54

the ECJ held that even where the shape of goods has become distinctive in fact, if the shape of those goods is necessary to obtain a technical result the shape cannot be registered as a trademark.55 7.60 When the shape of a product merely incorporates the technical solution developed by the

manufacturer of that product and patented by it, protection of the shape as a trademark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution. In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period so that subsequently they may be freely used by all economic operators. 7.61 Thus the court has, for policy reasons, clearly ruled out, in relation to functional features at

least, any extension by means of trademark registration of the period of monopoly protection granted under a different IP regime. Whether the court would adopt the same approach in relation to other marks previously protected by copyright remains to be seen but we suggest that it may well be inclined to do so. 7.62 Applying these cases to our hypothetical situation, it is possible that a representation of the

perfume bottle may be registered as a three-dimensional trademark but if its distinctive features are solely functional, produce a technical effect or give substantial value to the goods, the mark is unlikely to be acceptable for registration, leaving the bottle without the benefit of either copyright or trademark protection. To avoid this possibility Aroma would be well advised to ensure that the bottle design is original and includes some artistic elements that do not serve a functional purpose and to ensure through its advertising efforts that consumers recognize and are encouraged to rely upon these features as indicators of product source. If not, in order to protect its bottle it will have to rely on the difficult tort of passing off, with its need to show that there has been a misrepresentation, which can often prove difficult. (e) Can the scent itself be protected? 7.63 There is no precedent in the UK for claiming either copyright or trademark protection for a

scent per se, the formulation of which the proprietor would ordinarily protect under the law of confidence assuming that it amounted to confidential information. In contrast, the French Cour d’Appel de Paris has held that a perfume is capable of constituting a work protectable 53 54 55

Benetton Group SPA v G-Star International BV (C371/06) [2008] ETMR 5. Lego Juris A/S v OHIM, Mega Brands Inc (C-48/09 P) [2010] ETMR 1121. Ibid., para 46.

150

C. ‘Reality’—How the Interface Plays Out in the UK and US by copyright provided that it can be shown that there was sufficient creative input by its author in combining a novel selection of essences in such proportions as to be original.56 The Dutch Supreme Court reached a similar conclusion noting that a scent may indeed qualify for copyright protection subject to the level of creative effort involved in its original formulation.57 Although the parties involved in the disputes in France and the Netherlands were also involved in litigation in the UK, the issue of copyright in the scent was not raised in the English proceedings perhaps because the language of the copyright statute in England differs from that of the other two European countries which both make specific reference to the availability of copyright protection for ‘all works of the mind’. In the English proceedings the claimant chose to base its challenge of the defendant‘s marketing of ‘smell alike’ fragrances on the more traditional ground of trademark infringement as a consequence of the defendant’s reference to the claimant’s brand names in its marketing literature. These three cases highlight a number of factors: (a) in some countries there is still scope to increase the boundaries of copyright protection in terms of protectable subject-matter; (b) not all European countries approach issues of copyright protection in the same way; and (c) it is important to consider the protection available in each separate jurisdiction when developing a protection strategy or deciding how best to respond to the activities of ‘free riders’. (2) The US approach to interface issues The US approach has much in common with the UK approach. For instance, words, names, 7.64 short phrases (including slogans), and titles are generally unprotectable under US copyright law. Therefore, the brand name Aroma Inc. selected for the perfume in the hypothetical, ‘Uncommon Scents’, will be protectable only under trademark law. And as under UK law, logos (also called ‘design marks’ in the US) and product packaging trade dress may be protected and registered in the US under both copyright (if sufficiently creative) and trademark law. However, there are a number of US-specific rules, including with respect to ‘works made for 7.65 hire’ and the right to terminate transfers that make things more complicated. And the US approach to the overlap of copyright and trademark rights—which is still evolving—has some US-specific nuances that can be traced to its Constitution, and that may under certain circumstances disfavour trademark rights for material that is in the public domain as a matter of copyright law. (a) Works made for hire and termination under US copyright law Under the ‘work made for hire’ provisions of US copyright law, corporations are deemed to 7.66 be the ‘authors’, and therefore the initial copyright owners, not only of works created by their employees within the scope of their employment, but also of ‘specially commissioned’ works by others (eg, ad agencies and other independent contractors) if certain further conditions are met. To qualify as a specially commissioned work made for hire, the work must fall within one of nine statutorily prescribed categories (most notably collective works, audiovisual works, translations, compilations, and instructional texts), and the parties must so agree in writing.

56

L’Oréal SA v Bellure NV (Case 04/18300) [2006] ECDR 16. See the unreported case of Lancome Parfums v Kecofa BV (16 June 2006) cited by C Gielen, ‘Netherlands: copyright—blend of ingredients in a perfume constituting a copyright work’, (2006) 28(9) EIPR N174. 57

151

Chapter 7: When Copyright and Trademark Rights Overlap 7.67 Copyrights in works that do not qualify as works made for hire can still be transferred by

written assignment. Thus, even though the labels and marketing materials Creatit develops for the fragrance do not fit within the nine ‘work made for hire’ categories, Blaggit can secure an assignment of rights from Creatit and in turn assign those rights to the brand owner, Aroma Inc. 7.68 However, there is a key difference between works made for hire and assigned works. The US

Copyright Act of 1976 generally allows authors to terminate grants of rights (including licences and assignments) 35 years after a conveyance is made.58 The purpose is to protect authors who may have granted rights in their works before their value could be known, and at a time when their bargaining power was limited. Significantly, however, a commissioning party’s rights in a work made for hire cannot be terminated, because that party is itself deemed the author. The practical effect is that the copyright owner of a ‘work made for hire’—the ‘author’ of the work under the US Copyright Act—is not vulnerable to termination of its rights in the work, whereas a copyright owner by transfer could lose its rights 35 years later. 7.69 Therefore, even if a brand owner secures copyright assignments from all non-employees who

participate in the development of brand materials (Blaggit and Creatit in the hypothetical), there is still a risk that, in the future, the brand owner will lose copyright ownership (at least if a commissioned party was an individual—like Corey Creatit), and the copyright and trademark rights in logos, labels, packaging and the like, may again be held by separate parties. This counsels in favour of creating materials intended to endure for decades, such as logos, in-house to avoid potential conflicts down the road. (b) Protection for three-dimensional objects 7.70 Under US copyright law, the three-dimensional appearance of a product itself may be

protectable and registrable under both copyright and trademark law, if certain conditions are met. Under copyright law, ‘utilitarian’ objects—which most products are—are only protectable to the extent they have ‘conceptually separable’ non-utilitarian elements, like the pig-shaped perfume bottle discussed earlier. 7.71 Under trademark law, the trade dress protection originally developed for packaging also

extends to the appearance of the product itself if it is distinctive and non-functional. In the Wal-Mart Stores, Inc v Samara Bros case decided in 2000, the US Supreme Court held that such protection requires a showing of ‘acquired distinctiveness’—that through use and advertising over time the product appearance has come to identify the product’s source the way a trademark does, regardless of how inherently distinctive the product appears.59 Such a restrictive view resulted from a concern about impeding competition. As the Supreme Court explained: [E]ven the most unusual of product designs, such as a cocktail shaker shaped like a penguin—is intended not to identify the source, but to render the product itself more useful or more appealing.

58 17 USC § 203(c) ‘Termination of transfers and licenses granted by the author’; see also 17 USC § 304(c) (providing a termination right for works copyrighted before the current Copyright Act took effect in 1978). 59 529 US 205 (2000).

152

C. ‘Reality’—How the Interface Plays Out in the UK and US The fact that product design almost invariably serves purposes other than source identification 7.72 not only renders inherent distinctiveness problematic; it also renders application of an inherent-distinctiveness principle more harmful to other consumer interests. Consumers should not be deprived of the benefits of competition with regard to the utilitarian and aesthetic purposes that product design ordinarily serves by a rule of law that facilitates plausible threats of suit against new entrants based upon alleged inherent distinctiveness.60 Nonetheless, the court held that if the conditions (a showing of ‘acquired distinctiveness’) are 7.73 met, trademark law can protect a product’s appearance. This raises the spectre of overlapping— or competing—copyright and trademark rights in the same three-dimensional object. (c) Which right trumps? US law has not always been clear on what should happen when two different parties own the 7.74 copyright and trademark rights in the same work, and the issue continues to be the subject of litigation. But where the copyright in a work has expired or is otherwise in the public domain, so that the copyright interest may be said to be held by the public at large, more recent US court decisions have shown a disinclination to protect the work under the trademark laws. This requires brand owners to take special care when they consider reliance on copyright rights in formulating their brand protection strategies. Gilliam and the focus on trademark interests The clash between copyright and trademark 7.75 interests is a recurring theme in US intellectual property case law. Dating at least as far back as Gilliam v American Broadcasting Co61 in the 1970s, a series of US court decisions held that a copyright owner’s rights were not absolute, and had to accommodate the potentially competing trademark-based, reputation-focused interests to prevent public deception as to the source of the works.62 In Gilliam, the stars of the British comedy television series Monty Python’s Flying Circus developed scripts for their half-hour programmes, which featured intertwined comedy sketches as well as whimsical interstitial animated pieces by troupe member (and later film director) Terry Gilliam. The Python troupe successfully argued that the ABC television network, which purchased 7.76 the right to broadcast a number of episodes in the US from their copyright owner,63 was not permitted to freely edit the programmes to make room for advertisements, which the court labelled ‘an actionable mutilation of Monty Python’s work’.64 The federal appeals court in New York acknowledged that US copyright law provides no right of attribution, but held

60

Ibid., at 213. 538 F2d 14 (2d Cir 1976). 62 For example, RCA was enjoined from distributing old Charlie Rich recordings to which it owned copyright rights in packaging bearing a current photo of the singer, because it was ‘likely to deceive’ consumers into believing the recordings were current. Rich v RCA Corp, 390 F Supp. 530, 531 (SDNY 1975). In Benson v Paul Winley Record Sales Corp, the owners of old recordings of jazz legend George Benson were preliminarily enjoined from releasing an album entitled ‘George Benson, Erotic Moods’ containing old recordings on which Benson played, overdubbed with ‘the sexually suggestive moaning of a woman’, 452 F Supp 516, 517 (SDNY 1978). The Court held that the altered recording was ‘anathema to Benson, and a threat to his professional standing and personal stature’ ibid., at 518. 63 In separately deciding a copyright claim in the Pythons’ favour, the Court noted that the Pythons retained copyright in the underlying scripts, so the Court saw the copyright and trademark rights in the case as congruent. 64 Ibid., at 23–24. 61

153

Chapter 7: When Copyright and Trademark Rights Overlap that Section 43(a) of the US Trademark (Lanham) Act, which prohibits use of a false designation of origin, must be permitted to provide protection for the authors in this situation,65 [T]he economic incentive for artistic and intellectual creation that serves as the foundation for American copyright law . . . cannot be reconciled with the inability of artists to obtain relief for mutilation or misrepresentation of their work to the public on which the artists are financially dependent.66 7.77 The Court held that the edited version of the broadcast ‘represented to the public as the

product of [Monty Python’s] work what was actually a mere caricature of their talents’, and that it fell within a line of cases finding a Lanham Act violation due to ‘a representation of a product [which], although technically true, creates a false impression of the product’s origin.’ The Court ruled that a preliminary injunction preventing re-broadcast pending a full trial on the merits must issue, and ultimately ABC was required to include prominent disclaimers concerning the troupe’s disapproval when it aired edited episodes.67 7.78 More recently, in a situation similar to the Griggs case in the UK, a US court enjoined the

copyright owner of Marilyn Monroe photographs and its licensee from using them on wine labels, because the plaintiff (itself a former licensee of the copyright owner) owned trade dress rights in wine labels bearing the late actress’ image.68 The court in this case, Nova Wines v Adler Fels Winery, recognized that the case presented ‘a conflict between two asserted intellectual property rights’ and ruled in favour of the trade dress owner, The issue is whether plaintiff’s trade dress rights can prevent TKS from exploiting its copyright by licensing images for use on wine labels . . . [Plaintiff] has developed a unique trade dress, over a substantial period of time, comprising the use of Marilyn Monroe’s name and image on wine labels. The trade dress interest therefore covers all images of Marilyn Monroe used on wine labels. These rights are broader than TKS’s copyright interests in the specific images comprising its Red Velvet Collection. Plaintiff’s trade dress rights therefore entitle it to prevent TKS from exercising the narrow portion of its copyright interests consisting of licensing images of Marilyn Monroe for use on wine bottles.69 7.79 So, what is the practical lesson in the US? If a brand owner like our hypothetical Aroma Inc.

fails to secure a written assignment of copyright in the logo and other materials it commissioned for the ‘Uncommon Scents’ launch, it may nonetheless be able to rely on trade dress rights it has lawfully developed to prevent the commissioned party (Creatit) from licensing these copyrighted works to someone in the same field (fragrances) for the same products (perfumes). 7.80 Note, however, that this may provide little comfort in practice. Because trademark rights are

generally limited to the goods on which they are used, even a brand owner-friendly court like the one that decided the Nova Wines case is unlikely to enjoin Creatit from exploiting the sniffing pig in other ways, including by licensing other parties to use it on other types of products. 65 In a concurring opinion that in some ways anticipated the Supreme Court’s Dastar decision issued nearly 30 years later, Judge Gurfein took issue with the majority’s reliance on the Lanham Act and the scope of the injunction, opining that the Lanham Act should not be invoked as ‘a substitute for droit moral [moral rights] which authors in Europe enjoy.’ Gilliam, 538 F2d at 27 (Gurfein, J, concurring). 66 Ibid., at 24 (citations omitted). 67 It is not clear that this case would come out the same way after the US Supreme Court’s decision in Dastar discussed later. 68 Nova Wines v Adler Fels Winery, 467 F Supp 2d 965 (ND Cal 2006). 69 Ibid., at 983.

154

C. ‘Reality’—How the Interface Plays Out in the UK and US If Aroma does not want its central icon, the sniffing pig, to show up on commercials for bacon and fast food restaurants, it must secure a work made for hire agreement70 and/or written assignment of copyright from Blaggit (the marketing agency) and Creatit (the designer). Dastar and the focus on copyright interests and the ‘public domain’ The limited duration 7.81 of copyrights under US law stems from the US Constitution adopted in 1789. The ‘Copyright and Patent Clause’ of the Constitution authorizes Congress to legislatively grant authors exclusive rights to their works ‘for limited [t]imes’.71 Citing this clause, the US Supreme Court has in recent years exhibited a suspicion of efforts to invoke rights under trademark laws to prevent uses of works no longer protected by copyright. In 2001, the US Supreme Court in TrafFix Devices v Marketing Displays72 rejected a trade 7.82 dress claim by the owner of an expired patent for flexible road signs, cautioning against ‘misuse or overextension’ of trademark-type protections into an area subject to a different intellectual property right. Two years later, in Dastar v Twentieth Century Fox Film,73 the Supreme Court noted that the rights of a copyright holder like those of a patent holder are ‘part of a “carefully crafted bargain’’’ under the Constitution,74 and cited TrafFix in holding that once a copyright in a work has expired, ‘the public may use the . . . work at will and without attribution’.75 In Dastar, defendant Dastar Corporation marketed a newly created home video using foot- 7.83 age from a 1949 Twentieth Century Fox (‘Fox’) television series entitled ‘Crusade in Europe’, which was based on an account by General Eisenhower of the Allied campaign in Europe in World War II. Copyright protection for plaintiff Fox’s ‘Crusade in Europe’ TV series had lapsed for failure to file a renewal as required under the former US copyright statute. However, Fox asserted that the defendant’s failure to credit Fox as the source of the defendant’s new video constituted use of a ‘false designation of origin’ in violation of Section 43(a) of the US Trademark (Lanham) Act.76 The Court’s rejection of Fox’s false designation claim may make sense under basic trademark 7.84 law principles, to the extent that consumers were unlikely to recognize the ‘Crusade in Europe’ footage as coming from that series and be deceived as to its source. However, in its decision, the Supreme Court went further, holding that the US trademark laws ‘were not designed to protect originality or creativity’77 and that to hold otherwise ‘would be akin to finding that § 43(a) [of the Lanham Act] created a species of perpetual patent and copyright, which Congress may not do’.78

70 The video is an audiovisual work, and therefore can be a specially commissioned work made for hire (so that Aroma or Blaggit is deemed the author) immune from US termination rights. See 17 USC § 101 (definition of ‘work made for hire’). 71 US Constitution, Art. I, § 8. 72 532 US 23 (2001). 73 539 US 23 (2003). 74 Ibid., at 33, quoting Bonito Boats, Inc v Thunder Craft Boats, Inc, 489 US 141, 150–51 (1989). 75 Ibid., at 34. 76 15 USC § 1125(a) (the Lanham Act, s 43(a)). 77 539 US at 37 (emphasis in original). 78 Ibid., at 37 citing Eldred v Ashcroft, 537 US 186, 208 (2003). Justice Scalia’s decision in Dastar has been soundly criticized both for reaching issues it did not need to reach, and for reading into the US Copyright Act a (non-existent) mandate that works in the public domain may be used ‘without attribution’. See, eg, R. Zissu, ‘Copyright Luncheon Circle: The Interplay of Copyright and Trademark Law in the Protection of Character

155

Chapter 7: When Copyright and Trademark Rights Overlap 7.85 So, what is the practical effect for our hypothetical Aroma Inc.? One possible reading is that

the court in Dastar—while professing its fear of creating a ‘mutant copyright law that limits the public’s federal right to copy and to use’ public domain works79—simply rejected an attempt by the plaintiffs to vindicate an alleged ‘authorship attribution’ right under the trademark laws. Under this reading, Dastar would not prevent Aroma from enforcing trademark rights against unauthorized users of the pig logo it commissioned (including use on T-shirts, videos, and other merchandise) even if another party (Creatit) owns the copyrights.80 However, as discussed immediately below, at least one federal appeals court construed Dastar more broadly (albeit in an opinion that was subsequently withdrawn), to limit the rights of a party in Aroma’s position. 7.86 Betty Boop Decision

In Fleischer Studios v A.V.E.L.A.,81 the plaintiff claimed to have acquired copyright and trademark rights in the Betty Boop character, the illustrated star of cartoon films created in the 1930s. Plaintiff licensed her appearance on toys, dolls, and other merchandise, and sued the defendants for selling their own Betty Boop merchandise (including dolls and T-shirts) using depictions restored from vintage posters.

7.87 In an initial decision issued in February 2011, the federal Court of Appeals in California

rejected the plaintiff’s copyright claim because of a break in the chain of title. Then, expanding the Dastar holding by applying it to a copyrighted work that was never found to be in the public domain, the Court rejected the trademark claim on the ground that, If we ruled that [defendants’] depictions of Betty Boop infringed [plaintiff’s] trademarks, the Betty Boop character would essentially never enter the public domain. Such a result would run directly contrary to Dastar.82 7.88 In response to this expansive application of Dastar, to cover even works that are still under

copyright, the plaintiff made a motion for rehearing, and a number of non-parties submitted amicus (‘friend-of-the-court’) briefs arguing that the decision was in conflict with established

Rights With Observations on Dastar v Twentieth Century Film Corp’, (2004) 51(2) Journal of the Copyright Society of the USA. The author of that article is a law partner of Mr Mende. 79 539 US at 34 (citations and internal quotation marks omitted). 80 Admittedly, the prospect of copyright expiration would not be an immediate concern for Aroma in view of the length of the current copyright term. However, the same analysis may apply upon termination of its rights by Corey Creatit, a prospect with a significantly shorter time horizon (35 years)—although it is unclear if the Dastar holding would have equal force where the copyrights are not in the public domain. 81 636 F3d 1115 (9th Cir 2011), withdrawn by Fleischer Studios v A.V.E.L.A., Case No 09-56317 (9th Cir, 19 August 2011). 82 Ibid., at 1124 (citing Dastar, 539 US at 37). The court also relied on the controversial doctrine of aesthetic functionality urged by neither party, holding that the defendants’ merchandise did not use the Betty Boop name and image as a trademark (source identifier), but as ‘functional product . . . to be “visible to others when worn.”’ Ibid., at 1123 (quoting Int’l Order of Job’s Daughters v Lindeburg & Co, 633 F2d 912 (9th Cir 1980)). The theory of aesthetic functionality is that, just as utilitarian functional aspects of products cannot be protected by trademark law for fear of undermining competition, no party should be permitted to use trademark law to monopolize aspects of products that are aesthetically appealing. While it is well accepted that trademark rights are not accorded to ‘merely ornamental’ aspects of apparel that serve no source-identifying purpose, the expansive aesthetic functionality doctrine adopted in the February 2011 Fleischer decision (going well beyond preserving aesthetic elements that other companies may need to compete) has been disfavoured or substantially narrowed by a number of courts prior to that decision. See, eg, Au-Tomotive Gold, Inc v Volkswagen of Am, Inc, 457 F3d 1062 (9th Cir 2006); Villeroy & Boch Keramische Werke K.G. v THC Sys, Inc, 999 F2d 619 (2d Cir 1993); American Greetings Corp v Dan-Dee Import, Inc, 807 F2d 1136 (3d Cir 1986). The superseding decision issued by the Fleischer Court in August 2011 makes no mention of aesthetic functionality.

156

D. Conclusion precedent recognizing trademark rights in entertainment properties.83 In an unusual move, in August 2011, the Court withdrew its February decision without explanation and issued a superseding decision that makes no mention of Dastar—and dismisses the trademark claim concerning Betty Boop depictions on entirely different grounds, namely a finding that the plaintiff failed to show that the depictions had acquired ‘secondary meaning’ (ie, acquired distinctiveness) necessary to function as trademarks.84 Under the initial Fleischer holding, Aroma Inc.’s failure to secure copyright rights from 7.89 Blaggit and Creatit in the pig logo and video for the new fragrance could severely impede Aroma’s ability to control its own logo and reputation. Specifically, even if Aroma could prevent Blaggit and Creatit from licensing the pig logo and video to another fragrance house under the rationale adopted in Nova Wines, the holding in the initial Fleischer decision would prevent Aroma from invoking its trademark rights to stop third parties from exploiting the pig character—a creative work—on low-grade T-shirts, dolls, and other merchandise that Aroma does not control.85 Although the initial Fleischer decision was ultimately withdrawn, another US court could try 7.90 to stretch the Supreme Court’s Dastar holding the same way to limit a trademark owner’s rights in a depiction for which it does not own the copyright. This places a premium on properly recording in a written agreement the terms on which independent contractors are retained to provide creative and branding services, to make sure that all rights are held by the commissioning party.

D. Conclusion The determination of appropriate boundaries between copyright and trademark protection 7.91 has become much more complex as a result of the expansion of subject-matter covered by both forms of legal right, the extension of the term of copyright protection, and the increased prevalence of brand or character merchandising. In the UK the courts have endeavoured to chart a course that minimizes the potential effects of any double layer of protection by focusing on the original function of the law. US courts have done the same, but arguably with increasing scrutiny of trademark claims that could impinge on the freedom to use works no longer protected by copyright. Trademark law, with its emphasis on the indication of origin of goods used in trade, is 7.92 anchored by the need to demonstrate a likelihood of confusion and/or damage to one of the 83 One of the amicus briefs was submitted by colleagues of Mr Mende on behalf of entertainment property owners. 84 Fleischer Studios v A.V.E.L.A, Case No 09-56317 (9th Cir, 19 August 2011). The superseding decision has its own peculiarities. The Court refused to consider the plaintiff’s federal registration for Betty Boop’s image, and the presumption of rights that would arise from it, on the ground that evidence of the registration was not timely submitted to the Court. The Court then held that, nonetheless, the plaintiff might be able to show infringement of its BETTY BOOP word mark (which was the subject of a timely-submitted US trademark registration), because the defendants had not shown any consumer uncertainty ‘regarding who owns the Betty Boop image’ (emphasis added). The Court’s reasoning would seem to support the Betty Boop image claim, not the word mark claim. 85 The reputational harm would be especially severe if the merchandising uses of the Aroma pig were in bad taste. Consider, by analogy, the harm Disney might suffer from gory or sexual portrayals of Mickey Mouse on unauthorized merchandise.

157

Chapter 7: When Copyright and Trademark Rights Overlap essential functions of the trademark by the alleged infringer before redress will be granted.86 The continuing expansion of subject-matter potentially falling within the ambit of a trademark is tempered to some extent by the need to demonstrate that the mark relied on has been used by its owner in a manner to indicate source. Only if consumers can be shown to rely on a mark as a source identifier and not simply as a form of decoration (in US terms, ‘secondary meaning’ can be established) will the mark be protected. 7.93 In their approach to situations involving alternative claims for copyright and trademark

infringement the UK courts have shown that the potential overlap between the two IP regimes is limited and where it does exist, it is on the whole, taken to be complementary, offering an alternative slightly different means of protection rather than a conflicting or antagonistic right. The approach to interface issues in the US is surprisingly similar (with the exception of the protection offered to three-dimensional articles under copyright law, which has virtually been removed from English law except in relation to works of artistic craftsmanship), although again with a possible preference for copyright public domain concerns in certain circumstances. 7.94 The clear statements by the ECJ in the Lego case referred to above and those of the US courts

in Dastar and the Betty Boop cases that trademark rights may not be relied upon to create a ‘species of mutant copyright’ that would diminish the public domain highlight the emphasis placed under both European and US law on policy considerations. In the US, the role of copyright as an incentive to authors to create new works for the benefit of the public takes precedence over the role that trademarks play once copyright has expired.

E. Summary 7.95 In summary, through our analysis we have seen that:

• The two rights aim to protect different subject-matter and restrict different activities; they therefore offer in the main alternative forms of protection. • The two forms of protection are often complementary; it is therefore an advantage for a business to own both.

86

L’Oréal v Bellure case at para 58.

158

8 THE DESIGN/COPYRIGHT OVERLAP: IS THERE A RESOLUTION? Sam Ricketson, University of Melbourne and Uma Suthersanen, Queen Mary, University of London

A. B. C. D.

Hypothetical The Meaning of ‘Design’ Berne Convention The Paris Convention for the Protection of Industrial Property E. TRIPS Agreement F. Jurisprudential Analysis of the National and Regional Copyright/ Design Interface (1) Full cumulative protection (2) Partial cumulative protection

8.02 8.09

(3) The EU harmonized position (4) United Kingdom—an ambivalent approach to cumulative protection (5) Non-cumulative protection—the US approach

8.35

G. Efficacy of Sui Generis Design Law

8.01

8.41

(1) Statistical Analysis (2) What should be done?

H. Summary

8.54 8.58 8.67 8.82 8.82 8.86 8.95

8.44 8.46 8.50

A. Hypothetical Rufus is a designer of costumes. He conceives the design of a Halloween helmet/hat, which 8.01 can be worn as a menacing helmet with any Halloween costume. Part of the helmet can be removed so as to be worn as a fashionable hat during the non-Halloween season. He submitted the design prototype to several competitions and it won the British Design of the Year Award. Since then he has had several commissions to manufacture the helmet/hat, as film props and as fashion accessories. A prototype of the helmet/hat is eventually exhibited in the Victoria and Albert Museum, London, and in the Guggenheim Museum, New York as part of the two museums’ collaborative exhibition on ‘Art is Function’. It is highly likely that Rufus’s design can be registered as a design right and will receive a term of 25 years’ protection. It is much less likely that the design will be also protected as an artistic copyright work, as this depends entirely upon the jurisdiction’s approach to cumulative protection.

B. The Meaning of ‘Design’ Designs laws, and discussions about designs laws, have become fashionable in recent years. 8.02 So the question of ‘what is the future of design law’ is both a challenging and interesting one. 159

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? As a first step, however, some discussion of terminology is necessary. ‘Design’ is not an easy term to define: there is both a broad (lay) meaning and a more technical (legal) meaning. The broad meaning takes in many activities, ranging from ‘industrial design, urban planning, graphic design and stage design through to costume design, fashion design, product design and packaging design’.1 This is reflected by the various categories of the Locarno International Classification for Industrial Designs, even though the majority of these relate to product designs.2 8.03 An expert Australian committee that reported in the early 1990s had this to say about the

function of design in the Australian economy, 3.4 The design spectrum embraces a wide range of activity which has grown with the developments in mechanically-based production technology. Because this transition from the artistcraftsman of the late 19th century to the industrial designer of today was a slow process, there exists much misunderstanding as to what ‘design’ is and where it fits within the intellectual property system. The difficulty in reaching any understanding of these issues today is that the legal concepts applied in the protection of designs, and the work of the artist-craftsman (‘works of artistic craftsmanship’) have their origins in the middle to late 19th century when the design was seen essentially as the ‘artistic’ component of a useful product. ... 3.6 The interest of the industrial designer is primarily in the relationship between the product and the user, and his or her work embodies such considerations as ergonomics, safety and convenience, as well as visual and expressive values. The skills embodied within the practice of industrial design frequently overlap those of related disciplines, not only architecture and graphic design, but also engineering design. On some projects it is almost impossible to distinguish between the work of the industrial designers and that of the engineering designers. This blurring of the lines of demarcation and overlapping of design skills is a significant factor in the development of design practice. In another sense, the design spectrum spans a range of design factors from aesthetics to ergonomics, to mechanics and electronics.3 8.04 At this broad level, ‘design’ covers both the way things work and are made and the way they

look and feel. Legally, however, the term is more limited, at least so far as the application of a specific title of protection is concerned. Thus, ‘workings’ and mechanical matters have usually been left to the province of the patent system (if they are to be protected at all), with sui generis design laws being confined to just matters of appearance. Historically, this division was well reflected in the definition of ‘design’ that was originally adopted in the Registered Designs Act 1949 (UK): . . .‘design’ means features of shape, configuration, pattern or ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.

1

L. Bently and B. Sherman, Intellectual Property Law, (Oxford: Oxford University Press, 2001) 563. Locarno Agreement of 8 October 1968 establishing the International Classification for Industrial Designs, World Intellectual Property Organization Publication No 501 (E), WIPO: Geneva, 1981. 3 Quoted in the Report of the Inquiry into Intellectual Property Protection for Industrial Designs, Report to the Senator the Hon John Button, Minister for Industry, Technology and Commerce, September 1991, para 3.2, page 23 (the ‘Lahore Committee’). 2

160

B. The Meaning of ‘Design’ But matters of ‘appearance’ give rise to further questions as to the appropriate form of protection 8.05 to be applied. Copyright law has long given protection to appearance in the case of artistic works that can exist in both two and three dimensions; there is also the possibility of appearance (get-up and shape) fulfilling the function of indicating source or origin, matters more generally governed by the laws of trademarks and passing off or unfair competition. Sui generis designs laws, therefore, sit somewhat uneasily between these larger and more traditional heads of protection. Aesthetics, consumer appeal, functionality, and indications of source are all potential components of any separate design system, and national laws have often had difficulty in deciding which elements belong, and, if so, to what degree they should be recognized, in those laws. It is therefore unsurprising to find that this is an area of law in which many national varia- 8.06 tions are to be found, with limited uniformity across borders. Particular issues on which differences arise include: 1. The extent to which aesthetics should play a role; 2. The corresponding question as to the role, if any, of functional considerations; 3. Whether there should be differing levels of protection, depending upon the resolution of the roles of aesthetics and functionality respectively; and, most importantly; 4. The way in which overlaps with other forms of protection are to be handled. The last of these is, perhaps, the most difficult question of all: should cumulative protection 8.07 be allowed, or should clear areas of operation be defined and applied (with the possibility of loss of protection where limits are exceeded)? National (and regional) laws excel in their disparate approaches: from the UK with five separate regimes (copyright, national registered/unregistered rights, and Community registered/unregistered rights) protecting designs4 to Australia and the United States which attempt to place a partial boundary between two regimes (copyright and sui generis design rights), with other countries such as France allowing cumulative protection where it arises under both copyright and sui generis designs law. Complexity, therefore, is a feature of this part of intellectual property law. A starting point, 8.08 therefore, is to investigate the guidance on these matters that is to be gained from the relevant international conventions. In chronological order, the following instruments fall to be considered: 1. The Berne Convention for the Protection of Literary and Artistic Works 1886 (but really only from 1908). 2. The Paris Convention for the Protection of Industrial Property 1883 (but really only from 1958). 3. The Agreement on Trade-Related Intellectual Property Rights 1994.

4 M. Howe, Russell-Clarke and Howe on Industrial Designs, 7th edn (London: Thomson Sweet & Maxwell, 2005) 1.

161

Chapter 8: The Design/Copyright Overlap: Is There a Resolution?

C. Berne Convention 8.09 The Berne Convention, as we all know, is concerned with the protection of works of

‘authorship’. These works must fall within the ‘literary, scientific and artistic domain’ as revealed by the definition of ‘literary and artistic works’ in Art 2(1): (1) The expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression, such as books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science. 8.10 Within this definition, the sub-category of ‘works of applied art’ is most relevant for our

present purposes. This entered the list at the time of the Brussels revision of the Convention that occurred in 1948, but the question of whether ‘works of art applied to industrial purposes’ should be included within the scope of the Convention had been a matter of contention at the two preceding revisions conferences in Berlin (1908) and in Rome (1928).5 8.11 This issue arose in two ways: the extent to which authors’ rights in their artistic works should

be protected where these works were used for industrial purposes, and the related issue of the extent to which objects made by ordinary industrial processes for purely utilitarian purposes should be protected as artistic works, insofar as they embodied artistic elements such as features of design and shape. Instances of the first occurred where works of ‘pure’ art, such as drawings, paintings, or sculptures, were applied to, or incorporated in, utilitarian objects, such as wallpaper, curtains, cutlery, crockery or the base of a lamp. The terms ‘decorative arts’ or ‘works of applied art’ were apt to describe such applications of artistic expression. Instances of the second kind arose where the object in question was an article of a more mundane and purely functional kind, such as a furniture door handle, a kitchen stool, an electrical fitting, or a motor or engine part, each of which might nonetheless display some artistic element in its general shape or appearance. 8.12 These are not absolutely opposed situations, although it is true that in the first instance the

‘pure’ work of art precedes the industrial application, while in the second the artistic element is found in the industrial application itself. More accurately, they represent the extreme poles of a vast continuum of articles or products in which artistic and industrial elements intermingle in differing degrees. In each instance, however, the problem is the same: should the fact that art is applied in the production of objects which also serve a utilitarian purpose deprive the maker of the status of author, and consequently of the legal protection that is otherwise accorded to authors?

5 For a detailed examination of this history, see S. Ricketson and J. Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, (Oxford: Oxford University Press, 2006) paras 8.59– 8.69 from which much of the following section is drawn.

162

C. Berne Convention Prior to the Berne Convention, various approaches to this question were to be seen at the 8.13 national level. Many accorded some kind of limited protection to designs which were applied to articles, the earliest examples being found both in the UK6 and France7 in relation to textiles and other materials. This protection was usually distinct from copyright, and was closer to an industrial property right such as a patent. Novelty and/or some element of originality were usually required, and the duration of protection was generally for a more limited term.8 At the same time, it seemed anomalous that many applications of artistic works in the indus- 8.14 trial sphere should be denied copyright protection where they quite obviously displayed artistic elements. Thus, in France, the view came increasingly to be held during the course of the nineteenth century that the makers of such objects were entitled to copyright protection under the Law of 1793, and likewise that an artist did not lose the protection which he or she enjoyed in relation to their ‘pure’ work simply by reason of the fact that it was turned to an industrial use, for instance, by using it as a design for a utilitarian object. In other words, there occurred a total assimilation of all works of art, however they were 8.15 manifested or applied, to full copyright protection.9 So far as the separate designs laws were concerned, these continued to exist, but the possibility of cumulative protection under these as well as the copyright law was accepted. While this development did not occur overnight, it became recognized as the doctrine of ‘unity of art’, which has been explained by one distinguished commentator as follows, The theory of ‘unity of art’ has its basis in the refusal to make any distinction between ‘pure art’ and ‘industrial art’. It extends protection insured by the copyright law to all creations of form, even the most modest, those which, on the ‘lower’ frontier of applied art, depend on what is called ‘industrial aesthetics’. If finds its explanation—and, we think, its justification—in the idea that an adequate distinction is impossible between ‘major art’ and ‘minor art’, all criteria to which one may have recourse to this effect being subject to the accusation of subjectivity or being powerless, in other ways, to solve the borderline cases.10

6 The Designing and Printing of Linens Act 1787 (27 Geo 3, c 38); the Designing and Printing of Linens Act 1794 (Geo 3, c 23); the Designs Copyright Act 1839 (2 & 3 Vict c 17). 7 French Law of 1806 (Bulletin des Lois, 4th ser, IV, 352, 354). For the background to this law, see G. Finniss, ‘The Theory of “Unity of Art” and the Protection of Designs and Models in French Law’, (1964) 46 JPOS 615, 516 (‘Finniss’). 8 See, for example, the Designs Copyright Act 1839 (UK), s 1, under which it was required that the design be ‘new and original’, and protection was accorded for only 12 months. 9 See Finniss, 616ff. See further J. H. Reichman, ‘Design Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948 to the Copyright Act of 1976’, [1983] Duke Law Journal 1143, 1153 ff (‘Reichman I’); Y Gaubiac, ‘La théorie de l’unité de l’art’, (1982) 111 Revue Internationale du Droit d’Auteur 2, 42 ff (‘Gaubiac’); K. M. Mott, ‘Analysis of the “unity of art” concept in European legal systems’, (1964), 11 Bull Cop Soc USA 242, 243 ff (‘Mott’). See further, S. P. Ladas, Patents, Trademarks and Related Rights: National and International Protection (1975) (‘Ladas’), 827 et seq; M. A. Perot-Morel, Les Principes de Protection des Dessins et Modèles Droit d’auteurs les Pays de Marché Commun (1968), 15 et seq; Desbois, 112 et seq. 10 Finniss, 615. The chief theorist was Eugène Pouillet: see E. Pouillet, Traité Théorique et Pratique de Propriété Littéraire et Artistique et du Droit de Représentation (2nd edn 1894) and Traité Théorique et Pratique des Dessins et Modèles (5th edn 1911).

163

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? 8.16 While this may be thought to be an extreme view in its all-embracing nature,11 it had the

virtue of being logical and avoiding the manifold difficulties that arise when an attempt is made to fix a boundary beyond which works of industrial art will not be protected.12 8.17 At the other end of the spectrum, however, was the UK, which maintained a far more rigid

separation between artistic and industrial endeavours, and which, in the Copyright Act 1911, denied copyright protection altogether in the case of an artistic work that was ‘industrially applied’ (defined to mean the multiplication of more than 50 objects to which the work was applied).13 At the same time, UK law after that date did accord an unprecedented form of artistic copyright protection to three-dimensional objects, which came within the undefined and somewhat uncertain sub-category of ‘works of artistic craftsmanship’.14 The latter was problematic in that, among all the other sub-categories of artistic work protected by the 1911 Act, it was the only one to be qualified by the express requirement that it be ‘artistic’.15 The origins of such protection, however, were to be found in the ‘Arts and Crafts’ movement of the late nineteenth century, which had been inspired by influential figures as William Morris and John Ruskin.16 8.18 From the above, it will be seen that, in the early years of the Berne Convention, there were

great differences in the approaches taken by member countries to the question of protection of artistic works in the industrial sphere. Accordingly, the question was not discussed at the early conferences of the Berne Convention, and was not raised until the time of the Berlin Revision. At this Conference, the German Administration and the International Office proposed the inclusion of ‘works . . . of art applied to industry’ (‘oeuvres . . . d’art appliqué à l’industrie’) in the enumeration of works in Article 4(1) (the predecessor to Article 2(1)),

11

Reichman I, 1159 et seq. This was the case in some other European countries, including Italy and Germany, where their respective laws sought to exclude the more ‘industrial’ kinds of work from protection: see the commentaries on these laws in [1909] Droit d’auteur 114 and 128. 13 Copyright Act 1911, s 22(1) and Design Rules 1932, r 92. For a synopsis of the pre-1911 situation, see [1909] Droit d’auteur 125 et seq; Laddie, Prescott and Vitoria, The Modern Law of Copyright and Designs (2nd edn 2000) 175 et seq; and A.D. Russell-Clarke, Copyright in Industrial Design, (London: Sweet & Maxwell, 1968) pp 92–94. For the courts’ reluctance to condone overlap of protection under the various pre-1911 copyright acts, including the Engravings Acts, the Prints Copyright Act 1771, the Sculpture Copyright Act 1814, and the Fine Arts Copyright Act 1862, see Dicks v Brooks (1880) 15 Ch D 22, and Hanfstaengl v Empire Palace, (1894) 2 Ch D 1. 14 Copyright Act 1911, s 35(1). See also King Features v Kleeman, (1941) 58 RPC 207 which effectively diluted the legislative intent to prevent overlap by holding that protected drawings could be infringed by a reproduction in another medium, thereby indirectly allowing registrable designs to gain copyright protection. 15 For statutory attempts to prevent overlap of protection, see the Copyright Act 1911, s 35(1), Copyright Act 1956, ss 9(8), 10 and Design Copyright Act 1968, s 10(1). Despite these statutory attempts to create two separate streams of protection, the courts traversed the schism to allow dual protection with the following decisions: Dorling v Honnor (1964) RPC 160, Amp v Utilux (1972) RPC 103, HL and British Leyland v Armstrong (1986) RPC 279. For the legislative history, see H.L. MacQueen, Copyright, Competition and Industrial Design, (Edinburgh: Edinburgh University Press, 1995) 45 et seq. 16 See further the famous speech of Lord Simon of Glaisdale in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64, 90–92 and see further the discussion by the High Court of Australia in Burge v Swarbrick [2007] HCA 17, (2007) 234 ALR 204, [58]–[62]. 12

164

C. Berne Convention arguing in support that these works had recently been assimilated to artistic works in some important countries, and that, . . . the artificial boundaries established between pure art and art used in everyday life can no longer be maintained, neither from a doctrinal point of view nor from that of practical necessity.17

This proposal was supplemented by a French proposition to add the words ‘whatever their 8.19 merit or purpose’ immediately after the words ‘works . . . of art applied to industry’.18 Nevertheless, while there was strong support for these proposals from a number of delegations,19 there was ‘irreducible opposition’ on the part of certain others, in particular the English and Swiss.20 No amendment was therefore made to Article 4 (now Article 2(1) in the Berlin Act), but works of art applied industrially were dealt with in a separate paragraph (Article 2(4)) which provided simply for the application of national treatment, without any requirement of reciprocity, in the following terms: Works of art applied to industry are protected to the extent permitted by the internal legislation of each country.

There were obvious imbalances in this provision, as authors of artistic works from ‘unity of 8.20 art’ Berne countries would be denied protection in ‘non-unity of art’ countries, while authors from the latter would receive, in the former, the benefit of protection which they did not enjoy in their own countries of origin. On the other hand, it met the objections of the British and Swiss delegations, and so far as the former was concerned left the UK ‘free to determine if they [works of art applied industrially] should be protected as works of art or as industrial designs and models’.21 Furthermore, as an accommodation of two directly opposed points of view, it commanded 8.21 fairly general acceptance: only two countries (France and Tunisia) felt strongly enough about this lack of reciprocity to make reservations in relation to this when ratifying the Berlin Act.22 The effect of these reservations was that both countries declared, in accordance with Article 27 of that Act, that they would continue to apply Article 4 of the Berne Act in place of Article 2(4) of the Berlin Act so far as works of art applied to industry were concerned. As Article 4 had made no mention of these works in the list of literary and artistic works, both France and Tunisia were therefore under no obligation to extend the benefit of their generous ‘unity of art’ laws to artistic works from other Union countries. The ‘unity of art’ advocates, however, returned to the fray at the Rome Conference with 8.22 proposals in the programme for the Conference prepared by the Italian Government and the International Office of the Berne Union to accord full protection under the Convention to ‘works of art industrially applied’. These involved the deletion of Article 2(4), the inclusion 17

Actes de la Conference de Berlin 1908, International Office, Berne, 1909, 42. Ibid., 188. 19 Actes de la Conference reunie a Rome du 7 mai au 2 juin 1928, International Office, Berne, 1929 (‘Actes 1928’), 231, 233 (report of Renault, rapporteur). See further the commentary in [1909] Droit d’auteur 113, 114. 20 Ibid., 233. 21 These were the comments made by the British delegates to the Conference (G. R. Askwith and J. de Salis) in their report to the Foreign Secretary, Sir Edward Grey: see Miscellaneous No 2 (1909), Correspondence respecting the Revised Convention of Berne for the Protection of Literary and Artistic Works, signed at Berlin, 13 November 1908, C -4467, HMSO, London 1900, 8. 22 [1910] Droit d’auteur 115 (France); [1911] Droit d’auteur 29 (Tunisia). 18

165

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? of these works in the enumeration in Article 2(1), and the amendment of Article 2(3) so as to read: ‘The above mentioned works enjoy protection in all countries of the Union whatever their merit or purpose.’23 While there was strong support for these proposals from a number of delegations,24 there was still opposition or hesitation from others, leading to various compromise proposals which sought to take account of these conflicting views.25 8.23 A sub-committee which was appointed to consider the matter failed to reach a firm proposal,26

and, although a reasonably equitable compromise proposal based on reciprocity (to be known as article 2ter)27 was worked out in negotiations between the French, British, and Norwegian delegations, this also failed to achieve consensus.28 As amendments to the Convention required unanimity,29 the result was that the Rome Revision made no changes to the Convention text with respect to works of applied art, and the position under the Berlin Act therefore continued. In particular, France, which was frustrated by the fiasco of these proceedings, declared that it would maintain its reservation under the Berlin Act, inviting other Union countries to enter into a restricted union with it on the basis of reciprocity in relation to industrially applied works of art.30 8.24 The failure of the Rome Revision Conference to achieve anything as regards these kinds of

works is a useful illustration of both the strengths and weaknesses of the Berne Convention, with its requirement of unanimity for the purposes of amendment.31 At the same time, it was clear that the time was not yet ripe for the adoption of even a compromise proposal, as there were still fundamental divisions between member countries as to how works of applied art should be treated.

23

Actes 1928, 65, 67. In particular, the French, Danish, Polish, Czech, German, Austrian, and Belgian delegations, Actes 1928 227 (summary of proposals and discussions). 25 In particular, the French objection to the lack of reciprocity under the Berlin provision and the British insistence that, if works of applied art were to be protected, the definition of these works should be left to national legislation: see generally Actes 1928, 227–228. 26 Actes 1928, 190. See further Ladas, 249. 27 This read as follows: Works of art applied industrially are to be protected to the extent permitted by the internal legislation of each country. Nevertheless, it is reserved to the legislation of the country where protection is claimed to determine the conditions under which protection is to be accorded to these works. But the countries of the Union are not obliged to accord to these works a longer period of protection than they enjoy in their country of origin. And these works will only be protected by the present article if they are protected without formality by the law of their country of origin. See Actes 1928, 229, and for the views of one of the participants in this exercise, see Raestad, La Convention de Berne révisée à Rome 1928 . . . (Paris: Editions internationals, 1931) 140. 28 According to the records of the Conference, these countries were Italy and Japan: ibid., 287. However, it appears that Australia was also prepared to apply its veto, but withdrew this after being convinced that the proposed art 2ter did not threaten the established system under Australian law, which was very similar to that of the UK: International Copyright Conference, Rome, May and June 1928. Report of the Australian Delegate (Sir W. Harrison Moore) (1928). It appears also that the veto by Italy and Japan caused some animosity on the part of other delegations, such as that of France: Actes 1928, 288 (Maillard). 29 This was contained in Article 24 of the Berlin Act of the Convention, but remains under Art 27(3) of the Stockholm/Paris Acts, with the exception of amendments to the administrative and financial provisions of Arts 22–26 (which can be made by three quarters of the Berne Assembly). 30 Ibid., 288–289 (Maillard). 31 See n 29. 24

166

C. Berne Convention This question was finally revisited, and with more success, at the Brussels Revision Conference 8.25 in 1948, which saw the adoption of the provisions which continue in substance today under the Stockholm/Paris Acts. In their programme proposals, the International Office and Belgian Government32 repeated those that had been originally put to the Berlin and Rome Conferences for the inclusion of ‘works of art applied to industry’ in Article 2(1), the deletion of Article 2(4), and its replacement by a general paragraph providing that the works mentioned in the article should be protected in all countries of the Union ‘whatever their merit or purpose’.33 Once again, this proposal received the predictable support of the French,34 but as in 1928 it 8.26 failed to secure unanimous support35 from countries such as Italy36 and the UK,37 which were reluctant to adopt such a provision if its effect was to remove or reduce the capacity of national law to define the notion of a work of applied art.38 These countries also argued that account should be taken of the views of those countries which were opposed to the possibility of cumulative protection for works of applied art under copyright and registered designs laws.39 In this regard, however, the French delegation insisted on the need for reciprocity in relation to the conditions, extent, nature, and duration of protection.40 Following consideration by a special sub-committee, the following amendments were 8.27 proposed and approved by the Conference:41 1. ‘Works of applied art’ were added to the enumeration in Article 2(1) after ‘photographic works and those produced by process analogous to photography’. The reference to ‘industry’ was deleted following an objection by the British delegation that this was restrictive, as it was possible to envisage the application of artistic works in domains other than industry.42 2. Article 2(4) of the Berlin and Rome Acts was replaced by the following paragraph (which now became Article 2(5)): It shall be a matter for legislation in the countries of the Union to determine the extent of the application of their laws to works of applied art and industrial designs and models, as well as the conditions under which such works, designs and models shall be protected. Works protected in the country of origin solely as designs and models shall be entitled in other countries of the Union only to such protection as shall be accorded to designs and models in such countries.43 32

Documents 1948, 141–144. Ibid., 146–147. 34 Ibid., 148. 35 Ibid., 158. 36 In 1941, the Italian Government had enacted a new copyright law under which artistic works were protected even where they were industrially applied, but this was subject to the condition that the ‘artistic value’ of the objects thus produced could be distinguished from their ‘industrial character’: Italian Law of 22 April 1941, art 2(4). See further Reichman I, 200; Ladas, see n 9, at 842; and V. de Sanctis, ‘Lettre d’Italie’ [1956] Droit d’auteur 127 et seq. 37 The Copyright Act 1911 still remained in force in the UK, and its provisions concerning industrial applications of artistic works were replicated in many Commonwealth countries, for example, in the Australian Copyright Act 1912, which simply adopted the UK Act. 38 Documents 1948, 158. 39 Ibid., see also 122 (report of sub-committee on applied works of art). 40 Ibid., 158–159. 41 Ibid., 159. 42 Ibid., 158. 43 Brussels Act, Art 2(5). 33

167

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? 8.28 Apart from renumbering (Article 2(5) is now Article 2(7)—see para 8.32), this provision

remains substantially the same in the Stockholm/Paris Acts. On the one hand, works of applied art had finally attained full ‘list status’ as literary and artistic works in Article 2(1). On the other hand, member countries were left free to determine the extent to which such works would be protected under their copyright laws or their laws on industrial designs and models. This reservation was in turn subject to a condition of reciprocity: where one member country only protected a particular work of applied art as a design or model, the author of that work would be entitled to receive, in other countries of the Union, only the level of protection that the laws of those countries accorded to designs and models. 8.29 This compromise removed the principal French objection to Article 2(4) of the preceding

Acts, thereby enabling that country to withdraw its reservation in relation to that provision. The result of this was that works of applied art of Union authors would now be entitled to full copyright protection in France, so long as their protection in their country of origin was not restricted to that available under special designs or models laws. On the other hand, if country A (the country of origin of an artistic work) accorded both copyright and designs protection to such works, country B (the country where protection was claimed) could not restrict the protection available to that work under its laws. In other words, if country B also accorded cumulative protection, it could not limit the foreign work to designs protection, but would have to grant full copyright protection. 8.30 However, there was a significant gap in the new provision, in that there was no stipulation as

to what was to happen where a work of applied art was only entitled to designs or model protection in country A, but there was no equivalent protection available in country B, eg because country B had no designs legislation,44 or because the work in question did not qualify for such protection for such reasons as lack of novelty, failure to register in time, and so on. In these situations, the implication to be drawn from Article 2(5) was that these works were not entitled to any protection in country B. 8.31 As already stated, apart from renumbering, Article 2(5) of the Brussels Act was essentially

retained in the same form by the Stockholm and Paris Revision Conferences, and the only programme proposals concerning applied works of art related to the duration of their protection, providing that this was to be a minimum of 25 years from their making (see now Article 7(4)), and a consequential amendment to Article 2(5) that made it subject to this provision.45 A more radical Danish proposition46 that would have required member states to protect works of applied art without qualification was rejected,47 and the only other change made to Article 2(5) came from an Italian proposition to fill the gap referred to above as regards works which enjoyed industrial designs protection only in their country of origin

44 This was the case in the Netherlands, which had no specific designs legislation until 1975; see generally, H. Cohen Jehoram ‘Specific Design Protection in Benelux and Dutch Law’ in Cohen Jehoram (ed) Design Protection (1976), 21; Cohen Jehoram, ‘Designs Laws in Continental Europe and their Relation to Copyright’, [1981] EIPR 235, 237; J. H. Reichman, ‘Designs Protection after the Copyright Act 1976: A Comparative View of the Emerging Interim Models’, (1984) 31 Jo Cop Soc USA 267, 289 (‘Reichman II’). 45 Records of the Intellectual Property Conference of Stockholm, June 11 to 14 July 1967, WIPO, Geneva, 1971 (‘Records 1967’), Vol I, p 88 (Doc S/1). 46 Records 1967, 696 (Doc S/99). 47 Records 1967, 897.

168

D. The Paris Convention for the Protection of Industrial Property and therefore had no protection in those Union countries which did not have industrial designs laws.48 Accordingly, the last sentence of Article 2(5) (which now became Article 2(7)) was reworded 8.32 as follows: Works protected in the country of origin solely as designs and models shall be entitled in another country of the Union only to such special protection as is granted in that country to designs and models; however, if no such protection is granted in that country, such works shall be protected as artistic works.49

This now permits an imbalance in protection to arise as between different countries of the 8.33 Berne Union. For example, an artistic work which is registered as an industrial design in country A which has non-cumulative designs protection will be entitled to full copyright protection in country B which has no special designs law. Nonetheless, the likelihood of this occurring has steadily diminished with the adoption of special designs laws by the great majority of Union countries in recent years (whether these are exclusive of, or cumulative with, artistic copyright protection).50 It will be clear from the above that attempts to bring industrial designs and models under the 8.34 umbrella of full artistic copyright protection under the Berne Convention as works of applied art really came to an end with the Brussels Revision Conference of 1948. From this time on, more emphasis has come to be placed on the provision of separate, sui generis protection for these works through laws on industrial models and designs, with a diminishing role for copyright protection.

D. The Paris Convention for the Protection of Industrial Property The Paris Convention, of course, has three years’ seniority over the Berne Convention, dating 8.35 back to 1883. However, references to ‘industrial designs’ and ‘utility models’ only came into the Convention text in 1925 at the Hague Revision Conference of that year, when they were included in the following general provision in Article 1(2): (2) The protection of industrial property has as its object patents, utility models, industrial designs, trademarks, trade names, indications of source or appellations of origin, and the repression of unfair competition.

Industrial designs, along with all the other ‘objects’ of protection under Article 1(2), are 8.36 subject to the general obligation of national treatment under Art 2(1), and enjoy rights of priority under Articles 4A(1) and 4C(1) and entitlement to a grace period for their maintenance under Article 5bis. They are also to be accorded temporary protection for the purposes of exhibition at official or officially recognized international exhibitions under Article 11, and no marking of the goods can be required as a condition of the right to protection under Article 5D. More curiously, there is a prohibition in Article 5B against forfeiture of industrial designs by 8.37 reason of either failure to work or by reason of importation of articles corresponding to those 48 49 50

Records 1967 (Doc S/161, Vol I, 702). See further Records 1967, 1152 (Report of Main Committee I). See generally Reichman II, and Ladas, see n 9, at 844 et seq.

169

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? which are protected (added in the Hague Revision of 1925 and the London Revision of 1934).51 While this provision, and those discussed in the preceding paragraph, appear to be predicated on the assumption that designs protection in each country will be through some kind of registration system that involves the filing of an application, they actually predate (by many years) any specific requirement under the Convention to protect industrial designs in the first place. This was not added until the Lisbon Revision Conference of 1958 which adopted art 5quinquies: Industrial designs shall be protected in all countries of the Union. 8.38 It appears that this was the sole survivor of a series of proposed amendments that contained

a definition of ‘design’, a requirement of novelty, and a minimum term of protection.52 It is also silent on the way in which protection is to be effected, for example, through the kind of registration system that seems to be assumed for the purposes of Articles 4 and 5bis. There was no agreement among the Lisbon delegates on any of these matters, although there was agreement to explore them in conjunction with the relevant bodies of the Berne Union and UNESCO. Concerns expressed at the Lisbon Conference about the problems of cumulative protection under both copyright and special designs laws were downplayed by the International Study Group on the Protection of Works of Applied Art and Designs (representing the Berne and Paris Unions and UNESCO), which followed the Lisbon Conference and which reported in 1959. This Group agreed that while it might be desirable to make a distinction between the appropriate realms for both forms of protection, this was not easy to do, and that cumulative protection did not really involve any practical difficulties.53 8.39 A similar view is implicit in a resolution adopted by the Congress of AIPPI in 1966,54 as well

as in the WIPO Model Law on Designs which was published in 1970.55 Accordingly, despite the requirement to protect industrial designs under Paris, it seems clear that members of both Unions (Paris and Berne) remain free to determine whether, to what extent, and under what conditions, they will protect works of applied art under separate designs laws or copyright. Indeed, the following comment on art 5quinquies by Bodenhausen indicates the flexibility that countries have in this regard, Nothing is said about the means of providing such protection, so that countries may comply with that provision not only through special legislation for the protection of designs, but also through the grant of such protection, for example, in their laws on copyright or their provisions against unfair competition. What is necessary, but at the same time sufficient, is that, whenever the competent authorities of a member State define or recognize an object as being

51 See further G. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property as revised at Stockholm in 1967, BIRPI, 1967, pp 73–74 (‘Bodenhausen’). 52 Bodenhausen, 86. 53 [1959] Droit d’auteur 108. See also UNESCO Copyright Bulletin [1959], no XII, no 1. 54 AIPPI Annuaire [1966], Part II, Tokyo Congress, 22. For further background to this, see Ladas, n 9, 868. 55 Model Law on Designs for Developing Countries, WIPO (1970), Art 1(2). For further reading on the international protection of industrial designs, see F. Hepp, ‘La protection internationale des arts appliqués’, (1957) 14 RIDA 115; J-L. Duchemin, ‘La protection internationale des oeuvres des arts appliqués’ (1956), 12 RIDA 85; G. Bolla, ‘Oeuvres des arts appliqués et dessins ou modèles industriels: vers une solution internationale nouvelle’, (1959) 24 RIDA 55; R Plaisant, ‘La protection des arts appliqués. Besoins nouveaux, ideés nouvelles’, [1957] Droit d’auteur 160, 192.

170

E. TRIPS Agreement an ‘industrial design’, for example in view of its registration as such in the country itself or internationally, protection in some form be given to it.56

For sake of completeness, it should be added that, although there is a special agreement 8.40 under Article 19 of Paris on the subject of designs (the Hague Agreement of 1925 concerning the International Deposit of Industrial Designs, revised London 1934, the Hague 1960, and Geneva 1999), this is concerned primarily with application and registration procedures and does not address questions of definition, novelty requirements, term, or scope of protection. In particular, it does not affect in any way the protection accorded to works of art and applied art by international copyright treaties and conventions, or the protection accorded to industrial designs under the TRIPS Agreement.57

E. TRIPS Agreement The only substantive international obligations with respect to industrial designs arise under 8.41 the TRIPS Agreement, where they are dealt with in their own Section (Section 4) of Part II of that instrument.58 Unlike Paris or Berne, the requirements here are quite specific. Article 25 Requirements for Protection 1. Members shall provide for the protection of independently created industrial designs that are new or original. Members may provide that designs are not new or original if they do not significantly differ from known designs or combinations of known design features. Members may provide that such protection shall not extend to designs dictated essentially by technical or functional considerations. 2. Each Member shall ensure that requirements for securing protection for textile designs, in particular in regard to any cost, examination or publication, do not unreasonably impair the opportunity to seek and obtain such protection. Members shall be free to meet this obligation through industrial design law or through copyright law.

Article 26 Protection 1. The owner of a protected industrial design shall have the right to prevent third parties not having the owner’s consent from making, selling or importing articles bearing or embodying a design which is a copy, or substantially a copy, of the protected design, when such acts are undertaken for commercial purposes. 2. Members may provide limited exceptions to the protection of industrial designs, provided that such exceptions do not unreasonably conflict with the normal exploitation of protected industrial designs and do not unreasonably prejudice the legitimate interests of the owner of the protected design, taking account of the legitimate interests of third parties. 3. The duration of protection available shall amount to at least 10 years.

56 Bodenhausen, 86. Bodenhausen goes on to note that, while Article 5quinquies does not require a state to legislate specifically on the matter of designs, the article could be considered as addressed to judicial authorities in those states where provisions such as this could be regarded as self-executing, with the result that interested parties could directly invoke the provision in those courts. 57 Geneva Act of the Hague Agreement 1999, art 2(1). 58 For commentary on the background and scope of these provisions, see D. Gervais, The TRIPS Agreement: Drafting History and Analysis, 3rd edn (London: Sweet & Maxwell, 2008) (‘Gervais’), 325–333.

171

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? 8.42 These provisions are, of course, additional to those already provided for in Berne and Paris,

which are, in any event, incorporated into the TRIPS Agreement.59 The following comments can be made: 1. As under art 5quinquies of Paris, there is no requirement that these rights should be granted pursuant to a system of registration, deposit or some other formality: in other words, both registered and unregistered rights can be accommodated under Article 25(1). 2. Given that they do not prescribe a registration system, they therefore provide no guidance as to the form that a registration system must take, if adopted by a TRIPS country, in particular, whether a system of substantive or formal examination is required. 3. The criterion of ‘independently created designs’ accords with the low threshold requirement of originality in some common law copyright laws, such as those of Australia and the UK, where ‘originality’ has been seen as requiring simply that something has not been copied from elsewhere.60 On the other hand, the requirements of novelty or originality appear to add something further, although the second sentence of Article 25(1) is only permissive in so far as providing guidelines on what these requirements may mean. There were arguments in the TRIPS negotiations as to the terms to be used here, including proponents of ‘and’ rather than ‘or’ on the basis that a design could still be original in some circumstances even where it was not new. However, the final adoption by negotiators of ‘or’ indicates that novelty and originality are not cumulative requirements.61 4. The last sentence of Article 25(1) leaves countries with the option of denying protection in the case of functional designs, although the word ‘essentially’ may not have the same precision as ‘solely’ or ‘only’. 5. The special case of textile designs suggests that copyright protection, without any formalities, may be the best way of meeting the obligation under Article 25(2). For example, in the case of Australia, this is met by a provision that seeks to preserve full artistic copyright protection in the case of two-dimensional applications of designs derived from artistic works.62The exclusive rights to be conferred (Article 26(1)) are of a copyright kind, rather than an industrial property type monopoly right. The reference to ‘substantially a copy’ also brings in familiar copyright-type principles, at least in common law systems where infringement of copyright can occur where an unauthorized act is done in relation to the ‘whole or a “substantial part”’ of a protected work.63 One commentator has suggested that the provision does not require that the allegedly infringing design has 59

TRIPS Agreement, Arts 2(1) and 9(1). For a striking example of this in Australian law, see Interlego AG v Croner Trading Pty Ltd (1992) 25 IPR 165, where the Full Federal Court held there was sufficient originality in the case of a drawing that had been traced from an earlier drawing of the same copyright owner. It may be noted that more recently the Australian High Court has indicated that the level of originality should now be set at a somewhat higher level, at least in relation to such works as compilations where alphabetical and chronological ordering is the sole or major ‘authorial contribution’: see IceTV Pty Limited v Nine Network Australia Pty Limited (2009) 239 CLR 458 and see also, in relation to telephone directories, Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2010) 85 IPR 571, (2011) 90 IPR 1 (Full federal Court on appeal). 61 Gervais, 327. 62 Copyright Act 1968, s 74–77. The precise scope and application of these provisions, however, is not altogether as a result of somewhat opaque drafting: see the definition of ‘corresponding design’ in s 74(1) and see also the interesting discussion of these provisions, which were amended to their present form in 2003, by W. Rothnie, ‘The Vexed Problem of Copyright/Design Overlap’, [2005] Intellectual Property Forum 33–39. 63 In the case of Australia, see the Copyright Act 1968, s 14(1). 60

172

F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface actually been copied,64 but it is difficult to see the basis for this proposition in view of the words ‘a copy’ or ‘substantially a copy’. 6. Exceptions to these exclusive rights are framed by reference to the three-step test derived from Article 9(2) of Berne, with the additional gloss that these must ‘take account of the legitimate interests of third parties’. It might be possible to argue, therefore, that in appropriate cases, this would permit the imposition of compulsory licences. 7. The minimum term of protection is ten years, contrasting with the 25 years from making, provided for in the case of works of applied art under Article 7(4). The starting point for the ten-year term, however, is not specified, eg, whether this is the time of first making or application of the design, publication, registration, deposit, and so on. While significant, in so far as they are the first prescriptions at the international level as to the 8.43 content of industrial design rights, the TRIPS provisions are hardly onerous. Consider the rich variety of national designs law that are presently TRIPS-compliant: the unregistered design right in the UK,65 lasting for a maximum of 15 years from first recording in a design document or first making of an article to the design66 with licences of right available in the later years67 and the threshold requirement of originality,68 and the registered design system requiring substantive examination pre-grant of newness or individual character,69 excluding designs whose appearance is ‘solely dictated by the product’s technical function’,70 and lasting for up to 25 years from the date of registration.71 In the case of Australia, the pre-2003 designs law had a system of substantive examination for novelty or originality,72 a maximum term of 16 years73 and protected functional designs;74 post-2003, the new designs law no longer has substantive examination pre-grant,75 is set at a ten year maximum,76 still protects functional designs, and has elaborate exceptions relating to component parts of ‘complex products’.77

F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface At the risk of over-generalization, it is now possible to discern the following three broad 8.44 national approaches to the design/copyright interface that are consistent with the international conventions and treaties. As the ensuing discussion clearly illustrates, the interface is complex, perhaps unnecessarily so, with countries adopting either: (a) partial cumulative 64

Gervais, 332. Copyright, Designs and Patents Act 1988 (UK), Part III. 66 Copyright, Designs and Patents Act 1988 (UK), s 216(1). 67 Copyright, Designs and Patents Act 1988 (UK), s 257. 68 Copyright, Designs and Patents Act 1988 (UK), s 215(1) and (4) (’not commonplace in the design field in question at the time of its creation’). 69 Registered Designs Act 1949 (UK), ss 1A and 1B 70 Registered Designs Act 1949 (UK), s 1C. 71 Registered Designs Act 1949 (UK), s 8. 72 Designs Act 1906 (Cth), s 23. 73 Designs Act 1906 (Cth), s 27A. 74 Designs Act 1906 (Cth), s 18. 75 Designs Act 2003 (Cth), Chapter 4, Part 3; post-grant examination must take place before any infringement proceedings are launched: see generally Chapter 5. 76 Designs Act 1906 (Cth), s 46. 77 Designs Act 1906 (Cth), s 72. 65

173

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? protection; (b) full cumulative protection; or (c) no cumulative protection. A noteworthy fact is that the European Union and other national laws recognize the possibility of cumulative protection to some degree, which is an acknowledgement of the ‘vagueness of the frontier between designs and works of art’.78 8.45 There are, of course, a multitude of variations within each approach, but for present purposes

it suffices to note that each is compatible with the parameters set by the compromise formula established under all the international conventions and treaties. While the Berne Convention had specifically grappled with the overlap question, the Paris Convention dealing with industrial property remained relatively indifferent to the question of overlap. The TRIPS Agreement sets out the de minimis criteria of protection in a flexible manner allowing member states to offer either copyright, or registered/unregistered design protection. (1) Full cumulative protection 8.46 Under this approach, if sui generis design protection is unavailable (for example, because

of lack of novelty, prior user, etc) or is not obtained, the artist can fall back on copyright protection. 8.47 As noted above, the leading example of this approach is to be found in France. The basic tenet

of French copyright law is that a work will qualify for protection upon creation if it is a ‘work of the mind’, irrespective of the nature, form of expression, merit or purpose of the work.79 In relation to works of designs and applied art, this rule is further enhanced by the unity of art doctrine, which holds that art is ‘dedicated to unity in its most diverse manifestations, that it can be defined neither by beauty nor even by the aesthetic feeling it tends to arouse.’80 8.48 There is no necessity that a work fall into any specific category before protection can be

granted, although the statute enumerates a non-exhaustive list of examples of the types of works which will normally fall to be protected under the law. This includes, inter alia, the following: works of drawings, painting, architecture, sculpture, engraving and lithography; graphical and typographical works; photographic works; works of applied art; illustrations, geographical maps, plans, sketches and three-dimensional works relating to geography, topography, architecture, and science.81 There is also an express provision for short-lived seasonal creations emanating from the dress and fashion industry.82 Designs expressed in a literary form may also benefit from copyright protection: thus, in the past, protection has been granted to technical works expressed in verbal or symbolic form such as the text of patent specifications83 or technical documentation.84 8.49 It should be noted that there is some discretion for courts, despite the generous approach to

design protection under the unity of the art doctrine, to deny protection to functional designs. 78

Ladas, see n 10, at 840. Art. L.111–1, French Intellectual Property Code 1992, last amended 2006. 80 M.A. Pérot-Morel, ‘Specific protection of designs and its relation to protection by copyright in French law’, in Design Protection, Monographs on Industrial Property and Copyright Law, C.H. Jehoram (ed) (Leyden: Sijthoff, 1976) 46–47. For the first account of the theory, see E. Pouillet, Traité théorique et pratique des dessins et modéles, (Paris: Marchal & Godde, 1911) 52. For a further account of the cases, see U. Suthersanen, Design Protection in Europe, 1st edn (London: Sweet & Maxwell, 2000) para 13-012 et seq. 81 Art. L.112–2, 7–12. 82 Art. L.112–2, 14. 83 Trib. corr. Paris, 17 January 1968, Gaz. Pal. 1968, 1, 197. 84 Trib. corr. Seine, 2 February 1912, Ann. prop. ind. 1912, 290. 79

174

F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface This is done by employing the notion of originality, with courts having denied copyright protection in the past to technical drawings on the basis that the creator merely reproduces the technical data supplied to him and refrains from applying any personal taste and judgement.85 (2) Partial cumulative protection Under this approach, cumulative protection may be accorded, but only to a certain extent and 8.50 subject to certain conditions. National copyright laws may provide that if an industrial design or model is to receive copyright protection it must display some additional quality, for example, it must manifest some ‘marked artistic character’ (as was the case under the old Benelux Law)86 or fulfil the requirements necessary for an artistic work (as under the current German Law).87 German copyright law, in parallel with French copyright law, lays down the basic tenet that all literary, scientific, and artistic works will be protected, and the statute does enumerate a non-exhaustive list of the types of works which will be protected, including the following: • works of fine art, including works of architecture and of applied art, and plans for such works;88 • photographic works, including works produced by processes similar to photography;89 • illustrations of a scientific or technical nature, such as drawings, plans, maps, sketches, tables, and three-dimensional representations.90 ‘Works of applied art’ usually refers to such works which have both an aesthetic character and 8.51 a utilitarian or functional aspect as opposed to ‘works of fine or pure art’. Thus, protection in the past has been accorded to chairs91, vases, and figurines92, irrespective of whether the product is purchased as a work of art or for more utilitarian purposes. The qualifying criterion, thus, is not categorization as is under UK law (discussed at 8.58 and following). Rather, the courts employ as in France the criterion of originality in order to curtail dual protection of a design under copyright and sui generis design laws, subject to satisfying the criterion of originality. Unlike French law, German copyright statute defines originality as being ‘personal intellec- 8.52 tual creation’.93 In relation to fine art and applied art, there is a clear distinction between the 85

Paris C.A., 4 March 1980. Uniform Benelux Designs Law 1975, arts 21(1) and (2). For a discussion on this historical point, see Suthersanen, Design Protection in Europe 1st edn, para 12-009; and Cohen Jehoram (ed), Design Protection, Reports at an International Symposium Held in Amsterdam, 20–21 May 1975, 21ff. The current position in the Benelux region reflects the EU harmonized position, where the statute is silent on the conditions of cumulative protection save in relation to assignments of and prior rights in works of applied art to the registered design owner, in which case, copyright is presumed to reside in the registered design. See Articles 3.6(c) and 3.28, Benelux Convention concerning Intellectual Property (trademarks and designs) (Convention Benelux en matière de propriété intellectuelle (marques et dessins ou modèles)), 2007. 87 German Law of 1965, art 2(1), as amended 2008. On the way in which the German courts approached the issue of copyright protection for such designs, see A. Dietz, ‘Letter from the Federal Republic of Germany’ in [1974] Copyright 87 and [1980] Copyright 90. 88 Article 2(1) 4°, German CL. 89 Article 2(1) 5°, German CL. 90 Article 2(1) 7°, German CL. 91 Le Corbusier, BGH, 10 December 1986, 1987 GRUR 90, (1988) 5 EIPR D-104; Eames Chair, OLG Frankfurt, (1982) 13 IIC 777. 92 Smurf Figurines, OLG Frankfurt, 23 February 1984; 1984 GRUR 520. 93 Article 1, German Copyright Law. 86

175

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? originality tests applied: non-utilitarian graphic or pure art can gain copyright protection as long as a minimal degree of creative effort is shown.94 However, the same is not true in respect of industrially manufactured or utilitarian works, such as applied art or industrial designs. In respect of the latter, a stricter and higher level of creativity is imposed and the work must possess a certain degree of creative content that lifts it above that which is simply average or simply the routine work of a craftsman.95 8.53 The reason has been attributed to the fact that literary works of little creativity may be left

unprotected and hence a lower threshold of originality should be applied. However, designs or works of applied arts have the benefit of protection under the registered design law.96 This position has been re-affirmed on many occasions by the Supreme Court, especially in the Silberdistel decision, which concerned the design of an earring. The court held that the massproduced silver thistle earrings served a utilitarian purpose and should be classified as works of applied, rather than pure, art. Where works of applied art are concerned, a greater degree of creative individuality is required for copyright protection as opposed to claiming design law protection.97 (3) The EU harmonized position 8.54 One has to also consider whether national laws within the EU region have been altered by

the EU harmonization programme in relation to design law. The current EU regional legal framework sets down that cumulative design and copyright protection is now expressly provided for in the EU Community Design Regulation Article 96(2) (and Article 17, Design Directive),98 which specifies that the, extent to which, and the conditions under which, such protection is conferred, including the level of originality required, shall be determined by each Member State. 8.55 This provision appears to invite a choice—member states may adopt the total cumulative

position (France) or the partial cumulative position (Germany and UK). However, the noncumulative position is not allowed, and this was recently affirmed by the Court of Justice of the European Union in relation to the Italian position on the copyright/design overlap. In Flos SpA v Semeraro Casa e Famiglia SpA in 2011,99 the Court of Justice held that Article 17 of the Design Directive (and by implication Article 96(2) of the Community Design 94

Silberdistel, BGH 22 June 1995; 1997 IIC 140. A. Dietz, (1990) 58 Copyright 64; Reimer, (1978) 98 RIDA 36. 96 Nimmer and Geller, ‘Germany’, § 2[1][b]. 97 Silberdistel decision, BGH, June 22, 1995, GRUR 1995, 581; (1997) 28 IIC 140. See also Mecki-Igel, BGH, GRUR 1958, 500 (configuration of a hedgehog granted copyright protection); Rosenthal-Vase, BGH, GRUR 1959, 289 (an asymmetric vase granted copyright protection); Stahlrohrstuhl, BGH, GRUR 1961, 635 (tubular steel chair granted protection); Le Corbusier Möbel, GRUR 1987, 903. 98 Council Regulation No 6/2002 of 12 December 2001 on Community designs, (OJ EC No L 3 of 5.1.2002, p. 1), amended by Council Regulation No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Union the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, (OJ EC No L 386 of 29.12.2006, p. 14). A similar provision can be found in Art. 17, Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28). For an account of the Community design system, see U. Suthersanen, Design Law: European Union and United States, 2010, Chapters 5–7; C.-H. Massa and A. Strowel, ‘Community Design: Cinderella Revamped’, [2003] EIPR 68; M. Schlotelburg, ‘The Community Design: First Experience with Registrations’, [2003] EIPR 383. 99 Flos SpA v Semeraro Casa e Famiglia SpA (Assoluce—Associazione nazionale delle Imprese degli Apparecchi di Illuminazione, intervening), Court of Justice of the European Union (2nd Chamber), C-168/09, [2011] ECDR 8. 95

176

F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface Regulation) governed the manner in which EU member states allowed cumulation of protection under copyright and design laws. Specifically, EU member states are precluded from excluding designs from copyright protection, even where such designs had entered the public domain before the effective date of the EU law, where such designs met the criteria for copyright protection under the current law. Take our hypothetical above in relation to Rufus’ helmet/hat design. There would be very 8.56 little difficulty for him to prove that the work is an original work of the mind under French copyright law, ie the work clearly is an expression of his personality. Moreover, the specific reference to fashion items under French copyright law makes it more conclusive that a French court would look favourably on his claim under copyright law, barring obviously functional features. Conversely, industrially produced design products would have little prospect of copyright protection under German law. Are EU member states allowed to curtail the term of copyright protection for artistic works 8.57 which have been industrially applied? This flexibility is allowed under the Berne Convention, which permits countries to limit the term of copyright protection of works of applied art to 25 years from making the work.100 An example of such limitation of copyright protection can be found under the British copyright law, as discussed below. (4) United Kingdom—an ambivalent approach to cumulative protection A review of the chequered legal history in relation to the copyright/design interface under 8.58 UK copyright and design laws shows periodic swings in protection of designs, and the law lurched from a non-cumulative position to a cumulative stance and finally to a partially cumulative approach. The British legal system may currently be classified as falling into the partial cumulative camp as copyright and design law protection can subsist simultaneously in the design, but subject to a multi-layered framework of exclusions and limitations. The current copyright statute exhaustively defines an artistic work to mean:101

8.59

(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality; (b) a work of architecture being a building or a model for a building, or (c) a work of artistic craftsmanship.

Original graphic designs, design drawings, or other graphic representations of a three-dimensional 8.60 design can claim copyright protection as a ‘graphic work’, irrespective of their artistic quality. However, any attempt to harness copyright protection for a three-dimensional design through this indirect route is severely restricted. While copyright can be enforced in relation to any copying of the graphic work, there is no recourse for the copyright owner against unauthorized derivative representations of the graphic work, unless the derivative work itself qualifies as an artistic work in itself.102 If we return to the hypothetical in Part A, copyright will clearly subsist in the initial design 8.61 drawing of Rufus’ helmet/hat. However, Rufus will have difficulty stopping competitors making an article to the design (ie the actual helmet or hat) unless he can show that the 100

Article 2(7), Berne Convention. Copyright, Designs and Patents Act 1988, s 4(1). 102 Copyright, Designs and Patents Act 1988, s 51 states: ‘It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.’ 101

177

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? helmet or hat can qualify as an artistic work. As we will see in the subsequent discussion, it is difficult for a three-dimensional work to qualify as an artistic work under UK law. 8.62 Copyright protection is available for three-dimensional designs but only under the category

of ‘works of artistic craftsmanship’, ‘engravings’, and ‘sculpture’.103 The (then) House of Lords in George Hensher v Restawile Upholstery104 effectively curtailed copyright protection for designs by defining a work of artistic craftsmanship as, something, whether of practical utility or not, which its owner values because of its artistic character [. . .].105 8.63 The Hensher court further referred to ‘the intent of the creator and its result’ as being deter-

minative of the artistic character residing in a work of craftsmanship,106 but hesitated in admitting that artistic merit or utilitarianism were relevant factors.107 The post Hensher decisions shed little clarification as to what constitutes a work of artistic craftsmanship, and we see further qualifications arising including ‘artistic character’, ‘artistic merit’,108 ‘aesthetic taste’,109 functionality, and the room for making design choices.110 8.64 Furthermore, there is now little chance of a design qualifying for protection as a ‘sculpture’,

with the recent ruling of the UK Supreme Court in Lucasfilm Inc v Ainsworth.111 The main issue in that case was whether copyright subsisted in one of the primary costumes in the Star Wars film—the Imperial Stormtrooper helmet. All three courts held that the helmet failed to qualify as a sculpture. At the heart of this decision was the question: should all functional and industrially manufactured three-dimensional artefacts be considered as copyrightable artistic works, or should such products really seek sui generis design protection? An important determinant was the utilitarian purpose of the object, which inevitably became bound up with considerations of ‘artistic’.112 8.65 The intriguing aspect of this decision is that unlike previous British courts which sought to

traverse the design/copyright demarcation, the Supreme Court in Lucasfilm was clear that it had a duty to be circumspect in extending copyright protection to designs. It emphasized that UK Parliamentary policy has developed three separate tiers of graduated protection: copyright, registered design right, and unregistered design right. This was to be contrasted with the ‘indiscriminate protection of literary copyright’. 8.66 Thus, artistic works of art (sculpture and works of artistic craftsmanship) have the fullest

protection; then come works with ‘eye appeal’ which gain registered design protection, and then a modest level of protection to purely functional objects under the UK unregistered

103 104 105 106 107 108 109

Copyright, Designs and Patents Act 1988, s 4. (1976) AC 64. Ibid., at 79–80. Ibid., at 95–96. See, for example, Lord Simon’s denial of this criterion, at 95. Merlet v Mothercare, (1986) RPC 115; Komesaroff v Mickle (1988) RPC 204. Coogi Australia Pty Ld v Hysport International Pty Ltd (1998) 41 IPR 593; Muscat v Le [2003] FCA

1540. 110

Burge v Swarbrick [2007] HCA 17. Lucasfilm Ltd v Ainsworth [2008] ECDR 17 (High Court); [2010] ECDR 6 (Court of Appeal); [2011] 6 ECDR [2010] ECDR 6 (Court of Appeal); [2011] 6 ECDR (Supreme Court). 112 Per Lord Justice Jacob, [2010] ECDR 6, at paras 66 and 70. 111

178

F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface design right system.113 Moreover, even where designs do qualify as an artistic work, if the design has been subjected to industrial process and subsequently marketed, the term of copyright protection for such an item will be limited to 25 years from such marketing.114 (5) Non-cumulative protection—the US approach This approach seeks to distinguish more precisely between artistic works ‘properly speaking’ 8.67 and industrial designs, clearly excluding or restricting copyright protection in the case of the latter. The road to a non-cumulative system in the US took a meandering route, whereby courts had to grapple, first, with the dichotomy between art and utility, and second, with the notion of functionality within an art work. The Supreme Court in Mazer v Stein115 took a lead in the mid-1950s by demolishing a historical legal dichotomy between art and utility, and re-established an older standard that granted copyright protection for works of applied art.116 The subject of the copyright suit was a statuette of a Balinese dancer which was intended for and sold as a lamp base. The Court held that the, dichotomy of protection for the aesthetic is not beauty and utility but, art for the copyright and the invention of original and ornamental design for design patents.117

The Court was entirely clear as to how this dichotomic system was to be achieved and did not 8.68 go further to suggest any specific test whereby the standard of ‘artistic work’ could be applied. The Court merely held that the intention was not a valid criterion as there was nothing in the copyright statute which stipulates that the intended use or use in industry of an article eligible for copyright, bars or invalidates its registration.118 In this case, the dancing figure qualified for copyright protection as a ‘work of art’ even when used as a lamp-base. What perhaps the Mazer decision is noteworthy for is the clear statement that ornamental designs were not to be disbarred from copyright protection by reason of mere industrial application of the design. In response to the Supreme Court’s advocacy of a partially cumulative regime, the US 8.69 Copyright Office implemented the Mazer decision by confirming that the following factors 113 No mention was made of the EU design law. Moreover, it should be noted that UK intellectual property law offers two types of unregistered design right protection. One right is available under the Copyright Designs and Patents Act 1988, ss 213 et seq; the other is available as a Community design right under the CDR. Subjectmatter, criteria, scope, and terms of protection differ considerably. For an overview of the two, see U. Suthersanen, Design Law in the EU and US, (London: Sweet & Maxwell, 2010) para 5.3.2. 114 Copyright, Designs and Patents Act 1988, s 52; Copyright (Industrial Process and Excluded Articles) (No 2) Order, 1989 (SI 1989/1070). It should be noted that copyright does not cease. The provision merely states that after 25 years from first marketing, any third party can copy the work by doing anything in relation to articles to which the work has been applied. Not all artistic works as prescribed under s 4, are encompassed by the s 52 rule. Rule 3 of SI 1989/1070 excludes many works, including works of sculpture, though, interestingly, industrial casts or models for sculptures will come within the ambit of s 52. In practice, most works of sculpture cannot be manufactured unless they are reduced to a production cast or mould for manufacturing purposes. Thus, it appears that Rule 3(1) would apply only in cases of hand-made sculptures. 115 347 US 201 (S Ct 1954). 116 S. Ladas, Patents, Trademarks, and Related Rights, (Cambridge Mass.: Harvard University Press, 1975) vol 11, 858; J. Reichman, ‘Design Protection in Domestic and Foreign Copyright Law: From The Berne Revision of 1948 to the Copyright Act of 1976’, (1983) 6 Duke Law J 1143, 1151. The previous cumulative standard was set down in Bleistein v Donaldson Lithographing Co., 188 US 239 (S Ct 1903), where the Supreme Court recommended a non-discriminatory approach to works of fine arts and works of applied arts. 117 347 US 201 (S Ct 1954), at 218. 118 Ibid. The Supreme Court referred, in particular, to the British copyright law and decision of King Features v Kleeman, (1941) 58 RPC 207, where the intention of the designer was relevant under the 1911 Copyright Act but was limited by the court to the time when the work was created.

179

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? were irrelevant in determining copyright registrability of a work of applied art: the intention of the author; the number of copies reproduced; or the availability of design patent protection.119 8.70 With the copyright reform in 1976, a new category of works called ‘pictorial, graphic and

sculptural works’120 was introduced and defined as follows: ‘Pictorial, graphic, and sculptural works’ include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.121 8.71 The words in emphasis mark out the two US exclusionary devices for designs—the useful

article and the separability criterion. A ‘useful article’ is defined as: an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.122 8.72 The statutory definition does not give guidelines as to what constitutes an ‘intrinsic’ function,

and from whose perspective this is to be adjudged. For example, in Masquerade Novelty Inc v Unique Industries, Inc,123 the court held that pig, elephant, and parrot nose masks which allowed persons wearing them to simulate the nose of that animal, were not useful articles as the, utilitarian nature of an animal nose mask or a painting of the crucifixion of Jesus Christ inheres solely in its appearance, regardless of the fact that the nose mask’s appearance is intended to evoke mirth and the painting’s appearance a feeling of religious reverence.124 8.73 In the later decision of Hart v Dan Chase Taxidermy Supply Co,125 the plaintiff asserted copy-

right in stuffed fish mannequins which the plaintiff had shaped. The court conceded that the mannequins straddled the line between utilitarian and sculptural works, but concluded that the works were not useful articles, [a] fish mannequin is designed to be looked at. That the fish mannequin is meant to be viewed clothed by a fish skin, rather than naked and on its own, makes no difference. The function of the fish form is to portray its own appearance.126 8.74 The more difficult hurdle to leap over is the separability criterion. Two separate approaches

have arisen ie physical separability and conceptual separability. Physical separability is when the aesthetic elements of a useful article (the useful article being, for example, the lamp base 119

37 CFR § 202.10(b) (1956); accessed as e-CFR, current at December 2011. 17 USC §102(5). The legislative intent of both Houses of Congress was to codify the various types of works which were protected under the 1909 Act. 121 17 USC § 101 (1976) (emphasis added). 122 Ibid. The provision further confirms that parts of a useful article can also be independently considered as ‘useful articles’. 123 F 2d 663 (3rd Cir 1990); 15 USPQ 2d 1881. 124 Ibid., page 1887. See also Animal Fair, Inc v Amfesco Indus, Inc, 620 F Supp 175 (D Minn. 1985), affirmed 794 F 2d 678 (8th Cir 1986) (copyright granted to slippers in the shape of the bear’s paw). 125 86 F 3d 320 (2nd Cir 1996). 126 Ibid., at 323. 120

180

F. Jurisprudential Analysis of the National and Regional Copyright/Design Interface in Mazer or the helmet/hat in our hypothetical Rufus case) would be eligible for copyright protection if they can be physically separated from the useful article itself. The Balinese statuette in Mazer could be easily physically separable from the lamps.127 Conceptual separability occurs when the ornamental aspects of the useful article are not 8.75 physically separable from the utilitarian features, but the ornamental aspects can conceptually exist separately from their ‘subsidiary utilitarian function’.128 A more modern definition of conceptual separability was offered in Galiano v Harrah’s Operating Company, Inc,129 conceptual separability exists when there is any substantial likelihood that even if the article had no utilitarian use it would still be marketable to some significant segment of the community simply because of its aesthetic qualities.

In our hypothetical scenario, Rufus’ helmet or hat can be held to exist conceptually separate 8.76 from the utilitarian function of being a film prop or a fashion item which protects the wearer’s head from the climate. An added dimension to US copyright law is the rather odd quasi-copyright protection 8.77 accorded to boat hulls. The rationale for this provision arises from the attempts to gain intellectual property protection from federal or state unfair competition law in light of the constant hurdles faced by design proprietors in gaining protection under copyright law, and to a certain extent, under design patent law.130 Sui generis design protection is available under the US federal patent law, but protection is only granted to a design which is ‘new, original and ornamental’ and destined for an article of manufacture.131 Under US law, individual states are permitted to enact unfair competition or misappropriation laws, in so far as such laws do not preempt federal statutes, which in respect of design protection, are the Copyright Act 1976 and the Patents Act 1952. This particular path of protection was popular until it was curtailed successfully by the 8.78 Supreme Court in Bonito Boats v Thunder Craft Boats, Inc which held that unfair competition protection was limited to ‘protection against copying of non-functional aspects of consumer products which have acquired secondary meaning’.132 Moreover, the Court held that state misappropriation laws could not pre-empt federal design patent law, since by doing so, it interferes with the competitive aim of design patent law ie, to incentivize the creation of designs which meet the rigorous requirements of patentability. The irony, perhaps, of the Supreme Court’s Bonito decision, is that the efforts of marine 8.79 manufacturers to gain protection for the hulls of their vessels have succeeded, and sui generis 127

See also Esquire v Ringer 414 F Supp. 939 (DDC 1976), reversed 591 F 2d 796 (DC Cir 1978). Kieselstein-Cord v Accessories by Pearl, Inc 632 F 2d 989 (2nd Cir1980), at 993. See also Carol Barnhart Inc v Economy Cover Corp 773 F 2d 411 (2nd Cir 1985); Brandir International Inc v Cascade Pacific Lumber Co 5 USPQ 2d 1089; 834 F 2d 1142 (2nd Cir 1987); Pivot Point Int’l, Inc v Charlene Products, Inc 372 F 3d 913 (7th Cir 2004). 129 416 F 3d 411 (5th Cir 2005). 130 ‘In this country the attempt to protect designs by the patent law has proven so unsatisfactory that efforts have been made to resort to copyright law, trademark law and unfair competition law’, S. Ladas, Patents, Trademarks, and Related Rights (Cambridge Mass: Harvard University Press, 1975) vol 11, 855. For an account of the validity of trademark and trade dress protection, see G. Dinwoodie, ‘Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress’, (1997) 75 NCL Rev 471; G. Dinwoodie, ‘The Death of Ontology: A Teleological Approach to Trademark Law’, (1999) 84 Iowa L Rev 611. 131 US Patent Act 1952, ss 171–173, and 289 (on infringement), codified 35 USC §§ 171–173, 289. 132 Bonito Boats, 9 USPQ 2d 1847 at 1856 (S Ct 1989). 128

181

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? protection has been introduced into the federal copyright system. Entitled the Vessel Hull Design Protection Act,133 the statute accords protection to an, original design of a useful article which makes the article attractive or distinctive in appearance to the purchasing or using public . . . 8.80 The definition of useful article emulates that in the main copyright statute but is narrowed

down to apply to ‘a vessel hull, including a plug or mould’.134 Excluded are staple, commonplace designs ‘dictated solely by a utilitarian function of the article that embodies it.’135 The Act defines originality based on copyright principles, and a design is original if, it is the result of the designer’s creative endeavour that provides a distinguishable variation over prior work, pertaining to similar articles which is more than merely trivial and has not been copied from another source.136 8.81 The statute explicitly states that overlap of protection is foreclosed, although cumulative

protection on the bases of trademark and unfair competition laws is still allowed.137

G. Efficacy of Sui Generis Design Law (1) Statistical Analysis 8.82 For all the rich diversity of national designs law options that may be accommodated within

the TRIPS/Paris/Berne framework, it is surprising to see how little use is made (relatively speaking) of registered designs systems (by their very nature, it is impossible to quantify the extent of usage of unregistered design rights). Take, for example, the usage of the Australian registered design law system prior to its reform in 2003. If one compares the design applications, with trademark and patent applications and registrations, as at 1991, there were 21,800 applications for trademarks, 27,672 applications for patents, and 3,945 designs applications.138 Australia’s usage of the registered design protection was therefore only modest at this time, but the same was generally true of most other countries, with the striking exceptions of Japan and the Republic of Korea which had large numbers of designs applications lodged.139 8.83 Given the amount of legislative reform water that has passed under the bridge in both

Australia and elsewhere since this time, interest in obtaining registered designs protection does not seem to have increased greatly. Below is a table that sets out the numbers of designs applications and registrations in Australia from 1961 to 2005:

133 Vessel Hull Design Protection Act, Pub L No 105–304, 112 Stat 2860 (1998) (codified at 17 USC § 1301). 134 17 USC § 1201(a). 135 17 USC §§ 1302(1)–(4). 136 17 USC § 1301(b)(1). 137 17 USC § 1329, 1330(2). Melville B. Nimmer and David Nimmer, Nimmer on Copyright § 8(A)(21) (2005). 138 S. Ricketson, ‘Towards a Rational Basis for the Protection of Industrial Designs in Australia’, (1994) 5 Australian Intellectual Property Journal 193, 194–195, citing the 1991 Industrial Property Statistics published by WIPO in (1993) No 2 Industrial Property. 139 The figures were as follows: UK (8074), USA (13,061), Spain (3420), France (8383), China (5335), Canada (2600), Austria (3668), Benelux (2808), Japan (40,123), Republic of Korea (22,097), Mexico (621), Switzerland (978), India (1,506), and Brazil (61). See further Ricketson, n 138, 194.

182

G. Efficacy of Sui Generis Design Law Table 8.1 The numbers of designs, applications, and registrations in Australia from 1961 to 2005 Year

Applications

Granted

1961 1971 1981 1991 2002 2004–2005

1413 2742 3012 3945 4111 5759

1522 2336 1957 3200 3842 4615

On the other hand, design filings have increased dramatically in Europe with the impact of 8.84 the Community Design and new national designs laws. From 2003 to 2010, a total of 136, 731 applications were filed, with a further 19,526 applications being filed in 2011.140 This is comparable to the figures under the US design patent system where 29,059 applications were filed in the year 2010.141 The higher figures registered under the EU system may reflect the fact that applications are no longer examined for fulfilment of criteria of protection, and this has greatly enhanced the time taken between application and final grant of the right. Some of the above figures must be viewed cautiously. The EU and US regions hold almost 8.85 quadruple the populations of the UK or Japan, and more in the case of South Korea or Australia. Moreover, low registration figures in relation to sui generis design laws may indicate that designers obtain protection under copyright law (in a cumulative protection system), or under utility model or unfair competition laws.142 (2) What should be done? Despite all the legislative and policy effort that has been expended in recent years, the diffi- 8.86 cult issue of the relationship between copyright and designs laws remains. We now have elaborate legislative solutions in different jurisdictions, and international uniformity seems further away than it was even a decade ago. This is the case even after TRIPS, but is permissible under the present international framework provided by that agreement and the Paris and Berne Conventions. Suggested herein is a simpler and more straightforward approach that is consistent with this framework. It is couched with respect to current Australian law, but we believe that it can be transplanted elsewhere.143 The starting point is artistic copyright, and the fact that ‘works of applied art’ are included 8.87 within the scope of ‘literary and artistic works’ in Article 2(1) of the Berne Convention. ‘Work of applied art’ is a flexible concept which is capable of embracing artistic works that are exploited in a two-dimensional fashion (‘two-dimensional designs’) through application to 140 As of 5 December 2011. See OHIM Official Statistics, available at last visited 27 February 2012. 141 Available from last visited 27 February 2012. 142 U. Suthersanen, G. Dutfield, K.B. Chow (eds), Innovation without Patents: Harnessing the Creative Spirit in a Diverse World, (Cheltenham: Edward Elgar, 2007) especially Chapter 3. 143 This is not a new proposal: see S Ricketson, ‘Towards a Rational Basis for the Protection of Industrial Designs in Australia’, (1994) 5 Australian Intellectual Property Journal 193. It should also be added that these proposals were considered by the Australian Law Reform Commission in its 1995 Report on Designs but were rejected. A L R C Report 74, 31 August 1995, Sydney 1995, para 17.46.

183

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? surfaces and materials, such as wall paper, clothing, tea towels, carpets and the like, as well as works that are exploited in three dimensions where designs are applied to the shape or configuration of useful articles, such as chairs, tables, headlights, water tanks, coffee percolators and the like (‘three-dimensional designs’). Artistic copyright will generally come into play in the case of three-dimensional designs because of some pre-existing two-dimensional artistic work (a drawing, a plan, etc) where products made according to that design can be regarded as three-dimensional reproductions of the two-dimensional work. 8.88 On the assumption that all such works are to be protected as ‘works of applied art’ (leaving

aside, for the moment, the question of originality), Berne requires only that this be done for a term of protection of 25 years from their making. Countries can, of course, go further than this, and Australia is a prime example: it now allows a term of the life of the author plus 70 years to the two-dimensional design artist and the same term to three-dimensional designs where these fit the description of a ‘work of artistic craftsmanship’ or a ‘building’.144 In the case of other three-dimensional designs, the legislative policy is that copyright protection is restricted, at least in the industrial sphere, once a ‘corresponding design’ that would result in a three-dimensional reproduction of the work has been registered or has been ‘industrially applied’.145 8.89 It should also be added that entry to the safe harbour provided by works of artistic craftsman-

ship has usually proved difficult because such cases typically arise at the borderline: the works of the artist-craftsman (the jeweller, the goldsmith, the silversmith, the leatherworker, the maker of ornate cast iron gates) usually pass in without any particular contention, while the designers of a corkscrew in the shape of a rabbit’s ears146 or of cable knitted jumpers147 have met far more resistance. A maximum term of 25 years for all works of applied art, whether applied in two or three dimensions, might therefore make the dividing line between art and industry an easier, and far less contentious, one to draw: if all such works could be protected, the push to establish the near impossible, ie, that something is a work of artistic craftsmanship (or even a ‘building’148), would disappear, but there would be no yawning lack of protection for those designers who have failed to seek a registered design. 8.90 On this basis, there would be no need to remove the protection already provided for the true

artist craftsman, who could continue to be protected in the same way as sculptors and architects/builders. The requirement of originality would remain, but this could be set at the usual low Anglo-Australian level of independent creation and sweat of the brow or higher, depending upon national preference or tradition (Berne, of course, has no particular stipulations here as to the level of originality required for any particular category of work, and it would be open to a country to prescribe something additional, if this was thought necessary).

144

See generally Copyright Act 1968 (Cth), ss 33(1) and 77(1)(a). Copyright Act 1968, ss 74–77. 146 Sheldon and Hammond Pty Ltd v Metrokane Inc (2004) 61 IPR 1. 147 Coogi Australia Pty Ltd v Hysport International Pty Ltd (1998) 41 IPR 593 (although the Applicant did succeed in this case in establishing that the cable knit constituted a work of artistic craftsmanship, it failed in showing that there was infringement where different ‘colourways’ were used by the Respondent). 148 Copyright Act 1968 (Cth), s 77(1)(a)(i): see further Darwin Fibreglass Pty Ltd v Kruhse Enterprises Pty Ltd (1998) 41 IPR 649, where the Supreme Court of the Northern Territory held that moulds and ‘plugs’ used for the manufacture of fibreglass swimming pools were held to be ‘models’ of ‘buildings’ within the definition of ‘artistic work’ in s 10(1) of the Copyright Act 1968. 145

184

G. Efficacy of Sui Generis Design Law What would this mean for registered design laws? They could, of course, be left just where 8.91 they are, as monuments to past endeavours and as object lessons in unhelpful legislative drafting. On the other hand, what need would there be for their continuance, unless there is something in our international obligations that precludes this? In this regard, Paris provides no problem: Article 5quinquies simply requires that countries protect ‘industrial designs’ and says nothing as to whether these need to be registered rights or not. Priority periods would also not be a problem, in that protection would be automatically available in each country without formality so long as the relevant Berne points of attachment were satisfied. National copyright laws, however, might have to be specifically amended to provide for the temporary international exhibition defence provided under Article 11. TRIPS might provide some difficulties, but again these do not appear insurmountable: as 8.92 noted above, registration systems are not required (accommodating existing national unregistered design rights) and the criteria for protection under Article 25(1) could be readily accommodated under existing or modified copyright originality requirements, on the basis that Berne allows here for a significant degree of national variation. In other respects, the TRIPS provisions reflect a copyright-type approach, for example in relation to the rights to be protected under Article 26(1), while, in other respects again, it is merely permissive, for example regarding defences. Accordingly, it is submitted that it would be open to any Berne/ Paris/TRIPS country to accord protection for designs purely as ‘works of applied art’ under Berne, and not to contravene any of these agreements so long as the minimum term granted was 25 years from the making of the work in question. Two further implications/consequences of the approach outlined above should be noted. 1. The continuance of unregistered design rights will need attention, although this really only appears to be an issue for EC countries. In so far as these are a more limited alternative form of protection to a registered design, it is difficult to see what role would remain for them if more general copyright protection for works of applied art were to be available. On the other hand, it is unlikely that the TRIPS Agreement presently precludes such rights, even where their term is shorter than the prescribed ten year minimum term under Article 26(3) (as in the case of the present three year Community unregistered design). This is on the basis that Article 26(3) does not exclude additional forms of protection for industrial designs so long as there is otherwise protection available for a minimum of ten years: under our proposed system, this would be for 25 years under copyright. Unregistered design rights, however, might play a useful role in providing for a default form of protection where a putative work of applied art fails to meet the originality requirement for copyright protection. In other words, a short term form of unfair copying protection might well be justified, although strictly there is nothing in the TRIPS Agreement or elsewhere to require this as it would fall outside the scope of copyright or designs protection and it is difficult to infer such a requirement from the terms of Article 10bis of the Paris Convention (as incorporated by Article 2(1) of the TRIPS Agreement.) 2. The matter of defences has been lightly glossed over above, but one continuing saga for national designs systems has been in the area of spare parts and repairs. How would this be dealt with under the proposed approach? While Article 26(2) of the TRIPS Agreement provides for defences that take account of ‘the legitimate interests of third parties’, any copyright solution would attract the operation of Article 13 which does not have such a proviso. Indeed, as any spare part defence would inevitably implicate the reproduction 185

8.93

Chapter 8: The Design/Copyright Overlap: Is There a Resolution? rights in works of applied art, the relevant provision would be Article 9(2) of Berne which, arguably, has a more narrow application than Article 13 of TRIPS. Three-step analyses are always complicated and nuanced exercises, but is there any reason to suppose that the present limited defences provided under national designs laws149 would not pass each of the three steps in Article 9(2)? There is also the consideration that where a defence or exception is motivated by competition or anti-trust considerations, this is not inconsistent with Berne obligations.150 8.94 The solution proposed in this chapter has the unusual characteristic that it is readily permit-

ted by the present international framework which, more often than not, is restrictive rather than facilitative when it comes to the adoption of different solutions in the intellectual property area. In particular, mandatory terms of protection often make copyright solutions unattractive. Here, however, the international system works in favour of a single and relatively simple solution. At the very least, a single 25 year term of protection for works of applied art would remove the current range of terms that run from three years to life plus 70 years and would provide industry with a certainty that it presently lacks under national and international laws. The difficulty of demarcating the nature of intellectual property protection is evident in the treatment of designs under the Berne and Paris Conventions. The ambivalent attitude towards design protection under the TRIPS Agreement merely serves to emphasize that the nature of protection of designs is very much a national matter. When we turn to look at national approaches, it is clear that there are diverse and sometimes inconsistent legal variants as to how the overlap between copyright and design laws is to be managed.

H. Summary 8.95 By way of reprise, if we return to the hypothetical presented at the start of the chapter, the

following suggested results underline the unsatisfactory state of national and international regulation in the areas discussed in this chapter: 1. Cumulative protection: This type of protection occurs in countries where copyright and design protection is readily available simultaneously save for obviously functional aspects. Rufus’ helmet/hat design, for instance, would probably gain protection under French copyright law as artistic works, and under both French and EU Community design laws. 2. Partial cumulative protection: Rufus’ design will gain protection under the national registered design system, but national copyright law may be withheld due to the utilitarian aspects within the design, and the fact that it serves a mass market. In the UK, for instance, the multi-tiered hurdles preventing an overlap of protection under copyright and designs laws will result in Rufus probably being refused copyright protection as the helmet/hat would not qualify as either a sculpture or a work of artistic craftsmanship, unless he shows an additional element of aesthetic intention and character. He would, however, still have recourse to design law, either under the UK registered/unregistered design rights regime, or under the Community design law. 149

Consider here the Registered Designs Act 1949 (UK), s 7A(5) and the Designs Act 2003 (Cth), s 72. See further Ricketson and Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, (Oxford: Oxford University Press, 2006) 13.91 and 13.92. 150

186

H. Summary 3. Non-cumulative protection: This approach is adopted in the United States, where very clear statutory and jurisprudential bars have been set down in order to prevent copyright protection of designs. Rufus’ hat/helmet will in all probability be classified as a useful article, in which case he will have to prove that the aesthetic elements are physically/ conceptually separable from the utilitarian elements of the design. 4. Variations of the above: Rufus’ chances of gaining copyright and design protection in any country is very dependent on each country’s approach, and this makes certainty of protection an illusion for designers. The difficulty lies especially in the category of partial cumulative approach. Whether copyright is accorded or not is dependent on the nature of the design. Whilst three-dimensional products have to surmount the ‘aesthetic’ barrier, a much lower threshold of protection is operational for graphic and other two-dimensional designs. Thus, had Rufus’ design merely consisted of drawings and sketches of his helmet/hat, copyright protection would be easily granted under most jurisdictions; the difficulty arises if a competitor misappropriates those sketches and commences making articles to that design.

187

This page intentionally left blank

9 OVERLAPPING FORMS OF PROTECTION FOR DATABASES Jonathan Band, Jonathan Band PLLC, and Brandon Butler, Association of Research Libraries

A. Hypothetical B. Conflicting Models of Database Protection C. The European Union Database Directive (1) Scope of the Directive (2) Protection afforded to databases (3) Database protection in the EU member states

9.01

D. The United States (1) Copyright protection (2) Overlap with other forms of protection available under US law

9.03 9.16 9.17 9.18 9.26

E. International Agreements

9.39 9.39 9.52 9.69

(1) Copyright protection: the TRIPs Agreement and the WIPO Copyright Treaty 9.70 (2) Sui generis protection: The Database Treaty 9.72 F. Summary 9.75

A. Hypothetical A sports league publishes a schedule of all the games for all teams for the entire season in a 9.01 simple grid format with team names listed in rows and days and times as columns. An independent website aggregates the sports league’s information with the schedules for other sports leagues, thereby enabling a fan to find the times and locations for all the games in all the different sports for any weekend plotted on a similar grid. The website includes a predicted point spread for each game, based on its analysis of the teams’ records and other factors it considers relevant. The website also features what it predicts will be the most exciting games of the weekend. A newspaper then publishes this list of featured games with the point spreads. Which follow-on uses of the sports league schedule and the point spread would trigger liabil- 9.02 ity for copyright infringement in the US? In the UK? Other than copyright and sui generis protection, what legal protections are available to the sports league or to others? Do any of these forms of protection require the compiler/author to design or administer her website in a particular way?

189

Chapter 9: Overlapping Forms of Protection for Databases

B. Conflicting Models of Database Protection 9.03 Different parts of databases attract different forms of protection. The selection and arrange-

ment of the material contained in the database can receive copyright protection. The material itself, in contrast, may receive protection separate and apart from the selection and arrangement of material, depending on the nature of the material. Thus, if the database is a compilation of poems, there can be copyright protection for each individual poem, as well as copyright protection for the selection and arrangement of the poems. The copyright owner of the compilation may differ from the copyright owner of each poem, and the remaining term of protection may differ as well depending on when each work was created. 9.04 But what if the database is a compilation of facts rather than poems? Under most legal

systems, an individual fact typically is not protected by copyright. Nonetheless, there are legal theories that may afford protection for even a relatively small set of facts when that set does not reflect original selection or arrangement sufficient to warrant copyright protection. In the EU, this protection is termed sui generis protection for databases.1 9.05 This chapter will focus on the overlap of IP protection in compilations of facts. It will look at

copyright protection for the selection and arrangement of the facts contained in a database, and it will look at the other theories that provide protection for the facts themselves. In the Information Age, there are countless circumstances under which one entity will seek to reuse information that has been published by another entity, and the IP practitioner must be able to advise his or her clients when such reuse is permissible. 9.06 The overlap of copyright and sui generis protection for databases can be viewed simply as an

extension of the historical clash between two conflicting models of copyright protection for compilations. The first model advocates that databases and factual compilations receive protection per se, ie, without any showing of creativity or original authorship. Proponents of this theory, better known as the ‘sweat of the brow’ or ‘industrious collection’ doctrine, justify their position by arguing that protection should be extended to databases as a reward for the hard work and investment required to compile the facts and information contained in the database. Such a reward provides compilers with the incentive to develop new databases. Under this doctrine, protection extends to the otherwise unprotected facts contained in the compilation. 9.07 The second model of intellectual property rejects the notion that databases without any

originality or creativity should be protected. Instead, proponents of the second model would only extend copyright protection to the ‘expression’ contained in the database, which is limited to the original selection, coordination, or arrangement of facts in the database—but not the facts themselves. While acknowledging that this may seem unfair, advocates of the second model (such as Justice Sandra Day O’Connor in the Feist majority opinion2) argue that it is of the essence of copyright that it does not protect facts and ideas. 9.08 Public policy in the United States has always favoured the widest possible dissemination of

facts, and a copyright law that restricted this free flow of information would be in tension with the First Amendment of the United States Constitution. Indeed, leaving facts unprotected 1 2

Sui generis is the Latin term for ‘unique’. See discussion of the Feist case at paras 9.39–9.42.

190

B. Conflicting Models of Database Protection is meant to encourage the very ‘free riding’ decried by proponents of the ‘sweat of the brow’ theory; with respect to the public interest, a policy that bars copying facts creates wasteful duplication of effort. In the US, opponents of ‘sweat of the brow’ also point to the copyright clause in the constitution, which empowers Congress to protect ‘writings’, which courts have interpreted to mean only original creations, not discovered facts. Prior to 1991, the extension of copyright protection for databases and other factual compila- 9.09 tions remained an unsettled issue in US courts. Most courts refused to grant copyright protection for databases that did not contain any ‘originality’ in the selection or arrangement of facts,3 and Congress adopted this view in the 1976 Copyright Act. There, Congress explicitly stated that a copyright in a compilation extended only to the original selection, coordination, and arrangement of material in the compilation. Nonetheless, a minority of courts before and after the 1976 Act adopted the ‘sweat of the 9.10 brow’ doctrine and protected databases that lacked any element of creativity or original expression.4 In the 1991 case of Feist Publications, Inc v Rural Telephone Service Co, Inc, the US Supreme Court resolved the issue that had divided the lower courts and unanimously rejected the ‘sweat of the brow’ or ‘industrious collection’ doctrine.5 Moreover, even though the Supreme Court recognized that the selection and arrangement of facts could create the requisite ‘originality’ for copyright protection, it emphasized that the copyright in the compilation would be ‘thin’, ie, it would extend to the particular selection or arrangement of facts but not to the facts themselves. Thus, by rejecting the notion that databases could be copyrighted without demonstrating 9.11 originality and emphasizing that facts and ideas are not copyrightable, the Supreme Court appeared to settle the longstanding clash between the two conflicting models of compilation protection. However, as will be discussed below, since the Feist decision, US courts have begun to apply a variety of non-copyright theories to protect the non-original contents of databases. Soon after the issuance of the Feist decision, the European Commission began consideration 9.12 of a Directive intended to harmonize the disparate intellectual property treatment of databases throughout the member states of the European Union. The United Kingdom, for example, provided ‘sweat of the brow’ protection, while many countries on the Continent required expression as a condition for protection. The Nordic countries also provided protection for the contents of catalogues. Ultimately, in March 1996, the Commission adopted the Database Directive, which 9.13 included a two-tier approach. The top tier provided Feist-like protection—that is, copyright protection for original selection and arrangement of facts in the database. A second tier provided sui generis protection, prohibiting the unfair extraction of a substantial part of a database reflecting significant investment. A database could simultaneously receive both types of protection: copyright protection for the expression—the selection and arrangement of the 3 See, eg, Miller v Universal Studios, Inc, 650 F 2d 1365 (5th Cir 1981); see also Patterson and Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law Reports and Statutory Compilations, (1989) 36 UCLA L Rev 719. 4 See, eg, Leon v Pacific Telephone and Telegraph Co, 91 F 2d 484 (9th Cir 1937); Jeweler’s Circular Publishing Co v Keystone Publishing Co, 281 F 83 (2nd Cir 1922). 5 499 US 340, 111 S Ct 1282, 113 L Ed 2d 358 (1991).

191

Chapter 9: Overlapping Forms of Protection for Databases data; and sui generis protection against the extraction of a qualitatively substantial part of the data itself. The sui generis protection lasts 15 years, while the copyright protection lasts for the life of the author plus 70 years. The Directive required implementation in the member states of the European Union by the beginning of 1998. 9.14 Because the European Union’s Database Directive explicitly creates overlapping systems of

protection, it will be discussed first. This chapter will review the two forms of protection provided by the EU Database Directive: copyright protection for the original selection and arrangement of information, and sui generis protection against extraction of a substantial part of a database. The chapter will then discuss the case law that has arisen in the EU under the Directive. 9.15 Next, the chapter will examine the overlapping forms of protection for databases in the

United States. The chapter will explain that since the Feist decision, copyright only protects the original selection and arrangement of facts in a database. Nonetheless, courts have applied this standard liberally to electronic databases, finding infringement in cases where, arguably, only facts were copied. Additionally, courts have extended copyright protection to ‘created’ facts. Although Congress has not enacted sui generis protection similar to that of Database Directive, creative litigants have succeeded in extending other legal theories such as misappropriation, trespass to chattels, the Computer Fraud and Abuse Act, and breach of contract to the material contained in databases. Accordingly, practitioners in both jurisdictions must be aware of the potential overlap of protection.

C. The European Union Database Directive 9.16 Although the Directive, adopted in 1996, required all member states to provide for legal

protection of databases in their legislation in accordance with the standards set forth in the Directive by January 1998, Greece, Ireland, Luxembourg, and Portugal delayed in their implementation of it. On 30 July 1999, the European Commission initiated legal proceedings before the European Court of Justice against these four countries for failure to implement the Directive by the implementation date. All 27 member states of the European Union have now adopted the directive. (1) Scope of the Directive 9.17 The Directive applies to the legal protection of ‘databases in any form’.6 The Directive defines

a ‘database’ as ‘a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means’.7 This definition covers literary, artistic, musical or other collections of works or collections of other material such as texts, sound, images, facts, and data; a recording, an audiovisual, cinematographic, literary or musical work as such does not fall within the scope of the Directive. Moreover, the Directive specifies (in an interpretative recital) that ‘as a rule, the compilation of several recordings of musical performances on a CD does not come within the scope of this Directive . . .’8 6 Directive 96/9/EC of the European Parliament and the Council of 11 March 1996 on the legal protection of databases, OJ L 077(‘Database Directive’), Art 1(1). 7 Ibid., at Art 1(2). 8 Ibid., at Recital 19.

192

C. The European Union Database Directive (2) Protection afforded to databases The Directive provides two forms of protection for databases: copyright and database-specific 9.18 protection referred to in the Directive as the ‘sui generis right.’ (a) Copyright The Directive recognizes copyright as the traditional means of database protection. Databases 9.19 are protected by copyright if ‘by reason of the selection or arrangement of their contents [they] constitute the author’s own intellectual creation . . .’9 The protection of such databases is governed by the generally applicable rules of copyright law (eg, the term of protection is life of the author plus 70 years). The author has the right to authorize or prohibit reproduction ‘by any means and in any form, in whole or in part’10, translation, adaptation, rearrangement or other alteration, distribution to the public, or any communication, display, or performance to the public. Article 6 of the Directive provides for the following mandatory exceptions to copyright 9.20 protection of databases (which may not be avoided by contract): • a lawful user of the database may engage in any act necessary to access the database and use the contents of it in a normal way; • users may make a private copy of the database, but only if the database is non-electronic; • users may use the database for the sole purpose of illustration for teaching or scientific research, so long as the source is indicated and the extent of the use is no more than necessary for the non-commercial purpose; • uses for public security or for purposes of an administrative or judicial procedure; • the member states may also apply their traditional copyright exceptions so long as they observe the three-step test of the Berne Copyright Convention. The basic challenge with applying copyright to databases in the EU is determining whether 9.21 the selection and arrangement of data within the database is sufficiently expressive to ‘constitute the author’s own intellectual creation.’ As will be discussed, there are far more cases in the United States that provide guidance on this very abstract issue. (b) Sui generis protection The Database Directive recognizes that in some instances, particularly in light of digital 9.22 technology, the contents of the database could be copied without authorization and rearranged to produce a database with the same content that does not infringe copyright. To address this perceived gap in protection, the Directive also provides the database maker with a sui generis right ‘to prevent the extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database.’11 The Directive defines extraction as ‘the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any other form’.12 Re-utilization is defined as ‘any form of making available to the public of all or a substantial

9 10 11 12

Ibid., at Art 3(1). Ibid., at Art 5(a). Ibid., at Art 7(1). Ibid., at Art 7(2)(a).

193

Chapter 9: Overlapping Forms of Protection for Databases part of a database by the distribution of copies, by renting, by online or other forms of transmission’.13 9.23 The sui generis right is provided to a maker of a database who shows that there has been a

substantial investment in the obtaining, verification, or presentation of the contents. It is irrelevant whether the database also qualifies for copyright protection, or whether the contents of the database are protected by copyright or are in the public domain. The selection or arrangement of the database need not be original. The term of protection is 15 years from the first of January of the year following the date of completion of the database. If the database is updated, the database is protected in the form subsequent to the update for a term of 15 years from the first of January following the year of completion of the update. The mandatory exceptions to the sui generis right run parallel to the mandatory exceptions to copyright protection of databases set out at paragraph 9.20. 9.24 The sui generis right is afforded to makers of databases who are nationals of a member state or

who have their habitual residence in a territory of the EU. This includes companies and firms having their registered office, central administration, or principal place of business within the EU, as long as these companies or firms have a genuine link on an ongoing basis with the economy of a member state. Unlike copyright protection of databases, sui generis protection does not hinge on the place where the work is made public. 9.25 International treaties do not require members to afford ‘national treatment’ to owners of US

databases with respect to the sui generis right (although they do for copyright). Instead, the Directive extends sui generis protection to non-EU entities on the basis of reciprocity. This means that, unlike the application of the principle of ‘national treatment’, the Directive will deny non-European companies the sui generis protection afforded databases unless their home countries offer comparable protection. Thus, if a court in Europe concludes that the United States does not offer protection comparable to the sui generis regime, a US company could enjoy copyright protection, but not sui generis protection, in any of its US databases in Europe. (3) Database protection in the EU member states 9.26 As noted, all EU member states have implemented the Database Directive in their national

law. The differences that remain between the national laws could be characterized as minor. In some countries, copyright legislation dating back from before the Database Directive provided for a shorter term of protection for databases that fail to meet the criteria for copyright protection (eg, Denmark14). This form of protection would remain unaffected by the implementation of the directive. (a) Litigation concerning the sui generis right 9.27 Adoption of the European Database Directive led to widespread litigation across Europe

with inconsistent results. 9.28 For example, a Danish court ruled that a search engine’s repeated scouring of newspapers’

websites in order to compile lists of headlines and links violated Denmark’s implementation

13 14

Ibid., at Art 7(2)(b). Denmark Copyright Act, Art 71.

194

C. The European Union Database Directive of the Directive.15 But in similar cases in Germany16 and the Netherlands,17 the courts reached a different result. However, another court, in the Netherlands, prohibited a search engine from extracting information from a company’s online telephone directory.18 Likewise, there was protracted litigation throughout the EU that hinged upon whether the 9.29 company that developed the original database had invested sufficient resources to qualify for the protection. The Dutch courts generally withheld protection from databases that are a ‘spin-off’ of a company’s main business, but courts in other jurisdictions found differently. This line of litigation culminated in a series of decisions by the European Court of Justice (ECJ) in 2004: British Horseracing Board Ltd v William Hill Organization and the three Fixtures cases. The British Horseracing case involved a dispute between an official administrative agency for 9.30 the British horseracing industry and a private publisher.19 The British Horseracing Board (BHB), the governing authority for the British horseracing industry, creates and maintains official lists of which horses compete in official races and the results of those races, among other things. The process for recording and verifying this information (eg, accepting and verifying registration information from horse owners and trainers) is painstaking, and BHB argued that it had made ‘substantial investment’ such that its official data should constitute protected database contents under the sui generis right. They accused William Hill of violating that right by using BHB’s data to publish their own listings of horse race participants. The ECJ, however, ruled that investment in creating the data compiled in a database does not 9.31 count as legally relevant investment. Rather, the publisher must make a substantial investment in collecting and organizing existing data in order to receive protection. BHB’s database did not consist of ‘existing, independent materials’, the Court held, because ‘[t]he nature of the information changes with the stamp of official approval’. While BHB may have engaged in ‘collecting’ and ‘organizing’ in the course of creating these official records, the sui generis right is meant to protect collection and organization of pre-existing facts and works. The Fixtures cases were decided along similar lines.20 The decisions imply that many databases that are by-products of an organization’s own activities, 9.32 such as airline schedules, stock market data, member directories, box scores, real estate listings, and results of scientific experiments, cannot receive sui generis protection under the Database Directive, unless some substantial additional effort is made to convert the created data into a database.21 15 DNPA v Newsbooster.com (Denmark 2002); but see Home A/S v Ofir (Denmark 2006) (holding ‘deep linking’ to real estate data by search portal does not violate Danish copyright law). 16 See, eg, Cologne Higher Regional Court (Oberlandesgericht) 27 October 2000; Berlin District Court (Landgericht) 30 January 2001. 17 Publishers v Euroclip et al, Amsterdam District Court (Arrondissementsrechtbank) 4 September 2002. 18 KPN v XSO (Netherlands 2000). 19 The British Horseracing Board Ltd and Others v William Hill Organization Ltd [2005] EWCA (Civ) 863. 20 Fixtures Marketing Ltd v Oy Veikkaus AB [2004] ECR I-10365; Fixtures Marketing Ltd v Svenska Spel AB [2004 ECR] I-10497; Fixtures Marketing Ltd v OPAP [2004] ECR I-10549. 21 A recent case in the Netherlands, De Roode Roos v De Rooij, followed this rule in denying sui generis protection to a database of nutritional supplements. The plaintiff sued the defendant, a competitor, for reproducing the plaintiff’s product photos in the defendant’s catalogue. Because creating a catalogue of products is an ordinary part of the plaintiff’s business, the court held that there was not substantial investment in creation of the database, and hence no sui generis protection for the photos as elements of the database. There was no protection for the photos on their own because the court held they were standard product photos with insufficient creativity

195

Chapter 9: Overlapping Forms of Protection for Databases (b) Reevaluation of the sui generis right 9.33 In response to this wave of litigation and the resulting uncertainty, the British Royal Society

examined the Directive’s impact on science. An April 2003 report, after citing problems encountered by scientists in England, concluded that the Database Directive ‘is inappropriate for scientific data and we recommend that it be repealed or substantially amended . . .’22 9.34 In 2006, after public consultation, the European Commission published an evaluation

report on the Directive. The report concluded that it was not possible to show that the sui generis right had ‘a proven impact on the production of databases’. According to the report, the main flaws of the right were as follows: • The right was not well defined. • The right could extend intellectual property protection to the data itself. • The economic impact of the right was unproven. After considering whether to repeal or amend the sui generis right, the Commission decided to leave the sui generis right unchanged. It concluded that the costs of repealing the Directive outweighed the benefits of repealing it. Thus, the complete Database Directive remains in effect. Notwithstanding the acknowledged problems with the sui generis right, the European Union continues to export it beyond the 15 member states extant at the time of the Directive’s adoption in 1996—to the 12 countries that have joined the Union since 1996, and to other countries, such as Turkey and Iceland, that may join the Union in the future. 9.35 South Korea and Mexico have both adopted a two tier database protection scheme inspired

by the EU, granting a shorter term of sui generis protection for the contents of databases as well as broader protection for original elements of selection arrangement. Additionally, the EU has required countries to implement the provisions of the Directive, including the sui generis right, as a condition of free trade agreements. (c) Application of the sui generis right 9.36 There are two main challenges to applying the sui generis right. First, even after the ECJ’s

decision in the BHB and Fixtures cases, a follow-on user can have difficulty determining whether a database is a ‘spin-off’ of an existing business, and thus not subject to sui generis protection, or instead is a database that reflects substantial investment in the collection and organization of the data. 9.37 Second, the sui generis right protects against the extraction of a substantial part of a database,

evaluated quantitatively or qualitatively. A follow-on user has no clear means of determining what a qualitatively substantial part of a database is. Thus, extraction of even a small amount of data from a database could result in litigation.

to warrant copyright protection. However, the court did find that the defendant had engaged in unfair competition by copying the plaintiff’s catalogue photos. The plaintiff also succeeded on its theory of so-called ‘geschriftenbescherming,’ a provision in the Dutch copyright act that forbids the literal copying even of nonoriginal works of authorship. 22 The Royal Society, Keeping Science Open: The Effects of Intellectual Property Policy on the Conduct of Science (2003) 27, available at last visited 27 February 2012.

196

D. The United States A practitioner in the EU must also be aware of the existence of additional forms of overlap 9.38 that may exist. The publisher could distribute the database subject to a licence that might restrict how the contents of the database may be used. Some European jurisdictions, including Spain, have unfair competition doctrines that might limit follow-on uses of a database’s contents. Finally, some jurisdictions, including the Netherlands, have copyright doctrines that prohibit the literal copying of non-original works.23

D. The United States (1) Copyright protection (a) Feist v Rural Telephone As was discussed briefly, United States courts were divided prior to 1991 concerning the 9.39 application of copyright law to databases. The majority of courts provided protection only to the expression in a compilation: the original selection, coordination, and arrangement of the facts and other material in the compilation. A minority of courts, however, interpreted copyright law as preventing the copying of facts in a compilation in which there were no original elements in selection or arrangement. These courts thought it was unfair and unwise to afford no protection to the efforts of people who assembled plain vanilla directories. This ‘sweat of the brow’ or industrious collection approach was largely a stopgap measure; courts typically applied it to compilations which lacked any expression and which were ‘slavishly’ copied in their entirety. Courts were less willing to apply the sweat of the brow doctrine after Congress overhauled 9.40 the Copyright Act in 1976. In the 1976 Act, Congress defined a compilation as ‘a work formed by the collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship’.24 Section 103 of the Copyright Act further provided that, (a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully. (b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

Courts soon recognized that the sweat of the brow doctrine extended beyond the bounds of the new statute. By the early 1980s, the sweat of the brow doctrine was in full retreat. The Feist decision in 1991 was just the final blow. In a sweeping opinion written by Justice Sandra 23

Netherlands Copyright Act, art 10. 17 USC §101. The definition also explained that ‘the term “compilation” includes collective works’. A collective work was defined as ‘a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole’. Ibid. 24

197

Chapter 9: Overlapping Forms of Protection for Databases Day O’Connor, the unanimous Supreme Court emphatically rejected the ‘sweat of the brow’ doctrine, stating that it ‘flouted basic copyright principles’.25 The sweat of the brow doctrine, the Supreme Court explained, ‘eschewed the most fundamental axiom of copyright law— that no one may copyright facts or ideas’.26 With respect to compilations, the Court found that ‘only the compiler’s selection and arrangement may be protected; the raw facts may be copied at will’.27 9.41 In this case, that meant that Feist, a publisher of telephone directories, could copy the factual

listings in Rural Telephone’s white pages directory wholesale. The Court observed that, [i]t may seem unfair that much of the fruit of the compiler’s labor may be used by others without compensation . . . [H]owever, this is not ‘some unforeseen byproduct of a statutory scheme.’ . . . It is, rather, ‘the essence of copyright,’ . . . and a constitutional requirement. The primary objective of copyright is not to reward the labor of authors, but ‘[t]o promote the Progress of Science and useful Arts.’28

The Court added that, Throughout history, copyright law has ‘recognize[d] a greater need to disseminate factual works than works of fiction or fantasy.’ But ‘sweat of the brow’ courts took a contrary view; they handed out proprietary interests in facts and declared that authors are absolutely precluded from saving time and effort by relying upon the facts contained in prior works. In truth, ‘[i]t is just such wasted effort that the proscription against the copyright of ideas and facts . . . [is] designed to prevent.’29

Significantly, the Feist Court based its ruling not only on the Copyright Act, but also on the Intellectual Property Clause of the US Constitution. Article I, Section 8, cl. 8 authorizes Congress ‘To promote the Progress of Science and useful Arts, by securing for limited Times to Authors . . . the exclusive Right to their Respective Writings . . .’ From this clause, the Court inferred that ‘[o]riginality is a constitutional requirement’ for copyright protection, and held that facts by definition are not original.30 They are discovered rather than created.31 9.42 Although the selection and arrangement of facts in a compilation could constitute original

expression, the selection and arrangement of Rural’s white pages did not rise to this level. Rural’s ‘garden-variety white pages’ were ‘devoid of even the slightest trace of creativity’.32 Rural’s selection of listings ‘could not be more obvious’ and the alphabetical arrangement was ‘an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course’.33

25 26 27 28 29 30 31 32 33

Feist v Rural Telephone, 499 US 340, 354 (1991). Ibid., at 353. Ibid., at 350. Ibid., at 349. Ibid., at 354 (citation omitted). Ibid., at 346. Ibid., at 347. Ibid., at 362. Ibid., at 363.

198

D. The United States (b) Copyright cases since Feist In the 20 years after Feist, many US courts have found that the defendant infringed the copy- 9.43 right in a database.34 As the court observed in Key Publications, Inc v Chinatown Today35 although copyright protection in a factual compilation is thin, ‘it is [not] anorexic’. At the same time, courts in some cases have refused to find infringement when defendants 9.44 copied unprotectable elements from a database. In Matthew Bender & Co v West Publ’g Co36 for example, the Second Circuit held that Matthew Bender & Co were free to indicate West pagination in its law reporters as the pagination reflected no creativity by West.37 Courts also have refused to find infringement when the defendant used the information contained in a database.38 Finally, courts refused to impose liability when they found that the defendant’s database was not substantially similar to the plaintiff’s database.39 (c) Electronic Databases Some have suggested that comprehensive electronic databases may have difficulty meeting 9.45 the Copyright Act’s selection, coordination, or arrangement standard. Because the databases are digital, the data are not ‘arranged’ in a traditional sense; instead, the data are ‘arranged’ by 34 American Dental Ass’n v Delta Dental Plans Ass’n, 126 F 3d 977 (7th Cir 1997) (creating a taxonomy of dental procedures involves creativity and selection); Practice Management Info Corp v American Medical Ass’n, 121 F 3d 516 (9th Cir 1997), cert. denied, 522 US 933, amended, 133 F 3d 1140 (9th Cir 1998) (list of medical procedures copyrightable); Nihon Keizai Shimbun v Compline Business Data, 49 USPQ2d 1516 (2nd Cir 1999) (infringement where the defendant copied twenty abstracts from plaintiff’s database of 900,000 articles); US Payphone, Inc v Executives Unlimited of Durham, Inc, 18 USPQ2d (BNA) 2049 (4th Cir 1991)(infringement where defendant copied several pages of telephone tariff information compiled and organized by plaintiff); Montgomery County Association of Realtors v Realty Photo Master, 878 F Supp 804 (D Md 1995), aff’d, 91 F 3d 132 (4th Cir 1996) (infringement where defendant copied listings from real estate ‘multiple listing service’ to accompany its real estate photographs); Metropolitan Dade County v Florida Power & Light Co, 45 USPQ2d (BNA) 1667 (Fla Cir Ct 1998) (copyright exists in the selection and arrangement in a database of aerial photographs, the utilities records of facilities, and the county’s geographical records); Berkla v Corel, 66 F Supp. 2d 1129 (ED Ca 1999) (copyright in a database of plant drawings); see also Lipton v Nature Co, 71 F 3d 464 (2nd Cir 1995); Nester’s Map & Guide Corp v Hagstrom Map Co, 796 F Supp 729 (EDNY 1992); Budish v Gordon, 784 F Supp 1320 (ND Ohio 1992); Oasis Publ’g Co v West Publ’g Co, 924 F Supp 918 (D Minn 1996); Castle Rock Entertainment v Carol Publ’g Group, Inc, 955 F Supp 260 (SDNY 1997), aff’d, 150 F 3d 132 (2nd Cir 1998); Medical-Legal Consulting Inst, Inc v McHugh, 1998 US Dist LEXIS 8623 (ED Pa 1998). 35 945 F 2d 509, 514 (2nd Cir 1991). 36 158 F 3d 674 (2nd Cir 1998). 37 See also Warren Publishing v Microdos, 115 F 3d 1509 (11th Cir), cert. denied, 118 S Ct 397 (1997) (selection and arrangement of facts in Cable Factbook not expressive); Transwestern v Multimedia Marketing Association, 133 F 3d 773 (10th Cir 1998) (advertisements copied from Transwestern’s Yellow Page Directory reflected no creativity by Transwestern; copy for the advertisments came from the advertisers, and Transwestern provided only the most basic graphic design); Skinder-Strauss Associates v Massachusetts Continuing Legal Education, Inc, 914 F Supp 665 (D Ma 1995) (allowing the extraction of information from copyrightable database); Ticketmaster Corp v Tickets.com, Inc, 54 USPQ 2s 1344 (CD Cal 2000) (allowing reproduction of concert information extracted from publicly available web pages). 38 See Adelman v Christy, 2000 US Dist LEXIS 4516 (Az, 29 March 2000) (copyright in a bibliography was not infringed by the creation of a text that relied on sources cited in the bibliography); O’Well Novelty v Offenbacher, 1998 US Dist 22199 (Md, 22 September 1998) (copyright in a gift catalogue was not infringed by the sale of items pictured in the catalogue). 39 For example, in EPM Communications v Notara, 56 USPQ 2d 1144 (SDNY 2000), the court found an electronic database was not substantially similar to a printed compilation when: the electronic database did not have the same arrangement as the print compilation; 60% of the electronic database’s entries were different from those of the print compilation; and the electronic database copied 55% of the print compilation’s entries. See also Schoolhouse, Inc. v Anderson, 275 F 3d 726, 731 (8th Cir 2001) (‘[a]lthough there are some objective similarities in the ideas expressed by Schoolhouse’s table and Anderson’s website, the two works express their ideas so differently that ordinary, reasonable minds could not find them substantially similar’).

199

Chapter 9: Overlapping Forms of Protection for Databases the user employing a search engine. Moreover, the compilers make no selection because the databases are comprehensive.40 9.46 However, as the court in Positive Software Solutions, Inc v New Century Mortgage Corporation41

found, ‘a database is not simply a show box into which all the information is thrown. It is, rather, a very structured hierarchy of information’. The court in Corsearch v Thomson & Thomson42 reached a similar conclusion. In Corsearch, decided the year after Feist, the court considered a database of trademark information Thomson & Thomson had assembled from all 50 states. Thomson & Thomson developed a set of fields, and then input the information for each trademark by field. 9.47 Thomson & Thomson had to correct and standardize the information it received. It also

added its own information to each file, such as a code indicating whether the trademark consisted of a word, a design, or a word with a design. The court found that Thomson & Thomson ‘offered sufficient evidence of its selection, coordination, enhancement and programming of the state trademark data, as well as other contributions that establish the originality and requisite creativity, and thus copyrightability, of the . . . database’.43 9.48 The point this case makes is that information in electronic databases typically is not floating

around independently waiting to be identified by a search engine. Rather, the author arranges the data in files consisting of linked fields. For a telephone directory, these fields are trivial— name, address, and phone number. But most commercially valuable databases contain far more fields. The selection of those fields, and the arrangement of bits of data within them, represent at least a minimal level of creativity. To be sure, many of these fields are functionally dictated, yet some reflect the compiler’s choice and judgement. Copyright prevents the wholesale copying of such a database. Indeed, copyright prohibits the copying of even a few complete files with linked fields of data, to the extent that the selection of the fields reflects creativity. Therefore, copyright, even after Feist, gives database publishers significant protection. 9.49 The Digital Millennium Copyright Act provides additional protection to the publishers of

electronic databases. For databases distributed in digital form, technological measures that prevent unauthorized access, reproduction, and distribution are becoming more prevalent and powerful. These methods include encryption, serial copy controls, and watermarking. In 1998, Congress concluded that technological measures were rapidly becoming the front line in the fight against copyright infringement. Accordingly, Congress enacted the DMCA, which prohibits the circumvention of technological measures controlling access to copyrighted works, and bans the manufacture of circumvention devices.44 The DMCA’s prohibition on circumvention applies to copyrightable databases, which includes the vast majority of databases. Further, the ban on circumvention devices helps the few non-copyrightable databases because it eliminates devices that would circumvent technological protections applied to such databases.

40 In EPM Communications, for example, the court noted that the Notara database on its own did not have any arrangement at all, and could have the same arrangement as the EPM sourcebook only if the user directed a computer to rearrange the material into the copyright holder’s arrangement. 41 259 F Supp 2d 531 (ND Tex 2003). 42 792 F Supp 305 (SDNY 1992). 43 Ibid., at 322. 44 17 USC §1201.

200

D. The United States (d) Created facts The Supreme Court in Feist declared that facts are unprotectable because they are discovered 9.50 rather than created. However, several courts have recognized that certain ‘facts’ are ‘created’ by the compiler and thus can receive copyright protection. In CDN Inc v Kenneth A. Kapes 45 the Ninth Circuit held that the prices listed in a wholesale price guide for collectible coins contained copyrightable subject-matter. The issue before the court was whether the individual prices, rather than the collection of prices in the guide, were copyrightable. The court looked to the manner in which the prices were determined; CDN used consider- 9.51 able expertise and judgement when determining how a multitude of factors would affect a coin’s estimated wholesale price. Kapes argued that a given estimated price was an expression of the idea of the coin’s price and that the two merged. The court rejected Kapes’ merger argument, holding that the expression of CDN’s idea of the coins’ prices would be protectable and was separate from the idea of a wholesale price guide.46 (2) Overlap with other forms of protection available under US law After the EU’s adoption of the Database Directive in 1996, the US Congress began consid- 9.52 eration of sui generis protection for databases.47 Database publishers argued that the Supreme Court’s decision in Feist significantly diminished publishers’ incentive to invest in the compilation of information. They argued that post-Feist, copyright was particularly ineffective with respect to large comprehensive online databases that are used by means of a search engine. The compiler has exercised no selection because the databases are comprehensive. Further, arrangement only occurs when the user conducts a search. In the absence of selection and arrangement, copyright protection is not available. The proponents further argued that adoption of the Database Directive necessitated enact- 9.53 ments of database legislation in the United States. The Database Directive’s sui generis protection is available only on a reciprocity basis. This meant that a non-EU publisher can receive the heightened level of protection only if the publisher’s country of origin afforded an equivalent level of protection. In other words, if the US did not enact database legislation on par with the Database Directive, then US publishers could not receive this added protection in Europe. European publishers, in contrast, would receive the protection against US publishers, thereby placing US publishers at a competitive disadvantage.

45

197 F 3d 1256 (9th Cir 1999). See CCC Information Serv Inc v Maclean Hunter, 44 F 3d 61 (2nd Cir 1994) (copyright protection afforded to projections of expected values of average used cars for the upcoming six weeks). See also Health Grades, Inc v Robert Wood Johnson University Hospital, No. 06-02351 (D Col 19 June 2009) (concluding that Health Grades’ ratings and awards ‘are original compilations of fact subject to copyright protection, rather than “discovered” facts outside the protection of copyright’). In contrast, the Second Circuit in New York Mercantile Exchange v InterContinental Exchange, 497 F 3d 109 (2nd Cir 2007), found the settlement price for a futures contract that was established by a committee of the New York Mercantile Exchange was not protectable by copyright. In that case, the US Department of Justice filed an amicus brief that argued that since copyright does not protect short phrases, no number could ever be protected, no matter how creative. Taken to its logical extreme, this means that index numbers such as the Dow Jones Industrial Average or the S&P 500 index are not protectable under copyright. See also Southco v Kanebridge, 390 F 3d 276 (3rd Cir 2004) (en banc), where the court found that the numbers a manufacturer assigned to parts pursuant to the manufacturer’s numbering system for parts it manufactured were not original works entitled to copyright protection. 47 See Jonathan Band and Makato Kono, The Database Protection Debate in the 106th Congress, (2001) 62 Ohio St L J 869, for a detailed discussion of the legislative deliberation. 46

201

Chapter 9: Overlapping Forms of Protection for Databases 9.54 This legislative effort was opposed by value added publishers and the science, education,

and library communities. After an eight-year battle, Congress did not enact sui generis protection. In part, this outcome can be attributed to the successful use of other legal theories, as will be discussed, to achieve protection for the facts contained in a database. Practitioners in the United States must be aware of these other theories that have a similar effect to sui generis protection.48 9.55 An important issue in cases applying other theories based on state law is whether the theories

are ‘pre-empted’ by the federal Copyright Act.49 In other words, these cases explore whether the federal copyright system permits overlapping state law that protects databases. As a general matter, Section 301(a) of the Copyright Act pre-empts state laws that apply to the same subject-matter as copyright and that provide rights equivalent to the exclusive rights of copyright. This would appear to preclude state laws that prohibit the copying of the contents of databases. 9.56 However, courts have held that if the state law violation requires proof of an ‘extra element’

beyond the actions necessary for copyright infringement (eg, reproduction or distribution to the public), then the federal copyright law does not pre-empt the state law. Courts have found that because breach of contract claims, hot-news misappropriation, and trespass to chattels meet this extra-element test, the Copyright Act does not pre-empt them. (a) Hot news misappropriation 9.57 The United States Supreme Court recognized the common law doctrine of misappropriation

in International News Service v Associated Press.50 The definitive modern formulation of the INS misappropriation doctrine was set forth by the US Court of Appeals for the Second Circuit in National Basketball Association v Motorola, Inc.51 The Second Circuit identified five elements in a misappropriation claim: • the plaintiff generates or collects the information at some cost or expense; • the value of the information is highly time sensitive; • the defendant’s use of the information constitutes free-riding on the plaintiff’s costly efforts to generate or collect it; • the defendant’s use of the information is in direct competition with a product or service offered by the plaintiff; and • the ability of others to free-ride on the efforts of the plaintiff or others would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.

48 In addition to the IP (or quasi-IP) theories discussed below, database publishers have employed licence terms to prohibit the copying of facts from databases. See ProCD, Inc v Zeidenberg, 86 F 3d 1447 (7th Cir 1996); Information Handling Servs, Inc v LRP Publications, Inc, No. 00-1859, 2000 US Dist. LEXIS 14531 (ED Pa 2000); Lipscher v LRP Publications, 266 F 3d 1305 (11th Cir. 2001); Matthew Bender & Co v Jurisline.com, LLC, 91 F Supp 2d 677 (SDNY 2000); Register.com v Verio, 126 F Supp 2d 238 (SDNY 2000), aff’d, 356 F 3d 393 (2nd Cir 2004); Ticketmaster Corp v Tickets.com, CV99-7654, 2003 US Dist. LEXIS 6483, *9 (CD Cal 7 March 2003). 49 Each of the fifty states in the United States has its own legislative and judicial system that can fashion its own laws. 50 248 US 215 (1918). 51 105 F 2d 841 (2nd Cir 1997).

202

D. The United States Courts have applied the five NBA elements to find misappropriation in several cases.52 However, in Barclays Capital v Theflyonthewall.com53 the Second Circuit found that a 9.58 website’s publication of trading recommendations provided by brokerage firms to their customers before the opening of financial markets did not constitute ‘free-riding’ sufficient to trigger misappropriation liability.54 The court stressed that the website was simply reporting on facts created by the brokerage firms (eg, that Morgan Stanley recommended that its customers sell their shares of IBM), rather than redistributing as its own facts that the brokerage firm had gathered. The court also emphasized that gathering and disseminating information was not a signifi- 9.59 cant part of the brokerage firms’ business that was disrupted by the website’s actions. Rather, the brokerage firms issued the recommendations in an effort to stimulate trades by their customers, for which the firms received commissions. The Second Circuit’s analysis bears striking parallels to the reasoning of the European Court of Justice described above that the Database Directive’s sui generis protection does not extend to databases that are ‘spin-offs’ of a firm’s primary business. (b) Trespass to chattels There is also a cause of action under the common law of various states for trespass to chattels, 9.60 which refers to an act of intentional interference with the possessory rights of another’s personal property. To prevail, the plaintiff must show (1) that the defendant intentionally interfered without authorization with the plaintiff’s possessory rights in personal property, and that (2) the unauthorized use by the defendant resulted in damage to the plaintiff. This ancient English common law doctrine was first applied to cyberspace in spam cases, where internet service providers were searching for a legal mechanism to stop marketers from flooding their systems with literally millions of unsolicited commercial emails.55 More recently, publishers of publicly accessible online databases have employed trespass to chattel claims against competitors who accessed the databases and extracted facts. The leading case is eBay v Bidder’s Edge.56 BE was an auction aggregator that combined the 9.61 auction listings from numerous online auction sites, including eBay, so that a user could go to one site to see what was available on all sites, rather than making separate visits to each auction site. To obtain the auction listings from eBay and the other auction sites, BE used software web crawlers that made multiple queries of the eBay auction database—sometimes as many as 100,000 times per day. BE argued that it could not trespass upon eBay’s site because the eBay site is publicly acces- 9.62 sible. The court ruled that eBay granted only conditional access to its site, and that BE grossly 52 Lynch, Jones & Ryan, Inc, v Standard & Poor’s, 47 USPQ 2d (BNA) 1759 (NY Sup. Ct. 1998) (gaining improper access to index of retail sales and disclosing it during a 35 minute embargo can constitute hot news misappropriation); Pollstar v Gigmania, Ltd, 170 F Supp 2d 974 (ED Cal 2000) (concert information updated daily could constitute hot news for misappropriation purposes); Morris Communications Corp v PGA Tour, Inc, 117 F Supp 2d 1322 (MD Fla 2000) (real time scores at PGA tournament can constitute hot news); and Associated Press v All Headline News Corp 608 F Supp 2d 454 (SDNY 2009). 53 650 F 3d 876 (2nd Cir 2011). 54 Second Circuit Court of Appeals, no.10-1372-cv (decided June 20, 2011). The court stated that the five NBA elements were dicta and not strict legal requirements. 55 See, eg, American Online v National Health CareDiscount, Inc, 174 F Supp. 2d 890 (ND Iowa 2001). 56 100 F Supp 2d 1058 (ND Ca 2000).

203

Chapter 9: Overlapping Forms of Protection for Databases exceeded those conditions by making repeated queries. Additionally, BE ignored eBay’s specific requests that it stop its web crawling. 9.63 The court next considered whether BE’s use of the eBay website caused damage. eBay claimed

that BE’s queries consumed valuable bandwidth and server capacity, necessarily compromising eBay’s ability to use that capacity for its own purposes. BE responded that its searches represented a negligible load on eBay’s system, using less than 2 per cent of eBay’s capacity. The court ruled that ‘[e]ven if, as BE argues, its searches use only a small amount of eBay’s computer system capacity, BE has nonetheless deprived eBay of the ability to use that portion of its personal property for its own purposes.’ The court held that the mere interference with a possessory interest is sufficient to establish damage. 9.64 The trespass to chattels cause of action as articulated by the Bidder’s Edge court grants website

operators virtually unlimited control over the information that appears on their websites. Indeed, this control vastly exceeds what the sweat of the brow doctrine granted publishers before the Feist decision. Under sweat of the brow the publisher had to expend resources in gathering information, and the defendant had to engage in wholesale copying of the compilation. Under the Bidder’s Edge trespass to chattels approach, retrieving even one piece of information from a website could be unlawful because it involves use of the website operator’s computer.57 However, other courts have found that mere possessory interference is not sufficient harm for trespass to chattels liability. Rather, a showing of physical harm to the chattel or some obstruction of its basic function was necessary.58 (c) Computer Fraud and Abuse Act 9.65 The Computer Fraud and Abuse Act (CFAA) is the primary vehicle the federal government

uses to prosecute computer crime. In 1996, Congress amended the CFAA to impose liability on whomever intentionally accesses a computer without authorization or exceeds authorized access, and thereby obtains information from any protected computer involved in interstate commerce.59 A protected computer is defined as a computer which is used in interstate or foreign commerce or communication.60 Thus, any computer that is connected to the internet is a protected computer. 9.66 Although primarily a criminal statute, the CFAA permits a private cause of action to be

brought by a person who suffers a loss of $5000 by reason of a violation of this section.61 Courts found CFAA violations based upon the extraction of information from online databases. 9.67 For example, the US Court of Appeals for the First Circuit in EF Cultural Travel v Explorica62

found liability under the CFAA in a case involving student travel data. EF was an established 57 Several courts have followed this approach. See Register.com v Verio, 356 F 3d 393 (2nd Cir 2004) (Verio’s extraction of facts from Register.com’s WHOIS database constituted a trespass to chattels); Oyster Software v Forms Processing, 2001 US Dist LEXIS 22520 (ND Cal 2001) (use of the plaintiff’s computer was sufficient to establish damage and that no showing of physical harm or substantial interference was necessary). 58 Ticketmaster Corp v Tickets.com, Inc, 2000 WL 1887522 (CD Cal 10 August 2000). See also Intel Corp v Hamidi, 30 Cal 4th 1342 (2003) (trespass is actionable only if there is actual or threatened injury to the personal property or to the possessor’s legally protected interest in the property). 59 18 USC § 1030(a)(2)(C). 60 18 USC § 1030(e)(2)(B). 61 § 1030(g). 62 274 F 3d 577 (1st Cir 2001).

204

E. International Agreements tour company that offered student travel services. Several ex-employees of EF organized Explorica to compete with EF in the student travel market. In order to determine the prices EF was charging for its tours so that it could undercut them, Explorica used an internet ‘scraper’ program designed specifically to mine all the necessary price information from the EF website. The scraper ultimately sent 60,000 inquiries to EF’s website. The court found that in developing the scraper program, Explorica used proprietary EF 9.68 travel codes that Explorica employees had obtained under a confidentiality agreement when they worked for EF. For the First Circuit, this breach of the confidentiality agreement constituted the exceeding of authorized access. The court concluded that Explorica’s wholesale use of EF’s travel codes to facilitate gathering EF’s prices from its website reeked of use—and, indeed abuse—of proprietary information that went beyond any authorized use of EF’s website. The First Circuit further concluded that the $20,044 EF spent to assess whether its website had been compromised satisfied the $5,000 loss threshold.63

E. International Agreements The overlap between copyright protection for the selection and arrangement of the facts in a 9.69 database and some other form of protection for the facts themselves does not exist in international law. However, the World Intellectual Property Organization (WIPO) did consider adoption of a database treaty, which would have created an overlap by extending protection to the contents of databases. As will be discussed, no such treaty ultimately was adopted. (1) Copyright protection: the TRIPs Agreement and the WIPO Copyright Treaty Article 10(1) of the 1994 Agreement on Trade-Related Aspects of Intellectual Property 9.70 Rights (TRIPS) extends copyright protection to the original expression in compilations: compilations of data or other material, whether in machine readable or other form, which by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such. Such protection, which shall not extend to the data or material itself, shall be without prejudice to any copyright protection subsiding in the data or material itself.

Two years later, the World Intellectual Property Organization (WIPO) included similar 9.71 language in Article 5 of its 1996 Copyright Treaty: Compilations of data or other material, in any form, which by reason of the selection or arrangement of their contents constitute intellectual creations, are protected as such. This protection does not extend to the data or material itself and is without prejudice to any copyright subsiding in the data or material contained in the compilation.

Most countries comply with these treaties by extending copyright protection to the selection and arrangement of material in compilations.

63 EF brought a CFAA action against Zefer, a software firm that helped Explorica develop the scraper program, but EF failed to prove that Zefer had exceeded authorized access. EF Cultural Travel BV v Zefer Corp, 318 F 3d 58 (1st Cir 2003). See also Register.com v Verio, at n 47 (Register.com was likely to prevail on its CFAA claims arising from Verio’s use of an internet search robot to extract raw facts from Register.com’s publicly accessible WHOIS database).

205

Chapter 9: Overlapping Forms of Protection for Databases (2) Sui generis protection: The Database Treaty 9.72 As soon as the EU adopted the Database Directive in March 1996, it placed sui generis

database protection on WIPO’s agenda. Bruce Lehman, Commissioner of the US Patent and Trademark Office, endorsed the concept of sui generis protection even though it was not part of US law. With Commissioner Lehman’s endorsement of a sui generis database proposal, the notion of a stand-alone database treaty gathered momentum, and in September of 1996, Jukka Liedes, the Chairman of the WIPO Committee of Experts, formally proposed a database treaty as one of three treaties to be considered at the WIPO Diplomatic Conference scheduled to occur in December 1996. This provision generated no controversy with respect to the Copyright Treaty. 9.73 As the December Diplomatic Conference approached, numerous parties began to raise

serious questions about the Database Treaty. Developing countries objected to the insertion of this new topic so late in the consultative process. They also questioned the need for a new form of intellectual property protection. Similarly, the scientific community in the United States reacted with alarm to the proposed treaty, arguing that it would stifle research. The science agencies within the US government (eg, the Environmental Protection Agency and the National Oceanographic and Atmospheric Administration) took the lead in persuading the National Economic Council within the White House to oppose adoption of a database treaty. 9.74 Thus, Commissioner Lehman arrived in Geneva in early December 1996 with instructions

to stop the very database treaty that he had helped set in motion. In the face of the opposition from the developing countries and the United States, the WIPO governing body decided at the outset of the Diplomatic Conference to defer further consideration of the database treaty. The Diplomatic Conference, accordingly, adopted two other intellectual property treaties— one dealing with copyright and the other dealing with performance rights—but not the database treaty. (By contrast, the Copyright Treaty’s provision for copyright protection for databases was adopted without debate.) A treaty for the protection of databases remained on the formal agenda of the WIPO Standing Committee on Copyrights and Related Rights for a decade, but no additional action was ever taken.

F. Summary 9.75 • Different elements of a database receive different intellectual property protection. The

selection and arrangement of the material contained in the database can receive copyright protection. The material itself, in contrast, may receive protection separate and apart from the selection and arrangement of material, depending on the nature of the material. • For the selection and arrangement of the material to receive copyright protection, the selection and arrangement must be expressive. In the EU, the standard is that the selection and arrangement must ‘constitute the author’s own intellectual creation’. In the United States, the selection and arrangement must show a spark of creativity. If a follow-on publisher reproduces the selection and arrangement of the original database, the follow-on publisher infringes its copyright. • If the items aggregated in the database are copyrightable works, eg, poems, articles, or photographs, each item can be separately protected under copyright.

206

F. Summary • If the items aggregated in the database are facts, different legal theories in different jurisdictions can prevent the copying of even a relatively small number of facts that are not arranged in an original manner. • In the European Union, the overlap is codified in the Database Directive. Copyright protection applies to creative selection and arrangement of the contents of the database, while sui generis protection applies to the contents themselves. • Sui generis protection is available to a database reflecting substantial investment in the obtaining, verification, or presentation of the contents. The European Court of Justice has ruled that a database that is a ‘spin-off’ or by-product of ongoing business activity does not reflect such investment. • The Database Directive’s sui generis provisions prohibit the extraction of a substantial part of a database, evaluated quantitatively or qualitatively. A follow-on user has no clear means of determining what a qualitatively substantial part of a database is. Thus, extraction of even a small amount of data from a database could result in litigation. • The Database Directive does not afford sui generis protection for foreign database owners whose home jurisdiction does not provide sui generis protection, eg, US database companies. • In the US, the Feist decision makes clear that copyright protects only the creative elements of selection and arrangement in a database. Several courts have found that such expression exists in the selection of fields in electronic databases. Additionally, the Digital Millennium Copyright Act prohibits the circumvention of technological protection measures that restrict access to electronic databases. • Although the US Congress considered adopting legislation similar to the Database Directive’s sui generis protection, it ultimately did not enact such legislation. Nonetheless, other forms of protection give database publishers recourse against copiers of factual contents from databases. • If the facts are ‘created’ rather than ‘discovered’, that is, if the facts reflect the publisher’s judgement and creativity, the facts may receive copyright protection. • Time sensitive information can receive protection under the state law ‘hot-news misappropriation’ theory. • Facts in databases stored on websites also are protected by the tort of trespass to chattels and the Computer Fraud and Abuse Act.

207

This page intentionally left blank

10 MORAL RIGHTS OR ECONOMIC RIGHTS? Mira T. Sundara Rajan, Honorary Member of Magdalen College, University of Oxford

A. Hypothetical B. Moral Rights: A Definition C. The Importance of the Issue: A Common Law Perspective on Moral Rights D. The Theory Behind the Rights: Monism or Dualism?

10.01 10.02

10.07

E. The International Arena: From 10.44 Dualism to Realism F. Technology Dissolves Boundaries between Rights: The WIPO Internet 10.50 Treaties G. The Future: A Unified Author’s Right? 10.63

10.22

A. Hypothetical A painter who works in oils and paints on canvas agrees with a publisher to make postcard 10.01 reproductions and posters of his works. The unexpected intervenes—an art gallery purchases these posters and makes its own reproductions of the painter’s images, by transferring the ink from the cards onto a canvas backing. The painter believes that the canvas-backed copies may be confused with his original paintings. The quality of the canvas-backed reproductions cannot, of course, compare to his original work, making him concerned about possible damage to his reputation. At the same time, buyers of his works may complain that the value of their original paintings is compromised by the availability of inexpensive copies on the market. This is clearly a copyright problem; but what kind of problem? Is it a violation of the economic rights of the painter, or his moral rights? Or is it a case of overlapping economic and moral rights?

B. Moral Rights: A Definition This story is not a hypothetical example—far from it. It describes the experience of a Canadian 10.02 painter, Claude Théberge, who went to the Supreme Court of Canada to argue that his rights as an artist had been infringed by the making of canvas-backed reproductions of his works.1 These canvas-backed copies were made from ink that had originally appeared in images of his paintings that were produced on posters. 1

See Théberge v Galerie d’Art du Petit Champlain Inc, 2002 SCC 34, [2002] 2 SCR 336 (‘Théberge’).

209

Chapter 10: Moral Rights or Economic Rights? 10.03 The artist stated explicitly that he was concerned about the impact of these canvas-backed

reproductions on his reputation. As such, his case represented a classic illustration of the moral right of integrity. In most countries of the world, following the model provisions in Article 6bis of the Berne Convention for the Protection of Literary and Artistic Works, an artist may protest any mistreatment of his work which is likely to cause damage ‘to his honor or reputation’.2 10.04 Moral rights represent a venerable doctrine, tracing its origins to the nineteenth century

jurisprudence of French judges and the simultaneous theorizing of German jurists. The moral rights of authors and artists are now recognized in most copyright laws of the world. They reflect the theory that an author has a special relationship with his or her work which transcends the motive of financial gain. Moral rights effectively offer legal recognition to this connection. The broad and open-ended nature of the doctrine underlying moral rights protection means that, in theory, a great variety of possible interests could be accommodated. Accordingly, the specifics of moral rights protection in any given jurisdiction largely depend on the choices made by the legislature. The nuances of interpretation, whether legislative or judicial, reflect the unique qualities of each culture. 10.05 At the same time, international copyright law offers a general framework for the recognition

of two, fundamental moral rights. These are an author’s right to have his own work attributed to him by name, and his right to protect the work from harm. The moral rights of ‘attribution’ and ‘integrity’ have been included in Article 6bis of the Berne Convention since 1928.3 The United States and Russia were the last major powers to accede to the Convention—in

2 The phrase appears in Article 6bis of the Berne Convention, the foundational agreement of international copyright law, and it is the classic international definition of the moral right of integrity. Berne Convention for the Protection of Literary and Artistic Works (adopted 9 September 1886) 1161 UNTS 3, available at last visited 27 February 2012; also available in a useful format at the website of the Legal Information Institute, Cornell University Law School, last visited 27 February 2012 (‘Berne Convention’). The only major jurisdiction in the world that does not provide general protection for the moral rights of authors and artists is the United States. Rather, the United States offers limited protection to the moral rights of visual artists: see Visual Artists Rights Act of 1990, Pub L No 101–650, 104 Stat 5128, 17 USC § 106A (‘VARA’). As discussed further, case law from the US Supreme Court suggests that the possibility of protection for moral rights arising out of the provisions on false advertising in the trademark statute known as the Lanham Act, a form of overlapping rights protection, has now been restricted: see Dastar Corp v Twentieth Century-Fox Film Corp, 539 US 23 (2003) (‘Dastar’). 3 The Convention dates from 1886; the moral rights were implemented in 1928, at the revision conference held in Rome. The implementation of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) at the World Trade Organization in 1994 did not really supplant Berne, as virtually all of the substantive provisions on copyright in TRIPS are drawn from the Berne Convention. The few exceptions to this practice concern technology; for example, Article 10.1 of the TRIPS Agreement explicitly provides for the copyright protection of computer programs as ‘literary works’, a form of protection that was implied, but not required, by the Berne Convention. Agreement on Trade-Related Aspects of Intellectual Property Rights (opened for signature 15 April 1994, entered into force 1 January 1995), Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 UNTS 299; 33 ILM 1197 (1994), online: last visited 27 February 2012 (‘TRIPS Agreement’). In fact, members of the WTO are required, by Article 9.1 of the TRIPS Agreement, to join the Berne Convention and adhere to its substantive articles. The international copyright framework, and the place of moral rights within it, receive a detailed treatment in Mira T Sundara Rajan, Moral Rights: Principles, Practice and New Technology (New York: Oxford University Press, 2011) (‘Sundara Rajan, Moral Rights’).

210

C. The Importance of the Issue: A Common Law Perspective on Moral Rights 1989 and 1995, respectively—and virtually every country in the world is now required to protect moral rights to the minimum standard defined by Berne.4 The origins of moral rights in Continental European law have held enduring significance for 10.06 this legal concept. The English term, ‘moral rights’, is a direct translation of the original French ‘droit moral ’. However, the connotations of the English term are significantly different from the French. The French expression captures the idea of personality rights, intellectual rights, or spiritual rights; the German expression, ‘Persönlichkeitsrecht’, personality right, is still more precise. In English, we are confronted, instead, by the jarring clash of morality and law—the general principles of ethics as opposed to rights, protected by law and enforceable through various practical mechanisms. Reflecting this unease at the level of terminology, the adoption of moral rights in English law has been fraught with tension, an attitude that has been exported, more or less wholesale, to most former British colonies. Moral rights still continue to be seen largely as a ‘foreign import’ in the UK and other common-law countries. Interestingly, two notable examples may be found of countries hailing from the common-law tradition which have broken this mould: Australia and India. The acceptance of moral rights can be explained, in some measure, by the unique circumstances of each—the presence of Aboriginal culture in Australia, and the persistence of traditional culture in India.5 In both cases, powerful local factors have encouraged a rethinking of traditional attitudes towards moral rights.

C. The Importance of the Issue: A Common Law Perspective on Moral Rights The importance of Théberge’s case is, therefore, twofold. First, it provides a framework for 10.07 examining the overlap between economic and moral rights in a common-law country. The historic reluctance of common-law countries to recognize moral rights has meant that the personal interests of authors in their work could only expect legal protection if these claims could be articulated in some language other than the terminology of moral rights. The devices used for the effective protection of moral rights in the common-law world have included common-law torts, such as defamation or injurious falsehood; consumer protection statutes, including the Lanham Act in the United States;6 and the re-framing of moral rights claims in the language of economic copyright. The Théberge case represents an illustration of this last approach.

4 See WIPO accession documents: Berne Notification Number 121, 17 November 1988, for US accession, WIPO website: last visited 27 February 2012; Berne Notification No 162, 13 December 1994, for Russian accession, WIPO website: last visited 27 February 2012. 5 It is important to note that India, in its adoption of moral rights principles, is representative of developing countries, who have generally chosen to embrace the moral rights concept. In the Australian case, the general adoption of moral rights in its legislation, though complex, is also a model of care and comprehensiveness. The copyright amendment process that introduced more rights into Australian law was followed by a further reform bill proposing an ‘indigenous communal moral right’. This bill failed, but the idea apparently continues to be alive in Australian copyright reform circles. The current international movement at WIPO to promote the recognition of traditional cultural expressions will encourage the Australian legislature to re-examine moral rights for Aboriginal culture. 6 Lanham Act, 15 USC §§ 1051–1129 (2000).

211

Chapter 10: Moral Rights or Economic Rights? 10.08 Framing Théberge’s case under Canadian law presented certain legal challenges. Canada has

included protection for the moral rights of authors in its copyright law since 1931.7 It was the first country belonging to the common-law tradition to enact moral rights, and it did so a mere three years after their adoption in the Berne Convention for the Protection of Literary and Artistic Works.8 However, the period since 1931 has only seen one definitive victory for Canadian moral rights in practice: the Snow case of 1987, in which the Ontario High Court allowed artist Michael Snow to demand the removal of festive ribbons adorning his sculpture of Canada geese, part of the decoration of the Toronto Eaton Centre, during the Christmas season.9 The drafting of the Canadian law also features extensive provisions allowing moral rights to be waived, to the extent that commentators question the practical effectiveness of the scheme.10 10.09 The area of moral rights is not, therefore, an aspect of copyright law that is intimately familiar

to the Canadian legal profession as a whole. The situation of the province of Québec, with its close historic and linguistic ties to France, is different, and it seems likely that Québec practitioners would be better-versed in this tradition than their English counterparts. But the civil-law trend in Canadian law remains subordinate to a fundamentally common-law system. A Canadian lawyer advising a client on a copyright issue might generally prefer to frame claims for the infringement of the author’s rights, wherever possible, in terms of the infringement of economic copyright. These arguments seem more accessible, and the likelihood of a sympathetic hearing greater, in the Canadian context. And, indeed, this was the preferred approach in Claude Théberge’s case, even though the suit arose in Québec. 10.10 Rather than argue that Théberge’s moral right of integrity had been infringed, the case was

presented as a violation of the author’s economic rights. The canvas-backed reproductions of his works had not been authorized by the artist. As in every piece of copyright legislation in the world, the making of an unauthorized reproduction of a work is prohibited under s 3(1) of Canada’s copyright law. There was no need to claim that the author’s moral right of integrity had been violated. His economic right had been infringed by the ultimate prohibited act—the making of a reproduction, for commercial purposes, without the artist’s consent. 10.11 In practical terms, the choice to present the case from this angle could greatly simplify the

plaintiff’s case. It could improve his chances of success, by avoiding the need to make a claim under a more complex provision involving the author’s moral rights, and relieving his dependence on an overwhelmingly unfavourable history of precedents.

7 For details of the amendment, see the discussion in David Vaver, ‘Authors’ Moral Rights in Canada’, (1983) 14 Int’l L Rev Indus Prop & Copyright L 329, 341. 8 International Convention for the Protection of Literary and Artistic Works Signed at Berne on the 9th September, 1886, Revised at Berlin on the 13th November, 1908, and Revised at Rome on the 2nd June, 1928, (‘Rome Act, 1928’). 9 Snow v The Eaton Centre (1982), 70 CPR (2d) 105 (‘Snow’). Other cases on moral rights have been heard over the years, but no suit has been successful. Most well-known among these is the pre-1931 case of Morang v LeSueur, which offered a number of interesting points on the kinds of evidence that would be required in a moral rights case: Morang & Co v LeSueur (1911), 45 SCR 95. Snow, itself, primarily stems from the principle that expert evidence will be acceptable where a violation of moral rights is asserted. 10 For example, see the discussion in Mira T. Sundara Rajan, ‘Culture Matters: Why Canada’s Proposed Amendments to His Copyright Law Should Revisit Moral Rights’ in M Geist (ed), From ‘Radical Extremism’ to ‘Balanced Copyright’: Canadian Copyright and the Digital Agenda (Toronto: Irwin Law/Creative Commons, 2010) 476, 485, 488–89, 492–93, available at last visited 27 February 2012 (‘Sundara Rajan, “Culture Matters”’).

212

C. The Importance of the Issue: A Common Law Perspective on Moral Rights The conceptual implications of this choice are more complex and interesting. The facts of 10.12 Théberge’s case clearly give rise to violations of both his economic rights and his moral rights; they coexist as overlapping rights in a single claim. As noted above, the preference for economic rights in litigation is easily understood, as a practical matter. But are there conceptual reasons why one claim or the other should predominate, or why one area should be excluded outright at the expense of the other? In its ruling on the case, the Supreme Court of Canada was neatly split along linguistic lines. 10.13 The English-Canadian judges, writing for the majority, preferred to exclude the possibility of overlapping rights in Théberge’s claim. In a startling judgment, the majority of the Supreme Court wrote that Théberge was fundamentally concerned about his moral rights, rather than his economic rights. The Court had reason to make this point: the artist, himself, had alerted it to this fact. In his testimony, Théberge affirmed that the canvas-backed reproductions could be confused with his original works, leading to what he considered ‘a dilution of my work’.11 Owners of Théberge originals might feel that they were negatively affected, and misinterpret the artist’s intentions.12 However, Justice Binnie, writing for the majority of the Court, points out that there is an 10.14 additional onus of proof that must be satisfied in relation to a moral right.13 In the case of economic rights, any unauthorized reproduction is a prima facie violation of copyright, and this is clearly indicated in the language of the Canadian Copyright Act.14 But this is not the case in relation to moral rights. Section 28.2 of the Act, which sets out the moral right of integrity, explicitly requires proof of prejudice to reputation. Since he had not relied on this provision in his claim, Théberge made no attempt to satisfy this additional requirement of proof. Instead, he had preferred to assert an economic right in the guise of a moral right. According to Justice Binnie, the underlying moral right would be, not so much the moral right of integrity, as a droit de destination—a right to control the use of the work, among the moral rights recognized in civilian jurisdictions.15 Crucially, in this reasoning, a clear distinction is drawn between economic and moral rights, with different standards of proof applicable to each. Justice Binnie’s decision seems to emphasize that the separation between these 11

Théberge, n 1 at para 20. Théberge, n 1 at paras 17–21, and, especially, the statements of M Théberge, himself, reproduced at para 20. 13 Théberge, n 1 at para 17. 14 Canadian Copyright Act, RS, 1985, c C-42, s 3 (1). 15 It appears that the ‘droit de destination’ is primarily known as an economic right: in French law, it is recognized as an aspect of the right of reproduction, and allows an author to exercise some control over the treatment of a work in circulation by a third party who is neither author nor exploitant. The reference to a moral rights aspect seems unusual; it could be considered a follow-on to the right of disclosure, by allowing an author some control over the fate of a published work. See Pascal Kamina, Film Copyright in the European Union, Cambridge Studies in Intellectual Property Rights (Cambridge: Cambridge University Press, 2002) at para 1.97; he defines the right as, ‘an expression of the right of the author to limit uses of copies of his work (droit de destination). . .’ Kamina does not mention the moral aspect of the ‘droit de destination’, but he makes an interesting comment in relation to Belgian law, reformed to include specific aspects of destination within its provisions on economic rights; he says, ‘that the theory could still be valid to justify a control over the resale of copies of copyright works or other acts of distribution not covered by the rental and lending rights.’ This could be interpreted as the (continued) existence of moral aspects of destination under Belgian law. Online sources also emphasize the economic nature of the right; for example, see ‘Le droit moral et patrimonial de l’auteur’ available at last visited 27 February 2012. The right is the subject of a thesis by Frédéric Pollaud-Dulian, Le droit de destination: le sort des exemplaires en droit d’auteur, ed LGDJ, Bibliothèque de droit privé Tome 205 (ISBN: 978-2-275-00791-5), 1989. 12

213

Chapter 10: Moral Rights or Economic Rights? groups of rights, with their different legal connotations and evidentiary requirements, must be maintained. It was not acceptable for Théberge to rely on his right to control the reproduction of his work to protest the making of these copies when, in truth, his fundamental concern was about his moral right of integrity. 10.15 But the majority decision leads to problems that are difficult to resolve. First, the holding is

reached that no violation of economic rights had occurred in Théberge’s case, and the reason for this conclusion is surprising: there had been no unauthorized reproduction of his works. The majority reached this conclusion by a detailed consideration of the process behind the making of the disputed, canvas-backed reproductions. The ink was lifted from one surface and superimposed onto the other, leaving the original poster blank. At no time did two copies of the work exist. At the end of the process of reproduction, only the new reproduction on canvas existed. In determining whether an unauthorized reproduction occurred, the majority thought it important to look at the overall number of reproductions of the work in question. In this case, there was only one reproduction. Accordingly, no unauthorized reproduction could be said to have occurred. 10.16 A second concern about this ruling has to do with the interpretation of the moral right of

integrity under the Canadian Copyright Act. In most cases, it is true that the Act imposes an additional requirement of proof on authors claiming a violation of their moral rights. However, there is an exception to this rule. Where works of visual art are involved, as in Théberge’s case, there is no additional requirement of proof. Instead, an artist’s assertion that his or her moral right of integrity has been violated will be accepted as a prime facie case. Accordingly, the burden of proving that the treatment of the work has not violated the artist’s moral right will fall upon the defendant.16 Strangely, the majority does not mention this subtlety in the interpretation of moral rights under the Canadian Act, despite its direct relevance to the arguments made by Théberge. 10.17 A consideration of the dissent in Théberge is instructive in that it shows the much different

perspective of the minority judges—all of the Francophone judges of the Court. Disregarding the majority’s concern with a claim where economic and moral interests overlap, Justice Gonthier argues that the majority approach is artificial. Théberge’s claim may well involve a moral interest, but the facts of his case unquestionably represent a clear violation of the artist’s economic copyright. 10.18 The minority’s reasoning emphasizes the second reason for the importance of this case:

Justice Gonthier considers the nature of authors’ rights in a post-digital environment, where new technologies for the creation and reproduction of copyright works have moved significantly beyond the reach of traditional copyright concepts. For the majority, the physical notion of a multiplicity of copies remains relevant, and it is a barrier that the majority judgment cannot surmount. In contrast, the minority argues that the nature of reproduction in the environment of digital technology is fundamentally different from what it has been

16 A similar approach is taken in US law, which grants unique moral rights to artists in VARA, n 2. The rationale behind this special treatment had to do with the unique nature of original works of art. Unlike literature or music, only one original copy of a work of visual art usually exists, and any damage to it may be impossible to correct. For this reason, an extra standard of care is expected when dealing with original works of visual art.

214

C. The Importance of the Issue: A Common Law Perspective on Moral Rights in the past. What matters is not the number of copies, but the very act of making copies. As Justice Gonthier observes, . . . [I]t is clear that multiplication of the number of copies of a work is not an essential element of the act of ‘reproduc [ing it] . . . in any material form whatever’. It does not matter that the process which produces a new materialization eliminates another; all that matters is that a new act of fixation occurs. Therefore, what we must count in order to determine whether a work has been reproduced is not the total number of copies of the work in existence after the rematerialization, but the number of materializations that occurred over time.17

In an interesting afterword to the case, the 2003 Desputeaux decision is the latest ruling from 10.19 the Supreme Court of Canada touching on moral rights. It offers a strong contrast to Théberge, and supports the monist idea in Canadian law. Desputeaux involved arbitration proceedings, and an interesting question arose as to whether copyright lies sufficiently within the ambit of personal rights to fall outside the jurisdiction of arbitrators. The Supreme Court stated, Parliament has indeed declared that moral rights may not be assigned, but it permits the holders of those rights to waive the exercise of them. The Canadian legislation therefore recognizes the overlap between economic rights and moral rights in the definition of copyright.18

Ironically, this very paragraph concludes with a reference to Justice Binnie’s comments in 10.20 Théberge, while the different theory of separate and distinct rights, on which Théberge is based, passes unremarked. As Justice Binnie explicitly affirmed, The [Copyright] Act provides the respondent with both economic and ‘moral’ rights to his work. The distinction between the two types of rights and their respective statutory remedies is crucial.19

The Théberge case raises the possibility of overlapping economic and moral rights. The case 10.21 turned on two key issues. First, the case explored moral rights theory and the possible need for authors vindicating their moral rights to satisfy a different and more rigorous standard of proof. Secondly, and at a higher level, the impact of technology on the nature of authors’ rights, and on the relationships between different kinds of rights, was a focus of the discussion. For now, the majority ruling in Théberge seems to have foreclosed the possibility of a moral rights claim that overlaps with economic rights—unless and until that claim is convincingly ‘wrapped’ in the trappings of an economic issue. However, the reasoning of the majority raises troubling questions about the copyright interpretation of new technology. The strong minority ruling in this case suggests that the facts in Théberge have laid bare the phenomenon of overlapping rights in a technological environment without, however,

17

Théberge, n 1 at para 149. Desputeaux v Éditions Chouette (1987) Inc, 2003 SCC 17, [2003] 1 SCR 178 at para 57 Desputeaux cited to LexUM/SCR. 19 Théberge, n 1 at para 11. The Court in Desputeaux concluded its comments in paragraph 57 as follows, This Court has in fact stressed the importance placed on the economic aspects of copyright in Canada: the Copyright Act deals with copyright primarily as a system designed to organize the economic management of intellectual property, and regards copyright primarily as a mechanism for protecting and transmitting the economic values associated with this type of property and with the use of it. See paras 11–12 per Binnie J. 18

215

Chapter 10: Moral Rights or Economic Rights? providing a firm answer on how it should be addressed. The minority position seems more attuned to technology. Its persuasive force makes it likely that the problem of overlapping moral and economic rights will ultimately need to be re-examined by the Canadian judiciary, and some attempt made to find a more durable solution than the answer provisionally offered by Théberge.

D. The Theory Behind the Rights: Monism or Dualism? 10.22 The conundrum presented by Théberge suggests a need for some insight on the overlap

between authors’ economic and moral rights. The Théberge case shows that this issue is likely to become commonplace in the technological context, as technology challenges fundamental copyright concepts. In Théberge, the notion of ‘reproduction’ rights, perhaps the most basic of copyright concepts, became uncertain. 10.23 However, the overlap of authors’ economic and moral rights, though made more apparent

by technology, far predates the technological era. A historical perspective shows that there is nothing new about the possibilities and problems of overlap between the economic and moral dimensions of authors’ rights. Rather, the issue is one that may be traced to the origins of moral rights as we know them—to the beginnings of modern moral rights doctrine. 10.24 As noted earlier, moral rights are usually considered to emanate from French and German

law. They have been aptly described by Stig Strömholm, an eminent historian of moral rights, as a product of French practical solutions combined with German theorizing.20 While the traditions of both countries are supportive of moral rights, they also represent two distinct approaches to the moral rights concept. In particular, each offers a different understanding of the relationship between the moral rights and the economic rights of the author. From the perspective of overlapping rights, these differences are significant. 10.25 In the German tradition, the author’s rights are viewed comprehensively, or holistically.

Moral and economic rights are considered to be part of a single package of rights belonging to the author. This theory is known as ‘monism’. 10.26 German theorists developed a ‘monist’ understanding of copyright law as the result of a

profound exploration of the theoretical origins of, and reasons behind, rights of authorship. Where the French saw the moral and economic rights of authors as two categories of rights with different and distinct bases, first called ‘dualism’ by the French writer Morillot,21 German theorists saw moral interests and economic interests as essentially two aspects of a single right.22 The right was simply an author’s right. The theory that came to be known as

20 Stig Strömholm, ‘Droit Moral—The International and Comparative Scene from a Scandinavian Viewpoint’, (1983) 14 (1) Int’l Rev Indus Prop & Copyright L 217, 225 (‘Strömholm IIC’). 21 Strömholm IIC, n 21 at 226; he notes: ‘What is strange is that Morillot, in his eagerness to acquaint his fellow countrymen with German ideas, he failed altogether to investigate the—by that time abundant—French case law which could be cited in support of his ideas.’ 22 Morillot’s writing was largely based on the work of German theorists of his time: see Stig Strömholm, Le Droit Moral De L’Auteur en Droit Allemand, Français et Scandinavie avec un Aperçu de L’Evolution Internationale– Etude de Droit Compare, T. 1Première Partie: L’Evolution historique et le mouvement international (PA Norstedt & Söners Förlag 1967) (‘Strömholm 1967’) 239, and Strömholm (n 21) 226–27. Strömholm notes the interesting process by which the work of German theorists was exported to France via Morillot, and ultimately found its way back into Germany theory from Morillot, unrecognized by German theorists of the later generation.

216

D. The Theory Behind the Rights: Monism or Dualism? ‘monism’ reflects the unity of all interests of the author, whether economic or personal in nature.23 ‘Monism’ closely approximates what is meant by the overlap of economic and moral rights. 10.27 German monism emphatically sees moral and economic rights as two sides of a single coin, and the links between them are inseparable in theory and practice. Accordingly, the treatment of moral and economic rights is somewhat homogeneous in German law. Notably, the duration of protection for both kinds of rights is equal. On the other hand, the rights are not perfectly overlapping. In particular, a slight asymmetry occurs in the treatment of the author’s right to alienate his or her rights in the work. Under German law, there is no general prohibition on the ability of an author to waive his or 10.28 her moral rights. However, the waiver of moral rights is approached with care, and, in a number of specific cases, it is restricted. For example, German law provides that the person granted an exploitation right may not make alterations to the author’s work, unless they have been specifically agreed upon;24 at the same time, certain aspects of the author’s rights cannot be waived at all. The author retains a right to revoke his work for reasons of changed conviction, and it cannot be taken from him by contractual or other means.25 Similarly, an agreement committing an author to the exploitation of future works can only be valid for a maximum of five years.26 The author is also prevented from extending these rights of exploitation over his yet-to-be-created works by the indirect means of waiving his right to terminate such an agreement.27 These last rights are not specifically identified as moral rights in German law; but an author’s right to revoke his work, or to withdraw it from public circulation, is usually considered a kind of moral right. The provision on future works seems to involve moral interests, particularly the prerogatives of disclosure, and the moral element of free control over one’s future earnings—which, in the case of artists, are often unforeseeable. It is perhaps closest to a recognition of an ‘innate right’ to one’s own future freedom, something like a right against slave labour. Again, its explicit recognition in German law seems to fit well with the general emphasis on the principle of disclosure as the essence of the German

23 Strömholm traces monism to the earlier theories of Harum, Dambach and Stobbe: see Strömholm 1967, n 22 at 205–07. 24 Urheberrechtsgesetz, 9 September 1965, Bundesgesetzblatt, Teil I (‘BGBl. I’) at 1273, Article 39 (2), available at last visited 27 February 2012. (‘German Copyright Law’); the author must accept alterations ‘which he cannot reasonably refuse’. This version of the German copyright law in English translation includes amendments enacted in 1998; a more up-to-date version of the German law is unavailable in English translation. The history of amendments is described, with a focus on the major reforms of 2008, by K. Scheja and R. Mantz, ‘Copyright Law Reform Finally Enacted in Germany’, (2007) 3(2) Convergence, available at last visited 27 February 2012. A new round of reforms is pending; see Wolfgang Spahr, ‘German Culture Minister Announces Copyright Reform’, (27 May 2011) Billboard Magazine, available at last visited 27 February 2012. An overview of German copyright history is also available on the WIPO website, but it is not fully up to date: see last visited 27 February 2012. 25 German Copyright Law, see n 24, Article 42 (2): ‘The right of revocation may not be waived in advance. Its exercise may not be precluded’. 26 See Article 40 (1) of the German Copyright Law, n 24. 27 See German Copyright Law, n 24, Article 40(2). Article 41 also includes a ‘right of revocation for nonexercise’, which can be invoked where the publisher’s insufficient exploitation of a work ‘causes serious injury to the author’.

217

Chapter 10: Moral Rights or Economic Rights? system copyright. These provisions lead to the conclusion that German law allows moral rights to be waived, but only in circumstances that are tightly controlled. 10.29 The availability of waivers can be seen either as a conceptual matter, weakening the unity of

moral and economic rights, or as a more practical matter. Allowing moral rights to be waived brings into sharp relief the problem of the author’s relative weakness in his or her relationship to the publisher. In the Canadian scenario, for example, moral rights can be waived in their totality, and the practical consequence of the provisions on waiver in the Canadian Copyright Act are to deprive authors of their moral rights through standard form contracts that require the rights to be waived comprehensively.28 10.30 In the German case, restrictions on the author’s right to waive moral rights can be seen as a

practical attempt to remedy the relative weakness of bargaining power that characterizes many, possibly most, relationships between authors and their publishers. In Germany, the issue is addressed through an interesting combination of legislative measures designed to protect the author from unfair treatment, including the adoption of a specific ‘Law to Strengthen the Contractual Position of Authors and Performing Artists’ in 2002.29 Indeed, the key to this apparent asymmetry may truly lie in these practical concerns about inequality of bargaining power. We should not be too quick in assuming that German ‘monism’ is imperfect; and, indeed, a number of provisions also constrain the economic aspects of copyright, balancing these modifications to moral rights. The German Copyright Law will not allow the outright transfer of copyright,30 and it includes specific limitations on the content of licences.31 Like the restrictions on waiving moral rights, these features emphasize the importance of equal bargaining power, and also clarify the special nature of copyright as something more than a purely commercial right. They are in keeping with the monist theory at the core of German law, and help to reaffirm it. 10.31 The French system deals with this relationship somewhat differently. The French Code de la

Propriete Intellectuelle32 is based on the theory of an unbreakable relationship between an author and his or her work. In a framework known as ‘dualist’, France understands moral rights and economic rights as two distinct and independent types of rights.33 In practice, dualism not only creates a separation between economic and moral rights, but it also implies a hierarchy between these types of rights. Moral rights, at least at a conceptual level,

28

See Sundara Rajan, ‘Culture Matters’, n 10 at 489. Gesetz zur Stärkung der vertraglichen Stellung von Urhebern und ausübenden Künstlern vom 22. März 2002, BGBl. I S. 1155, translated as Law to Strengthen the Contractual Position of Authors and Performing Artists of 22 March 2002, amending the Copyright Law of 9 September 1965, as last amended by Article 16 of the Law of December 13, 2001, available at last visited 27 February 2012 (‘Law to Strengthen the Contractual Position of Authors and Performing Artists’). 30 The German Copyright Law, see n 24, Article 29(1) provides that the only way in which copyright can be transferred is by inheritance. The amended version may be viewed by consulting the Law to Strengthen the Contractual Position of Authors and Performing Artists (n 28), para 2. 31 For example, see Section V on ‘Dealings with Rights in Copyright’, part 2, ‘Exploitation Rights’, Articles 31–44: German Copyright Law, see n 24. Copyright as a whole ‘shall not be transferable’: see Article 29(1); see also n 29. 32 Loi N° 92-597 du 1er juillet 1992 relative au code de la propriété intellectuelle (partie législative), Journal Officiel de la Republique Francaise, 8 février 1994; Légifrance: Le service public de la diffusion du droit, available at last visited 27 February 2012 (‘Code, CPI’). 33 The contrast with German monism, which sees the two as varieties of the same right, is discussed below. 29

218

D. The Theory Behind the Rights: Monism or Dualism? predominate over economic rights. This means that limitations on economic rights need not apply to moral rights, and indeed, moral rights are expansive in startling ways. Article L121–1 of the French Code identifies two fundamental characteristics of moral 10.32 rights, with important practical consequences. The first of these is the idea that moral rights are inalienable, and, therefore, at least in theory, cannot be waived. Secondly, and in contrast to the author’s economic rights, moral rights enjoy protection in perpetuity.34 The first of these, inalienability, translates into a general prohibition on the waiver of moral 10.33 rights under French law. Waivers are officially forbidden—moral rights are ‘perpetual, inalienable, and unassignable’.35 An author or artist cannot make a contract to divest himself completely of moral rights, even if he should want to do so. This aspect of French law is extreme, and has been criticized as such by French scholars who feel that it represents the ultimate lack of recognition for artists’ freedom of choice, and ability to make intelligent choices.36 Once again, a case can be made that this restriction is mostly practical in nature—limiting 10.34 the author’s right to waive his or her moral rights is a concession in practice to a tough bargaining environment. Waivers could easily become standard industry practice. In effect, making comprehensive waivers unavailable to French authors means that the copyright industries must work with the moral rights as a fact of doing business in France. There is no question of using copyright contracts to soften the French legislative regime on moral rights, a usual occurrence in common-law jurisdictions such as Canada.37 While conceptual purity is preserved, the practical untenability of enforcing an absolute rule 10.35 against waivers is illustrated by the phenomenon of ‘ghostwriting’, commonplace in France. An author writes on behalf of another person, without divulging his or her name to the public, and the writing is published under the name and authorship of the person who commissioned it—an apparent violation of the moral right of attribution. At first glance, the practice should be illegal under the French Code. Instead, legal interpretation justifies it as an exercise of the ghostwriter’s right to anonymity, or to the use of a pseudonym. In these circumstances, the ghostwriter is said to ‘suspend’ his or her rights for the duration of the writing contract. In theory, this legal interpretation creates some uncertainty for the person commissioning the work, because the ghostwriter retains his or her right to come forward and claim authorship. At the same time, however, the ghostwriting contract must be entered 34 According to the US Constitution, the idea of rights ‘prescribed for limited times’ seems to be the very essence of copyright protection, an issue that defined the debate on extending copyright term in the Eldred case. It does not necessarily follow that the US constitutional framework is incompatible with moral rights, but the recognition of those rights in the United States would clearly require an approach different from the French. Eldred v Ashcroft, 537 US 186 (2003), 239 F 3d 372, aff’d. 35 CPI, seen 31, Article L121–1. 36 See, eg, Pierre Recht, Le Droit d’Auteur, une nouvelle forme de propriété: histoire et théorie (Gembloux: Editions J Duculot, 1969). 37 Canada is perhaps the most extreme example, as it is standard to waive moral rights in that country. Accordingly, Canadian law, despite its statutory provisions on moral rights, arguably fails to provide a legal environment conduce to their practical enforcement. Based on Canada’s weak record of case law involving moral rights, Vaver argues that Canadian ‘exceptional[ism]’ in relation to common law moral rights is ‘folklore’. See David Vaver, ‘Moral Rights Yesterday, Today and Tomorrow’, (1999) 7(3) International Journal of Information and Technology Law 270, 275–76. Vaver discusses the 1989 UK provisions on moral rights and comments that the ‘widespread use of written waivers’ is a serious obstacle to moral rights where great inequality of bargaining power between authors and publishers is the norm: Vaver (ibid.) 274–75.

219

Chapter 10: Moral Rights or Economic Rights? into and executed in good faith, necessarily limiting the ghostwriter’s opportunity to assert a right. 10.36 The second conceptual characteristic of dualism is the requirement of perpetual protection

for moral rights. Moral rights protection that is unlimited in time represents the ultimate practical result of the dualist theory of rights. Economic rights are protected for a fixed duration only, but moral rights last forever. The relationship between an author and his work is permanent. He will always be its author. No work created in France can ever be exempt from moral rights, even after it has fallen into the public domain. The key practical issue is to determine who will exercise the author’s moral rights after his death. The French Code provides clearly that the rights can be exercised by the author’s heirs, or by a third party whom the author has designated in his will.38 10.37 The experience of perpetual protection is illustrated by the recent case of Hugo, brought

more than a century and a quarter after the death of Victor Hugo by one of his descendants.39 Pierre Hugo sought, unsuccessfully, to prevent another author from writing a novel that offered a sequel to the classic Les Misérables. In the result, the decision of the French Cour de Cassation made no comment on the perpetual extension of protection to moral rights. Rather, the case failed on the grounds that preventing an author from creating a sequel would amount to an excessive and unjustified restriction on the right of the public to freedom of expression.40 10.38 Based on this single ruling, it is difficult to predict whether the public interest will be invoked

in future cases to make it more difficult for a far-removed descendent of an author to make a claim for the author’s moral rights. Nevertheless, the judgment has been criticized by some French commentators, who feel that it contradicts the traditional approach to moral rights in France, which is to give precedence to the author’s own views on the integrity of his or her own work.41 These arguments are well-rooted in French tradition, which undoubtedly sees the author’s moral right as a variant of individual rights. As French scholar, Henri Desbois, comments, ‘An individualist conception animates the law in its entirety . . .’42 10.39 From a conceptual perspective, it is important to note that both French dualism and German

monism represent authentic systems for moral rights protection through copyright law. In other words, both systems are premised upon the importance of the moral rights dimension of copyright. The differences between them, though significant at a practical level, may be less important in conceptual terms. Rather than considering a dualist system to involve a true ‘separation’ of economic and moral rights, it may be more accurate to point out that dualism imposes a hierarchy on authors’ rights, with moral rights placed higher in this ordering. 38

CPI, see n 32, Article L121–1. Hugo c Societe Plon, Arrêt no 125 du 30 janvier 2007, Cass Civ Lre, available at last visited 27 February 2012 (‘Hugo’). 40 The Cour de Cassation disapproves the earlier ruling in favour of Hugo as ‘an attack on the principle of freedom of creation’ (‘une atteinte au principe de la libre creation’): See Hugo, n 38. 41 See, for example, Xavier Skowron-Galvez, ‘Un (mauvais) coup porté au droit moral de l’auteur—L’affaire “Les Misérables”’ (2009) (last visited 8 August 2011). 42 Henri Desbois, Le Droit D’Auteur en France vii 3rd edn (Paris: Dalloz, 1978) 538–39, para 449 (translation mine). 39

220

D. The Theory Behind the Rights: Monism or Dualism? Monism, on the other hand, prefers to maintain its recognition of the unity of all rights of authorship. Adjustments to both moral and economic rights accommodate this theory while responding, with Germanic flair, to the practical demands of the marketplace. The distinction between French dualism and German monism ultimately presents an imper- 10.40 fect contrast—shades of grey, rather than black and white. As Adolf Dietz observes, German and French law share the approach of dividing authors’ rights into the two large groups consisting of economic and moral interests. He asks, Why does this apparently dual structure of copyright lead in one case to a dualistic and in the other case to a monistic interpretation of copyright? The answer to this delicate question is that the apparently dual structure of the content of copyright is only half of the truth. . . . [I]t is copyright as a whole which serves to protect intellectual and moral as well as economic interests of authors. This could also be called [a] . . . unitary or synthetic concept of copyright . . .43

Dietz’s analysis emphasizes the point that the difference between monist and dualist theory is 10.41 a subtle one. Dualism is based on the idea that moral rights are ‘chronologically and systematically primordial’.44 Once again, the key to dualism is not the division between economic and moral rights, so much as the establishment of a hierarchy between them. In a dualist system, moral rights are pre-eminent; their status is superior to that of economic rights. From the perspective of overlapping rights, the monist idea seems to describe the notion of 10.42 overlapping moral and economic rights quite well. However, in this regard, the apparent contrast between monist and dualist concepts of moral rights must be interpreted, once again, with caution. At first glance, it may appear that dualism is different from the possibility of overlapping protection, and excludes it. But this interpretation of dualist theory, in the traditional sense of the term, would be inaccurate. The fundamental objective of dualism is to give priority to the intangible interests of authors. By doing so, the theory does not require that moral and economic rights be derived from different and distinct foundations. On the contrary, this would be, as Dietz points out, a partial truth. It would be more satisfying to say that the tradition of dualism, in its own way, comprehends a common origin for all rights of authorship. From the perspective of overlapping rights, this brief consideration of the origins of moral 10.43 rights shows that theorists have always recognized a common origin for moral and economic rights of authorship—even in the ‘dualist’ stream of French tradition. To suggest that an overlapping understanding of these rights is appropriate for technology is not, therefore, to say anything new. Indeed, in another sense, it is actually to go back to the early history of moral rights doctrine. But the application of the theory to a modern context is complicated by the demands of a technological and global environment. The Canadian case of Théberge is but one illustration of this problem.

43 Adolf Dietz, ‘The Moral Right of the Author:Moral Rights and the Civil Law Countries’, Preliminary Remarks at the ALAI (Association littéraire et artistique internationale) Congress, Antwerp 1993, (1994–95) 19 Colum-VLA J L & Arts 199 at 206–07. 44 Ibid., at 207.

221

Chapter 10: Moral Rights or Economic Rights?

E. The International Arena: From Dualism to Realism 10.44 The international expansion of the moral rights concept began with their adoption in the

Berne Convention in 1928, at the Rome revision conference of this crucial international treaty. This was the first attempt to broaden moral rights beyond the countries of Continental Europe which recognized it in their domestic laws—not only France and Germany, but also, virtually all other jurisdictions in Western, Central, and Eastern Europe—and make it a general principle that would apply to all member countries of the Berne Union. The significance of this attempt lay in the wide reach of Berne, which not only included European countries, but, by colonial extension, applied to all of the non-European jurisdictions controlled by European powers. Countries as diverse as India, Canada, and Australia would find themselves to be part of the Berne system. 10.45 But the inclusion of Great Britain and associated common-law jurisdictions meant that the

moral rights idea found itself on unfamiliar territory. The Berne Convention therefore proceeded on the basis of a compromise with the common-law countries. Moral rights were to be part of Berne, but not in the open-ended formula that they enjoyed in French law, nor on the basis of the strong monist theory of German law. Rather, Berne strove towards an effective accommodation of common-law systems, which not only failed to recognize moral rights by statutory measures, but also excluded moral rights from other sources of the law. Indeed, early British jurisprudence had established the principle that common-law copyright was limited to the protection that could be found in the copyright statute. The practical effect of these precedents was to eliminate the possibility of a non-statutory basis for moral rights protection in English law, a principle that spread to other common-law jurisdictions.45 10.46 The 1928 provisions on moral rights in the Berne Convention provided as follows:

Independently of the author’s copyright, and even after transfer of the said copyright, the author shall have the right to claim authorship of the work, as well as the right to object to any distortion, mutilation or other modification of the said work which would be prejudicial to his honour or reputation.46 10.47 From the wide range of possible moral rights, the 1928 provision envisioned the protection

of the two which were universally recognized among Continental European countries: attribution and integrity.47 The Berne formula for the protection of these rights established two important principles at the foundation of international moral rights. The first of these was to provide for the ‘independence’ of moral rights, meaning that the rights were to be recognized as a distinctive area of legal protection that could not be automatically subsumed into general principles for the protection of economic rights. Accordingly, the fact that an author had

45 Millar v Taylor (1769) 4 Burr 2303, 98 ER 201; Donaldson v Beckett (1774) 2 Brown’s Parl Cases 129, 1 ER 837. However, there was no theoretical necessity for the establishment of this principle—it was, rather, a historical side-effect. See the discussion in Sundara Rajan, Moral Rights (n 3) 94–100. 46 Rome Act, 1928, n 8, Article 6bis (1). Article 6bis (2) deals with the practical exercise of the rights, and in 1928, it provided: ‘The determination of the conditions under which these rights shall be exercised is reserved for the national legislation of the countries of the Union. The means of redress for safeguarding these rights shall be regulated by the legislation of the country where protection is claimed.’ 47 Adeney mentions the right ‘to decide if the work should appear’—disclosure—which is arguably implied in Art 6bis. See Elizabeth Adeney, The Moral Rights of Authors and Performers: An International and Comparative Analysis: New Edition, (Oxford: Oxford University Press, 2006) para 6.30.

222

E. The International Arena: From Dualism to Realism sold his or her economic rights in a work would not imply that he or she had parted with the moral rights. The second foundational principle was the idea that an author who wanted to object to the mutilation of his or her work must be able to show that the damage ‘would be prejudicial to his honour or reputation’. This provision imposes a burden of proof that authors would have to meet; it raises a number of practical questions about the nature and kind of evidence to be presented, and the general risks associated with a moral rights proceeding. In contrast, French law effectively accepts that an author who complains of a moral rights violation enjoys the benefit of a prima facie case in his or her favour: the defendant must show how the treatment of the work does not amount to a violation. In the formula adopted by Berne, the right of attribution could also be called a right of reputation. The communiqués surrounding the 1928 discussions show that the common law countries 10.48 may have been partly persuaded to accept moral rights because they believed that they were not agreeing to anything new. Instead, the rights were apparently perceived by the UK and Australian delegations to the Rome conference as a codification of rights that were already enjoyed by their authors—presumably, through the common law of tort and statutory provisions outside copyright law that addressed related issues.48 It is worth noting the inherent paradox in this view: under English law, copyright is not supposed to be available outside the framework of the Copyright Act. The susceptibility of tort provisions to serve the cause of authorship can be explained as a coincidence of interests: any individual can rely on tort law, and the damage suffered by an individual who also happens to be an author is likely to be related to his or her authorship of a work. Overall, it was also to the advantage of commonlaw countries to accept moral rights in the Berne Convention because of Berne’s reliance on the principle of national treatment. Authors from the common-law countries would enjoy moral rights abroad, while the common-law countries were only constrained to apply the minimum standards in Berne within their own borders.49 The end result of international discussions was to establish a framework for moral rights in 10.49 the Berne Convention that was based on a definite separation of moral and economic rights. This scheme was not ‘dualist’ in the French sense, because it did not impose a hierarchy on authors’ rights, with moral rights at the top and economic rights beneath them. Rather, the Berne scheme recognized moral rights as an independent area of authors’ rights, and imposed a specific burden of proof that would need to be satisfied before the right of integrity, in particular, could be vindicated. The provisions were a true international compromise: the presence of moral rights in the Convention represented a victory for civil law principles, but the form in which they were recognized was a concession to common-law practice. The basic theory was one of separation, and perhaps—from a civil law perspective—a reduction in status for moral rights. At the same time, there was nothing in the Berne Convention that explicitly excluded the simultaneous recognition of economic and moral rights, and the possibility of overlapping rights and claims involving both areas.

48 Ibid., paras 6.19–27. At para 6.20, citing the description of Australian delegate to the revision conference, Harrison Moore, she notes: ‘[T]he Copyright countries for many years felt justified in their assertion that their domestic legislation already protected moral rights to the level required by the Convention.’ 49 I am indebted to Colin Tapper for pointing this out (personal communication with the author, 4 June 2010).

223

Chapter 10: Moral Rights or Economic Rights?

F. Technology Dissolves Boundaries between Rights: The WIPO Internet Treaties50 10.50 The WIPO Internet Treaties represented the first attempt, at the international level, to

re-fashion copyright with digital technology in mind. Notwithstanding TRIPS, this innovation is to WIPO’s credit, and did not happen at the WTO. By the time of its adoption, the TRIPS Agreement was already becoming obsolete, and the vast scope of TRIPS has made it difficult and slow to amend. The WIPO Internet Treaties were essentially drafted to address this concern. There are two treaties, of unequal weight: the groundbreaking WIPO Copyright Treaty, or WCT, and the more specialized WIPO Performances and Phonograms Treaty, the WPPT.51 The Treaties were the product of a landmark exercise in treaty-making. Concise and to the point, they focus directly, and purely, on digital issues. 10.51 Of the two instruments, the WPPT contains specific provisions on the moral rights of

performers—a practical and conceptual innovation in moral rights, which have never before been extended to performers at the international level. The amendments signified a new status for performers and their work, who, rather than being mere ‘disseminators’ of a composer’s work, will now be seen as creators of works in their own right. The drafting of these provisions mirrored the Berne Convention in all significant respects, and, in particular, maintained the rights and theories of proof required by Berne in relation to authors’ moral rights.52 10.52 What is perhaps more interesting to consider is the approach of the WIPO Copyright Treaty.

Could an international treaty containing substantive provisions on copyright law, a successor to the Berne Convention, be drafted without including measures on moral rights? In fact, the WIPO Copyright Treaty makes no explicit mention of moral rights. However, it is interesting to note that the form in which a number of ‘digital’ rights is expressed in the WCT seems evocative of moral rights. In an era of potentially overlapping economic and moral rights, as illustrated by the curious judgment in Théberge, a closer examination of these WCT rights could be valuable. In particular, are there moral as well as economic dimensions to digital rights, as they are conceptualized in the WCT? 10.53 The single major innovation in the WCT is its creation of a right of ‘making available’.

It brings every internet transaction involving a copyright work within the ambit of

50 Parts of the analysis in this section have appeared, in an earlier version, in Sundara Rajan, Moral Rights, see n 3 at 258–72. 51 WIPO Copyright Treaty (adopted 20 December 1996, entered into force 6 March 2002) (1997), 36 ILM 65 (‘WCT’), available at last visited 27 February 2012; WIPO Performances and Phonograms Treaty (adopted 20 December 1996, entered into force 20 May 2002) (1997), 36 ILM 76, available at last visited 29 April 2010 (‘WPPT’). 52 See Sundara Rajan, Moral Rights, n 3 at 263: ‘The new moral rights are set out in Article 5 of the WPPT. The rights created by the Article closely resemble those established in Article 6bis of the Berne Convention, though they are not identical. Berne articulates two fundamental moral rights for authors: a right of attribution and a right of integrity. Article 5 of WPPT creates the same two rights for performers. However, in its formulation of the performers’ integrity right, the WPPT is slightly more conservative than Berne. It removes the possibility that any “other derogatory action” could violate integrity, and it eliminates the concept of “honor”. Of these modifications, Mihály Ficsor sees the second as potentially significant’ (footnotes omitted).

224

F. Technology Dissolves Boundaries between Rights: The WIPO Internet Treaties copyright restrictions. It also confirms that internet privacy is an illusion: once we accept the WCT concept of infringement, there is no inviolable privacy of internet use.53 Data on internet use must be collected to furnish the necessary evidence of copyright infringement. This issue has been uneasily avoided by Canadian courts in the BMG v John Doe litigation, and the European Court of Justice has collided with it in the Promusicae case. As Fanny Coudert and Evi Werkers succinctly conclude, The ECJ decided that it cannot be derived from European legislation that Member States are obliged to install a duty to provide personal data in the context of a civil procedure to ensure the effective protection of copyright. It did not however provide guidelines on how the balance should be made. In sum, the ‘hot potato’ was passed on to the Member States.54

The role of the moral rights concept in the WIPO Copyright Treaty is difficult to assess.55 10.54 As noted, the Treaty makes no explicit reference whatsoever to moral rights, which is straightforward enough. However, there is a subtext of possibilities for moral rights which is worth exploring. As is often the case where moral rights arise in a digital context, the concept of moral interests seems to arise out of the text as a by-product of some of its other objectives. This observation is important, because it reminds us of one of the characteristics of moral rights—their informal quality. The relevance of the WCT to moral rights lies in the evocative power of its language. The potential significance of the WCT in laying the foundation for a future accommodation of moral rights at the international level means that these conceptual allusions should not be ignored. The language of the WCT is different from that of other copyright conventions, and suggests 10.55 at least two interesting things. First, the Treaty’s preoccupation with technology seems to be carrying copyright law towards a new conceptual orientation. The model of copyright law articulated by the WCT points towards a merging of economic rights with what might be called authorship interests. This observation is supported by a second point, the evident focus of the Treaty’s language on authorship rather than ownership. The Preamble of the WCT points out that it is largely a response to ‘the profound impact of 10.56 the development and convergence of information and communication technologies on the creation and use of literary and artistic works’. The most significant innovation that it introduces in this regard is the creation of a new ‘right of communication to the public’. Not present in any other international copyright instrument, this right is a pure innovation. Defined in Article 8, it introduces the concept of ‘making [a work] available’, specifying that, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making

53 The potential conflict between a need for data on internet usage in order to secure evidence in copyright infringement cases and individual privacy has become a theme of the discussions surrounding the liability of internet service providers for illegal file-sharing. For examples, see BMG Canada Inc v John Doe, 2005 FCA 193, [2005] 4 RCF 81 and Productores de Música de España (Promusicae) v Telefónica de España SAU (Telefónica), Judgment of the Court (Grand Chamber) of 29 January 2008, Case C-275/06, available at last visited 27 February 2012. 54 Fanny Coudert and Evi Werkers, ‘In the Aftermath of the Promusicae Case: How to Strike the Balance?’, (2010) 18(1) International Journal of Law and Information Technology 50, 51. 55 An earlier version of the following analysis of the WCT was presented at the Seventeenth BILETA Annual Conference in 2002. A draft version of the conference paper is available at http://www.bileta.ac.uk/content/ files/conference%20papers/2002/Moral%20Rights%20and%20Copyright%20Harmonisation%20-%20 Prospects%20for%20an%20’International%20Moral%20Right’.pdf> last visited 14 July 2011.

225

Chapter 10: Moral Rights or Economic Rights? available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.56 10.57 In common-law copyright systems, the right of communication to the public is considered

a fundamental economic right. While the right of reproduction is the essence of copyright protection, the right of communication to the public was initially considered necessary, as Sam Ricketson observes, for copyright works that are disseminated to the public through non-material representation, such as dramatic or musical performances.57 It may be helpful to think of the right as being closely aligned with neighbouring, or performers’, rights.58 This history of the right is an interesting one; it suggests that an active fusion of copyright with neighbouring rights has occurred in the WCT—a reaction that has been precipitated by digital technology. 10.58 The character of the economic ‘communication’ right is perhaps reflected more precisely in

its French name, the right of ‘représentation’.59 With the growth of digital reproduction technologies and technologies of instantaneous communication, the scope of the communication right, or right of representation, has become much broader. It is no longer performance alone that presents a challenge; a vast array of other means and methods for conveying and communicating works exists. The language of Article 8 clearly visualizes the prospect of disseminating works via broadcasting, cable, and satellite technologies, and, of course, the internet. 10.59 As noted, Article 8 of the WCT does not make explicit reference to moral rights. However,

the new right of communication to the public bears a striking resemblance to the moral right of ‘divulgation’, or disclosure. The idea that an author should be able to control the circumstances in which his work first appears before the public is the very foundation of moral rights. For example, confiscating an unpublished work from its author and publishing it would clearly be a violation of the author’s moral rights, and is recognized as such in most jurisdictions where they are protected.60 Although the right of divulgation was not explicitly

56 See WCT, n 50: Article 8 Right of Communication to the Public Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1)(ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them. 57 Sam Ricketson, The Berne Convention for the Protection of Literary and Artistic Works: 1886–1986 (Centre for Commercial Law Studies, Queen Mary College, Kluwer 1987) at para 8.63. Ricketson and co-author Jane Ginsburg offer an updated version of this study, in Sam Ricketson and Jane Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, 2nd edn (Oxford: Oxford University Press, 2005) para 3.09. 58 Neighbouring rights are known by this term because their scope is less ambitious than an author’s copyright. They have been a form of protection for performers, whose status is generally inferior to that of authors, but they also extend to other types of broadcasting and dissemination activities. As a group, they are considered ‘secondary’, or ‘neighbouring’, to copyright. 59 J.M. Pontier, J.C. Ricci and J. Bourdon, Droit de la Culture 2nd edn (Paris: Dalloz, 1996) para 347. 60 On the other hand, it is common practice in developing countries to allow translations to be made on the basis of a compulsory licence issued by the government. In a sense, this could amount to a trespass on an author’s right of disclosure—for example, the practice, observed in India, of translating a work written in English, or translated into the language, by a writer whose primary language is one of the Indian national languages, back into the writer’s native language. This example arose in relation to the publication of S. Vijaya Bharati, C. Subramania Bharati (Government of India Publications 1974); this biography, written in English by a Tamil writer was subsequently translated into Tamil and published by the Government of India without the author’s permission.

226

F. Technology Dissolves Boundaries between Rights: The WIPO Internet Treaties included in Article 6bis of the Berne Convention, some commentators believe that the right is nevertheless built into the provisions of Berne.61 The right of communication in Article 8 of the WIPO Copyright Treaty aims to protect— 10.60 indeed, secure—economic gains to the author from the dissemination of his work by digital means. However, it is also apparent that the Article emphasizes the author’s right, in more general terms, to present his work to the public. The right represents legal protection for the personal choice of the author. The language of Article 8 is entirely open-ended—‘the exclusive right of authorizing any communication to the public of [the authors’] . . . works’—and it does not distinguish between the economic right and the moral right, at all. The only important characteristic of the right is that it is ‘exclusive’ to the author. Once again, it is worth noting that initial communication of a work to the public is the 10.61 essence of the moral rights idea. And indeed, this observation brings us full circle, in the sense that the right to choose the conditions of first publication is also the essence of economic copyright. Whether we call it communication, représentation, or divulgation, there can be no doubt that the concept lies at the origin of the author’s economic and moral rights alike. As Claude Colombet observes, It is the right of divulgation which, chronologically, precedes the other [moral rights], as it is through the exercise [of this right that] the work, removed from its author, enters into the economic circuit, and becomes an economic good on the basis of which the other attributes of the author’s right, both moral and economic, can be exercised.62

If, indeed, Article 8 of the WIPO Copyright Treaty can serve the purpose of helping authors 10.62 to cope with the erosion of their moral interests in a digital environment, it is disappointing that the right of disclosure should not have found expression alongside the right of communication. Its absence is undoubtedly rooted in the preference of common-law countries to avoid the language of moral rights—perhaps, especially, in view of the active participation of the United States in drafting the WCT.63 However, the curious convergence of economic and moral interests in the language of the WCT shows that any attempt to separate the moral and material concerns of authors in the digital age will be an increasingly artificial exercise— a theme that is highlighted by the judgement in Théberge. It seems inevitable that the moral interests of authors, just like their economic rights, will be implicated in new technology.

61 But see Adeney, n 43 at para 6.34, who shows that the idea of a right of disclosure was deliberately excluded from Berne. 62 C. Colombet, Grands principes du droit d’auteur et des droits voisins dans le monde: Approche de droit comparé 2nd edn (Paris: Unesco, 1992) 42: ‘C’est le droit de divulgation qui, chronologiquement, précède les autres, car c’est à partir de son exercice que l’oeuvre, arrachée à son auteur, entre dans le circuit économique, devient un bien patrimonial sur lequel pourront s’exercer les autres attributs, tant moraux que pécuniaires, du droit d’auteur’. (translation mine). 63 Nevertheless, as discussed in the following section, US leadership favoured the creation of a performer’s moral right. No doubt, the addition of a moral right for performers was seen as desirable because it would impose an additional layer of protection on music in the online file-sharing environment. See Pamela Samuleson, ‘The U.S. Digital Agenda at WIPO’ (1997), 37 Va J Int’l L 369.

227

Chapter 10: Moral Rights or Economic Rights?

G. The Future: A Unified Author’s Right? 10.63 There is nothing new about the idea of overlapping economic and moral rights. Rather, the

notion that both kinds of rights are derived from a common root has been with the law of copyright and authors’ rights from the very beginning. In the common-law tradition, the moral rights of authors were ultimately excluded from copyright law in order to serve broader goals of public policy, including the protection of freedom of the press.64 In civil law jurisdictions, moral rights were given pride of place in copyright theory, with both monist and dualist systems recognizing the fundamental importance of moral rights protection. At the same time, both traditions of authors’ rights have evolved practical mechanisms to deal with the impact of the moral rights idea on copyright transactions, whether through legislative provisions or interpretive customs. 10.64 The international copyright arena has truly generated compromise solutions, recognizing

moral rights, but imposing significant practical restrictions on their scope. While the spirit of compromise is evident in the original Berne Convention text surrounding moral rights, the accommodation of common-law countries has been more precisely articulated in the subsequent amendment of the Convention. The current text of Article 6bis, adopted in 1967, spells out the acceptability of using tort provisions as a mechanism for the protection of moral rights—without, however, referring to tort law by name.65 The separation of moral rights from economic rights was presumed and, in contrast to the dualist tradition of France, if any hierarchy between the two types of rights was established, moral rights would have to be said to fall beneath economic rights in status. This international framework is closely reflected in the law of common-law countries. 10.65 With the exception of Canada and common-law countries in the developing world, such as

India, common-law countries neglected to adopt moral rights in their copyright laws throughout most of the twentieth century, arguing, instead, that adequate protection for moral rights was provided by existing law.66 Tort protection, in particular, was invoked as a substitute for the copyright protection of moral rights. The adoption of moral rights amendments in a range of common law countries at the end of the twentieth century and the beginning of the twenty-first, saw this tradition of limited recognition continue, with only Australia moving to provide comprehensive protection for the moral rights of authors in its amendments of the year 2000.67 Australia’s unique approach can perhaps be explained by the

64

See the discussion of Millar and Donaldson in Sundara Rajan, Moral Rights, n 3 at 94–100. The current text of Article 6bis(2) reads as follows: ‘The rights granted to the author in accordance with the preceding paragraph shall, after his death, be maintained, at least until the expiry of the economic rights, and shall be exercisable by the persons or institutions authorized by the legislation of the country where protection is claimed. However, those countries whose legislation, at the moment of their ratification of or accession to this Act, does not provide for the protection after the death of the author of all the rights set out in the preceding paragraph may provide that some of these rights may, after his death, cease to be maintained.’ See Berne Convention, n 2. 66 See, eg, the Gregory Committee Report (1952) (Cmd 8662), which reviewed Britain’s copyright law. See also the discussion in Gerald Dworkin, ‘The Moral Right of the Author: Moral Rights and the Common Law Countries’, (1995) 19 Columbia-VLA Journal of Law and the Arts 229, 237–38. 67 See Copyright Amendment (Moral Rights) Act 2000 (Austl), available at last visited 27 February 2012. The moral rights provisions entered into force on 21 December 2000. 65

228

G. The Future: A Unified Author’s Right? presence of Aboriginal cultures in Australia and, the ever-present theme of the twenty-first century, by the power of technology. In the light of technological change, it seems crucially important to examine what has hap- 10.66 pened to moral rights on the international stage. Some expansion of moral rights has clearly occurred through the recognition of performers’ moral rights in the WIPO Performances and Phonograms Treaty.68 However, copyright itself has expanded to include recognition for new rights, and for new approaches to the interpretation of rights in the technological context. Most significant among these would be the reinterpretation of basic copyright concepts such as publication and reproduction. At the international level, these changes are reflected in the WIPO Copyright Treaty. The right of ‘making available’, which it pioneered, effectively provides that the dissemination of works by electronic means, including the internet, will be the foundational, and fundamental, author’s right of the future.69 Importantly, an analysis of the ‘making available’ right in the WCT shows that it reflects both 10.67 economic and moral concepts of publication. The right includes implicit recognition of the concept that an author must desire to release his or her work to the public via, for example, the internet—the classic definition of the moral right of disclosure, which is considered implicit in all systems of moral rights including the Berne Convention. In the era of the internet, it is difficult, as a practical matter, to separate an author’s economic right to be compensated for the publication of the work from his or her moral right to control its release to the public. The very definition of authors’ rights seems to be moving towards a new and more unified understanding of the copyright concept, brought about by technology—not only its practical demands, but also, the intellectual pressure that digitization exerts on received concepts. Increasingly, rights such as ‘making available’ may be best framed in broad terms that incorporate both economic and ‘moral’ factors. From a common-law perspective, these developments are especially significant. Common-law countries have favoured the separation of economic and moral rights. They 10.68 have done so with a view to limiting the exercise of moral rights through copyright law; but, at the same time, this conceptual separation has actually favoured the interpretation of overlapping rights, with tort law and other legal devices serving as methods of protection for moral rights. In this regard, special mention must be made of the United States. The rejection of moral 10.69 rights was among the reasons why the United States chose not to join the Berne Convention until the late date of 1989; with the exception of the Visual Artists Rights Act of 1990, moral rights have not yet found a place in US copyright law. In effect, if the US position on moral rights had been explored, the United States would have favoured a strict separation between economic and moral rights. And yet, moral rights protection gently insinuated itself into US copyright practice through doctrines that were accepted in the interpretation of economic rights under US law. A well-known example was the doctrine of ‘derivative works’, illustrated

68

See WPPT, n 50, Article 5. As noted above (see n 56 and accompanying text), the right of ‘making available’ is a component of the ‘Right of Communication to the Public’, which appears in Article 8 of the WCT (n 56): ‘the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.’ 69

229

Chapter 10: Moral Rights or Economic Rights? by the Gilliam case of 1976,70 which prohibits anyone from making a new work based on an existing work without the explicit permission of the author of the original. In Gilliam, the derivative works concept was famously invoked by the British troupe of ‘Monty Python’ comedians, who sued the ABC network for attempting to broadcast edited versions of their skits in the United States. A sympathetic court found that the edited skits, which had been modified to remove risqué humour—a hallmark of the group’s comedic style—created new works that were so different from the originals that they could be considered ‘derivative works’ in the usual sense of the term. Accordingly, the network had made an unauthorized, new work out of the Monty Python originals, leading to an infringement of copyright law. In a different jurisdiction, the same facts could have been pleaded as a case about the violation of the moral right of integrity. This is an extreme illustration of overlapping rights. Here, however, the overlap is not as subtle as the case described by the minority justices of the Canadian Supreme Court in Théberge. Rather, it is a simple case of economic rights overlapping with moral rights and, in the context of the US legal system, subsuming them entirely. 10.70 Part of the importance of the issue of overlapping rights arises out of these kinds of circum-

stances in common-law countries, including the United States and Canada. In Canada, Théberge now seems to suggest that any overlap between economic and moral rights will be firmly rejected by the courts. This issue is muddied by the reality of a divided Supreme Court, and by the ambiguous comments in the subsequent decision of Desputeaux. 10.71 In the United States, Gilliam has long stood for the position that moral rights issues could be

framed successfully in the language of economic rights. However, a shift may have occurred because of the Dastar decision, issued by the US Supreme Court in 2002.71 Partly as a result of questionable interpretation of the judgment in this case, Dastar seems to have foreclosed the possibility of claiming that violations of the moral right of attribution can be corrected by the operation of the Lanham Act, legislation that effectively codifies the tort of passing off.72 In both countries, the trend seems to be away from the recognition of overlapping rights at a time when technological developments actually encourage the simultaneous recognition of moral and economic dimensions in most copyright-protected activities. At the same time, neither country has a legislative scheme for moral rights, or any other method of compensating for the exclusion of these interpretive flexibilities. 10.72 There is little doubt that the concept of overlapping rights will be important for the future of

copyright law. In particular, it can help to guide common-law countries towards a more comfortable coexistence with technology, and a more sophisticated appreciation of the ethics of information use and abuse in the century to come. In a situation that is perhaps unusual for lawyers, substance may ultimately prove to be more important than terminology. Where authors’ moral rights are concerned, ‘a rose by any other name’ may indeed prove to smell as sweet.

70

Gilliam v American Broadcasting Companies, 538 F 2d 14 (2nd Cir 1976) (‘Gilliam’). Dastar Corp v Twentieth Century Fox Film Corp et al., 539 US 23 (2003) (‘Dastar’). 72 See the Lanham Act, n 6, s 43(1)(b). It should be noted that this far-reaching interpretation of Dastar, though widely accepted by the US legal community, is a questionable reading of the United States Supreme Court’s approach, which actually seems to aim towards a narrower holding on when the Lanham Act will not be applicable. The issue is discussed in Sundara Rajan, Moral Rights, n 3 at 144–48. 71

230

11 PROTECTION OF ‘FAMOUS’ MARKS UNDER TRADEMARK LAW AND PASSING OFF David Llewelyn, Professor of Intellectual Property Law, King’s College London; Professor (Practice), School of Law, Singapore Management University1

A. Hypothetical B. Introduction C. Passing Off (1) (2) (3) (4) (5)

Goodwill Advocaat in the House of Lords A taste of lemon Extended passing off: yet more drinks A law of unfair competition? Not smelling rosy (6) Passing off: the more things change the more they stay the same

11.01 11.05 11.07 11.09 11.11 11.13 11.17 11.24 11.31

D. Trademark Law (1) A special right for ‘well-known trade marks’ (2) Ease of registration (3) You’re on your own with relative grounds (4) Infringement: does confusion still reign? (5) Diluting the meaning of ‘well-known’? (6) Unfair? (7) The Court of Appeal mixes it all up

E. Back to the Hypothetical F. Summary

11.34 11.34 11.35 11.38 11.40 11.43 11.51 11.63 11.70 11.73

A. Hypothetical In 2008 Rownbury, a China-based multinational business, registered as Community trade- 11.01 marks for confectionery both the word ‘Sweetie’ and (without the word) the bright red and yellow striped hexagonal boxes in which it sells its products, mostly in Asia but over the past six months also in France, Germany, and the duty-free shop at Heathrow Terminal 5. Rownbury has just started a heavy advertising campaign, using both traditional and social 11.02 media, for the upcoming launch of its products onto the UK market generally. That campaign features well-known Chinese kung-fu actor Lu Wei Lin, who tells viewers to ‘buy a taste of the Orient: Sweetie’. Cadtree, a long-established but still small business in the Peak District, has been selling for 11.03 many years a range of fudge products called ‘Peak Sweetie’ in a red and yellow striped tin. They sell the fudge in speciality sweet shops all around the country, although their turnover

1 The author would like to thank Marilee Owens, PhD student at Queen Mary College London, for her assistance.

231

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off is only about £400,000 a year. Recently, due to the increased cost of tin, they have switched to selling the fudge in a hexagonal box using the same colours. 11.04 Dominic Cadtree, the grandson of the firm’s founder, has just received a letter from a law

firm in Fleet Street down in London (‘thought that’s where those journalists who ‘ack are’) threatening something called passing off and also infringement of trademarks (‘they say they’ve got “Sweetie” registered as a trademark: they can’t do that can they? It’s a common word.’). He asks for your advice.

B. Introduction 11.05 As with many areas of intellectual property law, in the area of trademarks there has long been

an overlap between the different categories of protection available, through the tort of passing off (and potentially injurious falsehood) and that given to the owner of a registered trademark. In the past, both causes of action were usually pleaded in the alternative by the owners of well-known registered trademarks. Obviously, in the event a well-known mark remained unregistered (and a significant number did for a variety of reasons), only the passing off route was available. 11.06 This has changed in recent years with the advent of a more liberal system for the registration

of trademarks in the UK and EU and, once registered, a significant widening of the scope of protection, particularly for marks with a reputation, which one can assume would encompass all well-known or famous marks provided they are registered in the UK or under the Community Trade Mark regime. Today, it is highly unlikely that the owner of a registered trademark would lose an action for infringement yet succeed in a passing off claim, although the reverse is not uncommon.2 Indeed one might legitimately question in many cases brought by the owners of registered trademarks why a passing off claim has been thrown into the equation at all, other than to add cost.

C. Passing Off 3 11.07 The law of passing off in England has its origins in the tort of deceit. Arguably, the first

recorded case was in the mid-sixteenth century 4 where a manufacturer of cloth and a clothier was well-known for the quality of his cloth. He began to put on his cloth a mark which was soon copied by another clothier. The court enjoined the other clothier from using the mark on cloth he manufactured on the basis that it was deceptive.

2 See, for example, Julius Sämaan v Tetrosyl [2006] FSR 42, at para 118 where Kitchin J, after finding trademark infringement under the Trade Marks Act 1994, sub ss10(2) and (3) proved, found no passing off when considering all the circumstances of the defendant’s trade, including the difference between the packaging they used and that used by the claimant, and the lack of any actual confusion. 3 This article will not deal with the potential overlap between passing off and injurious falsehood: see Cornish, Llewelyn and Aplin, Intellectual Property: Patents, Copyright, Trade Marks & Allied Rights 7th edn (London: Sweet and Maxwell, 2010), at para17–48 and following. 4 JG v Samford (1656) Pop R 144; discussed in Schechter, The Historical Foundations of the Law Relating to Trade-Marks (New York: Columbia, 1925).

232

C. Passing Off The term ‘passing off’ does not appear to have been used until 1842, in the law report 11.08 headnote for Perry v Truefit,5 in which two competing hair loss treatment products were both called ‘Medicated Mexican Hair Balm’. Lord Langdale held that a misrepresentation can be cause for the grant of an injunction, stating the law to be that ‘a man is not to sell his own goods under the pretence that they are the goods of another man’. This statement has been referred to in many subsequent cases, including by Lord Herschell in the landmark 1896 House of Lords’ judgment in Reddaway v Banham.6 (1) Goodwill In 1901, the House of Lords in a tax case, IRC v Muller’s Margarine7, had to decide what is 11.09 ‘goodwill’. In the words of Lord Macnaghten, It is a thing very easy to describe, yet very difficult to define. It is the benefit and advantage of the good name, reputation and connection of business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business as its first start.8

This explanation was critical for the development of the tort of passing off because, as was noted by Lord Parker a few years later in Spalding v Gamage,9 the nature of the right that is protected in a passing off action is a right of property. In response to the obvious question— ‘what property’?—he felt there were strong reasons for preferring the view that it is the property in the goodwill likely to be injured by the misrepresentation.10 After the flurry of cases in the higher courts over the 30 years or so leading up to Spalding v 11.10 Gamage (all of which followed the introduction of the UK’s trademark registration system by the Trade Marks Registration Act 1875), the tort seems to have settled down and it was not until the late 1970s that the House of Lords in the Advocaat case11 had its next opportunity for a general review of where the lower courts had taken it (particularly in the so-called drinks cases12). (2) Advocaat in the House of Lords The Dutch plaintiffs made a liqueur called ‘Advocaat’ from eggs and brandewijn (a spirit) 11.11 and exported it to the UK. An English company began to market a similar drink, made from

5 (1842) 6 Beav. 6; see Wadlow, The Law of Passing Off 3rd edn (2004) at 17. Lord Langdale gave the same warning in Croft v Day (1843) Beav 84. 6 [1896] AC 199 at 209. This was one of a number of passing off cases that reached the House of Lords in this period; eg, Montgomery v Thompson [1891] AC 217, a fight between competing brewers in which Lord Macnaghten noted sagely, ‘Thirsty folk want beer, not explanations’, at 225. However, in both Native Guano v Sewage Manure (1889) 8 RPC 125, HL, and Magnolia Metal v Tandem Smelting (1900) 17 RPC 477, HL, the House of Lords illustrated a reluctance to allow competitors a cause of action against a mere misdescription of the quality of goods or services. 7 IRC v Muller [1901] AC 217. 8 [1901] AC 217 at 223. 9 (1915) 32 RPC 273, HL. 10 See generally Bently, ‘The Making of Modern Trade Mark Law: The Construction of the Legal Concept of a Trade Mark’ in Bently et al, Trade Marks and Brands (Cambridge: Cambridge University Press, 2008). Also, Millet LJ in Harrods v Harrodian School [1996] RPC 697 at 711. 11 Erven Warninck v Townend [1979] AC 731, [1980] RPC 31. 12 Champagne [1961] RPC 116 per Danckwerts J, Sherry [1969] RPC 1 per Cross J, Scotch Whisky [1970] 1 WLR 917.

233

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off fortified wine that attracted a lower excise rate than did spirits, under the name ‘Keeling’s Old English Advocaat’. 11.12 After a detailed review of the development of the tort, Lord Diplock allowed the plaintiffs’

appeal and found passing off. In doing so, he identified the five characteristics that must be present to succeed in a passing off action: • A misrepresentation; • by a trader in the course of trade; • to prospective customers or his or ultimate consumers of goods and services supplied by him; • which is calculated to injure the business or goodwill of another trader; and • which causes actual damage to the business or goodwill of the trader bringing the action.13 (3) A taste of lemon 11.13 Almost a decade later, the ‘Jif Lemon’ case14 reached the House of Lords. This action for

passing off involved life-size plastic lemons for lemon juice that had been marketed for decades by the plaintiff (or its predecessors) under the mark ‘Jif ’ and had dominated the UK market for lemon juice for years. Borden, an American company, began selling lemon juice in the UK and within five years held 5 per cent of the market. In 1985 they began selling lemon juice in a similar yellow plastic lemon bearing the mark ‘ReaLemon’ and were sued by Reckitt & Colman for passing off. 11.14 In the House of Lords, Lord Oliver set out what has become the standard test for passing off,

used in practically all subsequent cases, the ‘classical trinity’, First, [the claimant] must establish a goodwill or reputation attached to the goods or services which he supplies in the minds of the purchasing public by association with the identifying ‘get up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the [claimant’s] goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the [claimant] . . . Thirdly, he must demonstrate that he suffers, or in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the [claimant].15 11.15 In the 1990s the tort continued to be refined but did not deviate from the classical trinity,

however hard counsel in certain cases may have tried to expand the boundaries. For example, in Hodgkinson & Corby v Wards Mobility,16 after being reminded by counsel for the claimant

13 14 15 16

[1980] RPC 31, at 93. Reckitt & Colman v Borden [1990] RPC 341. Ibid., at 499. [1995] FSR 169.

234

C. Passing Off of the old adage ‘[a]nything worth copying is worth protecting’, Jacob J (as he then was) explained what was not the law, There is no tort of copying. There is no tort of taking a man’s market or customers. Neither the market nor the customers are the plaintiffs to own. There is no tort of making use of another’s goodwill as such. There is no tort of competition.17

Notwithstanding this, it would be incorrect to say that the tort of passing off has stood 11.16 dogmatically still and there are cases that surprise, although always paying homage to the tort’s historical development. Indeed some recent cases including the Vodkat judgments discussed later are surprising in their outcome although irreproachable in their logic, whilst others make it clear that this is a tort with deep roots that are not going to be dug up willingly. All are relevant to an understanding of the degree to which well known trademarks may be protected in the law of passing off. (4) Extended passing off: yet more drinks What is described as extended passing off dates back more than 50 years to the Spanish 11.17 Champagne case,18 where a large French Champagne house sued a Spanish sparkling wine maker for passing off by reason of its use of the term champagne. The claimant argued that ‘champagne’ should only be used to describe a sparkling wine made in the Champagne region of France and that makers of sparkling wines from other regions who used the term were misleading the public; people who were not knowledgeable about champagne would buy their product thinking it was something it was not. They succeeded in the claim. This case was followed by one concerning sherry.19 In this case, the claimant succeeded with 11.18 its argument that sherry meant wine from Jerez in Spain and only that. This was followed by a Scotch whisky case where a defendant was found liable for passing off 11.19 when bringing in products to the UK and describing them as Scotch whisky when in fact they were from Ecuador.20 More alcohol cases followed over the years with ‘champagne cider’ and ‘champagne perry’ found to be passing themselves as connected with the makers of champagne21 and then the Advocaat case already mentioned, in which the House of Lords’ seal of approval was put on these developments. At first instance in the Advocaat case, Goulding J. found that: ‘[a] substantial reputation and goodwill have, over half a century or more, been acquired by the name Advocaat as that of a drink with recognisable qualities of appearance, taste, strength and satisfaction.’22 In Taittinger v Allbev,23 in which a champagne house sued the makers of the non-alcoholic 11.20 Elderflower Champagne drink, Peter Gibson LJ reviewed the drinks cases and, finding in favour of the claimant, decided that, ‘there would take place a blurring or erosion of the uniqueness that now attends the word “champagne”, so that the exclusive reputation of the champagne houses would be debased.’24 By doing so, the Court of Appeal seemed to accept 17 18 19 20 21 22 23 24

[1995] FSR 169 at 174–175. Bollinger v Costa Brava Wine Co [1960] RPC 16. Vine Products Ltd v Mackenzie & Co Ltd (No 3) [1969] RPC 1. John Walker & Sons Ltd v Henry Ost & Co Ltd [1970] FSR 63. HP Bulmer Ltd v J Bollinger SA (No 3) [1978] RPC 79, CA. See n 11. [1993] FSR 641. Ibid., at 669. Lord Bingham MR and Mann LJ concurred.

235

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off that dilution of an exclusive name could constitute passing off even in the absence of confusion or deception. However, in Harrods v Harrodian School 25 Millet LJ sounded a note of caution, [U]nless care is taken this could mark an unacceptable extension to the tort of passing off. To date the law has not sought to protect the value of the brand name as such, but the value of the goodwill it generates; and it insists on proof of confusion to justify its intervention . . . I have an intellectual difficulty in accepting the concept that the law insists upon the presence of both confusion and damage and yet recognises as sufficient a head of damage which does not depend on confusion.26 11.21 This divergence in judicial thinking was well-expressed in the judgments of Patten and Rix

LJJ in the recent appeal in the Vodkat case, Diageo North America v Intercontinental Brands.27 Whilst upholding the first instance judgment of Arnold J finding passing off, Patten LJ endorsed the view expressed in Kerly’s Law of Trade Marks & Trade Names 28 that the classic and extended forms of passing off are not different torts but ‘are simply convenient labels to describe the two most obvious situations in which the law will intervene’, and noted that the tort of passing off ‘is not there simply to prevent . . . the unauthorised use of the claimant’s name’.29 Rix LJ went further, I remain concerned that the extended form of passing off should not by dint of extensions upon extensions trespass beyond the legitimate area of protection of goodwill into an illegitimate area of anti-competitiveness.30 11.22 The claim for passing off was brought by the UK’s leading producer of vodka in respect of the

defendant’s alcoholic drink called ‘Vodkat’ which, although it contained vodka, had a much lower alcohol content than vodka does (22 per cent versus at least 37.5 per cent for vodka in the EU and 40 per cent in the USA).31 Unlike sherry, Scotch whisky, and Advocaat, vodka is neither made in a specific geographical area but almost everywhere in the world (and marketed under a variety of names)32 nor is it always made from the same ingredients but can be made from fermenting anything from grain to molasses. In addition, there is no generally accepted volume of alcohol in vodka: in Russia and the Baltic states it is 40 per cent (80 degrees proof ) but some brands are as high as 62 per cent, in the EU the volume content must be at least 37.5 per cent and in the US it must be a minimum of 40 per cent. The only similarity

25

[1996] RPC 697. Ibid., at 715; in his dissent Sir Michael Kerr referred approvingly to the judgments of Peter Gibson and Mann LJJ and Lord Bingham MR in Elderflower Champagne. For an academic view in support of Millet LJ, see Carty, ‘Dilution and passing off: Cause for concern’, [1996] LQR 632 in which the author expressed concern that the Taittinger/Harrods cases undermine ‘the rationale of the tort, shifting the focus of the tort away from misrepresentation and customer confusion towards protection of trade values per se.’ at 632. Cf Aplin and Davis, Intellectual Property Law, Text Cases and Materials (Oxford: Oxford University Press, 2009): ‘Given the enormous value of certain marks and their significant role in the global economy, it is perhaps unsurprising that the tort of passing off has also [as well as registered trade mark law] evolved to give such marks additional protection’ at 222. 27 [2010] ETMR 57. 28 14th edn, 2005, at paras 15-004–15-0013. 29 [2010] ETMR 57 at para 23. 30 Ibid., at para 76. 31 [2010] ETMR 17. 32 As was noted by Rix LJ, the factual context was very different from that in Advocaat, where that drink was ‘a narrow sub-market entirely created by its manufacturers’ as opposed to the broad and generic market for vodka, [2010] ETMR 57 at para 73. 26

236

C. Passing Off between the various products sold as vodka seems to be that during the distilling process the product is filtered through activated charcoal. Importantly however, the defendant had misrepresented its product, often marketing it in a 11.23 get-up ‘reminiscent of ’ that used for vodka in a clear 70 cl bottle with a red screw cap: as was noted by Rix LJ, ‘that is always unattractive’.33 As in many passing off cases, this was decisive and, notwithstanding the obvious concerns in the Court of Appeal to ensure that the tort remains true to the classical trinity and its roots in deception, the finding of passing off was upheld. (5) A law of unfair competition? Not smelling rosy Another recent case in passing off that some contend involved famous marks (although 11.24 arguably it did not, but instead some fairly banal packaging marks) is L’Oréal v Bellure.34 In this case French cosmetics giant L’Oréal sued Bellure, a Dutch maker of smell-alike perfumes, including of luxury perfumes marketed by L’Oréal (with a retail price of £60 or more) under brand names such as ‘Trésor’, ‘Anaïs Anaïs’, and ‘Miracle’. L’Oréal alleged that Bellure was both infringing its registered packaging trademarks and passing off its Dorrall and Création Lamis ranges of products (selling at between £2 and £4) through the use of a smellalike scent, packaging ‘reminiscent of ’ L’Oréal’s, and a comparative price list that used L’Oréal’s perfume names alongside the Bellure equivalent (eg L’Oréal’s Trésor and Bellure’s ‘equivalent’ Valeur). (The trademark law issues will be discussed in the trademark section of this article.) The case was lengthy and went from the English High Court (Lewison J) to the Court of 11.25 Appeal, who sent it to the Court of Justice on trademark issues only (as passing off is purely a domestic matter), thence back to the Court of Appeal on the comparative price list issue only. What was clear from the beginning of the saga was that, short of getting the case before the Supreme Court, the claimant stood little chance in its claim for passing off in the absence of evidence of confusion or deception. Anyone who looked at or bought the defendant’s products knew they were different to those sold by L’Oréal’s; indeed the whole basis of Bellure’s business was that consumers knew their products were not L’Oréal’s. As noted by Jacob LJ, The public are not stupid. It is not suggested that anyone ever thinks a ‘replica’ product of the kind with which we are concerned is the original or comes from or is approved by the same commercial source as the original.35

The claimant’s contention that, although it was accepted the defendant’s packaging would 11.26 deceive no one, some sellers of the smell-alike product may exploit the names and packaging to make false representations and therefore they were ‘instruments of deception’36 was rejected firmly by Jacob LJ: ‘[i]f a third party down the line says something dishonest about a product honest in itself, the vendor of the honest product is not liable in passing off.’37 33

Ibid., at para 76. [2008] ETMR 1. 35 Ibid., at para7. 36 Ibid., at para 128 and following, relying on BT v One in a Million [1999] FSR 1, where the Court of Appeal found domain names registered by a cyber-squatter to be instruments of deception and therefore found passing off. 37 [2008] FSR 1 at para 132. 34

237

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off 11.27 The Court of Appeal also dealt robustly with the claimant’s argument that the requirement

in passing off that the defendant must have made a misrepresentation was ‘now outdated’.38 Jacob LJ reiterated the views he expressed in Hodgkinson & Corby that ‘at the heart of passing off lies deception or its likelihood, deception of the ultimate consumer in general.’39 Further, he cautioned that, [t]he rejected complaint [in that case] shows just how anti-competitive a law of unfair competition would or might be. What one man calls ‘unfair’, another calls ‘fair’. The market involves the interests of traders, their competitors and consumers. They all have different perspectives. An established trader would like the law to hold off all his competitors—and as far as possible . . . A newcomer will want to be able to copy—and to improve . . . And the consumer will want the best deal he can get. He would oppose anything deceptive, but probably nothing else. So I think there are real difficulties in formulating a clear and rational line between what is fair and that which is not, once one gets outside the requirement of no deception.40 11.28 Jacob LJ also declined to follow the suggestion made by Aldous LJ in a throw-away line in

BT v One in a Million that there be a law against ‘unlawful competition’41 I am far from clear what Aldous LJ was contemplating . . . If [he] was indeed contemplating a general ‘unfair competition’ tort at common law, I have, with respect, to say that I do not think it open to the courts to legislate in this way. And most certainly not at this level.42 11.29 On the notion of a tort against misappropriation, he was also dismissive,

Some commentators, generally those who support some wider tort, use the word ‘misappropriation’ of goodwill to designate it, see e.g. Hazel Carty, The Common Law and the Quest for the IP Effect, [2007] IPQ 237. I am not sure where I first saw the word used in this context, though I believe it to have come from the USA. I wish to state that I think it very unhelpful. We are all against misappropriation, just as we are all in favour of mother and apple pie. To use the word in the context of a debate about the limits of the tort of passing off and its interface with legitimate trade is at best muddling and at worst tendentious. So, I think the tort of passing off cannot and should not be extended into some general law of unfair competition. True it is that trading conditions have changed somewhat over time—but I cannot identify any particular change which makes a general tort of unfair competition desirable, still less necessary. If the courts (or indeed Parliament) were to create such a tort it would be of wholly uncertain scope—one would truly have let the genie out of the bottle. Accordingly I would dismiss the ‘unfair competition’ appeal.43 11.30 This judgment would seem to firmly quash any possibility in the foreseeable future that

English courts will adapt the tort of passing off into a law of unfair competition on the lines of those in continental Europe.44 (6) Passing off: the more things change the more they stay the same 11.31 So, although passing off remains a flexible tort, that flexibility remains firmly constrained by

the classical trinity. Professor Wadlow characterizes the tort as being at the crossroads between 38

Ibid., at paras 135 and following. [1994] 1 WLR 1564. 40 [2008] ETMR 1 at para 139. 41 [1999] FSR 1. 42 [2008] ETMR 1 at para 159. 43 [2008] ETMR 1 at paras 160–161. 44 See Chapter 16, Nordemann and Aaron, ‘The Relationship between Trademark Rights and Unfair Competition Law’, for a discussion of the relationship between unfair competition and trademarks. 39

238

D. Trademark Law three different intersections: of consumer and producer interests, ethical with economic justifications, and misrepresentation with misappropriation.45 He explains its place in relation to the economic torts, whilst arguing against its becoming a general tort of unfair competition. Professor Wadlow’s last ‘crossroad’, of misrepresentation with liability for misappropriation, 11.32 is of particular interest in our context. He writes that ‘passing off although normally thought of in terms of misrepresentation, in reality is equally firmly attached to misappropriation’. He asserts that, notwithstanding Jacob LJ’s scepticism in the L’Oréal case,46 there has long been uncertainty in the English system over whether the cause of action is really over misrepresentation or misappropriation. The debate is really about gain versus detriment. Misrepresentation focuses on the harm done to the claimant, as do basic torts such as negligence, and its ultimate focus is to give restitution to the wronged claimant. Misappropriation is concerned with the unfair benefit gained by the defendant and is based on unjust enrichment or even trespass to chattels. In that case the defendant is one who reaps but has not sown. Be that as it may, at the heart of passing off lies deception and, in the absence of legislation, 11.33 that seems likely to remain so, no matter how well-known or how much has been invested in a mark. For owners of well-known marks, however, developments in trademark law in the UK and EU over the past 15 years or so have been far more helpful. In view of the ease of obtaining trademark registration either in the UK on its own or as part of the territory covered by a Community trademark, passing off is rarely likely to be the first port of call as it may have been in the days of the Trade Marks Act 1938 and its predecessors.

D. Trademark Law (1) A special right for ‘well-known trade marks’ As a kind of bridge between passing off and registered trademarks, the Trade Marks Act 11.34 1994, s 56(2), introduced a new right for the owners of trademarks that are well-known under Article 6bis of the Paris Convention47 but may not be registered in the UK. Even without business or goodwill in the UK (which would mean the passing off action would be unavailable), the foreign owner may apply under s 56(2) to restrain by injunction,48 the use of an identical or similar mark where the use is likely to cause confusion. Unlike in passing off, there is no need to show damage or a likelihood of it.49 However, due to the fact that the vast majority of marks that could be viewed to be ‘well-known’ under the Paris Convention are registered in the UK or under the Community trademark regime50 (which includes the 45

Passing Off at the Crossroads Again, [2011] EIPR 33. See n 40. 47 A ‘well-known trade mark’ is defined in s 56(1) to be ‘a mark which is well-known in the United Kingdom’ as being the mark of a person who is a national of a Paris Convention country or is domiciled or has a real and effective industrial or commercial establishment in such country, ‘whether or not that person carries on business, or has any goodwill, in the United Kingdom’. 48 Damages are not available. 49 However, it is suggested by Kerly’s Law of Trade Marks and Trade Names (14th edn, 2005) that acquiescence for five years would defeat the claim, at para14-219. 50 It is important to note that with a Community trademark, the owner need use only in a substantial part of the Community, and that may be in one member state only, in order to maintain the registration in the face 46

239

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off UK as one of the 27 member states covered by the unitary Community trademark), the provision has been used extremely rarely. (2) Ease of registration 11.35 In the UK, the Trade Marks Act 1994 implemented the mandatory provisions of the EU

Directive51 as well as linking in the new Community trademark system.52 The overall effect of the 1994 Act was to make it much easier to obtain trademark registration (by widening the definition of what could be registered) and, once obtained, the scope of the right was much broader than hitherto. Since 1994, judgments of the Court of Justice of the European Communities (CJEU), as well as the EU’s General Court (previously the Court of First Instance), have made it even easier than was expected at the outset and broadened even further the scope of the right granted. 11.36 The absolute grounds for refusal of an application have also been interpreted narrowly.

Indeed, the policy underlying the trademark system was changed so that there now needs to be a clear reason to reject an application, rather than hitherto when the onus was on the applicant to show why its mark should be registered. An example of this is the Community trademark involved in the Whirlpool litigation dealt with at paragraph 11.66, namely the shape of a food mixer with the word ‘KitchenAid’ on it (which could barely be identified on a search of the register, and cannot be seen on the graphic representation of the mark contained in the law reports). Although the shape itself would have been excluded from registration, either because it added substantial value to the goods or it was functional,53 the mark was in fact registered due to the presence of the word mark; as such, the mark54 was not comprised ‘exclusively’ of the unregistrable shape. 11.37 In due course, because the product was sold in large numbers, the registered mark compris-

ing essentially the unregistrable shape became a mark with a reputation capable of protection under the extended form of protection under s 10(3) in the 1994 Act: some might view this to be an absurd result of an overly formulaic application of statutory provisions. Perhaps this was in the back of the mind of the judges in the English courts when the shape aspect of the mark was relied on to sue another manufacturer of a food mixer with a similar shape but sold under its own (arguably well-known) mark ‘Kenwood’ (see paragraph 11.59).55

of an attack on the ground of ‘non-use’. See however the decision of the Benelux Trade Mark Office in Onel/ Omel on 15 January 2010 (discussed in para 3.9 of the Max Planck Study), which rejected the Joint Statement of the EU Council and Commission of 20 December 1993 that considered use within one country was sufficient. The Max Planck Study concludes, at para 3.17, ‘This means that in view of the size of the EU and the significance of the rights conferred by a CTM it may well be that the courts [should] apply stricter standards as to what constitutes “genuine” use when a CTM is involved than when a national mark is involved. On the other hand, the CTM system must remain open for small, medium and large enterprises alike, and the level of use required for maintaining a CTM should not make it unnecessarily difficult for enterprises to take advantage of the CTM system.’ 51 No 89/104/EEC (‘the TM Directive’). 52 Introduced by EU Regulation 40/94 (‘CTM Regulation’). 53 In the UK, under ss 3(2)(c) and (b), respectively, of the 1994 Act. 54 The registered description was ‘The mark consists of a fanciful electric beating and mixing machine configuration upon which the word KitchenAid appears’. 55 See in this chapter, text accompanying nn 76–81.

240

D. Trademark Law (3) You’re on your own with relative grounds Also, policing of the relative grounds for refusal is no longer carried out by the UK Trade 11.38 Marks Registry. Instead, it is incumbent on all businesses to check what marks are being registered and to oppose them if they believe they conflict with marks already registered. In addition, the 1994 Act deals with passing off specifically in s 5(4): A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

Thus, in addition to its claim for passing off, the owner of goodwill arising through use of an 11.39 unregistered mark or other trade indicia may be able to prevent registration of a mark which, if used, would constitute passing off. (4) Infringement: does confusion still reign? When it comes to possible infringement of a registered mark that may be well-known, the 11.40 owner has a choice of weapons: assuming the defendant’s use is not of the identical sign in relation to the same goods or services for which the mark is registered,56 then under s 10(2) of the 1994 Act there is infringement if the defendant has (a) used an identical or similar sign, (b) on or in relation to goods or services the same or identical to those for which the mark is registered, and (c) there is a likelihood of confusion. In deciding whether confusion is likely, the court applies the ‘global appreciation’ test and looks at all relevant factors, including the distinctiveness of the registered mark.57 However, in relation to the latter, the Court of Justice decided that courts must adopt a 11.41 counter-intuitive view of the likely effect of very distinctive marks, ‘the more distinctive the earlier mark, the greater will be the likelihood of confusion’.58 While this may be correct for some very distinctive (or perhaps even ‘famous’) marks, particularly those that are invented or highly unusual such as Adidas, Google, or Exxon, where their use on practically any goods would be likely to confuse, it is patently not correct with other marks highly distinctive for particular goods or services, but which others may have a legitimate right to use on different goods or services, such as McDonalds, Tiffany, or Polo.59 In addition, by s 10(3), the owner of the well-known registered mark has been given the 11.42 opportunity of bringing proceedings for infringement by reason of the type of blurring and erosion without confusion that has caused such controversy in the tort of passing off. In fact, it is not only owners of well-known marks who are according this right but also the owners of all marks with a reputation. Indeed, it has become almost standard practice for s 10(3) 56 So-called ‘double identicality’, in which case s 10(1) would apply, that does not require any finding that there is a likelihood of confusion. 57 Sabel v Puma [1998] ECR I-6191, ECJ, at para 23. 58 Ibid., at para 24; cf the more intuitively correct judgment in Claude Ruiz-Picasso v Daimler Chrysler [2006] ECR I-643, ECJ, where the Court of Justice held that merely because ‘Picasso’ was well-known as an artist did not mean it was highly distinctive in relation to motor vehicles. 59 See, for example, the decision of the Court of Appeal in Singapore in Polo/Lauren v Shop –In Dept Store [1998] 2 SLR 550 where the use of ‘Pacific Polo’ on T-shirts retailing for US$5–8 was found not likely to confuse the average consumer into believing there was any trade connection with the owners of the ‘Polo’ mark, ‘Ralph Lauren’. For an explanation of Singaporean decisions in this area, see Ng-Loy, ‘An Interdisciplinary Perspective on the Likelihood of Confusion: Consumer Psychology and Trademarks in an Asian Society’, (2008) 98 TMR 950.

241

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off claims to be included in infringement actions even where the registered mark is known to relatively few (and where the more appropriate claim is for infringement under s 10(2), but it requires that a ‘likelihood of confusion’ be shown, whereas s 10(3) does not). (5) Diluting the meaning of ‘well-known’? 11.43 Section 10(3), and Article 5(2) of the TM Directive on which it is based, gives to registered

trademarks with a reputation protection against use by a third party that dilutes the distinctiveness of the registered mark, through use on goods or services identical, similar or dissimilar to those for which the mark is registered. Dilution is not a new concept in trademark law and other jurisdictions have introduced anti-dilution legislation.60 11.44 Dilution61 is conceptually different to traditional forms of trademark infringement, which

focus on the confusion or potential confusion of the consumer; instead, dilution focuses on the damage that will be done to the mark and the trademark owner. The most common forms of dilution are tarnishment and blurring.62 Blurring is the proverbial death by a thousand cuts whereby if a well-known mark is repeatedly used on goods and services unrelated to its owner then the distinctiveness of the well-known mark will be blurred and the goodwill created by its use will start to dissipate. Tarnishment is the theory that if another trader uses another’s well-known mark on different goods that are of poor quality or morally objectionable to the public, the strength of the original mark will be lessened. These are not the only aspects of dilution and they are especially not so in Europe, as will be discussed below.63 11.45 Dilution-type protection has been likened to a form of unfair competition law, but under

the TM Directive and the 1994 Trade Marks Act it is specifically reserved for marks with a reputation. Section 10(3) of the 1994 Act states: A person infringes a registered trade mark if he uses in the course of trade a sign which—(a) is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, take advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 11.46 The provision was previously limited to use by the third party in relation to goods or services

not similar to those for which the mark with a reputation was registered, but this limitation has been removed. Now, the only threshold requirement is that the third party mark be identical or similar to the mark with a reputation. 11.47 It is important to note that the wording of s 10(3) (and Article 5(2)) does not require the

claimant to show a likelihood of confusion, although if it can be shown it is much easier to succeed in an action under the sub-section. Also, the extent of the reputation in the

60 See the US Trademark Dilution Revision Act of 2006. This statute was passed in the US after a period in which, in the words of the leading commentator on US trademark law, Professor Thomas McCarthy, ‘In both the EU and the US, courts have had little success in making sense of their anti-dilution laws.’ (See ‘Dilution of a Trademark: European and United States Law Compared’, (2004) 94 TMR 1163.) 61 Professor McCarthy commented of ‘dilution’ that ‘[n]o part of trade-mark law I have encountered in my 40 years of teaching and practising IP law has created so much doctrinal puzzlement and judicial incomprehension’, in Vaver and Bently, Intellectual Property in the New Millennium (Cambridge: Cambridge University Press, 2004) at 159. 62 See Simon, ‘The Actual Dilution Requirement in the United States, the United Kingdom and European Union: A Comparative Analysis’, (2006) Journal of Science & Technology Law 12. 63 See para 11.61.

242

D. Trademark Law United Kingdom that is needed remains unclear64 (it has been stated by the CJEU that ‘a registered trademark must be known by a significant part of the public concerned’65). Further, as mentioned, it has become almost standard practice in infringement actions in the UK to include a s 10(3) claim, even in respect of marks that on no sensible analysis could be viewed to be ‘well-known’. Nevertheless, Advocate General Mengozzi, in his Opinion in the L’Oréal case66, uses the term 11.48 ‘well-known mark’ when dealing with the Article 5(2) (s 10(3)) question concerning the packaging marks. Surely, however, the Advocate General did not intend to say that the registered packaging marks without any brand name on them were ‘well-known’ in the sense that UK trademark lawyers would traditionally have understood that term (or perhaps it is just a translation error from the original Italian in which the Opinion was written). However, the Max Planck Institute’s Study on the Overall Functioning of the European 11.49 Trade Mark System (February 2011) considers that ‘marks which have attained a level of reputation that qualifies for extended protection would likewise have to be protected as wellknown marks within the meaning of Article 6bis of the Paris Convention and vice versa’.67 Apparently, therefore, the L’Oréal packaging marks should be viewed to be well-known marks under Article 6bis (one wonders how many average consumers of perfumes would agree, if shown them without the words Trésor, Cacherel etc, in a properly conducted, non-leading survey). If what the Study is suggesting is that courts around Europe apply a stricter test than they 11.50 have hitherto in many cases to decide which marks the extended protection should be accorded to, it is to be welcomed. On the other hand, if what it means is that every mark that courts have decided is a ‘mark with a reputation’ should automatically be viewed to be a ‘well-known’ mark under Article 6bis marks, it is just wrong and another example of the ‘ever greater protection’ ratchet. Although it is correct, as the Study notes,68 that ‘well-known mark’ and ‘mark with a reputation’ are ‘kindred concepts’, that means they are related concepts, it does not mean they are the same thing. (6) Unfair? Over recent years the scope of s 10(3) and Article 5(2), and the corresponding provision in 11.51 the CTM Regulation, has been the subject of groundbreaking litigation, particularly as regards the meaning of ‘taking unfair advantage of or is detrimental to, the distinctive 64 It was held by the Singapore Court of Appeal in Novelty v Amanresorts [2009] FSR 20, that the comparable provision in the Singapore Trade Marks Act s 55(3)(b) applies only to trademarks ‘which have attained the coveted status of being “well-known to the public at large in Singapore”’. These trademarks form a ‘rare and exclusive class’ at para 233. 65 General Motors v Yplon [2000] RPC 572. Thus, this can include marks which have niche fame and, in view of the unitary nature of a Community trademark, may also allow the owner of a mark with a reputation to prevent use by a third party of a sign in geographical areas in which the mark has not even been used. 66 [2009] ETMR 55, eg, at para AG58. 67 At para 2.132. The Study’s bold statement can be contrasted with the detailed consideration by the Singapore Court of Appeal in Novelty v Amanresorts, [2009] FSR 20, as to what constitutes a ‘well-known’ mark, that reviewed the 1999 WIPO Joint Recommendation Concerning Provisions on the Protection of Wellknown Marks, particularly art 2(1)(c), and concluded that the latter’s ‘somewhat ambivalent passage gives an inkling of how difficult it is to determine whether a trade mark is well known in Singapore. There is no single universally-applicable test’, at para 138. 68 Max Planck Institute’s Study on the Overall Functioning of the European Trade Mark System (February 2011) at para 2.132, citing the General Motors v Yplon case, [2000] RPC 572, ECJ, at para 28.

243

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off character of the trade mark’. (These words are also contained in s 5(3) which, in relation to relative grounds for refusal or invalidation, tracks the infringement provision in s 10(3).) 11.52 The first important case to be litigated in both England and the Court of Justice was Intel,69

in which integrated circuit maker Intel Corp started invalidation proceedings in respect of the registered mark ‘Intelmark’ owned by CPM. ‘Intel’ was an earlier registered mark for computers and computer-linked products, whereas the later mark ‘Intelmark’ was registered for marketing and telemarketing services. The UK IP Office (UKIPO) dismissed the application to have the later mark removed from the Register and Intel appealed. Intel argued before the High Court that in order to satisfy s 5(3), it was sufficient that the later mark merely brought to mind the earlier mark with a reputation or there was evidence of ‘any kind of mental association between the later mark and the earlier mark.’ The High Court rejected Intel’s arguments and the Court of Appeal referred a number of questions to the CJEU. 11.53 Before referring the questions to the CJEU, Jacob LJ tried to assist that Court in its

deliberations by giving his opinion, I do not see that trade mark law should be so oppressive and all powerful . . . If a trade mark for particular goods or services is truly inherently and factually distinctive it will be robust enough to withstand a mere passing bringing to mind when it or a similar mark is used for dissimilar goods or services. The average consumer . . . is used to lots of trade marks in different fields . . . Sometimes, but perhaps not surprisingly, trade mark owners want more protection than they really need.70 11.54 (The learned judge also questioned the aptness to the Intel facts of the Rolls-Royce example

cited by Schechter in his seminal article:71 ‘however much Rolls-Royce were used for dissimilar goods, it would be wrong to say that it would not exist for cars and jet engines’, whereas the two registrations were not identical but were for ‘Intel’ and ‘Intelmark’.72) On the evidence that needs to be adduced by the claimant, in Jacob LJ’s view, ‘It is very important that the harm or prospect of harm must be real and tangible. A mere probably or assertion of damage is just too remote and would leave trade mark owners in too monopolistic a position.’73 11.55 The CJEU’s judgment did not offer any new assistance as to what constitutes a mark with a

reputation (although obviously whatever the requirements are, ‘Intel’ would clearly have satisfied them, unlike other marks that have relied on s 10(3)). The Court stated, ‘The reputation of a trade mark must be assessed in relation to the relevant section of the public as regards the goods or services for which that mark was registered. That may be either the public at large or a more specialised public.’74 11.56 As to whether consumers must make a mental link between the mark and the sign, the Court

of Justice agreed with Intel that a link is enough (there is no need for a likelihood of confusion), but held that in addition there must be proof of detriment, The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is 69 70 71 72 73 74

Intel Corp v CPM [2009] ETMR 59. Intel [2007] ETMR 59, at para 29. (1927) 40 Harvard LR 813. Intel [2007] ETMR 59, at paras 32 and 33. Ibid., at para 37. Intel [2009] ETMR 13, CJEU, at para 47.

244

D. Trademark Law tantamount to the existence of such a link . . . between the conflicting marks. Proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.75

It is difficult to see how evidence showing a change in economic behaviour could be adduced 11.57 in most cases.76 Indeed, after the CJEU’s judgment, many practitioners took the view that, although the Court of Justice had expressly excluded it as a requirement, evidence of a likelihood of confusion would usually be necessary to succeed in a s 10(3) claim. However, following hard on the heels of Intel before the Court of Justice came the L’Oréal 11.58 case, sent there also by the English Court of Appeal, which had already firmly rejected the passing off claim brought against smell-alike makers Bellure. The L’Oréal 77 case (mentioned already in the context of passing off 78) proved to be one of the most controversial disputes in trademark law since the new regime based on the TM Directive was introduced in the UK by the 1994 Act. In the trademark claim, the court had to consider, inter alia, whether smellalike perfumes in similar packaging took unfair advantage of the packaging marks registered by L’Oréal. It is important to note that there was no issue of s 10(3) (Article 5(2) TM Directive) infringe- 11.59 ment in relation to anything that might be called a well-known mark,79 such as L’Oréal, Lancôme, or Trésor, as Bellure knew better than to use on their packaging anything even remotely similar to those marks.80 However, at first instance, the High Court accepted without demur that the packaging marks were themselves marks with a reputation, and therefore as the trial judge found the defendant’s packaging, although clearly different, brought to mind the claimant’s registered packaging mark there was a link established between the two for the purposes of s 10(3). In the Court of Appeal, Jacob LJ identified the critical issue as being whether, in view of the 11.60 fact that the link if established would undoubtedly confer an advantage on the defendant (as they would be able to charge more than for a range that did not ‘wink at’ an original luxury brand), such an advantage was ‘unfair’ contrary to section 10(3).81 In his opinion, the answer ought to be ‘no’. Clearly activities which actually harm a trade mark or its reputation ought to be caught by trade mark law . . . But where there is no harm, present or prospective,

75

Ibid., at para 83. In her Decision, 8 February 2008, in Cherokee’s Opposition (O-048-08) the Appointed Person (Ms Carboni) suggested that there would be an effect on consumer behaviour ‘if consumers were likely to be turned away from the Opponent’s goods by reason of use of the Applicant’s trade mark’ (at para 69).On the other hand, in Whirlpool v Kenwood [2010] ETMR 7, the Court of Appeal rejected the argument that the evidence at first instance showed that the relevant average consumers would be influenced in their economic behaviour by the resemblance of the defendant’s Kenwood kMix food mixer to the shape of the claimant’s KitchenAid mixer, at para 85. 77 [2007] RPC 14, HC; [2008] ETMR 1, CA; [2009] ETMR 55, CFEU; [2010] ETMR 47, CA. 78 See text accompanying nn 34–44. 79 Although note the suggestion in the Max Planck Institute Study, see n 67, that marks with a reputation be equated with Article 6bis well-known marks and vice versa. 80 L’Oreal succeeded in its argument that the use of its registered trademarks for the names of perfumes in Bellure’s comparative price list constituted trademark infringement under Art 5(1)(a) of the TM Directive (s 10(1) 1994 Act), see [2009] ETMR 55, CJEU, at paras 51–80. 81 [2008] ETMR 1 at para 87. 76

245

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off caused to the mark, its distinctive character or the mark owner or his business, present or reasonably prospective, I see no reason to say that [such] a use is ‘unfair’.82 11.61 However, the Court of Justice saw fit to differ on what it characterized as ‘parasitism’ or ‘free

riding’.83 It held that, where a third party attempts, through the use of a sign similar to the mark with a reputation, to ride on the coat-tails of that mark in order to benefit from the power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered an advantage that has been unfairly taken of the distinctive character and repute of that mark.84 11.62 Thus, in the Court of Justice’s topsy-turvy trademark world, the need to show that an advan-

tage is ‘unfair’ is dispensed with when it comes to ‘free-riding’85 and the word ‘unfair’ in the TM Directive, the CTM Regulation, and the Act, can be safely ignored. (7) The Court of Appeal mixes it all up 11.63 Soon after the CJEU’s judgments in Intel and L’Oréal, the English Court of Appeal decided

the Whirlpool case, involving alleged infringement under s 10(3) of the shape of a wellknown food mixer, the KitchenAid, registered as a Community trademark.86 Lloyd LJ noted at the outset that the law on the relevant trademark issues ‘has been a moving target’.87 11.64 Having reviewed carefully the CJEU judgments, he noted that the facts in Whirlpool and

L’Oréal were very different: there was no finding in the former that the defendant had obtained a commercial advantage from its use of the similar shape.88 However, Lloyd LJ interpreted the CJEU’s answer to the Article 5(2) (s 10(3)) question as requiring that the ‘advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the [earlier] mark’, and rejected the contention that intention was unnecessary for a finding of unfair advantage. In his view, if the Court of Justice had meant to convey that ‘unfair’ adds nothing, they would have said so ‘explicitly’.89 11.65 Also, in terms reminiscent of the Hodgkinson & Corby passing off judgment given by Jacob J

(as he then was),90 Lloyd LJ cautioned, Especially where one product has had a particular sector of the market to itself, the introduction of another by a rival undertaking is itself likely to affect the market share of the first, which had been a monopoly. That can happen by fair and lawful competition, without anything being done which might infringe the trade mark rights of the first undertaking.91

82

[2008] ETMR 1 at para 93. [2009] ETMR 55 at para 41. 84 Ibid. at para 49. 85 In the Court of Appeal that referred the questions to the CJEU Jacob LJ had identified the problem for trademark law as, ‘where to draw the line between permissible and impermissible “free riding”’, [2008] ETMR 1 at para 28. 86 [2010] ETMR 7 87 Ibid., at para 89. 88 [2010] ETMR 7 at para 107. 89 Ibid., at paras 114 and 115. 90 See n 16. 91 [2010] ETMR 7 at para 126. 83

246

D. Trademark Law On similar lines, after the CJEU’s answers to the questions posed by the Court of Appeal in 11.66 L’Oréal, Jacob LJ, when the case came back before the English court, lamented, ‘I believe the consequence of the ECJ decision is that the European Union has a more “protective” approach to trademark law than other major trading areas or blocs.’92 The learned judge, clearly upset by a judgment he considered wrong, also commented on the 11.67 CJEU’s explanation of the functions of a trademark beyond its classical one of origin, which are frequently relied on to justify broader protection for well-known marks, I am bound to say that I have real difficulty with these functions when divorced from the origin function. There is nothing in the legislation about them. Conceptually they are vague and ill defined. Take for instance the advertising and investment functions. Trademark owners of famous marks will have spent a lot of money creating them and need to continue to spend to maintain them. But all advertisements for rival products will impinge on the owner’s efforts and affect the advertising and investment function of the brand in question. No one would say such jostling for fame and image in the market should be stopped . . . So far as I can see this is saying if there is ‘clear exploitation on the coat-tails’ that is ipso facto not only an advantage but an unfair one at that. In short, the provision should be read as though the word ‘unfair’ was simply not there. No line between ‘permissible free-riding’ and ‘impermissible free-riding’ is to be drawn. All free-riding is ‘unfair’. It is a conclusion high in moral content (the thought clearly that copyists, even of lawful products should be condemned) rather on economic content. As I have said that I do not agree with or welcome this conclusion – it amounts to a pointless monopoly. But my duty is to apply it.93

It remains to be seen whether subsequent cases or legislative change will modify or even 11.68 reverse some of the more questionable (and, dare one say it, potentially anticompetitive) elements of the CJEU’s judgment in L’Oréal v Bellure. In the meantime, the owners of marks with a reputation have been given significant leeway to close out competition that harms or confuses noone. Is the overlapping protection adequate? As always, it depends on your perspective. Trademark owners and their supporters will always say no; the more balanced observer might legitimately ask, as did Lord Justice Rix in relation to passing off, whether there is a risk of trademark protection becoming so broad as to be anticompetitive. Finally, lest it be thought that this chapter is unsympathetic to the counterfeiting problems 11.69 encountered by the owners of well-known trademarks in many countries, it must be emphasized that where counterfeiting94 occurs, there are both rights and remedies available to stop it speedily and cost-effectively either through the courts or by using other routes such as trading standards or the police. On the other hand, whether it is infringement for someone to use packaging ‘reminiscent of ’ another’s, but clearly marked with a different brand name, or to use, in a very different field, a sign that confuses or does harm to noone, are questions on which reasonable people may disagree.

92 Other views critical of the judgment cited by the learned judge were Meale and Smith, ‘Enforcing a Trade Mark when nobody’s confused; where the law stands after L’Oréal and Intel’, (2010) Journal of Intellectual Property Law & Practice 96; Gangee and Burrell, ‘Because You’re Worth It: L’Oréal and the Prohibition of Free Riding’, [2010] MLR 282; and J.D.C. Turner, Intellectual Property and EU Competition Law (Oxford: Oxford University Press, 2010). 93 L’Oréal v Bellure [2010] ETMR 47, at paras 30, 49, and 50. 94 It should be pointed out that, in the English language, ‘counterfeit’ is not a synonym for ‘infringement’: all counterfeits are infringements (of one IP right or another) but by no means all infringements are counterfeits.

247

Chapter 11: Protection of ‘Famous’ Marks under Trademark Law and Passing Off

E. Back to the Hypothetical 11.70 Cadtree is best advised to either give in or go to the BBC, as did the managers of the Tan Hill

Inn in May 2007 when they received a letter from KFC’s lawyers threatening infringement proceedings in relation to its client’s registered mark ‘Family Feast’. What had the managers of England’s highest pub done to deserve this attention?: included on the pub’s blackboard and website an exhortation to bring the kids for a Christmas Day ‘family feast’. Rather than going to an expensive lawyer who would tell them of the possible defence under s 11(2)(b) for descriptive use and how much it would cost them to defend the action, they went to the BBC, which ran the story with some bemusement as to the workings of a trademark system that could allow ‘Family Feast’ to be registered, and by the afternoon KFC announced it was not pursuing the issue. Manager Tracy Daly told The Times, ‘[It’s] a traditional Christmas dinner: paté, turkey, roast beef and the trimmings, Christmas pud . . . It’s about as similar to a KFC meal as chalk is to cheese’. 11.71 If they do not want to do that, and people from the Peak District can be very dogmatic and

stand on their rights, tell them that they can challenge the validity of the ‘Sweetie’ Community trademark, argue that they are not using the word as a trademark and/or threaten to sue Rownbury for passing off. And don’t forget to tell them your hourly rate and the fact they are unlikely to have much change from, let’s enter into the realm of fantasy (this is a hypothetical after all), £100,000. And that they may not win, and might have to pay a large chunk of the other side’s legal costs if they don’t. 11.72 At that point, even someone from the Peak District would realise they’re on a losing wicket,

even if they win. But that’s the world of trademarks. If they did fight, Rownbury would probably win, although an English court would bend over backwards to find a reason why they should not. Then, Rownbury would sue in France, where Cadtree sells a few hundred boxes of fudge to homesick expatriates, and win.

F. Summary 11.73 Let us conclude by way of bullet point summary:

• There remains considerable overlap in the protection available in the law of passing off and trademark infringement to the owners of registered trademarks that through use in the UK are well-known. This overlap is especially so between the protection available under the tort and under the Trade Marks Act 1994, s 10(2) although in many cases today the passing off claim is not pursued where it is clear the s 10(2) claim is more likely to succeed. • Even where a registered mark can be shown to satisfy the criteria for protection as a ‘mark with a reputation’ under s 10(3), and there is no doubt that a mark used and ‘well-known’ in the UK would do so, it is unlikely that adding a passing off claim will increase the likelihood of success. • It would certainly, however, increase the cost of the proceedings to both sides without materially adding to the chances of success, unless in addition to using a sign similar to the

248

F. Summary registered mark, the defendant is causing deception through the use of material extraneous to the registered mark.95 • On the other hand, where a business has been built up in the UK through the use of names or other trade indicia that for some reason either: (a) it has decided not to register as trademarks in the UK or through the Community trademark route or (b) are not registrable as trademarks, for example ‘champagne’ or ‘vodka’ (both of which would fall foul of the absolute grounds for refusal contained in the Trade Marks Act 1994, s 3(1)(b), (c) and (d)), the tort of passing off provides effective protection against deception caused by a third party using the same or a similar mark (or, it seems after Vodkat, a fairly generic descriptive term). • In addition, where a third party causes deception by adopting aspects of the trading style of the well-known mark owner other than the marks that have been registered (for example colour combinations and overall get-up), the passing off action, which looks at all the surrounding circumstances of use by the claimant and the defendant, may be used to obtain relief. • Indeed, it is certainly arguable that it is when the courts dispense with the need to show deception and/or a likelihood of confusion that problems of coherence and a lack of common-sense arise, as by-products of the wish to give more and more protection.

95 ‘[C]ircumstances prior to, simultaneous with or subsequent to the use of the sign may be relevant to a claim for passing off . . . but they are not generally relevant to a claim for infringement under Art.9(1)(b)’ [of the CTM Reg]: per Arnold J in Och-Ziff v OCH Capital [2011] ETMR 1 at para 78.

249

This page intentionally left blank

12 OVERLAPPING RIGHTS IN DESIGNS, TRADEMARKS, AND TRADE DRESS Alan S. Nemes, Husch Blackwell LLP and Anna Carboni, Redd Solicitors LLP

A. Hypothetical B. Introduction C. The United States (1) Definitions and underlying rights (2) Inherently distinctive trade dress (3) Trade dress not capable of being inherently distinctive (4) Term and use (5) Ownership (6) Limitations on rights

12.01 12.02 12.04 12.04 12.11 12.13 12.17 12.20 12.25

(7) Functionality in trade dress (8) Aesthetic functionality (9) Enforcement

D. The European Union (1) (2) (3) (4) (5)

Definitions and underlying rights Term and use Ownership Limitations on Rights Enforcement

E. Practical Advice and Insights

12.26 12.27 12.30 12.39 12.39 12.48 12.56 12.60 12.83 12.92

A. Hypothetical A company is about to introduce a chain of zoo-themed restaurants with décor that includes 12.01 large bird-shaped fixtures on the wall and matching bird-shaped beverage containers. The company wishes to assert rights in the trade dress for the bird-themed designs to identify both beverage products and restaurant services. It also wants to claim design rights for these bird-shaped wall and column fixtures and beverage containers. In addition, since its target demographic includes kids, the company has developed a special no-spill feature on the birdshaped ‘kiddie’ cup containers and has filed a utility patent application for this feature in the United States. The no-spill feature is incorporated into the ‘beak’ of the bird-shaped containers so kids drink out of the beak and, even if the container is knocked over or held upside down, the contents do not spill out.

B. Introduction An individual or entity seeking to establish exclusive rights in the design of its products 12.02 (and, in certain instances, its services as well), including product packaging, product configuration, or other non-functional design elements of such goods, will potentially be able to rely on a combination of trademark, trade dress, and design (or design patent) protection. These rights are partly distinct, partly overlapping, and partly complementary. When used 251

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress correctly, they can provide significant protection to an intellectual property owner. By understanding the key similarities and differences between each of these rights, and their relative strengths and weaknesses, a business can determine the most efficient means of developing exclusive rights in its designs and protecting them from encroachment. 12.03 In the scenario above, the restaurant owner wishes to turn its bird theme into a brand that

will be recognized as distinctive of its chain. It will build up reputation and goodwill in its features of trade dress, whether registered or unregistered. The owner will also wish to explore whether it can obtain design protection for the bird theme as it takes form in the restaurant chain. This Chapter will consider the interrelationship between the various rights that may be available, and the possibility of using them in a complementary way, with particular reference to the position in the United States and the European Union.

C. The United States (1) Definitions and underlying rights (a) What is a design patent? What is trade dress? What rights does each confer? 12.04 Design Patents Under US law, an inventor may obtain a design patent for ‘any new, original,

and ornamental design for an article of manufacture’.1 A design patent only protects the ornamental features of an entire article of manufacture or identified portion of an article.2 Patent rights in designs were first recognized in the United States under the Patent Act of 1842.3 The Court recognized that the protection of designs, contemplates that giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it, and may be a meritorious service to the public. It therefore proposes to secure for a limited time to the ingenious producer of those appearances the advantages flowing from them.4 12.05 Trade Dress

Trade dress, on the other hand, is a special type of trademark or service mark: while marks typically consist of words or logos (such as Coca Cola® or the Nike ‘Swoosh’ logo), US law defines trademarks and service marks very broadly, namely ‘any word, name, symbol, or device or any combination thereof ’ used ‘to identify and distinguish’ such goods or services from those manufactured or sold by others and ‘to indicate the source’ of such goods or services.5 US law further recognizes that trademarks and service marks also serve as indicators of quality, and trademark (and trade dress) ownership creates a right to control the quality of the goods or services sold or offered under the mark.6

12.06 More specifically, ‘trade dress’ is a trademark or service mark involving the appearance of a

product or service, and may include features such as size, shape, colour or colour combinations, texture, graphics, or even sales techniques.7 ‘Trade dress has taken on a more expansive meaning and includes the design and appearance of the product as well as that of the 1

35 USC § 171. Oddzon Products, Inc v Just Toys, Inc, 122 F 3d 1396, 1405 (Fed Cir 1997). 3 Gorham Mfg Co v White, 81 US 511, 1871 WL 14796, 1 (1871). 4 Ibid., at 9. 5 15 USC § 1127; unregistered trade dress is protected under § 43(a) of the Lanham Act. 6 El Greco Leather Products C., Inc v Shoe World, Inc, 806 F 2d 392, 395 (2nd Cir 1986), cert. denied, 484 US 817 (1987). 7 Two Pesos, Inc v Taco Cabana, Inc, 505 US 763, 764 n 1 (1992). 2

252

C. The United States container and all elements making up the total visual image by which the product is presented to customers.’8 Just about any product (and by extension, any service) is a candidate for trade dress status: ‘[i]n short, any [definite and tangible] ‘thing’ that dresses a good can constitute trade dress’.9 Trade dress protection, however, may not be claimed for product features that are functional (see 12.26 et seq).10 Design patents arise from statute; they are intended to protect the invention of novel, 12.07 non-obvious, non-functional designs in articles of manufacture.11 Unlike trade dress, to obtain patent rights in a design, there is no statutory requirement of commercial recognition or even any commercial use, but rather novelty and originality of the design.12 Trade dress, however, arises from trademark law, and only protects those elements of a product (such as packaging, product configuration, etc) or service (such as decor) that function like any other brand, ie when used in commerce as an identifier of source and quality for specific goods and services. In the case of our hypothetical above, the bird designs could immediately be registered as 12.08 design patents, even prior to introduction at the restaurants, assuming they were novel and non-obvious. Trade dress registration of these designs would depend upon whether consumers immediately recognized these designs as distinctive ‘brands’, as opposed to simply artistic ornamentation; if the latter, the company would have to build up brand awareness prior to claiming trade dress rights in the designs. (b) What are the elements of designs and dress? Design Patents The requirements for obtaining a design patent are generally the same as 12.09 the requirements for utility patents, namely, fulfilling the novelty, non-obvious, written description, and enablement requirements.13 A design patent covers only one design and, typically, one single claim referencing drawings of several views of the design comprises each patent.14 Adequate and detailed drawings generally satisfy the written description and enablement requirements. A design patent must also be non-functional (see paragraph 12.25). Trade Dress The discrete elements of trade dress must be identified, separated out, and 12.10 identified in a list or identified in pictures or drawings.15 The elements of trade dress must be used in such a manner as to denote product source and quality.16 A product feature that is merely decorative and aesthetic, with no-source identifying role, cannot be given exclusive rights under trade dress law.17 A mere marketing campaign, style of doing business, or a vague and abstract image, are not protectable trademarks.18 As further discussed in paragraphs 12.11 through 12.15, trade dress must either be ‘inherently distinctive’ (ie, must automatically serve to identify the source and quality of the product or service, much like any other brand would to consumers) or in the case of trade dress that is not inherently distinctive, but 8 9 10 11 12 13 14 15 16 17 18

Jeffrey Milstein, Inc v Greger, Lawloer, Rother, Inc, 58 F 3d 27, 31 (2nd Cir 1995). Abercrombie & Fitch Stores, Inc v American Eagle Outfitters, Inc., 280 F 3d 619, 630 (6th Cir 2002). TrafFix Devices, Inc., v Marketing Displays, Inc, 532 US 23, 29 (2001). 35 USC § 102; 35 USC § 103; and 35 USC § 171, see also Oddzon Products, 122 F 3d at 1405. 35 USC § 171. 35 USC § 102; 35 USC § 103; and 35 USC § 112. 37 CFR § 1.153. Tumblebus Inc v Cranmer, 399 F 3d 754, 768 (6th Cir 2005). Duraco Prods v Joy Plastic Enters, 40 F 3d 1431 (3rd Cir 1994). Knitwares, Inc v Lollytogs, Ltd, 71 F 3d 996, 1009 (2nd Cir 1995). Alberto-Culver Co v Andrea Dumon, Inc, 466 F 2d 705, 175 USPQ 2d (7th Cir 1972).

253

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress descriptive or ornamental in nature, have ‘acquired distinctiveness’ through extensive use and promotion.19 (2) Inherently distinctive trade dress 12.11 Packaging Trade Dress

If trade dress is inherently distinctive—suggestive, arbitrary, or fanciful (as opposed to descriptive or ornamental)—then acquired distinctiveness (also called ‘secondary meaning’) is not required.20 Trade dress is inherently distinctive if ‘its intrinsic nature serves to identify a particular source.’21 Thus, even if unregistered, product packaging trade dress can be shown to be inherently distinctive.22 Recently, US courts have turned to the four-part Seabrook test to determine whether product packaging is inherently distinctive.23 While not all packaging will constitute protectable, distinctive trade dress, product packaging (unlike, as detailed below,24 trade dress in the product design themselves) may be inherently distinctive and, if so, is registrable and protectable without the owner having to prove acquired distinctiveness. In the hypothetical above, the restaurant chain could claim common law trade dress rights in the beverage containers, and seek registration for these designs as inherently distinctive product packaging. The success of such claims would likely depend upon the Seabrook factors, as well as upon whether the containers were determined to be packaging for the beverages, or part of the actual goods themselves. If the containers were deemed part of the product, then the restaurant would be required to demonstrate secondary meaning before acquiring exclusive rights to the design.25

12.12 Service Mark Trade Dress

Distinctive aspects of a store or business may also be protected as ‘inherently distinctive’ trade dress. In one notable case, it was held that the festive eating atmosphere having interior dining and patio areas with artefacts, bright colours, paintings, and murals combined with an exterior of the building having a stepped facade in a festive colour with top border paint and neon stripes, and other restaurant arbitrary decorative features, was inherently distinctive trade dress.26 Also, another court found protectable trade dress in colour-coded, iconographic wall signs identifying eight taste categories of wine and the related presentation of the wine in a wine store.27 In our hypothetical, the restaurant owners could seek registration of the bird design fixtures in its retail locations as distinctive dress for restaurant services. 19

Two Pesos, Inc, 505 US at 769. Ibid., at 773. 21 Wal-Mart Stores, Inc v Samara Bros, Inc, 529 US 205, 210 (2000). 22 Two Pesos, Inc, 505 US at 776. 23 Four-part test set forth in Seabrook Foods, Inc v Bar-Well Foods Ltd, 568 F 2d 1342, 1344 (Cust and Pat App 1977): (1) whether it was a ‘common’ basic shape or design, (2) whether it was [not] unique or unusual in the particular field, (3) whether it was a mere refinement of a commonly-adopted and well-known form of ornamentation for a particular class of goods viewed by the public as a dress or ornamentation for the goods, or (4) whether it was capable of creating a commercial impression distinct from the accompanying words. In re Chippendales USA, Inc, 622 F 3d 1346, 1351 (Fed Cir 2010) citing, see also Miller’s Ale House, Inc. v Boynton Carolina Ale House, LLC, 745 F Supp 2d 1359 (SD Fla 2010), Fiji Water Co, LLC v Fiji Mineral Water USA, LLC, 741 F Supp 2d 1165 (CD Cal 2010), X-IT Products, LLC v Walter Kidde Portable Equipment, Inc, 155 F Supp 2d 577 (ED Va 2001). 24 See paragraph 12.13. 25 Ibid. 26 Taco Cabana Intern, Inc v Two Pesos, Inc, 932 F 2d 1113, 1120 (5th Cir 1991), affirmed in Two Pesos, Inc 505 US at 766. 27 There are many other examples of service mark trade dress. One of the more unusual trade dress marks, namely, US Trademark Registration No 2,007,624, has recognized rights in goats on a grass roof as applied to restaurant services for Al Johnson’s Swedish Restaurant and Butik in Sister Bay, Wisconsin. 20

254

C. The United States (3) Trade dress not capable of being inherently distinctive Product Design Trade Dress US law does not allow for protection or registration of 12.13 product design trade dress (ie, trade dress in the product itself, as opposed to packaging for the product) without proof of acquired distinctiveness.28 If product design trade dress is not registered, the owner must make a showing that the tradedress has acquired distinctiveness in order to succeed in a trade dress infringement claim.29 The Supreme Court found that the ‘product design almost invariably serves purposes other than source identification . . . and is usually intended not to identify source, but to render the product itself more useful or more appealing’.30 In our hypothetical, if the beverage container is a cleverly packaged ‘bottle’ in the shape of a cup, with liquid already inside, then perhaps it qualifies as ‘packaging’ and could be inherently distinctive. However, if the product is simply a cup in which a beverage is poured, then it is likely product design trade dress, and cannot qualify as protectable trade dress until it has acquired secondary meaning. Summary Design patents are generally easier to obtain than rights and registrations in 12.14 trade dress. A design patent application simply requires an illustration of the ornamental aspects of the design itself. The applicant for design patent does not need to articulate what is or is not novel about its design. Here, a picture is really worth a thousand words! Further, designs must ‘only’ be novel, non-functional, and non-obvious. A design patent does not have to serve as a source identifier for consumers, and its owner has no burden of demonstrating that it has acquired any distinctiveness in the minds of consumers. In contrast, to obtain a registration for trade dress or to enforce rights in unregistered trade 12.15 dress, the owner must: (1) specifically define the elements of the dress; (2) use the dress in commerce as a source identifier for specific goods and services; (3) show the dress is either (a) inherently distinctive or (b) has acquired distinctiveness; and (4) demonstrate it is not functional. A company can file and obtain a design patent prior to ever using the product, whereas 12.16 obtaining trade dress rights in a product design may take years of use in commerce and millions of dollars of marketing and advertising to develop consumer recognition to acquire distinctiveness. However, given that exclusive trade dress rights in the designs could potentially last forever (see paragraph 12.17), a company may wish to invest the resources and time to obtain trade dress rights. Unfortunately, if a competitor copies a product during the period in which a company is acquiring distinctiveness in non-distinctive trade dress, all of that investment may be lost. Therefore, a design patent, while having a limited duration of exclusivity, may keep competitors from copying a product design during the time a product design’s dress is acquiring distinctiveness. In our case, by filing design patents for the birdthemed fixtures and containers prior to launching the restaurant chain, the restaurant owner 28 When an applicant applies for a product design trade dress before the USPTO, the examining attorney must issue a refusal based upon the fact that the proposed mark consists of non-distinctive product design, unless the applicant claims that the mark has acquired distinctiveness: Trademark Manual of Examining Procedure § 1202.02(b)(i). For matter that does not inherently function as a mark because of its nature (eg nondistinctive product container shapes, overall colour of a product, mere ornamentation), evidence of five years’ use is not sufficient to show acquired distinctiveness. See generally, In re Owens-Corning Fiberglas Corp, 774 F 2d 1116 (Fed Cir 1985); see Trademark Manual of Examining Procedure § 1212.05(a) and Trademark Manual of Examining Procedure § 1212.06 (listing actual evidence requirements). 29 Wal-mart Stores, 529 US at 216. 30 Ibid., at 213.

255

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress can quickly obtain exclusive rights to its designs, even if the designs are deemed initially non-distinctive as trade dress. (4) Term and use (a) How long do they last? Must one register to maintain rights? 12.17 Trademark rights can last indefinitely, as long as the owner continues to use the mark to

identify its goods or services; the exclusive right to a trademark, including trade dress, grows out of its use and not its mere adoption.31 Trade dress rights, although of potentially indefinite duration, may terminate if the trade dress is abandoned through cessation of use with the intent not to resume use.32 Typically, three years of non-use of trade dress creates a rebuttable presumption of abandonment.33 A trade dress owner is not required to file for registration to obtain rights in such trade dress; however, any ‘common law’ rights are limited to those geographic areas where the owner actually uses the trade dress. Also, the owner of unregistered trade dress bears the burden of demonstrating that its trade dress is not functional.34 For this and many other reasons, a federal trade dress registration, if it can be obtained, is preferable to common law, unregistered trade dress. 12.18 Design patents last for 14 years from the date of issuance.35 This period constitutes the

complete life of the design patent. Similar to utility patents, it is well recognized that a design patent is valid and enforceable, whether or not the design is ever actually used in commerce. While a company may decide to introduce its design to the marketplace in advance of filing for patent protection, the only way to obtain patent rights is to file an application with and obtain a registration from the USPTO.36 Unlike trade dress, there are no non-statutory, ‘common law’ design patent rights in the US. However, in contrast to many other countries around the world, the US does grant the owner of a design patent a 12 month ‘grace period’ after disclosure of the design in which to file for patent protection without being deemed to have abandoned its domestic rights.37 The design patent owner would, however, be deemed to have abandoned its rights outside the US in those countries that require absolute novelty to qualify for protection. 12.19 The owner of a design patent can file for protection prior to using the design, and in fact

without ever using the design. However, the design patent has a finite duration, whereas protectable trade dress will endure indefinitely, for so long as it continues in use in US commerce. Given the relative ease of obtaining design patent protection,38 and the potential difficulties in obtaining trade dress registration prior to acquiring distinctiveness in the dress, an intellectual property owner could maximize its protection by filing immediately for a design patent. In the case of trade dress that requires proof of acquired distinctiveness, it

31

In re Trade-Mark Cases, 100 US 82, 94 (1879). 15 USC § 1127; Roulo v Russ Berrie & Co, Inc, 886 F 2d 931, 938–39 (7th Cir 1989). 33 15 USC § 1127. A US federal trademark registration exists for a period of ten years, with successive tenyear renewal terms, provided the registrant affirms continued use of the mark during each successive renewal period. 15 USC § 1058 (a)(2); 15 USC § 1059(a). 34 15 USC § 1125 (a)(3). 35 35 USC § 173. 36 35 USC. 37 35 USC § 102(b). 38 See paragraph 12.14. 32

256

C. The United States could then delay filing for trade dress registration for an extended period in order to allow its trade dress rights to mature through use and consumer recognition. (5) Ownership (a) Who owns the dress and design rights? Design Patents Like all patent rights, the ownership of any granted patent vests in the 12.20 inventor unless otherwise transferred. Thus, if the restaurant hires a designer to invent a new design for beverage container, the owner of the design patent would be the designer. The designer must assign all of her rights in the design patent to the restaurant for it to own the patent rights to the design. Trade Dress The ownership of trade dress rests in the source of the goods or services 12.21 providing the trade dress. Referring to the designer example above, in the absence of an express contract or licence to the contrary, if the restaurant was using the cup as an indicator of the source of its restaurant services, the restaurant (not the designer) would own the trade dress rights in the cup. Assignments Recommended Whether the product design is protected under a design 12.22 patent or as trade dress, best practices would require having the individual inventor(s) (designer(s)) of the product (or service) assign all their intellectual property rights in and to the design, including all rights under patent, trademark, trade dress, and copyright law, to avoid any later disputes as to ownership of the design. Marking The owner of design and dress is allowed to mark to provide others in the mar- 12.23 ketplace notice of its claim of rights. The application owner may mark the product with ‘Patent Pending’ once the design patent application has been filed. Often, this notification is enough in many cases to dissuade competitors from copying the design.39 Most importantly, products that are protected by one or more patents, including design patents, must be marked in order for the patent owner to recover damages for infringement.40 Thus, it is imperative that the owner of a design patent mark the product covered by one or more patents with the patent number of each patent. Similar to patents, the owner of a registered trademark may not recover profits and money 12.24 damages if the registered trade dress is not accompanied by one of the following public notice indicators used in proximity to the trademark: ‘Registered in U. S. Patent and Trademark Office’ or ‘Reg. U.S. Pat. & Tm. Off.’ or the ‘®’ symbol.41 There is no statutory requirement to mark unregistered trade dress. However, it is preferable for the party claiming and using a trademark to place the public and competitors on notice that the owner is asserting trademark rights in the trade dress whether the trade dress is registered or not. Unregistered trademarks and service marks may be marked with the designation of common law assertion of right, ie, with the symbols TM or SM, or one may simply state on the product or on promotional materials that the designs are the exclusive trade dress of one’s company. The restaurant might imprint or place stickers on the beverage containers indicating ‘Patent Pending’, and 39 At the very least, it may provide the patent applicant with valuable ‘lead time’, extending the period before a competitor introduces a competing design, as the competitor may seek further information and legal advice about the patent application prior to entering the market. 40 35 USC § 287. 41 15 USC § 1111.

257

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress put a notice on its menus that ‘the distinctive bird design fixtures and containers located throughout the restaurant are trademarks and dress owned exclusively by our company’. (6) Limitations on rights (a) Designs and dress may not be functional 12.25 Functionality in Design Patents

A design patent protects only the appearance and not the structural or utilitarian features or functional features.42 Where a design contains both functional elements (a tail-shaft and fins attached to a football) and non-functional elements (the football with a tail-shaft and fins being stylized as a rocket), the scope of design patent claim must be construed in order to identify non-functional aspects of design as shown in patent. A design patent may be obtained for any article of manufacture, but patentability is based on the design of the article, not the use of the article.43 In Richardson v Stanley Works, Inc,44 the court separated out functional aspects of the multi-function tool at issue—the handle, claw, pry bar, and hammer—and the scope of the design patent was limited strictly to the ornamental design. When the functional elements were removed, there was no finding of design patent infringement even though the tools had a similar appearance. (7) Functionality in trade dress

12.26 Trade dress protection also may not be claimed for product features that are functional.45 The

Supreme Court has held that claimed trade dress in a particular product feature is ‘functional’ when it is ‘essential to the use or purpose of the device or when it affects the cost or quality of the device’46 ie, if the exclusive use of the feature would put competitors at a ‘significant nonreputation-related disadvantage’.47 Granting trade dress protection to essentially functional features could potentially extend forever the rights granted for a limited number of years by utility patents.48 The courts have utilized various tests to determine if a particular design or feature is functional.49 While many features of a commercial product are functional in the sense that they form a part of a utilitarian product, the courts have distinguished those that are not essential to such utility and do not create significant competitive disadvantages.50

42

Oddzon Products, Inc v Just Toys, Inc, 122 F 3d 1396, 1405 (Fed Cir 1997). Sekio Epson Corp v Nu-Kote Intern, Inc, 190 F 3d 1360, 1368 (Fed Cir 1999). 44 597 F 3d 1288, (Fed Cir 2010). 45 Traffix Devices, Inc, 532 US at 29. 15 USC. §§ 1052 (e) (5); 1064 (3). 46 532 US at 33. 47 Qualitex Co v Jacobson Products Co, Inc, 514 US 159, 165 (1995). 48 Ibid., at 164–165. 49 See, eg, In re Morton-Norwich Products, Inc, 671 F 2d 1332, 1340–1341 (CCPA 1982), which utilizes four factors to determine functionality in trade dress: (1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising material in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; or (4) facts indicating that the design results in a comparatively cheap or simple method of manufacturing. 50 See, eg, General Motors Corp v Lanard Toys Inc, 80 USPQ 2d 1608 (6th Cir 2006) (holding that the grille, slanted and raised hood, split windshield, rectangular doors, squared edges, etc of a Hummer automobile in combination were not functional); Gateway Inc v Companion Products Inc, 72 USPQ 2d 1591 (8th Cir 2004) (stylized black-and-white cow-spots trade dress for computers and computer peripherals is not functional and exclusive use of this design does not disadvantage competitors). 43

258

C. The United States (8) Aesthetic functionality The federal courts have specifically rejected the notion that purely aesthetic features can in 12.27 themselves confer utilitarian functionality on a proposed mark.51 However, the Restatement (Third) of Unfair Competition adds that, if a design’s ‘aesthetic value’ lies in its ability to ‘confer a significant benefit that cannot practically be duplicated by the use of alternative designs’ then the design is ‘functional’.52 The ‘ultimate test of aesthetic functionality’, it explains, ‘is whether the recognition of trademark rights would significantly hinder competition’.53 Thus, in Brunswick Corp v British Seagull Ltd, the colour black, as used with outboard motors, 12.28 was held to be functional and unprotectable because black outboard motors are compatible with many boats’ color schemes, and black makes the motors look smaller.54 Competitors’ inability to use black would therefore decrease their ability to effectively compete, and trademark protection was held to be unavailable. Compare this result with In re Owens-Corning Fiberglas Corp,55 and Qualitex Co v Jacobson Products Co, Inc.56 In both these cases, the court did acknowledge trade dress rights in products of a particular colour, upon proof of extensive secondary meaning, but only when the colour used was arbitrarily chosen and there was no competitive advantage to one party having exclusive rights to such color. Comparison The prohibition on granting rights in functional designs appears to be 12.29 consistent for both trade dress and design patents. A monopoly in the functional aspects of a product should only be bestowed through a utility patent. An individual or entity should not obtain functional monopoly under theories of protection that are only intended to protect the appearance of the item. The functionality jurisprudence in both patent and trade dress law attempts to preserve this distinction. For purposes of our hypothetical, there would be no issue of functionality regarding the bird design store fixtures themselves, as the design of the birds is not an essential component for holding up the building or the walls, or for any other function other than the amusement and delight of their customers. Therefore, unless the fixtures were deemed merely ornamental, they would likely qualify for inherently distinctive trade dress. The beverage containers could be challenged as functional, at least with regard to the ‘beaks’ on the containers, since these are the subject of a utility patent application and arguably provide a significant commercial advantage given their no-spill feature. If the beak shape is critical to the functionality of the no-spill technology, then that portion of the bird design could not be protected by either design patent or trade dress. If, however, the no-spill functionality was not dependent upon the beak design, and the beak design itself was arbitrary, then the beak design could likely qualify for both design patent and trade dress protection.

51 See In re DC Comics, Inc, 689 F 2d 1042 (CCPA 1982) (the Court of Customs and Patent Appeals reversed the US Patent and Trademark Office Trademark Trial and Appeal Board’s (TTAB) rejection of a trademark registration for three-dimensional characters of super-heroes; the Court rejected the TTAB’s reasoning that the facial and physical features and costumes of the characters in question were ‘indispensable elements of the commercial appeal of the product’ and, therefore, were ‘commercially functional’ facets of the dolls that could not be used to designate source). 52 Restatement (Third) of Unfair Competition § 17, Comment c, pp 175–176 (1993). 53 Ibid., at 176. 54 35 F 3d 1527, 1533 (Fed Cir 1994). 55 774 F 2d 1116 (Fed Cir 1985). 56 514 US 159, 170 (1995).

259

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress (9) Enforcement (a) Scope and protection of design patents and trade dress 12.30 Design Patent Scope and Protection

Design patents are defined by multiple drawings showing various views of the protected design. ‘As a rule, the illustration in the drawing views is its own best description’.57 Design patents are typically claimed as shown in drawings, and claim construction must be adapted to a pictorial setting.58 An illustration depicts a design better than it could be by any description and a description would probably not be intelligible without the illustration.59

12.31 For infringement of a design patent to occur between a patented product and the accused

product, there ‘must be sameness of appearance and mere difference of lines in the drawing or sketch . . . or slight variances in configuration . . . will not destroy the substantial identity’.60 Identity of appearance, the Court explained, or ‘sameness of effect upon the eye, is the main test of substantial identity of design’.61 The Gorham Court established the ‘ordinary observer test’ for infringement that has been used ever since, [I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.62

The two designs need not be the same ‘to the eye of an expert’, because if that were the test, ‘[t]here never could be piracy of a patented design, for human ingenuity has never yet produced a design, in all its details, exactly like another, so like, that an expert could not distinguish them.’63 12.32 In the more recent Egyptian Goddess, Inc v Swisa, Inc case, the court eliminated previous tests

that sought to elaborate on the ordinary observer test, namely the ‘point of novelty’ test and the ‘non-trivial advance’ test.64 The Court in Egyptian Goddess determined that the ordinary observer test is still the dominant test.65 The Court explained that in some instances ‘the claimed design and the accused design will be sufficiently distinct, such that it will be clear without more that the patentee has not met its burden of proving the two designs would appear “substantially the same” to the ordinary observer’.66 The Court further explained that, [i]n other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar.67

57 58 59 60 61 62 63 64 65 66 67

Manual of Patent Examining Procedure, § 1503.01 (8th edn). Contessa Food Products, Inc v Conagra, Inc, 282 F 3d 1370, 1377 (Fed Cir 2002). Dobson v Dornan, 118 US 10, 14 (1886). Gorham Co v White, 81 US 511, 526–527 (1871). Ibid., at 527. Ibid., at 528. Ibid., at 527. 543 F 3d 665, 678 (Fed Cir 2008). Ibid. Ibid. Ibid.

260

C. The United States The Court determined that where there are many examples of similar prior art designs or 12.33 where the field is crowded, ‘the differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art’.68 Therefore, the scope of the protection of a design patent is dependent on the ordinary observer with knowledge of the prior art. A design patent registration provides a presumption to the registrant of rights extending to the entire design set forth in the drawings of the design patent. However, the defendant may provide prior art examples, or show the asserted design elements are functional, in order to attempt to limit the scope of the patented design. The patentee still bears the ultimate burden of proof to demonstrate infringement by a preponderance of the evidence.69 Trade Dress Scope and Protection The discrete elements of trade dress must be identified, 12.34 separated out and identified in a list or identified in pictures or drawings.70 It is generally the totality of the elements that defines the bounds of the trade dress, but it needs to be defined for proper notice to the defendant.71 Despite this mandate to focus on the overall appearance of the product, a plaintiff must still articulate the specific elements of the trade dress that render it unique and novel, that is, capable of being an identifier of the product’s source.72 A vague, broad, and non-specific definition of trade dress not only makes it impossible to apply the test of distinctiveness, but also raises the danger of overprotection, with resulting anticompetitive injury to competitors.73 Therefore, in order to prove a trade dress infringement claim for unregistered trade dress in 12.35 a product design, the owner of the trade dress must prove ‘by a preponderance of the evidence’: (1) that the trade dress in question is distinctive in the marketplace, thereby indicating the source of the good it dresses; (2) that the trade dress is primarily non-functional; and (3) that the trade dress of the competing good is confusingly similar.74 If the trade dress is registered, the registration is presumptive evidence that the trade dress is valid, which necessarily includes a presumption of non-functionality.75 Comparison of Enforcement Rights Prior to Egyptian Goddess, prosecuting a claim of 12.36 design patent infringement was relatively difficult, as the patent holder was required to specify in words those elements of its design patent that it considered to be ‘points of novelty’ in its designs. The purported infringer could then ‘pick apart’ each point of novelty by demonstrating prior art or functionality for each such element. With the advent of Egyptian Goddess, the patent holder no longer must articulate its points of novelty, but simply introduce its patent, and the burden now falls to the defendant to articulate those elements that should invalidate the patent. As such, the design patent has become a much more effective weapon for patent holders in the United States. A further advantage to enforcing design patent rights is the fact, unlike a defendant in a trade dress case, a party that copies a patented design cannot avoid infringement by selling to a different class of purchasers, or by demonstrating 68

Ibid. Ibid., at 679. 70 Tumblebus Inc v Cranmer, 399 F 3d 754, 768 (6th Cir 2005). 71 Sports Traveler, Inc v Advance Magazine Publishers, Inc, 25 F Supp 2d 154, 162 (SDNY 1998). 72 See Abercrombie & Fitch, Inc (‘[h]ad the case proceeded further, Abercrombie would have been expected to list the elements of the designs and unique combinations it sought to protect’). 73 Landscape Forms, Inc v Colbia Cascade Co, 113 F 3d 373, 381 (2nd Cir 1997). 74 Abercrombie & Fitch Stores, Inc, 280 F 3d at 629 (citing Wal-Mart Stores, Inc 529 US at 210). 75 15 USC §1057(b). See also Wal-Mart Stores, Inc, 529 US at 209. 69

261

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress a lack of confusion in the market, since parties’ products need not be competitive to warrant finding of design patent infringement.76 12.37 Trade dress protection is more difficult to enforce, as it depends upon whether: (1) the trade

dress claimant can sufficiently articulate the specific elements of the trade dress; (2) in the case of product design trade dress (or other non-inherent distinction trade dress), the claimant can sufficiently demonstrate acquired distinctiveness; and (3) the claimant can prove a likelihood of confusion as to source, sponsorship, or affiliation between the trade dress in its own goods and services and those of the alleged infringer. While trade dress claims necessarily are more limited than design patent claims in terms of their commercial scope, trade dress infringement, as it relies on customer confusion, would generally be limited to the same products or those in similar channels of trade, whereas there is no such limitation on design patent infringement claims. On the other hand, trade dress may protect against a broader scope of infringing designs, since the ultimate test in trade dress (unlike the substantially similar test in design patents) is likelihood of confusion; similarity of the marks is only one (albeit important) of many factors in determining likelihood of confusion.77 12.38 Therefore, if our restaurant owner seeks to enforce its rights against others, it may seek to stop

any product design that to the ordinary observer is substantially identical to its registered design patents, no matter what the goods or services of the other party. However, if it obtains common law, or even better, registered rights in its trade dress, it may seek to prevent competitors from any bird design, or perhaps other animal-themed designs, which it can demonstrate is likely to confuse consumers as to the source and origin of such designs.

D. The European Union (1) Definitions and underlying rights (a) Design rights for distinctive features. Trademarks for design features. What is the difference? 12.39 In the EU, registered and unregistered design protection may be obtained under the

Community Designs Regulation (CDR)78 for ‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.79 For these purposes, ‘product’ means ‘any industrial or handicraft item, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs’. Equivalent registered design protection may be obtained on a country by country basis under national design laws that have been harmonized by virtue of the Designs Directive.80 12.40 Registered trademark protection may be obtained under the Community Trademarks

Regulation (CTMR)81 and/or national trademark laws that are harmonized by virtue of the

76

See Avia Group International Inc v L.A. Gear California Inc 7 USPQ 2d 1548, 1555 (Fed Cir 1988). See, eg, In re E. I. DuPont DeNemours & Co, 476 F 2d 1357, 1361 (CCPA 1973). 78 Council Regulation of 12 December 2001 on Community Designs (6/2002/EC). 79 CDR, Art 3; Designs Directive, Art 1. 80 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. 81 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trademark (codified version). 77

262

D. The European Union Trademarks Directive82 for ‘any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings’.83 Comparing the permitted subject-matter of design and trademark protection, one can 12.41 immediately identify overlaps: for example, get-up and graphic symbols are among the list of ‘products’ whose appearance may be protected by a design, and they are also ‘signs’ capable of being represented graphically and as such may be protected by a trademark. Similarly, and of most importance when considering the bird-shaped cup and other bird designs under discussion in this chapter, the shapes of goods and packaging are ‘signs’ falling within the definition of a registrable trademark and are also protectable as designs. There is express legislative recognition of the existence and permissibility of overlapping 12.42 trademark and design rights, in that Article 96 CDR and Article 16 of the Designs Directive both expressly state that their provisions are without prejudice to other intellectual property rights, including trademarks. It is therefore clearly open to the company in our scenario to have concurrent and overlapping trademark and design rights in respect of the same subjectmatter. To understand the difference between these rights, one has to examine the additional requirements for protection that apply in each case. Designs The two key legislative requirements for a product (or part of a product) to be 12.43 protected under the EU designs regime are that the design concerned must be ‘new’ and must have ‘individual character’.84 A design is regarded as ‘new’ if no design that is identical or differs only in immaterial details has been made available to the public.85 This is a low level filter test which excludes only the closest prior art. The ‘individual character’ test is more difficult to satisfy, and requires that the overall impression produced by the design on the ‘informed user’ must differ from the overall impression produced on such a user by any design that pre-dates the filing or priority date.86 The ‘informed user’ is a notional person in whose shoes the designs office or court has to step for the purpose of assessing designs. The Court of Justice of the EU (ECJ) held in Grupo Promer Mon Graphic SA v OHIM87 that 12.44 the concept of the ‘informed user’, [53] . . . must be understood as lying somewhere between that of the average consumer, applicable in trade mark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trade marks in conflict, and the sectoral expert, who is an expert with detailed technical expertise. Thus, the concept of the informed user may be understood as referring, not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question.

Further, the informed user would generally make a direct comparison between the designs at issue, in contrast to the average consumer in trade mark cases, who may have to rely on imperfect recollection. 82 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trademarks (codified version). 83 CTMR, Art 4; TM Directive, Art 2. 84 CDR, Art 4; Designs Directive, Art 3(2). 85 CDR, Art 5; Designs Directive, Art 4. 86 CDR, Art 6; Designs Directive, Art 5(1). 87 Case C-281/10 P Grupo Promer Mon Graphic SA v OHIM, PepsiCo Inc intervening (20 October 2011).

263

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress 12.45 The relevant date to consider when applying the novelty and individual character tests for a

product in which a person wants to claim design rights is the filing date or priority date (if applicable) in the case of registered designs,88 or the date on which the design in issue was first made available to the public in the case of unregistered designs.89 A design is deemed to have been made available to the public if it has been published, exhibited, used in trade or otherwise disclosed, other than on a confidential basis, except if such events ‘could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the Community’.90 However, for the purpose of considering the validity of a registered design, the designer or his successor in title (or someone acting on information from the designer or his successor) has a 12-month grace period during which publishing, exhibiting, using, or disclosing the design may take place without invalidating the registration.91 Thus there is scope for our restaurant owner to test the market before committing to filing an application to register its designs. 12.46 Trademarks

There is no requirement of novelty for a product design or features of trade dress to be registered as a trademark. Indeed, as will be seen, it can be quite difficult to obtain trademark protection in the EU for a design that nobody has seen before. Instead, the key criterion for trademark protection is that the subject-matter must be capable of distinguishing between goods of different undertakings.92

12.47 In the case of registered trademarks for product designs or trade dress, it is necessary to decide

at the time of filing whether the entirety of the subject-matter is worthy of protection, or whether only certain features, such as the wall décor in our restaurant scenario, should be specified in the application. In contrast, where one wishes to rely on unregistered trademark rights or passing off, it is possible to decide at the time of enforcement which aspects of design and trade dress are truly distinctive of the owner’s business and contribute to its goodwill, such that a competitor who adopts similar features will be assumed by members of the public to have a connection with the business. (2) Term and use (a) How long do they last? Must one register to maintain rights? 12.48 As highlighted in the US section above, trademark rights can last forever. A Community or

national trademark registration relating to trade dress or the shape of a product or packaging can be preserved as long as the owner pays the appropriate renewal fees93 and continues to use or license the use of the mark. A gap in use of five years will make the registration vulnerable to a revocation attack.94 At the other end of the scale, the continued use of a trademark comprising trade dress or a product or packaging shape will generally result in a strengthening of the scope of protection of the trademark concerned, as a result of its increased distinctiveness. Similarly, unregistered trademark protection and (in the UK) passing off rights will be 88

CDR, Arts 5(1)(b) and 6(1)(b); Designs Directive, Arts 4(1) and 5(1). CDR, Art 5(1)(a) and Art 6(1)(a). 90 CDR, Art 7(1); Designs Directive, Art 6(1). It is clear that the disclosure does not need to be in the EU, provided that those specialized in the relevant business within the EU can be expected to be aware of it. 91 CDR, Art 7(2); Designs Directive, Art 6(2). 92 CTMR, Art 4; TM Directive, Art 2. 93 Renewal fees are payable every ten years for Community trademarks and under most national trademark systems within the EU. 94 CTMR, Art 51(1)(a); TM Directive, Art 12(1). 89

264

D. The European Union strengthened with increased market use. An exception to this, however, is if third parties introduce similar trade dress and product designs onto the market, which can result in reduced recognition and ‘dilution’ of distinctiveness. An unregistered Community design that meets the requirements of the CDR is protected for 12.49 three years from the date on which the design was first made available in the EU (ie, published, exhibited, used in trade, or otherwise disclosed in such a way that, in the normal course of business, these events could reasonably have become known to the circles specialized in the sector concerned, operating within the EU).95 This is a short-term right, the impetus for which came particularly from the fashion industry, on the basis that most clothing designs have a short shelf life which makes longer-term protection unnecessary and registration disproportionately expensive. Community and national design registrations, on the other hand, have a maximum term of 12.50 25 years from their filing date. Generally, the initial filing fee is paid for five years of protection and then, if the design concerned proves to be longer-lived, the owner can choose to renew the registration for up to four further five-year periods. The combination of rights under the EU regime means that a company that wishes to turn 12.51 the shape or trade dress for its products into a recognized ‘brand’ can use both the design and trademark systems to achieve this end. Provided that it files within 12 months of making the design available to the public, it will be able to obtain registered design protection, which can remain in place for up to 25 years while the trade dress concerned becomes known to consumers and acquires sufficient distinctiveness to give rise to common law passing off rights and the possibility of registration as a trademark. Although registrations for both Community designs and Community trademarks are 12.52 obtained from the same intellectual property office, the Office for Harmonization in the Internal Market (OHIM), potential applicants should be aware that there is a substantial difference between the application processes for each type of right. Community trademarks are examined by OHIM quite rigorously against the legal requirements for registrability that are discussed elsewhere in this Chapter.96 So, for marks comprising shape and trade dress, objections may be raised (based, for example, on non-distinctiveness) and the applicant has to engage in debate with the trademark examiner to try to persuade him or her that the mark concerned is in fact distinctive for the particular products or services concerned. In contrast, applications to register Community designs merely undergo a simple check for compliance with basic formalities,97 but there is no examination for compliance with the requirements of novelty and individual character. If a product design or trade dress is accepted by OHIM for registration as a Community 12.53 trademark, the application is then published and a three-month period follows during which third parties may challenge it based on earlier conflicting rights. In contrast, there is no publication of applications and no opposition process for Community designs, with the result that these become registered considerably more quickly than Community trademarks. 95

CDR, Art 11. Commission Regulation (EC) No 2868/95, Rule 11. See also The Manual Concerning Proceedings before OHIM, Part B, Examination, published on OHIM’s website. 97 The checks are limited to reviewing the form for obvious errors and omissions, checking that the illustration of the design is adequately presented, and that the design falls within the scope of protectable subject-matter. 96

265

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress Most Community designs are registered within 45 days of filing, while it takes closer to a year for most unopposed Community trademarks to be registered. And, for the sorts of trademarks that are under discussion in this Chapter, there can be a delay of several years if the application is refused by OHIM and the applicant takes the case on appeal to OHIM’s Boards of Appeal and potentially on up to the General Court and the ECJ.98 (b) Cost of obtaining registered protection 12.54 The cost of filing and prosecuting a Community design registration is lower than that for a

Community trademark at all stages in the process. The initial filing fees are lower;99 the comparable cost of obtaining 25 years’ protection (the maximum for a design registration) is lower;100 and there are likely to be attorney fees incurred to argue for the registrability of the trademark which will not be necessary for the equivalent design. 12.55 Another significant cost advantage of Community designs over Community trademarks is

that it is possible to file a single application for multiple designs, while there is no equivalent for trademarks. The designs in such an application must belong to the same Locarno Class101 (except in the case of ornamentation designs), but otherwise can relate to completely different items. Each design within such a multiple application is treated as a separate object of property that can be enforced, licensed, or assigned independently of the others.102 This can provide a significant cost benefit to applicants at the application stage and allows for the protection of a range of potential designs whose commercial success has yet to be tested in the marketplace. (3) Ownership (a) Who owns the trademark and design rights? 12.56 The right to a Community design vests in the designer or his successor in title. If two or more

persons jointly develop a design, the right vests in them jointly. However, where a design is developed by an employee in the execution of his duties or following the instructions given by his employer, the right to the Community design vests in the employer, unless otherwise agreed or specified under national law.103 12.57 Unregistered trademark and passing off rights will accrue to the person who is perceived by

the public as the source of the relevant designs and trade dress, subject to any agreement to the contrary. Registered trademarks, on the other hand, will be owned by the person who files the application, though this is subject to the possibility of rectification of the register or

98 National registration processes for designs and trademarks differ quite widely across the EU, with varying degrees of examination. An applicant should check the position with local attorneys rather than assuming that the position will be the same as before OHIM. 99 As at 1 September 2011, the initial fee for registering a Community design (including publication) is €350 while that for a Community trademark in up to three Classes is €900 (using e-filing) or €1,050 (using the paper form). 100 As at September 1, 2011, the OHIM fees for obtaining the maximum 25 years’ protection for a registered design come to €890, while those for 20 years of trademark protection come to €2,250, and another €1,350 for every additional ten year period (if the renewal fees were to remain static). 101 The Locarno Classification is a system of classification for industrial designs, based on the Locarno Agreement Establishing an International Classification for Industrial Designs, which was concluded in 1968. 102 CDR, Art 37(4). 103 CDR, Art 14.

266

D. The European Union an invalidity attack if anyone other than the person who owns relevant design right, copyright, and/or unregistered trademark or passing off rights files the application. Usually, the trade dress and product designs of the type under discussion would be created 12.58 by a designer operating on a freelance basis or employed by a design company. This means that it is important in our scenario to ensure that assignments are executed by the designer and/or design company to ensure that all intellectual property rights vest in the company that operates the restaurant, and that there will be no cause for complaint when that company applies to register relevant trademarks and designs. While it is not as crucial to mark products or trade dress that are the subject of a design 12.59 registration in the EU as it is for design patents in the US (see paragraph 12.23), it can nevertheless help to counter a defence of innocence in an infringement action which could otherwise enable the defendant to avoid being ordered to pay financial compensation for past infringements.104 Similarly, it is worth notifying the world at large that an aspect of design or trade dress has been registered as a trademark, by using the® symbol or words such as ‘registered as a Community trademark’. This will help to put off would-be copyists and may contribute to the overall ‘brand’ message that the restaurant owner is trying to achieve.105 (4) Limitations on Rights (a) Exclusions based on technical function or result Features of appearance of a product that are ‘solely dictated by its technical function’, ‘must 12.60 necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated, or to which it is applied to be mechanically connected to or placed in, around or against another product so that either may perform its function’, are excluded from design protection under the EU regime.106 There is also a technical function exclusion from registered trademark protection in the EU, 12.61 which applies to ‘signs which consist exclusively of the shape of goods which is necessary to obtain a technical result’.107 The slightly different form of words used for the design and trademark exclusions in the legislation have given rise to debate as to whether the designs exclusion is intended to be less rigorous than that for trademarks. The position for trademarks is clear. In Philips v Remington,108 a case concerning a registered trademark for the shape and configuration of a razor head, the ECJ held that a sign consisting exclusively of a shape whose essential features are functional and attributable solely to a technical result may not be registered as a CTM, even if the same technical result can be achieved by other shapes. This position was confirmed more recently in the Lego case,109 in which the ECJ ruled that allowing registration in such a case would unduly impair the opportunity of competitors to place on the market goods whose shapes incorporated the same technical solution. 104 This is the case, for example, in the UK under the Registered Designs Act 1949, s 24B (as amended), though marking only assists if the number of the registered design concerned is included in the notice. 105 In some countries it is a criminal offence to claim that a trademark is registered when it is not, so care should be taken not to be over-expansive in one’s claims. 106 CDR, Art 8; Designs Directive, Art 7. 107 CTMR, Art 7(1)(e)(ii); TM Directive, Art 3(1)(e)(ii). 108 Case C-299/99 Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-5475, [2001] ETMR 81. 109 Case C-48/09 P, Lego Juris A/S v OHIM, Mega Brands Inc intervening [2010] ETMR 63.

267

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress 12.62 The position with regard to the technical exclusion for designs has not yet been finally

determined. The Advocate General in Philips v Remington expressed the opinion that, . . . the level of functionality must be greater in order to be able to assess the ground for refusal in the context of designs; the feature concerned must not only be necessary but essential in order to achieve a particular technical result: form follows function. This means that a functional design may, none the less, be eligible for protection [as a design, but not as a trademark] if it can be shown that the same technical function could be achieved by another different form.

This approach was adopted by the English Court of Appeal in a case concerning design rights in features of appearance of a suitcase with a zipped ‘expander’ section, Landor v Azure Designs,110 which held that the phrase, ‘solely dictated by its technical function’ in the designs legislation only excludes shapes dictated by technical function where no other shape could be used. 12.63 However, the Third Board of Appeal at OHIM has since expressed the view that this

‘multiplicity-of-forms’ theory, whereby one accepts that a feature of a product’s appearance is not ‘solely dictated by technical function’ in any case where an alternative product configuration could achieve the same function, means that the purpose of the technical function exclusion in the legislation is likely to be frustrated.111 As expressed by the Board of Appeal, the purpose of the exclusion is to prevent design law from being used to achieve monopolies over technical solutions, on the basis that monopolies are only justified if the more restrictive conditions imposed by patent law (and, in some countries, utility models) are complied with. 12.64 As the Board said,

If a technical solution can be achieved by two alternative methods, neither solution is, according to the multiplicity-of-forms theory, solely dictated by the function of the product in question. This would mean that both solutions could be the subject of a design registration, possibly held by the same person, which would have the consequence that no one else would be able to manufacture a competing product capable of performing the same technical function.

The Board held that this could not have been an intended outcome and therefore that the multiplicity-of-forms theory had to be wrong. It took pains to explain, however, that the alternative approach did not impose a hidden requirement that a design had to have aesthetic merit before it could be protected. Rather, it said that this was simply ‘recognition of the obvious fact that when aesthetics are totally irrelevant, in the sense that no one cares whether the product looks good, bad, ugly or pretty, and all that matters is that the product functions well, there is nothing to protect under the law of designs’.112 12.65 It summarized the position as follows:

36. It follows from the above that Article 8(1) CDR denies protection to those features of a product’s appearance that were chosen exclusively for the purpose of designing a product that performs its function, as opposed to features that were chosen, at least to some degree, for the purpose of enhancing the product’s visual appearance. It goes without saying that these matters must be assessed objectively: it is not necessary to determine what actually went on in the designer’s mind when the design was being developed. The matter must be assessed from the standpoint of a reasonable observer who looks at the design and asks himself whether anything 110 111 112

Landor & Hawa International Ltd v Azure Designs Ltd [2006] EWCA Civ 1285; [2006] ECDR 31. Lindner Recyclingtech v Franssons Verkstader AB (R690/2007-3), [2010] ECDR 1. Ibid., at para 35.

268

D. The European Union other than purely functional considerations could have been relevant when a specific feature was chosen.

The Board of Appeal in Lindner pointed out that the fact that a particular feature of a prod- 12.66 uct’s appearance is denied protection by the technical function exclusion does not mean that the whole design is invalid; it is quite possible for a design as a whole to be valid, but for certain features to be denied protection. The design as a whole will only be invalid if all the essential features of appearance of the product in question were solely dictated by its technical function. A decision of the Court of Appeal would ordinarily be followed as binding authority in the 12.67 UK (though not other EU member states). However, the meaning of the technical function exclusion in the designs legislation is ultimately a matter for interpretation by the ECJ, which it is suggested is likely to endorse the analysis of the Board of Appeal of OHIM in preference to that of the Court of Appeal. The relevance of the technical function and technical result exclusions to our scenario is that 12.68 the ‘no-spill’ feature of the kiddie cups is likely to be excluded from protection as a trademark or design, even if there are other ways of designing the cup so as not to spill. This feature should therefore not be relied on if pleading a case based on unregistered rights, and consideration should be given to excluding the feature from the representation of a design or trademark for which registered protection is sought. (b) Designs and trademarks contrary to public policy or accepted principles of morality Another exception that is common to both the designs and trademark regimes in the EU 12.69 relates to designs and trademarks that are ‘contrary to public policy or to accepted principles of morality’.113 In neither case does the legislation define these concepts, leaving them to be interpreted by the courts. The draft exclusion set out in the Commission’s original Green Paper proposing the Community designs regime would have applied to designs that offended public policy or morality ‘in any part of ’ the EU,114 but this wording was dropped in the final text, indicating that a ‘pan-EU’ test should be applied. In contrast, the exclusion in the CTMR provides that a Community trademark should be 12.70 refused if the grounds of non-registrability apply in only part of the Community. So a particular sensitivity in only one EU member state may be sufficient to prevent registration of a product shape or trade dress as a Community trademark but not as a registered design. This difference may simply reflect recognition that many trademarks consist exclusively or primarily of words in a particular language that are only understood by a section of the Community public, whereas most designs can be expected to be perceived visually in the same way across the Community. As far as national offices are concerned, it is understood that they should apply national 12.71 standards of public policy and morality to the trademarks and designs that they examine. Most of the case law in this area has developed through the examination of trademarks com- 12.72 prising words—often vulgar expressions or terms that have some racial or religious sensitivity.

113

CDR, Art 9; CTMR, Art 7(1)(f ). Green Paper on the Legal Protection of Industrial Design, Brussels, June 1991 (111/F/5131/91-EN), Art 6(2). 114

269

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress However, the same principles are likely to be applicable in the design field as well. For example, in a case concerning an application to register the words SCREW YOU as a Community trademark, OHIM’s Grand Board of Appeal ruled that it was necessary to apply the standards of a reasonable person with normal levels of sensitivity and tolerance.115 It was said that OHIM should not refuse to register a trademark that is only likely to offend a small minority of exceptionally puritanical citizens. Equally, however, it should not allow a trademark on the register simply because it would not offend the small minority at the other end of the spectrum who find even gross obscenity acceptable. 12.73 One could imagine this issue arising if our scenario were a nightclub with wall décor and

beverage containers comprising depictions of human genitalia. An application for either trademark or design protection could be faced with a ‘public morality’ objection on the basis that the notional reasonable person with normal levels of sensitivity and tolerance would be upset and affronted if they came across products made to the design concerned. Happily, the owner of the bird-themed restaurant under examination in this chapter should not face such objections. (c) Non-distinctive and descriptive designs excluded from trademark protection 12.74 Notwithstanding the permissive scope of the subject-matter that is theoretically capable of

being registered as a trademark under the EU regime, it can be difficult in practice to obtain registered trademark protection for many product and packaging designs. This is because of the exclusion of trademarks which are ‘devoid of any distinctive character’ and trademarks that merely designate the kind, quality, intended purpose, or other characteristic of the goods.116 12.75 The ECJ has repeatedly observed that, although the test for distinctiveness is the same for

shapes as it is for more conventional trademarks, the average consumer does not generally expect the shape of goods or their packaging to have trademark significance. Therefore, only a shape which departs significantly from the norm or customs of the sector will be considered to have distinctive character.117 12.76 A significant portion of the case law in this area has resulted from the repeated attempts by

the Laundry and Home Care division of Henkel to persuade both OHIM and the European Courts that various different shape and colour combinations of dishwasher tablet should be permitted registration as Community trademarks. A standard response to such efforts is for OHIM and the Courts to say that the overall impression created by the shape of the tablet in question and the arrangement of its colours is not such as to enable consumers to distinguish Henkel’s products from those having a different trade origin when they come to select a product for purchase.118 12.77 Notwithstanding the difficulties involved, and the apparent tightening up over the years of

OHIM’s examination of trademarks for shapes, some applicants have persisted and successfully 115

Application of Kenneth (trading as Screw You) [2007] ETMR 7. CTMR, Art 7(1)(b) and (c); TM Directive, Art 3(1)(b) and (c). 117 See, for example, Joined Cases C 53–55/01 Linde AG, Winward Industries Inc and Rado Uhren AG v Deutsches Patent- und Markenamt [2003] ECR I-3161, [2003] ETMR 78; and Case C-238/06 P Develey Holding GmbH & Co Beteiligungs KG v OHIM [2007] ECR I-9375, [2008] ETMR 20. 118 Joined Cases C-456 and 457/01P Henkel KGaA v OHIM [2004] ECR I-5089; [2005] ETMR 44; Case C-144/06 P Henkel KGaA v OHIM [2007] ECR I-8109. 116

270

D. The European Union obtained registered trademark protection for an array of product and packaging shapes, including: a car engine grille,119 a striated plastic water bottle,120 a cosmetics bottle,121 a loudspeaker,122 and a kitchen mixer.123 For every example in this list, though, there are many product and packaging shape trademark applications that have been rejected on the grounds of non-distinctiveness. The key distinction between those that are accepted and those that are not is that the former stand out as shapes which inform the consumer of the trade origin of the products concerned, rather than simply being recognized as coming from the manufacturer or supplier concerned. This is a fine distinction which continues to be explored through the cases. For example, in 12.78 Whirlpool v Kenwood, the Judge said that the shape of Whirlpool’s mixer had become ‘a point of reference’ for consumers in the relevant market such that they had a mindset which was ‘not simply association in the sense of awareness that supplier X markets goods having the finished appearance Y’, but ‘a settled belief that ‘KitchenAid = finished appearance A (for Artisan)’ and ‘finished appearance A (for Artisan) = KitchenAid’.124 It is likely that an application to register the bird-shaped cups or other features of trade dress 12.79 for our notional restaurant as trademarks would be rejected under this head. The most likely solution is to wait until these designs and trade dress have acquired distinctiveness through use on the market125 and at that point to make fresh applications, supported by evidence of use and recognition on the market. Unfortunately, though, OHIM requires evidence of acquired distinctiveness throughout the Community,126 which can prove problematic, and so it may be necessary for the restaurant owner to limit its sights to registered protection in those countries where its chain has been active. (d) Miscellaneous exclusions of shapes and designs from trademark protection There are two further specific exclusions from protection of product shapes as registered 12.80 trademarks in the EU that should be briefly mentioned. The first applies to shapes that ‘result[s] from the nature of the goods’.127 This is intended to avoid the possibility that a trader has to avoid using a particular shape that is essential to the manufacture or marketing of a product. The second applies to shapes that ‘give[s] substantial value to the goods’.128 There is little case law under this provision, but the shape of a Bang & Olufsen speaker has been rejected by OHIM’s Board of Appeal (upheld by the General Court) on the basis that it is ‘not so much perceived as an appealing loudspeaker but as a kind of pure, slender, timeless sculpture for music reproduction’ which has value ‘derive[d] from its aesthetic or artistic appearance’.129

119

Case T-128/01 DaimlerChrysler Corporation v OHIM [2003] ECR II-701, [2003] ETMR 87. Case T-305/02 Nestlé Waters France v OHIM [2003] ECR II-5207, [2004] ETMR 41. 121 Case T-393/02 Henkel KGaA v OHIM [2005] ETMR 56. 122 Case T-460/05 Bang & Olufsen A/S v OHIM [2008] ETMR 46. Note that a further objection was raised to this mark by OHIM’s Board of Appeal, based on a new ground of objection (discussed at paragraph 12.80). 123 Whirlpool Corp v Kenwood Ltd [2008] EWHC 1930 (Ch), [2009] ETMR 5. 124 Ibid., at para 68. 125 CTMR, Art 7(3); TM Directive, Art 3(3). 126 C-24/05 P August Storck v OHIM at para 83. 127 CTMR, Art 7(1)(e)(i); TM Directive, Art 3(1)(e)(i). 128 CTMR, Art 7(1)(e)(iii); TM Directive, Art 3(1)(e)(iii). 129 Case R 497/2005-1 Bang & Olufsen A/S’s application to register the shape of a loudspeaker, 10 September 2008; upheld in Case T-508/08 Bang & Olufsen A/S v OH1M (6 October 2011). 120

271

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress 12.81 In contrast, an objection to the shape of the well-known Rubik Cube under this ground was

rejected, since its depiction in the trademark application was ‘a mere cubic grid’.130 Like the exclusion of shapes required to achieve a technical result (see above), shapes that are rejected for these reasons are not capable of being ‘rescued’ by evidence of acquired distinctiveness. 12.82 A bird shape for a glass or other restaurant paraphernalia is unlikely to fall foul of the first

exclusion mentioned above, and one would hope that the second would not apply either, though without a better understanding from the case law of what the ‘substantial value’ exclusion means, it is impossible to be sure. Happily, there is no equivalent exclusion from protection as a Community or national registered design, and so the bird designs may be safe for the first 25 years, even if deemed to give the goods substantial value. (5) Enforcement (a) Scope and protection of trademarks and designs 12.83 A design that is protected under the EU regime will be infringed by the use of ‘any design that

does not produce on the informed user a different overall impression, bearing in mind the degree of freedom of the designer in developing the design’.131 The concept of the ‘informed user’ has already been discussed in relation to the individual character requirement.132 Note that there is an additional requirement to prove infringement of an unregistered design, which is not necessary for a registered design, which is that the use must result from copying the protected design.133 In practice, in all but the most obvious cases of slavish copying, this difference is likely to increase the difficulty and expense of running an infringement case relating to an unregistered design compared to the equivalent case for a registered design. 12.84 The tests for trademark infringement are more complex, since the regime allows for trade-

marks that have a greater or lesser capacity to distinguish the goods for which they are registered, whether by virtue of their inherent characteristics or as a result of use on the market. In summary, a registered trademark will be infringed by the use in the course of trade of: (1) a sign that is identical to the trademark in relation to goods identical to those for which it is registered; or (2) an identical or similar sign in relation to identical or similar goods, which is likely to cause confusion to the public; or (3) an identical or similar sign to a trademark with a reputation, in relation to any goods (whether the same, similar or dissimilar), where use of the sign is without due cause and takes unfair advantage of or is detrimental to the distinctive character or repute of the trademark. 12.85 The notional person through whose eyes a judge must assess whether these tests are satisfied

is the ‘average consumer’ of the goods concerned, who is deemed to conduct what has become known as the ‘global appreciation’ test. This takes into account the visual, aural, and conceptual similarities between the sign used by the alleged infringer and the registered trademark concerned, based on their ‘overall impression’, bearing in mind the fact that the average

130 131 132 133

Case R 1526/2008-2 Simba Toys GmbH & Co KG v Seven Towns Limited (1 September 2009). CDR, Art 10; Designs Directive, Art 9. See para 12.43. CDR, Art 19(2).

272

D. The European Union consumer will have only imperfect recollection of the registered mark,134 and also factoring in the context in which the alleged infringer is using his sign.135 In Procter & Gamble v Reckitt Benckiser,136 Jacob LJ in the English Court of Appeal made a 12.86 direct comparison between the two notional assessors of trademarks and designs, stating that the informed user is ‘more discriminating’ and is ‘alert to design issues and is better informed than the average consumer in trade mark law’. He also expressed the view that things which may infringe a registered trademark may not infringe a corresponding registered design, and said that he could not think of any instance where the reverse might be so. Whether or not he is correct about this is only likely to become clear if someone bases a claim for both design and trademark infringement in a case where the identical subject-matter, such as trade dress, has been registered under both regimes. Although the product to which the design is applied must be specified when filing a 12.87 Community design application, this does not limit the scope of the registration, which may be infringed by the use of the design on products that were not even in contemplation at the time of its creation or filing.137 On the other hand, for a registered trademark, the relevant goods must be listed in the specification at the outset and the scope of protection will only extend to these and similar goods, except in relation to trademarks with a reputation which have a broader penumbra of protection. This could make a difference in our bird-themed restaurant. For example, a design registration for a bird-shaped beverage container could be infringed by 12.88 the sale of lampshades made to the bird design, whereas the equivalent trademark registered in respect of restaurant and bar services, or for beverages (if the restaurant sells these separately as well), would not be infringed unless (possibly) the trade dress concerned has acquired a sufficient reputation. The same could be true for two-dimensional designs such as fabric patterns, which might be used across a range of goods in the restaurant, such as the waiters’ clothing and furniture upholstery. For both rights, the types of use that are prohibited are very similar. For trade dress, these 12.89 would include: making products incorporating the trade dress, offering them for sale, putting them on the market, or importing or exporting them.138 Infringement disputes concerning national trademark and design rights are heard by the relevant national court, while those concerning Community trademarks and designs (including unregistered Community designs) are dealt with by nominated courts in each EU member state. Both the CDR and the CTMR contain rules which determine which court or courts have jurisdiction in any particular case, dependent on such factors as the domicile of the defendant, the domicile of the claimant, and the country in which the alleged infringement is taking place.139

134 Case C-251/95 SABEL BV v Puma AG, Rudolf Dassler Sport [1997] ECR I-6191; [1998] ETMR 1; Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen BV [1999] ECR I-3819; [1999] ETMR 690 at [26]. 135 Case C-533/06 O2 Holdings v Hutchison 3G [2008] ECR p I-4231 at [64]. 136 The Procter & Gamble Company v Reckitt Benckiser (UK) Limited [2007] EWCA Civ 936; [2008] ECDR 3. 137 This position was highlighted in Green Lane Products v PMS International [2008] EWCA Civ 358; [2008] ECDR 15, in which the English Court of Appeal held that a design registration said to be for ‘flatirons and washing, cleaning and drying equipment’ could be asserted against a defendant who wanted to sell hand exercisers, easy-catch balls, and dog training balls made to a very similar design. 138 CDR, Art 19(1); CTMR, Art 9(2). 139 CDR, Art 82; CTMR, Art 97.

273

Chapter 12: Overlapping Rights in Designs, Trademarks, and Trade Dress 12.90 In most cases, the court concerned has jurisdiction to grant a pan-EU injunction. In any

particular case, there may be more than one country in which this would be possible, and so there is some scope for forum shopping when an action is being contemplated for Community trademark or design infringement (or both), particularly where the alleged infringements are taking place in multiple EU member states. The nominated Community design and trademark courts also all have jurisdiction to deal with counterclaims for the invalidity of the relevant right (as well as revocation counterclaims in the case of Community trademarks).140 12.91 In addition to injunctive relief, the national and Community courts all have the power to

order the defendant to pay financial compensation and to require the delivery up of infringing products and information about suppliers and customers. There is yet to be meaningful guidance on the different methods of calculation of the damages or profits due to a rights owner, depending on whether the right is a Community trademark or design, and there is uncertainty about whether a single Community court may calculate and grant compensation awards on a pan-EU basis. It is hoped that our restaurant owner does not have to get to that stage in the enforcement process, if it has obtained appropriate protection for its product designs and trade dress and acted swiftly to stop any infringements at an early stage.

E. Practical Advice and Insights 12.92 To finish off this Chapter, here are some hints and tips for our restaurant owner (and

businesses generally), based on the matters discussed above. 1. Apply for design patents (in the US) and registered designs (in the EU) to protect new product shapes and design features before or soon after launch of the business or product line, and certainly within a year. Follow up with filing of trade dress and trademark rights if and when acquired distinctiveness is established. Consider early trademark registration for any particularly distinctive elements of trade dress. 2. For service providers, consider filing for any elements of your services that you consider distinctive. However, if you determine that the chances of registration are initially slim, wait to file until you have had time to build up your rights. In the meantime, rely on common law rights if necessary to enforce against third parties. 3. Consider Community, rather than national, designs and trademarks in the EU, if the business will spread beyond two or three countries. 4. Take care when submitting drawings of the products for registered protection to exclude the functional ‘no-spill’ beak on the kiddie cup from the protection requested, or to ensure that it is only a minor part of the subject-matter of the registration. In the US, don’t file for a utility patent and don’t tout the utilitarian advantages of the no-spill beak (or other functional improvements), or, if you desire utility patent protection, distinguish in your filings and your advertisements the utilitarian aspects from the design elements. 5. Put ‘patent pending’ on products covered by design patents, and mark products protected by registered designs and trademarks with notice of the relevant registrations. Mark your unregistered trade dress to at least put your competitors on notice of your claimed rights. All these measures will slow down your competition as they take advice and design around

140

CDR, Art 81(d); CTMR, Art 96(d).

274

E. Practical Advice and Insights the registered rights, as well as providing you with extra protection when it comes to enforcement. 6. Pay attention to building secondary meaning in product designs and trade dress through ‘look to’ advertising and incorporating designs into your promotional materials. Avoid functionality by excluding reference to the utilitarian elements of your trade dress in advertising. 7. Keep records for use in patent and trademark office examination processes and disputes with third parties, including details of sales, advertising (particularly by reference to the trade dress), reach of chain, size and geographical spread of customer list, product and design awards, customer recognition and marketing surveys, market share data, and press coverage. 8. To the extent possible, position your designs as packaging (ie, sell the bird-themed kiddie-cup as a pre-packaged juice or soft drink container, rather than selling the cup alone) in order to argue (in the US) that your design is packaging, and not the product itself. If successful, you can claim that your designs are inherently distinctive, and potentially stop your competitors from using confusingly similar designs immediately, rather than having to wait until such time (if ever) when you may acquire distinctiveness. If the trade dress is deemed product design, then you face the risk that others will enter the market rapidly before you can establish secondary meaning, thereby foreclosing any possibility of acquiring rights in the design.

275

This page intentionally left blank

13 OVERLAPS BETWEEN TRADEMARKS AND GEOGRAPHICAL INDICATIONS Dev S. Gangjee, London School of Economics

A. Hypothetical B. Conceptual Overview C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems (1) Conflicts between Trademarks and GIs—An overview (2) Conflicts—US law

(3) (4) (5) (6) (7)

13.01 13.03

13.10 13.10 13.15

Conflicts—EU law Generic use Generic use—US law Generic use—EU law Choosing between sui generis or trademark protection

D. Conclusion

13.17 13.19 13.22 13.23 13.26 13.29

A. Hypothetical ‘Glugwiser’ is a regionally specific, traditionally brewed, and reputed beer from the Glugwise 13.01 region of country A. Country A has enacted sui generis Geographical Indications (GI) protection and GLUGWISER has been registered as a protected designation under this regime, with effect from 1 January 2005. The history of this beer can be traced back to the late eighteenth century and a representative organization of brewers was formed in 1960. However, from 2001 onwards GG Inc has been selling a well-received beer under the GLORIOUS GLUGWISER® trademark in country A. The mark has been registered in this jurisdiction with effect from 1 January 2001. GG does not base its production in the Glugwise region. Moreover, other brewers in country A claim that Glugwiser has become a generic expression for beer brewed using a ‘top down’ method of fermentation and utilizing two specific varieties of hops. Therefore they propose that any brewer adopting this method should be allowed to use the designation. Finally, country B is emerging as a potentially lucrative market for the regionally brewed beer from Glugwise. It has both sui generis GI legislation and permits the registration of ‘group’ marks—certification marks as well as collective marks—under its trademarks regime. This scenario precipitates the following issues: (1) Assuming there is a conflict between the 13.02 uses of GLUGWISER and GLORIOUS GLUGWISER®, how should this conflict between legal categories be resolved? (2) How are we to determine generic status? (3) What are the factors to consider when opting between protection under trademark law, the alternative of a sui generis regime, or simultaneous protection under both? 277

Chapter 13: Overlaps between Trademarks and Geographical Indications

B. Conceptual Overview 13.03 Unlike many other Intellectual Property (IP) overlaps considered in this book, it is possible

to argue that the subject-matter overlap between trademarks and sui generis GI regimes is so complete that the very existence of a distinct GI regime is considered by some to be redundant. GI and trademark regimes both potentially regulate the use and misuse of collectively used geographical signs in the marketplace. Both systems of protection can also be traced back to the primordial soup of late nineteenth century unfair competition doctrine, where although the object of protection was the sign, the emphasis was on certain categories of proscribed conduct.1 In setting out these proscriptions, the aim was to preserve the valuable intangible harmed by this misconduct. If it was the reputation of the individual trader for trademarks, in the case of GIs it was the collective reputation of wines such as Champagne or Bordeaux. Yet while the ends were relatively clear, the means adopted varied considerably. Unfair competition doctrine would typically include within its remit conduct likely to confuse consumers about the source of products, mislead them about the qualities of one’s own product, or baselessly denigrate one’s competitors,2 but the institutional and doctrinal configurations adopted to prevent this misconduct varied considerably.3 More specifically, when it came to rules prohibiting the false marking of geographical origin as an aspect of unfair competition, a number of different regimes were engaged. These included penal laws directed at fraud, civil actions in tort or delict, revenue legislation mandating truthful origin marking, embryonic unfair competition statutes, trade and merchandise mark statutes, customs regulations, and bespoke legislation for specific products, such as hops or cotton textiles, all of which intersected to regulate geographical signs with valuable reputations.4 Thus a number of regimes could be mobilized to regulate marks of geographical origin and one important type of regime developed around the distinct requirements of wine appellation regulation. By contrast, over the course of the twentieth century, trademark protection would be manoeuvred into a relatively stable configuration within the IP canon, with a recognizably similar, registration based model found across most jurisdictions.5 Meanwhile GI protection would continue to be scattered across these different regimes. Two surveys by the World Intellectual Property Organization (WIPO)6 and the World Trade Organization (WTO)7 1 For a more detailed treatment of these historical parallels, see Part I of D. Gangjee, Relocating the Law of Geographical Indications (Cambridge: Cambridge University Press, 2012). 2 These represent the consensual core and are found in Art 10bis(3) of the Paris Convention for the Protection of Industrial Property, 20 March 1883 as revised at Stockholm on 14 July 1967, 828 UNTS 305 (1972). Cf M. Spence, Intellectual Property (Oxford: Oxford University Press, 2007), 37. (Suggesting that from a contemporary IP perspective, unfair competition consists of three intersecting categories of norms against misrepresentation, denigration, and the broader category of misappropriation of valuable intangibles. The borderline between permissible borrowing or referencing and misappropriation or free riding remains contested.) 3 C. Wadlow, The Law of Passing Off: Unfair Competition by Misrepresentation, 3rd edn (London: Sweet & Maxwell, 2004), 61. (Historically, this was achieved via ‘various combinations of civil, criminal and administrative law’.) 4 See Ch 2 in Gangjee, Relocating the Law of Geographical Indications, see n 1. 5 As evident from WIPO Secretariat, ‘Summary of Replies to the Questionnaire on Trade Mark Law and Practice (SCT/11/6)’ 25 January 2010 (WIPO/STrad/INF/1 Rev). 6 WIPO Secretariat, ‘Document SCT/6/3 Rev. on Geographical Indications: Historical Background, Nature of Rights, Existing Systems for Protection and Obtaining Protection in Other Countries’ 2 April 2002 (SCT/8/4). 7 WTO Secretariat, ‘Review under Article 24.2 of the Application of the Provisions of the Section of the TRIPS Agreement on Geographical Indications’ 24 November 2003 (IP/C/W/253/Rev.1).

278

B. Conceptual Overview showcase the assortment of legal responses to international GI protection commitments. The WIPO survey divides these existing regimes into those concerned with (1) Unfair Competition including Passing Off (which focus on business practices and the effects of particular forms of conduct); (2) Appellations of Origin and Registered Geographical Indications (as sui generis systems of protection, considered to be a category of IP); (3) Collective and Certification Trade Marks (referred to subsequently as group marks, also within the IP fold); and (4) Administrative schemes, such as the quasi-public law regulation of wine labelling.8 It is particularly true for sui generis and dedicated administrative regimes that the ‘substance of the concept’ of GIs is that they are ‘used to demonstrate a link between the origin of the product to which it is applied and a given quality, reputation or other characteristic that the product derives from that origin’.9 The connoisseur will buy (or avoid, depending on preferences) Champagne precisely because of its regional provenance. Once the geographical origin message forms the base, additional information—contingent upon this origin signal—can then be layered upon it, such as the fact that certain product qualities are derived from this origin, or a locally specific and traditional production method has been followed. Therefore the formal recognition of a link between product and place differentiates GIs as signs from trademarks as signs. The efforts by WIPO and the WTO to analytically group these different regimes are helpful, but in practice many of them overlap within a specific jurisdiction. For example, the UK concurrently offers protection by way of the tort of (extended) passing off,10 under administrative regulations governing truthful marking and trading standards,11 registration as a collective or certification trademark with the Intellectual Property Office,12 or recognition as a European Union (EU) Protected Designation of Origin (PDO) or Protected Geographical Indication (PGI) via an application to the Department for Environment, Food and Rural Affairs.13 There are useful syntheses available of the various national options, for those interested in researching a specific jurisdiction in more detail.14 Viewed in this historical context, it is unsurprising that while TRIPS15 reflects the relatively 13.04 stable referent for a trademark,16 for GIs the definition in Art 22.1 is more fluid, in an attempt to accommodate this pre-existing variety, Geographical indications are, for the purposes of this Agreement, indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where 8

WIPO ‘Historical Background’ (SCT/8/4), at 4–10. WIPO ‘The Definition of Geographical Indications’ 1 Oct 2002 (SCT/9/4) at [4]. 10 The authorities for extended passing off have been admirably summarized by Arnold J, in Diageo v Intercontinental Brands [2010] EWHC 17 (Ch); [2010] ETMR 17 (‘Vodka’). 11 Formerly under the Trade Descriptions Act 1968 and now potentially under the Consumer Protection from Unfair Trading Regulations 2008, SI 2008/1277. 12 Trade Marks Act 1994, ss 49 and 50. Cf Schedules 1 and 2, which make specific provisions for indications of geographical origin being registered as such group marks. 13 See Protected food names (2011) available at last visited 27 February 2012. 14 eg, WTO Secretariat, ‘Review under Article 24.2’ (IP/C/W/253/Rev.1); O’Connor & Co Geographical indications and TRIPs: 10 Years Later . . . Part II—Protection of Geographical Indications in 160 Countries around the World (Report commissioned for EC (DG Trade) 2007); WIPO Lex Intellectual Property Laws and Treaties Database (2011) available at last visited 27 February 2012. 15 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, in the Marrakesh Agreement Establishing the World Trade Organization, Annex 1C (1994) 33 ILM 1125, 1197. 16 TRIPS, Art 15(1) acknowledges that any ‘sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trade mark’. 9

279

Chapter 13: Overlaps between Trademarks and Geographical Indications a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin (emphasis added). 13.05 While TRIPS goes on to outline certain minimum standards of protection in Arts 22–24, it

does not prescribe a particular form of protection so long as these standards are met.17 The terminological, conceptual, and institutional diversity associated with GI protection has impeded meaningful international consensus. However in recent years the forms of protection associated with GIs appear to have been whittled down to two favoured contenders.18 The first of these is the group mark—collective or certification marks19—within national or regional trademark registration systems. This system is strongly favoured by the US. All members of the Paris Convention are obliged to accommodate collective marks (Art 7bis) and many also do so for certification marks.20 The US has taken up the vanguard in recommending that since GIs and trademarks share a functional equivalence, the former category should be merged within the latter.21 GIs ‘can be viewed as a subset of trade marks. [They] serve the same functions as trade marks, because like trade marks they are: 1) source-identifiers, 2) guarantees of quality, and 3) valuable business interests’.22 The US argues that ‘both aim to prevent consumers from being misled or confused as to whether the goods they buy possess the anticipated qualities and characteristics’.23 This functional similarity has been appreciated by others as well. In Parma v Asda, the House of Lords, as it then was, stated that the purpose of GI protection ‘is twofold. It is intended both to protect producers of the products from unfair competition and to protect consumers from being misled by the application to products of false or misleading descriptions’.24 Lord Scott noted that there is ‘an obvious similarity of purpose shared by trade marks and [European PDOs]’.25 13.06 On the other hand, there are those who challenge the premise that trademarks are a complete

functional substitute for GIs. They suggest that protecting consumer interests and protecting legitimate producers against unfair competitive practices in the marketplace is only one aspect of GI protection.26 Sui generis GI protection differs in that it implicates a collective 17

TRIPS, Art 1(1). The emergence of two models as frontrunners is being recognized in the literature. See M. Echols Geographical Indications for Food Products: International Legal and Regulatory Perspectives (Alphen aan den Rijn: Kluwer, 2008) 3; G.E. Evans ‘The Comparative Advantages of Geographical Indications and Community Trade Marks for the Marketing of Agricultural Products in the European Union’, (2010) 41 IIC 645. 19 Cf D. Gangjee, ‘The Business End of Collective and Certification Marks’ in I. Simon Fhima (ed) Trade Mark Law and Sharing Names: Exploring Use of the Same Mark by Multiple Undertakings (Cheltenham: Edward Elgar, 2009) 79. 20 WIPO, ‘Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks’, 15 February 2010 (SCT/23/3). 21 See, eg, Statement of Jon W. Dudas, Deputy Director, US Patent and Trade Mark Office in ‘Hearings before the Committee on Agriculture, House of Representatives on the Status of the World Trade Organization Negotiations on Agriculture’, (108-5) 108th Congress (2003) 349; Communication from the US, ‘Suggested Method for Domestic Recognition of Geographical Indications forWTO Members’ 11 March 1999 (IP/C/ W/134);WIPO Secretariat ‘Report to the 7th Session of the SCT’ 27 May 2002 (SCT/7/4) at [33]. 22 See USPTO ‘Geographical Indication Protection in the United States’ available at last visited 27 February 2012. 23 EC—Protection of Trade Marks and Geographical Indications for Agricultural Products and Foodstuffs First Submission of the United States, 23 April 2004 (WT/DS174 and 290), at [132]. 24 Consorzio Del Prosciutto Di Parmav.Asda Stores Limited and Others [2001] UKHL 7; [2002] FSR 3 at [58] (Lord Scott of Foscote) 25 Ibid., at [100]. 26 EC, ‘Why do Geographical Indications Matter to Us?’ Brussels, 30 July 2003 (MEMO/03/160) (‘GIs are key to EU and developing countries’ cultural heritage, traditional methods of production and natural resources’); 18

280

B. Conceptual Overview interest as opposed to a private commercial interest; signals the associated product’s link to a specific geographical origin and the degree of ‘quasi-public’ or state involvement in the recognition process is greater.27 These features of form and function facilitate a range of distinct policy agendas, There are multiple objectives behind the protection of GIs: first, protection of consumers against fraud; second, protection of the producer of the good; third, territorial, local, regional and rural development; and, fourth, conservation of the biological resources, biodiversity and cultural diversity.28

The alternative approach is exemplified by the EU’s sui generis model of registration-based 13.07 protection for agricultural products and foodstuff set out in Regulation 510/2006.29 This is confirmed by a recent survey, Of the 167 countries that protect GIs as a form of intellectual property, 111 (including the EU 27) have specific or sui generis systems of GI laws in place. There are 56 countries using a trade mark system, rather than or in addition to specific GI protection laws. These countries utilize certification marks, collective marks or trade marks to protect GIs.30

The US and EU have spent significant political and economic capital in advocating their 13.08 preferred models.31 While from a practitioner’s perspective, it is worth remembering the existence of a broad splay of legal regimes which regulate origin marking, the future belongs to these two models since they represent registration-based protection and all the reassurances that come with such formal recognition. Therefore we focus on these two models for the remainder of this chapter. As the following sections will elaborate, the differences between F. Fischler, ‘Quality Food, CAP Reform and PDO/PGI’, SPEECH/04/183, Siena (17 April, 2004) (GIs ‘have an important role to play in the “regeneration” of the countryside since they ensure that agri-foodstuffs are produced in such a way that conserves local plant varieties, rewards local people, supports rural diversity and social cohesion, and promotes new job opportunities in production, processing and other related services. The needs of today’s population are met, while natural resources and traditional skills are safeguarded for generations to come’); A. Lôrincz-Fejes, ‘Protection of Geographical Indications: Point of View of the Hungarian Government’ 7 July 2003 (WIPO/GEO/SFO/03/6), at [13] (GIs ‘form part of, and relate to, different policies: consumer protection, competition, agricultural, cultural and intellectual property policy’); D. Barjolle and E. Thévenod-Mottet DOLPHINS Final Report: Work Programme 6—Policies Evaluation DOLPHINS Concerted Action, Contract QLK5-2000-0593, European Commission (June 2003), at 10 (GIs have a ‘high heritage dimension’). 27 See respectively, Budějovický Budvar National Corporationv.Rudolf Ammersin GmbH (C-478/07) [2009] ECR I-7721; [2009] ETMR 65, at [82] (AG Ruiz-Jarabo Colomer); M. Agdomar, ‘Removing the Greek from Feta and Adding Korbel to Champagne: The Paradox of Geographical Indications in International Law’, (2008) 18 Fordham IP Media and Entertainment Law Journal 541, 577; OECD Study, Appellations of Origin and Geographical Indications in OECD Member Countries: Economic and Legal Implications (COM/AGR/APM/ TD/WP(2000)15/FINAL), at 10. 28 Marie-Vivien, ‘The Role of the State’, at 121. 29 Council Regulation (EC) No 510/2006 of 20 March 2006 on the Protection of Geographical Indications and Designations of Origin for Agricultural Products and Foodstuffs [2006] OJ L 93 12. This has replaced its similarly titled predecessor, Council Regulation (EC) No 2081/92 of 14 July 1992 [1992] OJ L 208 1. 30 D. Giovannucci, T. Josling, W. Kerr, B. O’Connor and M. Yeung Guide to Geographical Indications: Linking Products and their Origins (Geneva: International Trade Centre, 2009), 14. 31 See generally, EU-Asean Project on the Protection of Intellectual Property Rights (ECAP III) available at last visited 27 February 2012; Organisation for International Geographical Indications Network available at last visited 27 February 2012; US Patent and Trade Mark Office (USPTO) Video Protecting Geographical Indications available at last visited 27 February 2012; USPTO ‘Program in China Underscores Importance of Protecting Geographical Indications and Trade Marks’ (2 June 2006) available at last visited 27 February 2012.

281

Chapter 13: Overlaps between Trademarks and Geographical Indications the two systems are both formal and substantive (renewal requirements; use requirements to sustain registration; conflict management rules; determining generic status; scope of protection available etc) as well as teleological (in terms of the underlying policy interests and goals pursued). 13.09 The final point to be made during the introductory scene setting relates to the basis for the

overlap. Trademark registration regimes contain a (weak) subject-matter exclusion rule, which (1) considers geographical signs to be signs descriptive of the place of origin of the product and (2) presumes all descriptive signs to be non-distinctive and therefore unsuitable subject-matter for registration. This principle of exclusion is evident in the Paris Convention as part of Art 6quinquies(B), which states that trademarks may be denied registration or invalidated ‘when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods’ (emphasis added). Apart from a presumed lack of distinctiveness, the exclusion rule is buttressed by a second concern. Other traders from the designated place have a legitimate interest in indicating the geographical origin of their own products, so the geographical sign should be left ‘open’.32 Yet the exclusion rule is not an insurmountable obstacle. Signs which are formally or technically geographical (they correspond to a place on the map) may not be considered geographical outside the place concerned. The mere existence of a place on a map may not be sufficient for it to communicate a primarily geographical meaning to the relevant public.33 A personal favourite is ‘Great Snoring’, a village in Norfolk, England34 as a soporific illustration of a place name which simply would not usually be understood as a geographical sign. Alternatively, the sign may retain a geographical connotation, but when used in conjunction with specific goods and services it is viewed as a fanciful usage (eg, Mont Blanc on pens or Amazon for an online bookseller).35 The third possibility is that a geographical term, through the producer’s persistent efforts, acquires distinctiveness (EU terminology) or gains a secondary meaning (US terminology) whereby it signifies that particular producer’s products.36 Thus each of these routes allows a geographical sign to satisfy the distinctiveness requirement of trademark law, since the ‘commercial source’ meaning displaces geography when applied to a particular product or service. As for the interests of other producers from the place in question, a safety valve is provided in most trademark regimes by way of the descriptive fair use exception.37 The upshot of this is that geographical signs can be registered as trademarks, despite the ‘descriptive signs’ exclusion rule.

32 This has been a longstanding concern in several jurisdictions. See, eg, Delaware & Hudson Canal Co v Clark 80 US 311 (1871); York Trade Mark [1984] RPC 231 (HL); Windsurfing Chiemsee Produktions v Boots and Attenberger [1999] ECR I-2779. 33 See, eg, In Re Magnolia Metal Company’s Trade-Marks [1897] 2 Ch 371 (CA). (MAGNOLIA on metal unsuccessfully objected to on the basis of several places in the US with the same name.) 34 See Great Snoring Norfolk (2010) available at last visited 27 February 2012. 35 ‘Alaska’ for bananas is Chief Judge Markey’s oft cited example. See In re Nantucket, Inc 677 F 2d 95, 98. 36 This too is a well-established principle. See, eg, American Waltham Watch Co v United States Watch Co 173 Mass 85, 53 NE 141 (1899) (WALTHAM watches); Wotherspoon v Currie (1871–72) LR 5 HL 508 (GLENFIELD starch) (Similar principle in the context of preventing unfair competition by passing off). 37 See TRIPS, Art 17.

282

C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems

C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems (1) Conflicts between Trademarks and GIs—An overview Disputes involving conflicts between trademarks and GIs usually arise out of the tensions 13.10 between increasingly globalized markets on the one hand and territorially specific IP rights on the other. These disputes periodically feature two veteran pugilists, Anheuser Busch and Budejovicky Budvar, both of whom contest the exclusive right to use Budweiser for their respective beers.38 In the past, there have been three kinds of rules which mediate conflicts between a prior trademark and a subsequent GI in a given jurisdiction, such as the one showcased in the introductory GLUGWISER example: (1) A trumping rule, which gives priority to the sign which was legally recognized earlier. (2) A more nuanced rule enabling co-existence in certain circumstances. (3) A rule which categorically values one type of sign more than the other; for example favouring GIs, so that even a later GI can trump a prior trademark. Let us consider each in turn. (1) The principle of ‘First in Time, First in Right’ (FITFIR) has been suggested as a means of 13.11 resolving such conflicts. It has a respectable lineage in the history of conflict resolution and is intuitively familiar from everyday experience as well—Lawrence Berger provides the example of a line forming in front of a movie theatre.39 These ideas of priority and exclusivity are considered well established in IP doctrine,40 being associated with the maxim qui prior est tempore, potior est iure. FITFIR therefore, is a shorthand way to refer to the combined principles of priority and exclusivity. What this means is that the sign that is protected first, whether it is a trade mark or a GI, shall take precedence over (principle of priority) and prevent the use of (principle of exclusivity) any conflicting subsequent sign. These two principles form the very heart of trade mark law.41

In the past, the FITFIR principle has been promoted by various international organizations as the optimal solution, often in the form of non-binding resolutions.42 In those jurisdictions which take the view that trademarks and GIs are functionally equivalent, a uniform rule based on prior rights trumping is promoted as ‘simply a matter of fairness’.43 However in 38 An excellent survey is found in C. Heath, ‘The Budweiser Cases—A Brewing Conflict’ in C. Heath and A. Kamperman Saunders (eds) Landmark Intellectual Property Cases and their Legacy (Alphen aan den Rijn: Kluwer Law International, 2011) 181. Cf Lord Justice Jacob’s astute observation in Budejovicky Budvar Narodni Podnik v Anheuser Busch [2009] EWCA Civ 1022, at [6] (‘It would be an interesting but very substantial exercise to collect all the decisions of all the courts and all the trade mark registries of all the countries where the battles have taken place. Many lawyers and their families in many places must be grateful that these two parties apparently cannot produce a once and for all world-wide settlement’). 39 L. Berger ‘An Analysis of the Doctrine That “First in Time is First in Right”’, (1985) 64 Nebraska Law Review 349, 350 (he notes further that the rule rests on an array of policies which are sensitive to the context in which the rule is applied, leading to the rule being displaced in certain circumstances). 40 Anheuser-Busch v Budejovicky Budvar, NárodnÍ Podnik [2005] ETMR 27 at 286, 304 (CJEU) (‘(T)he principle of the primacy of the prior exclusive right. . . is one of the basic principles of trademark law and, more generally, of all industrial-property law’). 41 F. Z. Hellwig ‘Why the Principles of Priority and Exclusivity cannot be Compromised — The Trade Mark Owner’s Perspective on Geographical Indications and First in Time, First in Right’ (INTA Policy Paper). 42 For a review, see D. Gangjee, ‘Quibbling Siblings: Conflicts between Trade Marks and Geographical Indications’, (2007) 82 Chicago-Kent Law Review 1253. 43 TRIPS Council ‘Minutes of the Meeting, March 2002’ 22 March 2002 (IP/C/M/35), at [155] (United States); see also Hearings before the Committee on Agriculture, House of Representatives on the Status of the World Trade Organization Negotiations on Agriculture, (108-5) 108th Congress (2003), at 127, 341, 361.

283

Chapter 13: Overlaps between Trademarks and Geographical Indications certain situations, the application of this rule could produce inequitable results, since it presumes like cases are being compared within a single jurisdiction. Sometimes there will be legitimate interests on both sides, based on longstanding use as a trademark in one jurisdiction and a GI in another. This is illustrated by two similar disputes in the US and Canada, which arose when the Italian Consorzio, founded in 1963 and seeking to register PARMA as collective or certification marks for the famous air dried ham, could not proceed on the basis that a prior trademark containing PARMA was registered for pork products in both countries since the 1960s/70s, which would trump any subsequent registration.44 Similar facts were present in the ‘Great Western’ dispute in Australia, where this was simultaneously the name of a small wine producing region in Victoria while also being a well-known mark for wines. However the brand owner did not source 85 per cent of its grapes from the Great Western region and therefore potentially fell foul of Australian wine designation rules requiring this. Both the regional designation and the mark had coexisted since the 1860s.45 In such situations, coexistence is worth considering as an alternative. 13.12 (2) Coexistence is convenient shorthand for ‘a legal regime under which a GI and a trade-

mark can both be used concurrently to some extent even though the use of one or both of them would otherwise infringe the rights conferred by the other’.46 An illustration of a rule permitting coexistence is found in Art 14(2) of Regulation 510/2006,47 which sets out the sui generis model of registration-based protection for agricultural products and foodstuff in the EU, With due regard to Community law, a trade mark the use of which corresponds to one of the situations referred to in Article 13 [infringement of a registered GI] which has been applied for, registered, or established by use . . . in good faith within the territory of the Community, before either the date of protection of the [GI] in the country of origin or before 1 January 1996, may continue to be used notwithstanding the registration of a [GI] provided that no grounds for its invalidity or revocation exist as specified by [The EU Trade Marks Directive or Community Trade Mark Regulation] (emphasis added). 13.13 The obvious problem with coexistence is that it compromises the exclusivity of the prior

right, since there will be two unrelated entities using the same or similar signs in the market. This concern was raised in a WTO dispute between the US/Australia and the EU, where the complaint was that this coexistence rule was incompatible with the exclusivity assured to trademark proprietors by Art 16.1 of TRIPS.48 The WTO Panel ultimately found that suitably qualified coexistence was a permissible derogation from Art 16.1, since the

44 Consorzio del Prosciutto di Parma v Parma Sausage Products 23 USPQ 2d 1894 (1992 TTAB); Consorzio del Prosciutto di Parma v Maple Leaf Meats Inc (2001) 2 FC 536 (Federal Court of Canada, Trial Division). For details, see Gangjee, ‘Quibbling Siblings’, n 42. 45 S. Stern ‘Geographical Indications and Trade Marks: Conflicts and Possible Resolutions’ 13 Jun 2003 (WIPO/GEO/SFO/03/13), at [29]–[31]; B. G. Drinkwater ‘Protection and Use of Geographical Indications in Australia’ November 2003 (WIPO/GEO/DEL/03/4), at 8–9. 46 WTO Panel Report European Communities—Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs 15 March 2005 (WT/DS174/R), at [7.514]. 47 Council Regulation (EC) No 510/2006 of 20 March 2006 on the Protection of Geographical Indications and Designations of Origin for Agricultural Products and Foodstuffs [2006] OJ L 93/12. This has replaced its similarly titled predecessor, Council Regulation (EC) No 2081/92 of 14 July 1992 [1992] OJ L 208/1. 48 WTO Panel Report European Communities—Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs 15 March 2005 (WT/DS174/R).

284

C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems descriptive use of a sign to indicate geographical origin was permitted as a ‘fair use’ exception under Art 17.49 Therefore appropriately designed rules permitting coexistence are TRIPS compatible. (3) In the past, some European countries have ‘traditionally pursue[d] a concept of 13.14 geographical indication protection which assumes a certain element of superiority of geographical indications over trade marks’.50 GIs are prioritized since certain jurisdictions value the distinct public policy outcomes associated with sui generis regimes. One example of such a rule is found in the Lisbon Agreement,51 which establishes an international registration system for Appellations of Origin (AOs). Under Art 5(3), national authorities have a window of one year from receipt of notification from WIPO to declare that an AO will not be protected in that jurisdiction. After this window closes, a subsequently registered AO can trump a prior trademark according to Art 5(6), while the mark owner is then provided with a grace period of up to two years to wind up use of the mark. Another well known case is where the validity of TORRES® for wines produced by the Torres family in Spain was endangered in the early 1990s by the registration of Torres and Torres Vedras as GIs for wines from a valley north of Lisbon.52 The trademark was well established and reputed, but under the original EC Regulation 2392/89 the registration of ‘Torres’ as a GI would have pre-empted the use of the well-known Torres trademark. However a grandfathering rule was finally applied to preserve the use of the trademark and resolve the dispute.53 (2) Conflicts—US law In the US, there are two broad frameworks for the protection of GIs. One is a specialized 13.15 administrative regime for the labelling of wines and spirits. It is beyond the scope of this Chapter to engage in a detailed analysis of its provisions.54 The other is the registered trademark system. Designations indicating the geographical origin of products are usually registered as either certification or collective marks,55 but it also seems possible (albeit questionable) to register them as individual trademarks.56 It is worth remembering that US law recognizes unregistered or common law certification trademarks, based on longstanding use and

49 50

For more detailed analysis, see Gangjee, ‘Quibbling Siblings’, n 42. B. Goebel, ‘Geographical Indications and Trade Marks—The Road from Doha’, (2003) 93 TMR 964,

973.

51 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, 31 October 1958, 923 UNTS 205 (1974). 52 F. Gevers, ‘Topical Issues in the Protection of Geographical Indications’ Oct 1997 (WIPO/GEO/ EGR/97/5), at 15; H. Harte-Bavendamm, ‘Geographical Indications and Trade Marks: Harmony or Conflict?’ 1 Sep 1999 (WIPO/GEO/CPT/99/6), at 5. 53 H. Harte-Bavendamm, ‘Harmony or Conflict?’ (WIPO/GEO/CPT/99/6), at 5. 54 The regulations of the Alcohol and Tobacco Tax and Trade Bureau (formerly Bureau of Alcohol, Tobacco, Firearms and Explosives) indirectly protect GIs through the regulation of labelling on alcoholic beverages and by determining the extent of American Viticultural Areas. For an overview, see M. Torsen, ‘Apples and Oranges (and Wine): Why the International Conversation Regarding Geographical Indications is at a Standstill’, (2005) 87 Journal of the Patent and Trade Mark Office Society 31, 45–48. The relevant wine labelling laws are available at last visited 27 February 2012. 55 See the Lanham Act, §§ 4 and 45 (15 USC §§ 1054 and 1127). For an illustration of this in operation, see Community of Roquefort v William Faehndrich, Inc, 198 F Supp 291, 131 USPQ 435 (SDNY 1961), affirmed in 303 F 2d 494, 133 USPQ 633 (2nd Cir 1962). 56 As was recently done for SIDAMO coffee from Ethiopia. See F. Rotstein and A. F. Christie, ‘Blood, Toil, Tears and Sweat: The Battle of Sidamo’, [2010] EIPR 421.

285

Chapter 13: Overlaps between Trademarks and Geographical Indications recognition by the relevant public.57 However the registered trademark system remains the dominant framework for signs indicating all types of GI products, so its conflict management rules will apply. Here FITFIR is acknowledged as the basic rule for conflicts between trademarks or other functionally similar signs used in commerce. The underlying reason for this is enunciated in the US Supreme Court’s United Drug decision, where purchasers rely upon the prior mark as indicating the origin of the goods and this reliance must be protected.58 We can observe the combined principles of priority and exclusivity in operation in § 2(d) and § 7 of the Lanham Act. Yet the primacy of this principle has been questioned even within the context of US trademark law, A fundamental principle of trade mark law is first in time equals first in right. But things get more complicated when to time we add considerations of place, as when one user is first in time in one place while another is first in time in a different place. The complexity swells when the two places are two different countries . . .59 13.16 The concept of territoriality is the foundation upon which FITFIR rests.60 Yet ‘first’ in one

jurisdiction ignores developments in others, specifically developments in the country the product originally took on its regional name. Along the lines of the coexistence analysis considered above, there is doctrinal support from the US Supreme Court for the argument that the use of a designation to indicate the geographical origin of a product may qualify as descriptive fair use under US trademark law.61 (3) Conflicts—EU law 13.17 In the EU there are three regimes which incorporate signs representing GI products. Under

trademark law as group marks,62 within the sui generis regimes for wine and spirits,63 or—for qualifying agricultural products and foodstuffs—as Protected Designations of Origin (PDOs) or Protected Geographical Indications (PGIs) under Regulation 2081/92 and its

57 See, eg, Florida v Real Juices, Inc, 330 F Supp 428, 171 USPQ 66 (M D Fla 1971) (SUNSHINE TREE on Florida citrus products); Institut National Des Appellations d’Origine v Brown-Forman Corp., 47 USPQ 2d 1875 (TTAB 1998) (COGNAC for French distilled spirit). 58 United Drug Co v Theodore Rectanus Co 248 US 90 (1918). 59 Grupo Gigante S.A. de C.V. v Dallo & Co 391 F 3d 1088, 1093 (9th Cir 2004). This is not an isolated instance. In other situations, such as the conflict between a national and a local trademark, courts have qualified this principle. See Little Caesar Enterprises Inc v Pizza Caesar Inc 834 F 2d 568, 572 (6th Cir 1987) (‘First in time is not always first in right, where trade mark law is concerned, but it seems to us that priority of use may have some bearing on the likelihood of confusion’). 60 G. Dinwoodie ‘Trade Marks and Territory: Detaching Trade Mark Law from the Nation-State’, (2004) 41 Houston Law Review 885. 61 KP Permanent Make-Up, Inc v Lasting Impression I, Inc, 543 US 111 (2004) (a descriptive fair use defence is available even where there may be a likelihood of confusion ie, where the exclusivity of the prior sign is compromised). 62 Apart from registering national certification marks in individual EU members, it is also possible to register collective marks as Community Trade Marks. See Arts 66–74 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community Trade Mark [2009] OJ L 78/1. Therefore Prosciutto di Parma is protected both as a Community Trade Mark (No 001116458) and as a PDO. 63 Council Regulation (EC) No 479/2008 of 29 April 2008 on the Common Organisation of the Market in Wine [2008] OJ L 148/1; Council Regulation (EC) No 110/2008 of 15 January 2008 on the Definition, Description, Presentation, Labelling and the Protection of Geographical Indications of Spirit Drinks [2008] OJ L 39/16. These regimes contain their own rules for conflict management.

286

C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems successor, Regulation 510/2006. Given its influence as a model, the focus here will be on the last of these three regimes, which, seeks to establish a framework of Community rules for the protection of registered designations of origin and geographical indications relating to certain agricultural products and foodstuffs in cases where there is a link between the characteristics of the product or foodstuff and its geographical origin. [Regulation 510/2006] provides for a system of registration at Community level of geographical indications and designations of origin which will confer protection in every Member State.64

Regulation 510/2006 contains three conflict management rules. The first of these, found in 13.18 Art 3(4),65 allows a suitably qualified prior trademark to prohibit the registration of a subsequent GI. In a situation of conflict between a PDO/PGI (referred to henceforth as GIs for convenience) and a pre-existing trademark where registration of the former would, in the light of the trademark’s reputation and renown, and the length of time for which it has been used, be liable to mislead the consumer as to the true identity of the product, the registration of the GI must be refused. The second rule is found in Art 14(2). It governs the situation where use of a pre-existing trademark interferes with the protection granted to a GI under Art 13.66 As we have seen above, Art 14(2) enshrines the principle of coexistence. Subject to certain conditions, it allows continued use of the earlier trademark notwithstanding the registration of the conflicting GI. The third rule is contained in Art 14(1) and resolves conflicts between an earlier GI and a later trademark, where use of that trademark would bring about one of the situations described in Art 13, containing the infringement provisions of Regulation 510/2006. Under those provisions, priority is given to the earlier GI, in that registration of the conflicting trademark must be refused or, as the case may be, declared invalid. Overall, it can be seen that the conflict management rules appear to favour GIs. (4) Generic use Since GIs indicate collective—as opposed to individual—origin and often quality they, are 13.19 vulnerable to claims of generic use. If generic status is established, the sign is unprotected by IP law. The Court of Justice for the European Union (CJEU) has helpfully described the process of this semantic shift, [A] geographical designation could, over time and through use, become a generic name in the sense that consumers cease to regard it as an indication of the geographical origin of the product, and come to regard it only as an indication of a certain type of product. That shift in meaning occurred for instance in the case of the designations ‘Camembert’ and ‘Brie’.67

64

Bayerischer Brauerbund eV v Bavaria NV (C-120/08) [2011] ETMR 11 at [AG6] (AG Mazák). Formerly Art 14(3) of Regulation 2081/92. 66 Art 13(1) prohibits: (a) any direct or indirect commercial use of a name registered in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or insofar as using the name exploits the reputation of the protected name; (b) any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as ‘style’, ’type’, ‘method’, ‘as produced in’, ‘imitation’ or similar; (c) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin; (d) any other practice liable to mislead the public as to the true origin of the product. 67 Commission of the European Communities v Federal Republic of Germany (C-132/05) [2008] ECR-I 957; [2008] ETMR 32 at [36] (‘Parmesan’). 65

287

Chapter 13: Overlaps between Trademarks and Geographical Indications 13.20 Here the sign in question no longer has origin salience, instead referring to the general

category of product. Therefore if the basis for protecting a GI is to preserve its ability to communicate the product’s origin, generic usage is fatal to this ability. Generic status continues to be intensely disputed in individual cases and was controversial during the formative Paris Convention negotiations.68 The emergence of special treatment can be traced to the Madrid Agreement69 and Art 4 in particular, The courts of each country shall decide what appellations, on account of their generic character, do not fall within the provisions of this Agreement, regional appellations concerning the source of products of the vine being, however, excluded from the reservation specified by this Article. 13.21 Thus if a national court decides that a particular term has become generic (eg, dijon mustard),

its use on products from other than the place bearing that name is not considered misleading under Article 1 of the Madrid Agreement. However for signatories of Madrid, viticultural products are excluded from this judicial scrutiny of generic status and their designations appear to be de jure inoculated. This insulation against generic use is taken a step further in the Lisbon Agreement. Once any appellation is registered under the Agreement, Art 6 establishes that the registered appellation ‘cannot . . . be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin’. This suggests that, with the exception of the country of origin, the communicative function of the registered sign is not the basis for protection. The emphasis is on preserving the designation for legitimate producers in the country of origin.70 Finally, under TRIPS, generic terms may remain unprotected, since Art 24.6 provides that where ‘the term [is] customary in common language as the common name for such goods or services in the territory of that Member’ there is no obligation to protect it. Yet there is little else by way of guidance in interpreting this provision. One TRIPS Council delegate has observed that ‘since there were no rules on how one could make such [a] determination, it would be difficult for the relevant authority to deal with the conflict of rights between geographical indications and generic terms’.71 This ambiguity enables a range of approaches under national or regional law, as illustrated by the US and EU positions. (5) Generic use—US law 13.22 Since trademark law is the predominant framework for recognizing and protecting GIs, its

rules for the determination of generic status will usually apply.72 Under US doctrine, it is clear that a generic term cannot either be registered as a trademark or continue to exist as one, for such terms by definition are incapable of indicating source.73 The Lanham Act specifies that cancellation of a mark is possible when a ‘registered mark becomes the generic name for 68

See Ch 2 of Gangjee, Relocating the Law of Geographical Indications, n 1. Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, 14 April 1891, 828 UNTS 389 (1972). 70 However the Italian Supreme Court has (questionably) held that Art 6 amounts to only a presumption, which can be rebutted by evidence of generic status in the Lisbon Member where the term is being contested. See Pilsen Urquell v Industrie Poretti SpA [1998] ETMR 168. 71 TRIPS Council, ‘Minutes of the Meeting on 17–19 September 2002’ 8 November 2002 (IP/C/M/37/ Add.1), at [139]. 72 For a general overview of generic status determination, see J. T. McCarthy, McCarthy on Trademarks and Unfair Competition 4th edn (Eagan, Minn: Thomson West, February 2011 update), at § 12. 73 H. Marvin Ginn Corp v International Association of Fire Chiefs, Inc, 782 F 2d 987, 989–90 (Fed Cir 1986). 69

288

C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems the goods or services . . . for which it is registered’.74 The consensus is that if ‘the primary significance of the trade mark is to describe the type of product rather than the producer, the trade mark is a generic term’.75 Therefore according to § 14(3), the ‘primary significance’ test should apply when making this determination—‘The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used’. The test for determining whether a mark is generic generally involves a two-step inquiry. First, what is the genus (category or class) of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus (category or class) of goods or services?76 Whether a particular term is generic is a question of fact,77 while the standard for establishing this is the familiar ‘preponderance of evidence’ standard.78 Evidence of the relevant public’s understanding of a term may be obtained from ‘any competent source . . . including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications’.79 Applying this rubric, several formerly geographical designations have been found to be generic in the past.80 Here the designation had come to primarily signify a type of product with certain characteristics, without regard to regional origin and the methods for obtaining it. Therefore designations registered as certification trademarks continue to be vulnerable to generic status challenges even after registration.81 Finally, once a term is determined to be generic under US law, it seems very difficult to establish—via evidence relating to acquired distinctiveness or secondary meaning—that it has (re)gained origin indicating salience.82 With a few rare exceptions,83 generic status seems to be a one way process and the designation seems unable to subsequently regain protected status. (6) Generic use—EU law While trademark protection remains an option under EU law and its rules on generic status 13.23 will apply, the focus here will be on sui generis protection under Regulation 510/2006, where the approach to generic status reveals significant differences. While the scope of protection for registered GI is ‘wide’, generic status is an important limitation on this scope.84 74

§ 14(3) (15 USC § 1064(3)). Filipino Yellow Pages, Inc v Asian Journal Publishing Inc 198 F 3d 1143, 1147 (9th Cir 1999) (emphasis in original) (citation omitted). 76 H. Marvin Ginn Corporation v International Association of Fire Chiefs, Inc. 782 F 2d 987, 228 USPQ 528, 530 (Fed Cir 1986). 77 In re Reed Elsevier Props, Inc 482 F 3d 1376, 1378 (Fed Cir 2007). 78 Magic Wand Inc v RDB Inc, 940 F 2d 638, 19 USPQ 2d 1551, 1554 (Fed Cir 1991). 79 In re Dial-A-Mattress Operating Corp, 240 F 3d 1341, 57 USPQ 2d 1807, 1810 (Fed Cir 2001). 80 French Republic v Saratoga Vichy Co 191 US 427 (1903) (Vichy spring water); In re Cooperativa Produttori Latte e Fontina Valle D‘Acosta 230 USPQ 131 (TTAB 1986) (Fontina cheese); Schweizerische Kaeseunion Bern v Saul Starck Inc 293 NYS 816 (1937) (Swiss cheese); Institut Nat’l Des Appellations D‘Origine v Vinters Int’l Co 958 F 2d 1574 (Fed Cir 1992) (Chablis for wine). 81 See, eg, Tea Board of India v The Republic of Tea (2006) 80 USPQ 2d 1881 (TTAB) (an applicant for ‘Darjeeling Nouveau’ unsuccessfully argued that the ‘Darjeeling’ certification mark registered by the Tea Board of India was invalid, having become generic in the US). 82 Harley-Davidson Inc v Grottanelli 164 F 3d 806 (2nd Cir 1999). 83 Singer Mfg Co v Briley, 207 F 2d 519, 520 n.3 (5th Cir 1953) (Singer no longer generic for sewing machines); Goodyear Tire & Rubber Co v H. Rosenthal Co, 246 F Supp. 724, 729 (D Minn 1965) (Goodyear no longer generic for tyres). 84 Commission of the European Communities v Federal Republic of Germany (C-132/05) [2008] ECR I-957; [2008] ETMR 32, at [AG34-AG35] (Parmesan cheese). 75

289

Chapter 13: Overlaps between Trademarks and Geographical Indications Under this Regulation, the generic character of a term is mentioned in three contexts. Firstly, generic terms may not be registered as protected GIs (Art 3(1)); secondly, after a successful registration, protected names may not become generic (Art 13(3)), which is an important departure from the trademark approach; and, thirdly, the generic elements of a registered designation are not protected (Art 13(1)). According to Art 3(1): A ‘name that has become generic’ means the name of an agricultural product or a foodstuff which, although it relates to the place or the region where this product or foodstuff was originally produced or marketed, has become the common name of an agricultural product or a foodstuff in the Community. 13.24 The same provision goes on to specify the factors that decision makers must consider all

relevant factors and in particular: (a) the existing situation in the Member States and in areas of consumption; (b) the relevant national or Community laws. 13.25 The most significant decision interpreting a similar provision under Regulation 2081/92

addressed the question of whether Feta for white cheese in brine was a protected Greek GI or generic.85 The CJEU reviewed the Commission’s evaluation of the existing situation in the member state in which the name originates and in areas of consumption, the existing situation in other member states, and the relevant national or Community laws. It ultimately found that Feta was not generic. Therefore evidence of production and consumption, as well as the status in legislation is explicitly recognized,86 while in Feta, the role of Greek imagery on labels was also given evidentiary significance. Apart from the identification of specific factors, another important divergence from the US approach concerns the threshold or tipping point. Unlike the need to establish the primary significance of the term for the majority of consumers, generic status is achieved ‘only when there is in the relevant territory no significant part of the public concerned that still considers the indication as a geographical indication’.87 This is a high threshold, which seems to be designed to prevent an easy slide into genericide. Those who continue to treat the sign as a GI are prioritized over those who do not. This was confirmed in a dispute about whether ‘Bavaria’ had become generic for a style of beer produced via bottom fermentation. The CJEU held that since the purpose of GI protection is, to prevent the improper use of a name by third parties seeking to profit from the reputation which it has acquired and, moreover, to prevent the disappearance of that reputation as a result of popularisation through general use . . . a name becomes generic only if the direct link between, on the one hand, the geographical origin of the product and, on the other hand, a specific quality of that product, its reputation or another characteristic of the product,

85 Federal Republic of Germany and Kingdom of Denmark v Commission of the European Communities (C-465/02 and C-466/02) [2005] ECR I-9115; [2006] ETMR 16 (‘Feta’). For a detailed consideration, see D. Gangjee, ‘Say Cheese: A Sharper Image of Generic Use through the Lens of Feta’, [2007] EIPR 172. 86 Commission of the European Communities v Federal Republic of Germany (C-132/05) [2008] ECR I-957; [2008] ETMR 32, at [53] (noting that in Feta, the CJEU held it was necessary ‘to take into account the places of production of the product concerned both inside and outside the Member State which obtained the registration of the name at issue, the consumption of that product and how it is perceived by consumers inside and outside that Member State, the existence of national legislation specifically relating to that product, and the way in which the name has been used in Community law’). 87 Recital 23 of Commission Regulation (EC) No 1829/2002, which re-registered Feta.

290

C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems attributable to that origin, has disappeared, and that the name does no more than describe a style or type of product (emphasis added).88

A further point of interest is that in the EU, it is possible to argue that since genericide is a dynamic process, it may be reversible so that a generic term can regain GI significance.89 Finally, which party bears the burden of proof when generic status is to be determined? Obviously this varies depending upon the nature of the dispute and the status of the GI. Is it a pending application, or is it already registered with genericide raised as part of invalidation proceedings? Allocating this burden is a crucial consideration as much of the expense is associated with gathering the evidence to establish or rebut generic status. In a recent dispute the CJEU held that Germany, the party defensively claiming that Parmesan was generic, had not submitted sufficient evidence to discharge this burden.90 In conclusion, there are important differences in the approach to genericide in the EU under Regulation 510/2006—the evidentiary factors to be considered; the tipping point; the insulated status after registration; and the possibility that generic status is reversible. (7) Choosing between sui generis or trademark protection The choice between sui generis or trademark protection is not mutually exclusive and often 13.26 overlapping protection is available. However it is worth elaborating on the practical differences between the two regimes, as well as their orientations in terms of institutional design. Much of the existing literature comparing a sui generis registration-based GI system with an alternative trademark option (usually certification or collective marks) is unsatisfying. It is a thin compendium of points of variance, at a high level of abstraction. Cumulatively it suggests that an independent GI system is more onerous at the registration stage, subsequently involves greater monitoring but also provides for greater protection. There is also greater official involvement and review of both the creation and maintenance of the product specification, Publicly oriented or sui generis systems of GI protection can be bureaucratic but tend to conceive of GIs as a public good and thus cover many of the costs associated with securing and enforcing their protection. Privately oriented systems, such as those that rely primarily on trade mark law . . . can be more accessible and responsive but the responsibility and costs, especially for detection and enforcement, are borne by the GI [applicant] itself.91

Usually this type of comparison contrasts certification marks with GI systems. Collective 13.27 marks essentially operate as clubs and the standards or pre-requisites for membership can be far more insular.92 The category of persons authorized to use the mark, the conditions of membership, and the conditions of use of the mark are the important aspects which must be 88 Bavaria NV, Bavaria Italia Srl v Bayerischer Brauerbund eV (C-343/07) [2009] ETMR 61 (ECJ) at [106]–[107]. 89 A possibility recognized in Bavaria NV, Bavaria Italia Srl v Bayerischer Brauerbund eV (C-343/07) [2009] ECR I-5491; [2009] ETMR 61 at [AG117] (AG Mazák). 90 Commission of the European Communities v Federal Republic of Germany (C-132/05) [2008] ECR I-957; [2008] ETMR 32 at [52]-[57] (CJEU Grand Chamber). 91 D. Giovannucci, T. Josling, W. Kerr, B. O’Connor and M. Yeung, Guide to Geographical Indications: Linking Products and their Origins (Geneva: International Trade Centre, 2009), at 14. 92 WIPO, ‘Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks’, 15 February 2010 (SCT/23/3), at [19] (‘the main difference between [collective and certification marks] lies in the fact that the former may only be used by a specific group of traders, for example, the members of an association, while certification marks may be used by anybody who complies with defined standards, without being confined to any membership’).

291

Chapter 13: Overlaps between Trademarks and Geographical Indications indicated in the application.93 Provided they are clear, the content of these conditions is not scrutinized. Meanwhile individual trademarks remain a possibility94 and are occasionally utilized, but these are the most opaque form of registration. They work on the basis of standard licensing agreements between the registrant and regional producers. There is also the possibility of an undeserving or non-representative applicant claiming the GI as an individual trademark and then selectively licensing its use.95 So drawing on the conventional literature, and primarily with certification marks in mind, a synthesis of the differences looks like this:96 • The information conveyed by each of these signs is different. For GIs, it is not only geographical origin but in many regimes, something is also communicated about specific product quality and objectively verified production methods. Trademarks merely signal consistent quality—this Coke will taste like the last one. • As a related issue, the very existence of a sui generis GI system signals an institutional commitment to the link between product and place. The sui generis system is designed around a distinct set of registration concerns and policy outcomes, which only partially overlap with trademark law. As opposed to trademark law’s neutrality or indifference, it signals that GIs are different, due to the link between product and place. These products are embedded in a particular locale whereas the location of production of trademarked goods will vary with outsourcing trends, labour costs, and fluctuations in taxation regimes. • The nature of legal interests often differs. Whereas trademarks are classified as private property rights, GIs are usually associated with the right to use the sign, based on compliance with certain collectively established production standards. • There are procedural and bureaucratic variations in the application process. Often for GIs there is no time limit, whereas for trademarks it is usually a cycle of ten year renewals. For GI regimes, the fee structure also varies with there being no need for initial application or renewal fees in some cases, reflecting the state interest in facilitating the recognition of these signs. • There is also greater variance in the scope of protection, with GIs being granted absolute protection, including the right to prevent qualified uses such as the indication of the true place of origin, or ‘style’/‘type’ situations. While many trademark systems offer antidilution protection for suitably reputed marks, there is uncertainty as to whether blurring, 93

See, eg, UK Manual of Trade Marks Practice, Ch 4 at Section 3.3.2. AIPPI, ‘Resolution on Q.118 – Trade and Service Marks and Geographical Indications’ [1994] Annuaire 408 at [4.1] (‘AIPPI observes, however, that in some countries where there is no legal provision for the protection of collective or certification marks or any other suitable protection, indications of source or appellations of origin are protected as individual marks.’); USPTO, ‘Geographical Indication Protection in the United States’, at 5–6 (‘Finally, under the US regime, it is possible to protect geographical indications as [individual] trade marks’). 95 A concern recognized in the UK IPO Manual of Trade Mark Practice (2011), Ch 4, Section 2.1.4. 96 This is drawn from: A. F. R. de Almeida, ‘Key Differences between Trade Marks and Geographical Indications’, [2008] EIPR 406; J. M. Cortes Martin, ‘The WTO TRIPS Agreement—The Battle between the Old and the New World over the Protection of Geographical Indications’, (2004) 7 JWIP 287, 309–311; Rangnekar, D., ‘The Socio-Economics of Geographical Indications: A Review of the Empirical Evidence from Europe’ UNCTA/ICTSD Issue Paper No 4 (May 2004), at 16 (Table 2); F. Gevers, ‘Geographical Names and Signs Used as Trade Marks’, [1990] EIPR 285, 286–287; WIPO Secretariat, ‘The Definition of Geographical Indications’ 1 October 2002 (SCT/9/4); I. Kireeva and B. O’Connor, ‘Geographical Indications and the TRIPs Agreement: What Protection is Provided to Geographical Indications in WTO Members?’, (2010) 13 JWIP 275, 288; EU-China Trade Project Q&A Manual: European Union Legislation on Geographical Indications (December 2007). 94

292

C. Practical Considerations: Conflicts, Generic Status, and Choosing between Systems

• •

•

•

•

usually measured in terms of detriment to distinctiveness for a sign indicating a single trade source, is available when signs are collectively used by multiple parties.97 Once registered, GIs are insulated against future generic use, whereas trademarks remain vulnerable to this. There appears to be a gradual convergence around the principle that both types of signs are open to anyone who complies with the standards and the registrant should not be allowed to unreasonably exclude those wishing to use the sign. Overall, there is a far greater state involvement or public/quasi-public oversight for GI systems. By contrast, under trademark law, ‘there is little public assurance that the mark is more than a private marketing device’.98 On the flip side of this, certification or collective trademarks have the flexibility and adaptability associated with a system designed around private property rights and private interests. Standards can be set and modified without the need for state intervention. Furthermore, the application fees and associated costs are borne by the registrant and not the taxpayer, since in sui generis systems the state is involved to a greater extent. Group mark protection also already exists in most countries around the world, making this a readily available option.99 By the same token, geographical designations registered within a trademark system have to play by its rules. This includes being subject to the obstacle of prior trademark registration; the need for use in that jurisdiction to sustain the registration; the necessity for acquired distinctiveness where geographical names are concerned; limits over the scope of protection; and expenses associated with registration, private monitoring, and proving confusion.100

While this is descriptively useful, it does not assist us in assessing the merits of each in more 13.28 specific contexts. In response to this, there are two recent developments worth highlighting. The first is a more contextual, applicant-centred approach to the comparison between systems. The second relates to a greater scrutiny of the roles of the State in sui generis GI systems. Presently there is a greater interest in the pragmatic consequences of opting for one approach over another. Therefore, adopting a more strategic approach to registration, Evans considers ‘not only the legal requirements for obtaining a valid GI or [trademark], but also the degree to which differing forms of commercialization may facilitate the marketing of agricultural products under differing conditions of production and levels of economic development’.101 She concludes that while a trademark system ‘offers producer groups the flexibility necessary to achieve the consumer recognition necessary to the creation of product 97 On the issue of reinterpreting the distinctiveness requirement of trademark law for group signs, see D. Gangjee, ‘The Business End of Collective and Certification Marks’ in I. Simon Fhima (ed) Trade Mark Law and Sharing Names: Exploring Use of the Same Mark by Multiple Undertakings (Cheltenham: Edward Elgar, 2009) 79; P. M., Brody, ‘Geographical Indications and Dilution: Reinterpreting “Distinctiveness” Under the Lanham Act’, (2010) 100 TMR 905. 98 R. W. Benson, ‘Regulation of American Wine Labeling: In Vino Veritas?’, (1978) 11 University of California Davis Law Review 115, 122–123. 99 B. M. Bashaw, ‘Geographical Indications in China: Why Protect GIs with Both Trade Mark Law and AOC-Type Legislation?’, (2008) 17 pacific Rim Law and Policy Journal 73; M. Ricolfi, ‘Is the European GIs Policy in Need of Rethinking?’, (2009) 40 IIC 123. 100 O’Connor & Co, Geographical indications and TRIPs: 10 Years Later . . . A Roadmap for EU GI Holders to Gain Protection in Other WTO Members—Part I (Report for EC (DG Trade) 2007), at 12–16. 101 G. E. Evans ‘The Comparative Advantages of Geographical Indications and Community Trade Marks for the Marketing of Agricultural Products in the European Union’, (2010) 41 IIC 645, 646–647.

293

Chapter 13: Overlaps between Trademarks and Geographical Indications reputation based on geographical origin, subsequently the greater breadth of protection offered by the GI system will better maintain price premium’.102 Scholars from a range of disciplinary backgrounds are beginning to explore the extent to which the European sui generis model can be successfully transplanted. In the context of Ethiopia, scholars have taken note of the institutional difficulties associated with a grass roots approach to establishing producer groups, the need to engage stakeholders and facilitate the creation of networks and reach out to the market by connecting with retailers and consumers, so that profits return to growers and farmers.103 Research which compares the fortunes of Café de Colombia, registered as a PGI in the EU, and Ethiopian Fine Coffee which adopted the trademark option, suggests that each regime offers mixed blessings. Therefore a strategy of cumulative protection is recommended.104 A related nascent body of scholarship focuses on the role of state as supervisor, facilitator, and mediator during the process of registration. For sui generis systems, experience suggests that the state may initiate the registration process and even facilitate it, but let stake holders follow through during the process. While, [l]inking people, building up a structured collective marketing strategy and monitoring a collective organisation are costly . . . a top-down approach is seldom a success because it may not take sufficiently into account operators’ concerns and commercial risks. Regional authorities or NGOs may initiate a commercial project but they must let private operators establish and drive it because it is the latter which will have to take the commercial and investment risks.105

States also assist with capacity building, helping individual artisanal producers make the transitions required by new product attributes geared towards wider marketing efforts, such as quality control, volumes, regularity, and terms of payment etc.106 States also have a role to play as mediators, intervening in conflicts between stakeholders. Therefore, in the case of the cured ham Culatello di Zibello, where ‘artisans [were] insisting on the long seasonal timeframe of the traditional method, whereas the intermediate institutions argued for shorter, year-round production to be allowed . . . the local governments arrived at a compromise whereby two designations, with different codes of practice, were applied’.107 Close attention also needs to be paid to the (contextually sensitive) borderline between state support and state interference or rent seeking. Corruption by state employees and insensitivity to producer concerns remain a real threat in many parts of the world where GI protection has

102

Ibid., at 647. B. Roussel and F. Verdeaux, ‘Natural Patrimony and Local Communities in Ethiopia: Advantages and Limitations of a System of Geographical Indications’, (2007) 77 Africa 130, 144–146. 104 L. Schüßler, ‘Protecting “Single-Origin Coffee” within the Global Coffee Market: The Role of Geographical Indications and Trade Marks’, (2009) 10 Estey Centre Journal of International Law & Trade Policy 149. Several GI collectives have taken advantage of this overlap and have also registered their signs as trademarks. See WIPO ‘Technical and Procedural Aspects Relating to the Registration of Certification and Collective Marks’ 15 May 2009 (SCT/21/3), Annex (these include the Ducal Crown for Parma Ham, Grana Padano, Munchner beer, Asti sparkling wine, Hilltops wine, Prosciutto di Parma, Jamaica Blue Mountain coffee, Darjeeling tea and Pu’er tea). 105 S. Reviron, E. Thevenod-Mottet, and N. El Benni, ‘Geographical Indications: Creation and Distribution of Economic Value in Developing Countries’ NCCR Working Paper No 2009/14 (March 2009), at 19. 106 P. Van de Kop, D. Sautier, A. Gerz (eds) Origin-Based Products: Lessons for Pro-Poor Market Development (Amsterdam: KIT, 2006) at 90–91. 107 A. Tregear, F. Arfinib, G. Bellettic and A. Marescottic, ‘Regional Foods and Rural Development: The Role of Product Qualification’, (2007) 23 Journal of Rural Studies 12, 16. 103

294

D. Conclusion the potential to do the most good.108 Therefore greater attention needs to be paid to the interaction between market and state within each of these registration system types, as well as to questions of institutional design.

D. Conclusion The overlap between trademarks and GIs is complete in some cases and partial in others, 13.29 depending on whether a jurisdiction has adopted a sui generis protection model and the extent to which it is subject-matter specific—regimes restricted to wines, spirits, foodstuff or broadly covering all subject-matter, including crafts and textiles. The overlaps are complicated by the conceptual ambiguity surrounding the distinct status of GIs as a category of IP and the diversity of regimes associated this category. However certification or collective marks and sui generis registered protection have emerged as the two dominant models of protection, where the comparison is most relevant. The US and EU approaches in this area represent two opposite ends of the spectrum and differ in very significant ways. With reference to the hypothetical outlined in the Introduction: • Under US law • Glugwiser could be registered as either a collective mark or certification mark with the United States Patent and Trademark Office (US PTO). This is subject to the familiar formalities of trademark law, such as a use requirement to maintain the registration, the need to show likelihood of confusion when claiming infringement, and the need to periodically renew the registration every ten years. • The ‘first in time, first in right’ principle would apply to conflicts, so the default outcome would be for the prior registered trademark GLORIOUS GLUGWISER to trump the group mark application and prevent its registration. If the regional collective wishes to succeed, it would have to either invalidate the prior trademark or bypass registration and use the Glugwiser designation on its product label, justifying this under the defence of geographically descriptive fair use. • Claims of generic status may succeed, applying the ‘primary significance’ test and depending on the quality of evidence. Generic status can be claimed even assuming that Glugwiser has already been registered as a group trademark. However the fact that the regionally produced beer continues to be reputed will make this an uphill task for those challenging its origin designating ability. • Under US law, apart from wines and spirits, there is no separate labelling regime to accommodate GI products and they must be incorporated within federal registered trademark law under the Lanham Act, protected as (unregistered) common law marks or even protected at the state level, under state trademark or unfair competition law. The principles of unregistered or registration-based mark protection will govern all aspects of protection.

108

See generally, J. Hughes, ‘Coffee and Chocolate—Can We Help Developing Country Farmers Through Geographical Indications?’ International Intellectual Property Institute, Washington, DC (2009); Bashaw, ‘Geographical Indications in China’ at 100–101.

295

Chapter 13: Overlaps between Trademarks and Geographical Indications • Under EU law • Glugwiser could be registered as either a PDO or PGI under Regulation 510/2006. Both have the same broad scope of protection under Art 13, while the PGI allows for greater flexibility when demonstrating the link between product and place. • The coexistence rule (Art 14(2)) of this Regulation would most likely apply to permit the prior registered trademark—registered prior to legal recognition of the GI in the country of origin—to coexist with the subsequently registered GI. • It is unlikely that claims of generic status would succeed under EU law. Once registered, protected names may not become generic, as a de jure proposition (Art 13(3)). If the claim is that Glugwiser was generic at the time of registration, in light of its reputation as a regional specialty product and the high threshold (no significant part of the public that still considers it a GI), this argument is also unlikely to succeed. • Under EU law, simultaneously registering the beer as a GI and a collective Community Trade Mark, or as a cluster of national certification trademarks, remains an option. The overview in Section C.7 above sets out the key differences between both these options.

296

14 DOMAIN NAMES AND TRADEMARKS Mark V.B. Partridge, Partridge IP Law

A. Hypothetical B. The Conceptual Framework

14.01 14.03 14.06 14.09 14.10

(1) (2) (3) (4)

The concept of domain names The concept of trademarks The difficult marriage Early courtship: initial developments involving domain name disputes (5) A formal relationship—ICANN (6) Dealing with domain name disputes

14.18 14.31 14.49

C. Practical Advice

14.62

(1) Conflicts involving domain names and trademarks

(2) (3) (4) (5)

Using the ACPA to resolve conflicts Using the UDRP to resolve conflicts Comparing the approaches Enforcement strategy

D. Application of Traditional Trademark Principles to Domain Names E. Application to Hypothetical F. Summary

14.68 14.71 14.85 14.97

14.98 14.108 14.113

14.62

A. Hypothetical Banana Corporation is an internationally known producer of media products and services 14.01 distributed through retail stores and online at www.BananaBrands.com. The BANANA brand is a registered trademark in the US and UK, as well as in many other countries. Other entities have acquired domain name names containing the word BANANA: www.banana.com—is owned by Samuel Jones, a resident of Long Beach, California. Mr. Jones uses the domain name for a fan site relating to the products of Banana Corporation. One feature of the website is an online store where others may offer used BANANA products for resale. www.banana.org—is owned by the Banana Growers Association, located in Costa Rica. The domain name is used for email addresses for association members—[email protected]—but there is no active website. www.banana.net—is registered to XXX Media, located in Russia. The domain name is used for an adult entertainment site. www.bananabrands.net—is registered to Online Advertising Services, located in South Korea. The domain name is used for pay-per-click advertising with links to Banana Corporation and its competitors.

297

Chapter 14: Domain Names and Trademarks 14.02 Banana Corporation believes that all of these sites are likely to confuse online customers,

cause lost sales, blur the distinctiveness of the BANANA brand, and tarnish the reputation of Banana Corporation. Each of the sample domain name registrations outlined above reveals facets of the difficult marriage of domain names and trademarks.

B. The Conceptual Framework 14.03 Who would believe that just over 15 years ago, in the relative infancy of the internet’s com-

mercial life, the registration of web domain names would come as surprising news to the owner of one of the world’s most famous brands—McDonald’s Corporation? Yet, that is revealed in an October 1994 article published in Wired magazine.1 The author, Joshua Quittner, was then a Newsday correspondent for cyberspace issues. At that time, he explained to someone in McDonald’s media relations how the gold rush was on for important domain names on the internet. The company representative appeared incredulous upon hearing this news, and was even more surprised when Quittner told her that ‘[s]ome companies are even registering the names of their competitors’.2 14.04 McDonald’s was hardly alone. The article pointed out that only about one third of the

Fortune 500 companies at the time had registered an obvious version of their online domain names, and 14 per cent of all the companies already had found that the domain name corresponding to their trade name had been snagged by somebody else. Even huge media companies were not immune. The domain name ‘abc.com’ belonged to ABC Design in Seattle, ‘cbs.com’ was registered to a Minnesota consultant, and ‘fox.com’ was held by something called the Flexible Online Exchange in California.3 14.05 At the time the Wired article was published, only a very small number of people were respon-

sible for the assignment and registration of domain names on the internet. That was then the job of a company called the Internet Network Information Center (or, InterNIC), controlled by the National Science Foundation. Three employees were assigned to it. (1) The concept of domain names 14.06 The purpose of a domain name is to identify an address on the internet and help internet

users find websites and email addresses. Domain names are familiar strings of letters and numbers that users can enter to access website locations in lieu of Internet Protocol (IP) addresses, which are unique strings of numbers that the internet itself uses to locate the servers for websites. Thus, user navigation of the web is made simpler and more mnemonic. 14.07 Currently, there are two basic types of top level domains: generic and country code. Generic

top level domains, or gTLDs, include .com (commercial), .edu (education), .org (organization), .net (network), .gov (government), .int (international), and .mil (military). 14.08 In addition to the generic TLDs, the original domain name system hierarchy design included

249 country code TLDs (ccTLDs). The ccTLDs, include such top level domains as .uk (United Kingdom), .it (Italy), and .fr (France). It was the original intent of the system that 1

Joshua Quittner, ‘Billions Registered’, (1994) Wired, October. Her response to this revelation was, ‘You’re kidding.’ Ibid. For a time, Quittner himself owned the registration to the mcdonalds.com domain name, but he eventually relinquished it to McDonald’s. Ibid. 3 Ibid. 2

298

B. The Conceptual Framework ccTLDs be used for local entities. While that has been the case in the majority of ccTLDs, there is a growing trend to operate ccTLDs as open systems which will accept registration from users in any location. Today, over 200 ccTLDs accept registrations. In most cases, registration requires a local presence in the particular country. Over 80 ccTLDs, however, accept registrations without regard to location, and thus function in a manner similar to gTLDs. (2) The concept of trademarks A trademark is any device used to indicate the source of particular goods or services. 14.09 Trademark rights are not a monopoly but only exist in connection with particular goods or services. Thus the same mark may be used by different sources without conflict for different goods or services—consider RITZ hotels, RITZ cameras, and RITZ crackers. The purpose of trademark protection is to help consumers locate desired goods and services and to help avoid confusion. (3) The difficult marriage Domain name rules differ greatly from traditional trademark principles because domain 14.10 names are usually assigned on a ‘first come, first served’ basis. Like a unique telephone number, as long as a domain name is not identical to another registered domain name, it can be registered by anyone but may only be used by one entity. As long as a domain name is not identical to another registered domain name, it will be available for registration. Conflicts often arise between two parties that have equally legitimate rights to the same 14.11 brand. For example, the domain name was initially registered by a computer company owned by an individual named Uzi Nissan. Because Nissan Computers had a legitimate reason for choosing this domain name, Nissan Motor Company was unable to register its famous car brand in the popular domain. The real threat to brand equity, however, is the bad faith registration and use of domain 14.12 names. As the internet began to proliferate in the 1990s, forward-thinking teenagers and computer whizzes realized the value of registering domain names long before most companies did. By the mid-1990s, cybersquatting became widespread, as internet users snatched up domain names incorporating famous brands for resale to the owners at a premium. Initially, many of the cybersquatters were pranksters. In 1994, journalist Joshua Quittner 14.13 registered the domain name to draw attention to what he described as the ‘callous indifference’ of large corporations to the internet. But cybersquatters soon became more sophisticated and mercenary. Some made money by registering and selling domain names back to the brand owners. ‘It is very simple’, explained one cybersquatter on his website, purchase ONLY dot.com domains. Purchase them via an off-shore trust. Thus legally avoiding any tax liability, and also preventing any damages being awarded to anyone who may feel they have a right to ownership. It would cost anyone at least $3,000 to legally obtain a domain name from another, and without any possibility of damages or costs, most entities would pay up to $5,000 without a blink of an eye (or lawyer).

Other cybersquatters earned linking fees by registering misspellings of well-known brands to 14.14 redirect internet users to gambling or pornographic sites. John Zuccarini, the most notorious of the so-called typo-squatters, at one time reportedly operated more than 3000 websites earning up to $1,000,000 a year using illegitimate domain names. The subject of many law 299

Chapter 14: Domain Names and Trademarks suits, Zuccarini was eventually ordered to pay damages in excess of $600,000 and was sentenced in the early part of 2004 to several years in prison for using misleading domain names to direct children looking for Disneyland sites to pornography. 14.15 Cybersquatting disputes also arise in the competitive arena. A company with a legitimate

interest in the HARRODS name for department stores in South America registered 60 domain names, hoping to divert business away from the famous UK department store. The South American company’s bad faith intent to profit constituted cybersquatting despite its legitimate rights in some parts of the world. 14.16 In the late 1990s, a variety of domain name disputes reached the US Courts, including:

• Infringement. Traditional disputes between a trademark and a domain name where there is a likelihood of confusion.4 • Tarnishment. These disputes involve the use of a trademark as the domain name for a site with content that damages the reputation of the trademark owner.5 • Cyberjesters. Early disputes involving the registration of another’s name or mark as a domain name.6 • Cybersquatters. Persons who seek to profit from the registration of the names and marks of others.7 14.17 Unfortunately, the existing rules proved inadequate to fully address each of these. When first

confronted with such issues, varying results occurred due to the struggle to fit cybersquatting problems within the traditional framework of trademark law. While many domain name disputes may be straightforward trademark infringement cases similar to those that occur offline, others presented new challenges not addressed by the existing statutes and case law. (4) Early courtship: initial developments involving domain name disputes (a) NSI—The original registrar and its attempt at dispute resolution 14.18 Originally, when Network Solutions, Inc (NSI) was the sole registrar for the .com, .org, and

.net gTLDs, these types of problems involving domain names led to lawsuits against the registrants as well as NSI. Trademark owners challenged NSI’s granting of a domain name as contributory infringement. NSI also received lawsuits from domain name holders faced with challenges from trademark owners. 14.19 NSI reacted to the growing number of disputes by adopting a dispute resolution policy that,

while easy to administer, did not fully protect the legitimate interests of either domain name holders or trademark owners. The NSI Policy, which went through several iterations in the 1990s, permitted the owner of a trademark registration to challenge a domain name identical 4 See, eg, Comp Examiner Agency v Juris Inc, 1996 WL 376600 (CD Ca 1996) (preliminary injunction against juris.com domain name for legal software based on prior use of JURIS mark for law office management software). 5 See, eg, Hasbro Inc v Internet Entm’t Grp Ltd, 40 USPQ 2d 1479 (WD Wash 1996) (preliminary injunction granted against use of candyland.com domain name for sexually explicit website); Toys ‘R’ Us Inc v Akkaoui, 40 USPQ 2d 1836 (ND Ca 1996) (preliminary injunction granted against use of adultsrus.com to sell sexual devices and clothing over the internet). 6 See Quittner, n 1 (describing journalist’s acquisition of the domain name ‘mcdonalds.com’). 7 See, eg, Intermatic Inc v Toeppen, 947 F Supp 1227 (ND Ill 1996) (Dennis Toeppen registers and offers for sale the domain name intermatic.com); Panavision Int’l LP v Toeppen, 945 F Supp 1296 (CD Ca 1996) (Toeppen enjoined from use of panavision.com).

300

B. The Conceptual Framework to the registered trademark. Some members of the trademark and internet communities believed the NSI policy was fatally flawed. Trademark owners objected to the NSI policy because: (1) NSI did not recognize claims 14.20 based on common law rights; (2) NSI did not recognize claims based on similar but not identical rights; and (3) expensive litigation might be required to obtain a transfer of the domain name if the registrant did not cooperate. Domain name holders objected to the NSI policy because NSI honoured claims based on a trademark registration without regard to the nature of the goods or services involved, permitting overreaching by trademark owners. The NSI policy led to general dissatisfaction and a new class of disputes, known as reverse 14.21 domain name hijacking, in which domain name holders objected to the use of the NSI policy by a trademark owner to challenge the holder’s use of a domain name for unrelated goods or services.8 The perceived problems with the NSI dispute policy led to various reform efforts involving proposed technical and legal solutions. (b) International proposals for domain name system reform IAHC proposals In 1996, an International Ad Hoc Committee (IHAC) was formed to 14.22 address concerns arising from the NSI dispute resolution policies. The IAHC proposals included the introduction of new gTLDs and the creation of a dispute resolution procedure involving the use of Administrative Challenge Panels. However, the IAHC was dissolved on 1 May 1997, and the progress of its proposals was arrested by policy statements of the Clinton Administration, calling for a new corporation to administer the existing gTLDs and for more study on dispute resolution. The Clinton administration proposals On 7 July 1997, the Department of Commerce 14.23 published a request for public comment, seeking views of the public on the registration and administration of the domain names. On 20 February 1998, the National Telecommunications and Information Administration (NTIA) of the Department of Commerce published a proposed rule regarding the domain name registration system. Known as the Green Paper, the statement sought comment on the privatization of the domain name system. On 5 June 1998, the Commerce Department issued the Management of internet Names 14.24 and Addresses (or ‘White Paper’), a Statement of Policy on the privatization of the internet Domain Name System. The White Paper called for the formation of a new corporation to administer the gTLD domains and asked the World Intellectual Property Organization (WIPO) to convene an international process and submit recommendations to the new corporation. (c) The WIPO process The final report on the WIPO internet Domain Name Process, entitled ‘Management of 14.25 internet Names and Addresses: Intellectual Property Issues’, was published on 30 April 1999. The efforts of WIPO focused on four main areas: dispute prevention; dispute resolution; protection of famous and well-known marks; and the effect of introducing new gTLDs.

8

See, eg, Giacalone v Network Solutions, Inc, 1996 WL 887734 (ND Ca June 14, 1996).

301

Chapter 14: Domain Names and Trademarks 14.26 The WIPO recommendations covered five basic points:

1. The rights and obligations between the domain name holder and registration authority should be controlled by a written contract. 2. Domain name holders should be required to provide accurate and reliable contact information so that other parties can contact them in the event of a dispute. 3. The domain name contract should require domain name holders to submit to an administrative dispute resolution process. 4. There should be pre-emptive exclusions for famous and well-known marks. 5. New gTLDs should be introduced cautiously, and only if the new domains are clearly differentiated and subject to meaningful dispute resolution procedures. 14.27 WIPO recommended that the dispute policy focus on abusive domain name registrations.

The definition of abusive registration recommended by WIPO (Final Report, 171) is set out at paragraph 14.28. 14.28 The registration of a domain name shall be considered to be abusive when all of the following

conditions are met: 1. the domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights; and 2. the holder of the domain name has no rights or legitimate interests in respect of the domain name; and 3. the domain name has been registered and is used in bad faith. 14.29 The Report also identified the following circumstances as evidence of registration and use of

a domain name in bad faith: 1. an offer to sell, rent or otherwise transfer the domain of the owner of the trade or service mark, for valuable consideration; 2. an attempt to attract, for financial gain, internet users to the domain name holder’s website or other online location, by creating confusion with the trade or service mark of the complainant; 3. the registration of the domain name in order to prevent the owner of the trade or service mark from reflecting the mark in a corresponding domain name, provided that a pattern of such conduct has been established on the part of the domain name holder; or 4. the registration of the domain name in order to disrupt the business of a competitor. 14.30 A key feature of the WIPO recommendations is the premise that the Policy does not apply

to ordinary infringement disputes: The cumulative conditions of the first paragraph of the definition make it clear that the behavior of innocent or good faith domain name registrants is not to be considered abusive. For example, a small business that had registered a domain name could show, through business plans, correspondence, reports, or other forms of evidence, that it had a bona fide intention to use the name in good faith. Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would likewise not be considered to be abusive. And, good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the procedure.

302

B. The Conceptual Framework (5) A formal relationship—ICANN In October, 1998, the Internet Corporation for the Assigned Names and Numbers (ICANN) 14.31 submitted a proposal to NTIA to administer the gTLD domains. ICANN was established by the Internet Assigned Names Association (IANA) through a process seeking to develop a consensus within the internet community for private administration of the domain name system. Although other organizations also submitted proposals, the ICANN proposal had the broadest support. ICANN is a private, non-profit California corporation formed in 1998 and delegated 14.32 authority by the United States Department of Commerce to manage the domain name system (DNS).9 A basic understanding of the DNS, which has been called the ‘backbone of the internet’10 and ‘the spark that breathes life and the very existence on the internet’11 is necessary to fully appreciate ICANN’s role. As noted, each computer that communicates on the internet needs a unique internet protocol 14.33 (IP) address, which is a series of numbers like 128.143.28.136. These numbers can be assigned correlating domain names, which are easier to remember and more user-friendly than multidigit strings of numbers.12 Domain names are organized by top-levels, like gTLDs such as .com and .org and country-code top-level-domains (ccTLDS) like .ca (Canada) and .mp (Northern Mariana Islands).13 This top-level is referred to as the ‘root’ or the ‘root zone’. ICANN has authority over the root. It coordinates the allocation and assignment of IP 14.34 addresses (the ‘Numbers’ part of its name), determines how the domain names associated with those numbers are distributed (the ‘Names’ part), and makes sure that no two numbers or domain names are identical.14 As its bylaws indicate, ICANN also ‘coordinates policy development reasonably and appropriately related’ to the technical functions described above.15 For this reason, ICANN is self-described as ‘dedicated to keeping the Internet secure, stable and interoperable’.16 ICANN authority is limited in several ways; for example, it does not have binding agree- 14.35 ments with a majority of ccTLD registries.17 Of the approximately 260 current top-level domains, roughly 240 are for country codes such as .uk for England or .ca for Canada. The rest are either gTLDs such as .com or .org; restricted gTLDs such as .biz (for businesses) 9 See Jack Goldsmith and Tim Wu, Who Controls the Internet? Illusions of a Borderless World (New York: Oxford University Press, 2006) 168; ICANN, Memorandum of Understanding Between the U.S. Department of Commerce and Internet Corporation for Assigned Names and Numbers (25 November, 1998), available at last visited 28 February 2012. 10 Jerry L. Archer, Neither Safe Nor Secure on the Internet, CNET News (4 October 2006), available at last visited 28 February 2012). 11 Harold Feld, ‘Structured to Fail: ICANN and the “Privatization” Experiment’, in Adam Thierer and Clyde Wayne Crews Jr (eds) Who Rules the Net? Internet Governance and Jurisdiction 336) (quoting Tamar Frankel, ‘The Managing Lawmaker in Cyberspace: A Power Model’, (2002) 27 Brook. J. Int’l L 871–72). 12 Ibid. 13 Ibid. 14 Bylaws for Internet Corporation for Assigned Names and Numbers, as amended effective 29 May 2008, Article 1, Section 1. 15 Ibid. 16 ICANN website, last visited 28 February 2012. 17 Feld, n 11 at 334; see also Scott P. Sonbuchner, ‘Master of Your Domain: Should the U.S. Government Maintain Control over the Internet’s Root?’, (2008) 17 Minn J Int’l L 183, 196.

303

Chapter 14: Domain Names and Trademarks or .name (for individuals); or sponsored TLDs such as .edu (for post-secondary education institutions) or .gov (for the United States government). 14.36 ICANN is not without controversy, particularly over its legitimacy and ties to the United

States government. Just prior to ICANN’s creation, a group of engineers who ‘founded’ the internet through US government-funded contracts formed the Internet Society to assert authority over the DNS root.18 This effort was unsuccessful, but other attempts followed. In 2005, the European Union put forward a stern proposal to shift control of the DNS from ICANN to a United Nations-affiliated organization, a plan that also failed.19 14.37 ICANN nevertheless is credited with maintaining sufficient stability in the naming and

numbering system to keep it operating effectively, decentralizing the distribution of domain names, and, after implementing the WIPO Policy as already outlined, creating an effective mechanism for resolving trademark disputes to address the problem of cybersquatting known as the Uniform Domain Name Dispute Resolution Policy (UDRP).20 In addition to cybersquatting, ICANN has addressed some other aspects of the difficult marriage between trademarks and domain names. (a) WHOIS Protocol 14.38 WHOIS provides public access to data on registered domain names.21 Currently, ICANN

requires accredited registrars to collect and provide free public access to the contact information for the registered name holder. This system presents an inherent conflict. A public WHOIS creates privacy problems, such as the risk of use of WHOIS data in spam generation, abuse of personal data, identity theft, security costs, and loss of data.22 These concerns, however, are in tension with the interests of trademark owners and others in identifying and locating registrants who are suspected of cybersquatting, posting illegal content, or engaging in other abusive scams.23 14.39 A related topic is the growing use of privacy or proxy registration services, which shield a

registrant’s identity.24 These proxy services cause complications in ferreting out the true registrant, and may harm registrants who are not aware of action being taken against their registered domain.25 14.40 Inaccurate WHOIS data maintained by registrars also presents enforcement problems for trade-

mark owners. A 2005 US Government Accounting Office study found that at least 8.65 per cent of all domain names are registered with false or incomplete WHOIS information.26 18

Goldsmith and Wu, n 9, at 36–46. Ibid., at 171. 20 Ibid. 21 See ICANN Policy Update (September 2008), available at last visited 28 February 2012. 22 See ibid. 23 See ibid. 24 World Intellectual Property Organization, DNS Developments Feed Growing Cybersquatting Concerns, PR/2008/555 (27 March 2008), available at last visited 28 February 2012. 25 Ibid.; see also The iFranchise Group v Jay Bean/MDNH, Inc/Moniker Privacy Services [23658], WIPO Case No D2007-1438 (18 December 2007). 26 US Government Accounting Office Report to the Subcommittee on Courts, the Internet, and Intellectual Property, Internet Management: Prevalence of False Contact Information for Registered Domain Names (November 2005), available at last visited 28 February 2012. 19

304

B. The Conceptual Framework Registrars are contractually bound by the terms of their Registrar Accreditation Agreement with ICANN to take ‘reasonable steps to investigate’ potential inaccuracies in registrant data.27 On 30 September 2008, ICANN sent breach notices to two ICANN-accredited registrars 14.41 (DNS.com.cn and Joker.com), following up on notices of concern about WHOIS data inaccuracies sent the previous year.28 Upon receipt of those notices, both registrars posted replies indicating the actions they had taken on the issue. ICANN found that Joker.com had taken reasonable steps to investigate the claims of WHOIS inaccuracies, and their agreement remained intact. DNS.com.cn, however, was found to be non-compliant, and subsequently agreed to submit to a remediation plan recommended by ICANN for the next six months.29 If ICANN continues to police the accuracy of WHOIS data through audits and hold registrars accountable for lapses, this could be a major boost for intellectual property rights owners seeking to curb cybersquatting and online infringement. (b) New gTLDs In June 2011 the ICANN Board approved a plan to introduce a new range of gTLDs to the 14.42 internet’s addressing system.30 The application process opened opened in January 2012. As many as 5,000 new address extensions may be available as early as 2013.31 Dozens of planned domains became public in the months before the final plan was approved, based on location (.berlin), interest area (.music), industries (.eco) and well-known brands (.canon).32 A variety of new gTLDs could be administered by new registries, creating competition with existing registries that currently dominate the market.33 The first application period closed in April 2012. ICANN indicates that it will have a second round at an unspecified time in the future. Trademark owners confront a new issue in the domain name space: should they own and 14.43 operate a TLD? There are many factors to consider. Reasons a brand owner might want to pursue a TLD include the following: 1. Promotion/Marketing—Provide an opportunity to further promote the company’s brand, products, and services by owning both sides of the dot, ultimately bolstering its online presence and brand visibility. The new gTLDs give companies the ability to own 27 Registrar Accreditation Agreement, Section 3.7.8, available at last visited 28 February 2012. 28 ICANN Announcement, Breach Notices Sent to Joker.com and DNS.com.cn (1 October 2008), available at last visited 28 February 2012. 29 Stacy Burnette, ‘What’s happening with WHOIS compliance activities?’, ICANN Blog, 31 October 2008, available at last visited 28 February 2012. 30 ICANN Announcement, ‘Biggest Expansion in gTLDs Approved for Implementation’ (June 26, 2008), available at last visited 28 February 2012. 31 See Martha Neil, ‘ICANN OKs Internet “Land Grab” for New Domain Names’, ABA Journal Law News Now (26 June 2008), available at last visited 28 February 2012. 32 ICANN Announcement, see n 30. 33 See Jonathan D. Gworek et al, ‘ICANN Releases Latest Draft of New Generic Top-Level Domains (gTLDs) Applicant Guidebook’; Morse, Barnes-Brown and Pendleton, (May 2011) last visited 28 February 2012; Katherine Dusak Miller, ‘Preliminary Report of Dennis Carlton Regarding Impact of New gTLDs on Consumer Welfare’, (March 2009) last visited 28 February 2012 (new TLDs are ‘likely to facilitate entry and create new competition to the major gTLDs such as .com, .net, and .org’).

305

Chapter 14: Domain Names and Trademarks

2. 3. 4. 5. 6.

7. 8. 9.

both sides of the dot; replacing mycompany.com with dot.mycompany, which helps to establish a more robust online presence. Security—A company owned TLD may provide more actual and perceived security to internet users. Customer data—Operating a TLD registry presents opportunities for obtaining more data about customers and users. Publicity—Act fast and be the first. Those who seek new TLDs may receive media attention. Cutting Edge Image—A brand looking to make a statement of leadership in the digital space may benefit from owning and promoting its own TLD. Maintain control of an ‘industry’—There could be benefits from controlling a .industry TLD. A .industry TLD provides more marketing information than .com. Customers and consumers may search such TLDs first to avoid confusion and clutter. Investment—Some brand owners may benefit financially by getting a slice of the $5 billion dollar domain name industry. Avoid ‘string preclusion’—Another entity might secure the desired TLD instead. There may not be another opportunity to seek new TLDs for many years. Learn from the past—Avoid the pain and humiliation suffered by companies that failed to register the .com domains for their trademarks in the 1990s, and the resulting high legal or acquisition costs required to retrieve them. The expense of challenging a conflicting TLD may be significant.

14.44 There are also significant reasons for a trademark owner to pass on this new opportunity:

1. Cost—The significant expense and expenditure of resources required to apply for, secure, and then operate a new gTLD. The application fee alone is currently $185,000, and it is estimated that an additional investment of at least another $100,000 would be required to set up and begin to operate a gTLD registry, with a probable expense of $750,000 to $1,000,000 over a five year period. 2. The new Top-Level Domain program is not for the novice—Operating a TLD will require significant resources, infrastructure, and technical expertise to make the most of the new Top-Level Domain opportunity. These details may be outsourced to experienced service providers. 3. Potential impact on company brands—The application and operation process includes risks to the ongoing ownership of the TLD if not managed properly. Some potential outcomes could place control of a .brand TLD in the hands of another entity. 4. Potential impact on the company’s strategic goals—The business model under which a proposed gTLD would operate (cost recovery, revenue generation, or brand investment) should be weighed against potential financial commitments, in-house resource availability and outsourcing opportunities. 5. Little need to ‘defensively’ register—Trademark holders can be protected through existing dispute resolution mechanisms and modifications of ICANN procedures for protecting intellectual property rights.34 34 Katherine Dusak Miller, Preliminary Report of Dennis Carlton Regarding Impact of New gTLDs on Consumer Welfare, (March 2009) last visited 28 February 2012.

306

B. The Conceptual Framework Should a company decide to forego an application in the first round, there are additional 14.45 considerations. It may be wise to wait and see if new TLDs take off. It may not be worth the investment if consumers do not embrace the new space. However, it may be necessary to act in the coming months before the first application period closes in 2012. The application window opened on 12 January 2012 and new Top-Level Domains should be in operation from 2013. If companies and entrepreneurs missed the application window (12 January 2012 to 12 April 2012), it may be a long time before they have the same opportunity again, if they are not entirely precluded by a conflict domain approved in the first round. Whether a company decides to pursue a TLD or not, it will have to consider the extent to 14.46 which the company will have to expand its internet monitoring and policing of trademark infringement to encompass the new domains. The introduction of as many as 5,000 new gTLDs will present significant challenges for trademark holders. New TLDs present the need for many trademark holders, particularly owners of famous 14.47 marks, to engage in costly defensive registrations to pre-empt cybersquatters. The new address extensions themselves potentially may be confusingly similar to a trademark, or similar to existing address extensions, requiring a careful distribution process to avoid potential problems. The new gTLD launch creates new dispute resolution procedures and protections, beyond the well-established UDRP procedure discussed in this chapter. We have a lot more to learn in the coming years about the marriage between domain names and trademarks, as union becomes even more complete. To say that things have changed since 1994 is an understatement. Today, there is much 14.48 greater awareness of the issues implicated in the ownership and use of domain names. Companies are much more attuned to the immense value of domain names and their function, related to trademarks, of identifying sources of goods, services, and information on the internet. The originally rudimentary practice of assigning domain names has given way to a more sophisticated system of assignment and dispute resolution under the Domain Name System (DNS). Tens of thousands of domain names, a huge increase over the volume handled just a few years ago, are now added every day.35 Many more are on the horizon with the launch of new gTLDs. (6) Dealing with domain name disputes In the late 1990s, two key developments were implemented to address conflicts involving 14.49 domain names and trademarks that arose: (1) The Uniform Dispute Resolution Policy, adopted by ICANN, seeks to resolve domain disputes in a quick, cost-effective manner, and (2) The Anti-Cybersquatting Consumer Protection Act (ACPA) in the United States provides relief under federal law against bad faith registration of domain names. (a) The ICANN UDRP On 24 October 1999, in response to the WIPO report, ICANN approved a policy modelled 14.50 largely on the WIPO recommendations known as the Uniform Domain Name Dispute Resolution Policy (UDRP) for resolution of domain name disputes. The UDRP went into effect on 1 December 1999.36 Since then, several thousand arbitration proceedings have 35

Domain Tools’ Domain Counts & Internet Statistics. The UDRP itself is found at last visited 28 February 2012. 36

307

Chapter 14: Domain Names and Trademarks been brought under the UDRP, which has been adopted by all ICANN-accredited registrars for all gTLDs as a more cost-effective and efficient way to resolve most domain name disputes. The UDRP is incorporated by reference into all registration contracts with those registrars that have adopted it, and the domain name registrants are thereby bound to submit to it when disputes arise between them and trademark owners. 14.51 The UDRP and the accompanying UDRP Rules permit a trademark holder to seek

cancellation or transfer of a domain name if: 1. the domain name is identical or confusingly similar to the complainant’s mark, 2. the registrant has no rights or legitimate interests in the domain name, and 3. the domain name was registered and is being used in bad faith.37 14.52 The process is relatively fast and inexpensive compared to litigation in a United States federal

court. To initiate a UDRP proceeding, a complainant can file a complaint with an ICANNapproved dispute resolution provider. The decisions generally are rendered based only on the complaint and the response from the registrant, if any. The remedies in a UDRP proceeding, however, are limited either to cancellation of the domain name or transfer of the domain to the complainant. 14.53 By most accounts, the ICANN UDRP has proven to be a cost-effective and efficient method

of addressing domain name disputes, producing more equitable results than the prior NSI policy. Nevertheless, the policy continues to face criticism, in part because the decisions have predominantly favoured trademark owners over domain name registrants.38 Although no monetary awards are available under the ICANN UDRP, the policy has become the tool of choice for many brand owners seeking relatively quick and inexpensive resolution of domain name disputes. (b) The Anti-cybersquatting Consumer Protection Act 14.54 At the same time that ICANN’s Board was adopting the UDRP, the US Congress was con-

sidering legislation to amend the Lanham Act, the federal trademark statute, in order to address the cybersquatting issue. The result was the Anti-Cybersquatting Consumer Protection Act (ACPA). The ACPA was incorporated into the Lanham Act as § 43(d) and took effect on 29 November 1999.39 14.55 The ACPA created a federal right of action against anyone who, with the bad faith intent to

profit from a trademark, registers, traffics in, or uses a domain name that is either: 1. the same as or confusingly similar to a distinctive trademark, or 2. the same as or confusingly similar to or dilutive of a famous mark. 14.56 One of the keys to an action by a trademark owner under the ACPA is the ‘bad faith’ of the

domain name owner in either registering, trafficking in, or using the domain name.40 The statute contains a non-exclusive list of factors that a court ‘may’ consider in determining

37

UDRP ¶ 4(a). For a detailed discussion, see Helfer and Dinwoodie, ‘Designing No-National Systems: The Case of the Uniform Domain Name Dispute Resolution Policy’, (2001) 43 Wm & Mary L Rev 141. 39 15 USC. § 1125(d). 40 Note in contrast that, under the UDRP, both the registration and use of the domain name must be in bad faith. 38

308

B. The Conceptual Framework whether bad faith exists on the part of the defendant. Paraphrasing the ACPA, the factors are as follows: 1. any trademark or other IP rights the defendant has in the domain name; 2. the extent to which the domain name is the legal name of the defendant or is otherwise commonly used to identify the defendant; 3. defendant’s prior use of the domain name in connection with the bona fide offering of goods or services; 4. defendant’s bona fide noncommercial or fair use of the trademark in an online site accessible under the domain name; 5. defendant’s intent to create the likelihood of confusion (as to source, sponsorship, affiliation, or endorsement) and to divert customers from the site of the trademark owner’s online site, either for commercial gain or with the intent to tarnish or disparage the mark; 6. defendant’s offer to sell, transfer, or assign the domain name, either to the trademark owner or to a third party, for financial gain without having used or having an intent to use the domain name in a bona fide way (or prior conduct indicating such a pattern); 7. defendant’s use of false or misleading contact information when applying for registration of the domain name (or prior conduct indicating such a pattern); 8. defendant’s registration or acquisition of multiple domain names that the defendant knows are identical or confusingly similar to others’ distinctive trademarks or dilutive of others’ famous marks; and 9. the extent to which the trademark incorporated into the defendant’s domain name is or is not distinctive or famous.41 The term ‘traffics in’ is defined in the Act to refer to transactions that ‘include, but are not 14.57 limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration.’ The scope of the ACPA is broader than mere registration or use. The statute allows a court to order the forfeiture or cancellation of the domain name or the 14.58 transfer of the name to the trademark owner. In addition to the traditional monetary remedies available under the Lanham Act, this amendment also provides for elective statutory damages ranging from $1000 to $100,000 per domain name. It applies to domain names registered before its passage, but the complainant cannot recover damages for pre-ACPA activities. Brand owners have used the ACPA with much success, often obtaining large statutory damages awards up to the $100,000 statutory maximum per domain name, plus recovery of their attorneys’ fees. Acknowledging the difficulties inherent in discovering the identity or location of cybers- 14.59 quatters, the ACPA also includes an in rem provision that allows a brand owner to sue in the judicial district where the registration authority is located. This provision of the ACPA has wide breadth, allowing a foreign company to sue a foreign registrant in the United States if the domain name registry is located in the US, which happens to be the case for all and domain names. Thus, a European company seeking to recover a domain name from an Asian cybersquatter may be able to take action in the United States under the ACPA.

41 See 15 USC § 1125(d)(1)(B)(i)(I)–(IX). The act also specifically provides that bad faith shall not be found where the domain name owner reasonably believed that its use was a fair use or was otherwise lawful. 15 USC § 1125(d)(1)(B)(ii).

309

Chapter 14: Domain Names and Trademarks 14.60 The internet poses great challenges and opportunities. It is a considerable challenge to adapt

our existing, territorial laws of intellectual property to a global communication and commercial medium that has no boundaries. We need to find a balance between the protection of intellectual property rights, which is necessary if the internet will reach its full potential as a virtual marketplace, and universal access, which is necessary if the internet is to reach its full potential as a communications medium. That challenge creates the opportunity to develop international systems for resolving disputes in a way that encourages growth of the internet. 14.61 The challenge can best be met through the thoughtful application of traditional trademark

principles developed by the courts through the years as they seek to accommodate the competing interests of property protection, competition, and free speech. The ICANN UDRP is a positive, cost-effective mechanism for revolving domain name disputes while the ACPA affords US and foreign brand owners the opportunity to use the US federal courts to challenge domain name misuse and to recover substantial statutory damages.

C. Practical Advice (1) Conflicts involving domain names and trademarks 14.62 Cybersquatting—the bad faith registration of a domain name that is confusingly similar to

another party’s trademark—continues to plague trademark owners. One organization estimates that cybersquatting costs brand owners $1 billion worldwide every year as a result of diverted traffic, loss of goodwill, and enforcement expense.42 Even excluding intangible harm like lost goodwill, the costs may be as much as $1 million per brand, per year.43 The problem is increasing. A report found 428,617 instances of cybersquatting of mainstream brands in the second quarter of 2008 alone, a 38 per cent increase over the previous year.44 14.63 Cybersquatting has been found, for example, where an individual registered the domain

name and subsequently offered to sell the domain name to Ford Motor Company, knowing that Ford World was the name of Ford Motor Company’s employee newspaper.45 Another instance of cybersquatting occurred where an individual registered the domain name for the fictitious organization, ‘People Eating Tasty Animals’, in an attempted parody of the organization, People for the Ethical Treatment of Animals (PETA).46 14.64 Cybersquatters also target celebrities. Julia Roberts,47 Nicole Kidman,48 and single-name

celebrities like Madonna49 and Charo have all brought successful cases against cybersquatters.

42 The Coalition Against Domain Name Abuse, The Real Cost of Cybersquatting, available at last visited 28 February 2012. 43 Ibid. 44 MarkMonitor, Brandjacking Index (Summer 2008), available at last visited 28 February 2012. 45 Ford Motor Co v Catalanotte, 342 F 3d 543 (6th Cir 2003). 46 People for Ethical Treatment of Animals v Doughney, 263 F 3d 359 (4th Cir 2001). 47 Julia Fiona Roberts v Russell Boyd, WIPO Case No D2000-0210 (29 May 29 2000). 48 Nicole Kidman v John Zuccarini d/b/a Cupcake Party, WIPO Case No D2000-1415 (23 January 2001). 49 Madonna Ciccione p/k/a/Madonna v Dan Parisi and ‘Madonna.com’, WIPO Case No D2000-0847 (12 October 2000).

310

C. Practical Advice The musician Sting, however, lost a domain name dispute over because he failed to prove that the site was used and registered in bad faith.50 A variation on cybersquatting is typosquatting, the deliberate use of slight deviations of 14.65 famous marks for commercial gain. An example of the typical typosquatting case occurred where an individual registered to divert internet users looking for the hotel’s website but who mistakenly add an extra ‘t’ to the domain name.51 A domain typo report reveals that there were over fifty (50) domain names variations of ‘Sarah Palin’ within weeks of her selection as John McCain’s running mate, including , , and .52 One study found that 7.2 per cent of possible typographical errors in domain name registrations were actively squatting, meaning that an internet user who misspells a popular domain name has a one in fourteen chance of landing on a typosquatted site.53 Cybersquatting and typosquatting cause obvious harm to trademark owners and consumers 14.66 alike. These actions divert consumers seeking the trademark owner’s website, possibly subjecting consumers to unwanted advertisements or offensive material and diverting business away from trademark owners. Moreover, cybersquatting and typosquatting prevent intellectual property rights holders from using the domain names for legitimate purposes. These activities can also dilute or tarnish the owner’s mark, depending on the content of the site. Finally, it allows a cybersquatter or typosquatter to benefit financially from another’s goodwill, particularly where the cybersquatter or typosquatter sets up pay-per-click advertisements on the infringing website or utilizes unlawful scams to obtain private information. The ACPA and UDRP present alternatives for resolution of disputes involving domain 14.67 names and trademarks outlined above, each of which offers distinct advantages and disadvantages. (2) Using the ACPA to resolve conflicts A proceeding brought under the Anti-Cybersquatting Consumer Protection Act is not an 14.68 administrative proceeding, but a federal civil lawsuit filed in a US District Court. The term ‘traffics in’ is defined in the Act to refer to transactions that ‘include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration’.54 It is thus far broader than mere registration or use. In determining whether the defendant has the requisite ‘bad faith’ intent to profit from the mark, the court ‘may’ utilize the statutory non-exclusive list of nine factors shown above. However, the above-quoted term ‘confusingly similar’ is not defined in the Act. It has been 14.69 judicially interpreted to embody a significantly lesser standard than ‘likelihood of confusion’, which applies in a trademark infringement action.55 Because an action under the ACPA is a claim brought under the Lanham Act, the usual trademark remedies are available. 50

Gordon Summer v Michael Urvan, WIPO Case No D2000-0596 (24 July 2000). Marriott Int’l, Inc v Seocho, FA 0303000149187 (Nat’l. Arb Forum April 28, 2003). 52 See Domain Tools’ Domain Typo Finder, available at last visited 28 February 2012. 53 McAfee, Inc, What’s In a Name: The State of Typo-squatting 2007, available at last visited 28 February 2012. 54 15 USC. § 1125(d)(1)(E). 55 See, eg, Coca-Cola Co v Purdy, 382 F 3d 774, 783 (8th Cir 2004). 51

311

Chapter 14: Domain Names and Trademarks These include injunctive relief (TROs and preliminary and permanent injunctions) under § 34 of the Lanham Act and traditional monetary awards under § 35(a), including recovery of the damages suffered by the plaintiff, the defendant’s profits, and the costs of the action. In addition, the ACPA provides two other remedies: (1) the ‘forfeiture or cancellation’ of the domain name, or its transfer to the trademark holder;56 and (2) an election by the plaintiff to recover statutory damages of anywhere between $1,000 and $100,000 per domain name.57 14.70 A trademark owner may also pursue an in rem action under the ACPA. This is a valuable

provision for trademark owners who may not be able to locate cybersquatters or establish in personam jurisdiction over them. Provided the plaintiff has exercised due diligence, an in rem action may be filed in those situations against the domain name itself. Suit must be filed in the judicial district in which ‘the domain name registrar, registry, or other domain name authority’ is located.58 However, the plaintiff’s remedy in an in rem action is limited to the forfeiture, cancellation, or transfer of the domain name.59 Finally, because it is a form of federal civil litigation, the usual discovery devices (eg, interrogatories, document production, depositions, etc) are available for use by the parties to an ACPA action. (3) Using the UDRP to resolve conflicts 14.71 Compared to a suit under the ACPA, a proceeding under the UDRP is simpler and usually

much quicker. However, the available remedies are narrower. The UDRP is a quasi-judicial proceeding specifically designed to remedy abusive registrations of domain names. The gTLD registrars bind registrants to the UDRP process as part of the domain name registration agreement. Under the UDRP, a person in any part of the world may challenge a domain name registration that is identical or confusingly similar to its trademark, and may prevail if the registrant has no legitimate rights in the name and acted in bad faith. Thus, the UDRP is available to a European brand owner seeking a convenient means to challenge an Asian cybersquatter. 14.72 A UDRP action is initiated by filing a complaint with one of several dispute resolution

service providers, including the World Intellectual Property Organization (WIPO), a United Nations organization located in Geneva, Switzerland. To establish a claim under the UDRP, the complainant must prove the following three elements: 1. the respondent has no rights or legitimate interest with respect to the domain name; 2. the domain name is identical or ‘confusingly similar’ to a trademark in which the complainant has rights; 3. the domain name was registered and used in ‘bad faith’. 14.73 The first element requires the complainant to show that the domain name at issue is identical

or confusingly similar to a trade or service mark in which the complainant has rights. The question of similarity is normally established by direct comparison of the domain name and mark at issue, without regard to the manner in which they may be used on the offending website. The complainant’s rights in the mark are typically shown by evidence of valid trademark

56

15 USC § 1125(d)(1)(C). 15 USC § 1117(d). 58 15 USC § 1125(d)(2)(C). See also Harrods Ltd v Sixty Internet Domain Names, 302 F 3d 214, 225 (4th Cir 2002). 59 15 USC § 1125(d)(2)(D)(i). 57

312

C. Practical Advice registration or by evidence of use sufficient to establish common law rights. Personal names are only protectable if used commercially to establish trademark rights. Thus, celebrities such as Madonna,60 Julia Roberts,61 Spike Lee, and soccer star Freddy Abu have obtained relief under the UDRP. The second element is that the respondent has no rights or legitimate interest with respect to 14.74 the domain name. The respondent may have a legitimate interest, for example, if it made bona fide use of the name before there was an objection, was previously known by the name, or is making non-commercial or fair use of the domain name. The final element is proof that the domain name was registered and used in bad faith. This 14.75 element is typically satisfied if the domain name is offered for sale at an unjustified premium, if the registrant engages in a pattern of abusive domain name registration, if the domain name is used to disrupt the business of a competitor, or if the domain name is deliberately used to obtain commercial gain by misdirecting internet due to confusion with another’s mark. The registrant then has 20 days to respond and demonstrate why relief should be denied. 14.76 Some cases are lost for lack of proof of trademark rights in the disputed name. For example, Keystone Publishing in Utah was denied relief because it failed to prove 14.77 common law rights in UTAH WEDDINGS as a trademark for wedding services in Utah.62 The Mexico Tourism Board lost its bid to claim the domain name .63 Other cases failed when the registrant showed a legitimate reason for using the domain 14.78 name. Boxer George Foreman was knocked out of the ring when he tried to recover from a licensee.64 Porsche was unable to recover where the name was used in good faith for the online resale of Porsche cars.65 Complainants also fail to recover if they do not establish both bad faith use and bad faith 14.79 registration. Overreaching can even result in a complainant being branded as a reverse domain name hijacker. Such was the fate of Nestlé when asserting rights in the MAGGI mark, well-known in Europe for food products, against a Swiss businessman who successfully demonstrated that MAGGI had been his family’s name longer that it had been Nestlé’s mark.66 Because it is a limited arbitration proceeding, an action under the UDRP affords no formal 14.80 mechanisms for investigation or conducting discovery. While there is no discovery, live testimony or live hearing, the panels may call upon the parties to submit additional evidence and arguments. At this point, the panellists generally deliberate via email and decisions are typically rendered within three months of the initial complaint, although extensions are possible for more complicated cases. There are no monetary damages applied in UDRP proceedings,

60

Madonna, see n 49. Roberts, see n 47. 62 Keystone Publishing, Inc v UtahBrides.com, WIPO Case No D2004-0725 (17 November 2004). 63 Consejo de Promoción Turística de México, SA de CV v Latin America Telecom Inc, WIPO Case No D20040242 (19 July 2004). 64 Salton, Inc v George Foreman Foods, Inc, WIPO Case No D2004-0777 (3 December 2004). 65 Dr Ing h.c. F Porsche AG v Del Fabbro Laurent, WIPO Case No D2004-0481 (20 August 2004). 66 Societe des Produits Nestle SA v Pro Fiducia Treuhand AG, WIPO Case No D2001-0916 (12 October 2001). 61

313

Chapter 14: Domain Names and Trademarks and no injunctive relief is available. The only remedy provided under the UDRP is the transfer or cancellation of the respondent’s domain name.67 14.81 Furthermore, UDRP proceedings are not considered binding on the courts because of the

limited nature of the issues considered.68 Judicial review is contemplated in the UDRP. A losing respondent can prevent the loss or transfer of its domain name by filing suit within ten business days.69 While rulings may be appealed by filing a civil court action in an appropriate jurisdiction, appeals have been relatively rare. The streamlined procedures afford the chance for faster relief at significantly less cost than would be expected in a civil court action. 14.82 UDRP proceedings are popular with brand owners because of their cost-effectiveness, speed,

and worldwide scope: the filing fee charged by the service provider for a dispute involving one domain name is $1,300–$4,000 depending on the provider and panel size selected. Several domain names can be addressed in a single UDRP proceeding (CNN recovered 325 domain names in one action in 2003, and Ticketmaster prevailed against 108 in a single action in 2004), but the filing fees vary by the number of domain names being challenged. Additional legal fees are generally low because no discovery or live testimony is involved. 14.83 One of the UDRP’s most remarkable features is its ability to resolve disputes without regard

to the limits of national jurisdictions. National boundaries do not limit the registration of generic top-level domain names, so a registrant subject to the UDRP can be located virtually anywhere in the world. Indeed, in many instances where false registration information is given, the registrant cannot even be located. Yet the UDRP remains available for dealing quickly and cheaply with domain name disputes, often between nationals of different countries. For example, a single case may involve a registrant in the United Arab Emirates, a trademark owner in India, and panellists in the United States, Australia, and the United Kingdom. 14.84 The UDRP is used to its best advantage by recognizing its limits. Adverse decisions are often

the result of claims that obviously stretch beyond the scope of the policy. Designed to address cases of cybersquatting involving protectable trademarks, the policy was not intended for contractual disputes, garden-variety infringement cases, defamation claims, or personal names that are not entitled to commercial protection. Thus, professional golfer Skip Kendall was out-of-bounds when he brought a UDRP action to stop his sister from using his name as the URL for a site posting derogatory reports about his failure to repay a personal loan. While such matters may or may not present valid claims under other legal theories, matters outside the scope of the UDRP are certainly better directed to appropriate civil courts. (4) Comparing the approaches 14.85 Bringing an action under the ACPA and initiating a UDRP proceeding are not mutually-

exclusive procedures. A brand owner may use the ACPA and UDRP simultaneously, or initiate an ACPA action regardless of the outcome of the UDRP proceeding. Similarly, a registrant that has a domain name cancelled or transferred in a UDRP proceeding may appeal that

67

UDRP, ¶ 4.i. See Barcelona.com, Inc v Excelentisimo Ayuntamiento de Barcelona, 330 F 3d 617 (4th Cir 2003) (referring to the UDRP as ‘adjudication lite’). 69 UDRP, ¶ 4.k. 68

314

C. Practical Advice decision to a court of competent jurisdiction or bring a separate cause of action under the reverse domain name hijacking provision of the ACPA.70 Given the variety of options, a brand owner must decide which procedure best fits its situation. 14.86 With the availability of monetary damages and the opportunity to take discovery, the ACPA is a powerful sword for more complex or egregious disputes. For companies desiring quick resolution, the UDRP is often the first choice. UDRP proceedings are ideal for situations where the registrant’s bad faith is clear, such as 14.87 when the registrant offers to sell the domain name at a premium or diverts traffic to a pornographic website. In harder cases, where the registrant has plausible arguments regarding its legitimate claim to the domain name or its lack of bad faith, it can be difficult to predict the UDRP outcome, and the ACPA may be a better option. The UDRP also may not be the ideal method to resolve a dispute concerning a large number 14.88 of domain names because the filing fee depends on the number of domain names involved. The ACPA gives American and foreign companies a vehicle to bring one lawsuit against hundreds of domain names and to have the opportunity to obtain substantial statutory damages for each infringing domain name. Several factors may influence a trademark owner’s decision to pursue one or the other of 14.89 these two quite different avenues of relief against a cybersquatter. In general, a primary reason for a trademark owner to opt for filing suit under the ACPA is the desire to obtain an award of monetary damages. Seeking damages obviously may be advantageous when there is a favourable chance of success in the litigation, actual damages can be readily proved, and the realistic opportunity exists to collect on them. Another attractive feature of an ACPA action is the opportunity to file an in rem suit. This 14.90 option could be useful where the defendant is difficult to ascertain or has evaded service of process, or where obtaining personal jurisdiction over the defendant in a US court might be hard or impossible to do. Finally, only the ACPA option offers the opportunity for conducting discovery against the defendant in order to flesh out, if necessary, the circumstances of the alleged violation or the defendant’s bad faith. A major tradeoff to use of the ACPA is, of course, the expense associated with it. As with any federal litigation, filing and conducting the suit is expensive, often costing tens of thousands of dollars in attorneys’ fees, as well as consuming a few years in federal court. As an alternative, the UDRP proceeding provides a much quicker, but more limited, remedy. 14.91 Proceedings can be filed for a few hundred dollars, and resolved in as little as 60 days. However, as discussed, remedies under the UDRP are confined to cancellation of the respondent’s domain name or its transfer to the complainant. Technically, a lawyer is not required for filing a complaint under the UDRP (although most such proceedings are, in fact, filed by attorneys on behalf of their clients). Also, arbitration proceedings under the UDRP are decided strictly on the written materials, another way to limit costs. The UDRP is generally a good option when the domain name involves issues of interna- 14.92 tional scope. Even if the domain name registrant is domiciled in a country outside of the US, a UDRP proceeding may be filed whenever the particular domain name registrar has adopted 70

15 USC § 1114(2)(D)(iv).

315

Chapter 14: Domain Names and Trademarks and incorporated the UDRP into the registration agreement. As mentioned above, this already has been done with regard to many country code TLDs. The UDRP presents a distinct advantage in such cases because problems associated with personal jurisdiction are eliminated.71 14.93 However, the UDRP requires that the complainant show that the respondent both registered

and used the domain name in bad faith. (In contrast, under the ACPA, a finding of bad faith can be based on the defendant’s registration, use, or trafficking in the domain name.) It is possible to conceive of situations where this issue might be problematic for the UDRP complainant. 14.94 For example, the respondent in a UDRP action might have registered its domain name in

good faith, fully intending to use it to sell goods or services completely unrelated to the corresponding trademark of the complainant. Those plans could have fallen through, leaving the registered domain name and a corresponding website out on the internet which the trademark owner might wish to have transferred to it. But there would be no use and no proof of bad faith in registering the domain name, so the owner of the corresponding mark might not be able to make a case for transfer or cancellation under the UDRP. 14.95 Another possible downside to use of the UDRP is that the arbitration panel’s decision can be

contested in court. If a trademark owner is confronting a litigious respondent whom the complainant suspects might later litigate the whole matter anyway, the complainant might prefer to simply forego the UDRP proceeding and take the defendant straight to court under the ACPA. 14.96 In short, the choice of which remedial action, ACPA or UDRP, a trademark owner should

select to win the rights to contested domains depends on the weighing of several factors including costs, timing, and chances of success, the adjudicator’s power to address trademark issues not susceptible for decision under the UDRP, and the desire and ability to obtain and recover damages. Intellectual property attorneys should be acquainted with both procedures, and be prepared to evaluate these factors when advising clients of their options in dealing with cybersquatters. (5) Enforcement strategy 14.97 An effective strategy for dealing with the conflicts that arise in the difficult marriage of

trademarks and domain names can be based on implementation of several critical measures. A coherent overall strategy is usually better than an ad hoc approach. • Obtain trademark registrations Establishing trademark rights is the first step to protecting against cybersquatting. Trademark rights are a prerequisite for protecting brand names and in many countries trademark rights arise from registration alone. Thus, the company should consider seeking broad international trademark registration as a tool for avoiding and resolving domain name disputes. • Register key brands as domain names Depending on the importance and protectability of the company’s brands, the company may also avoid conflict through pre-emptive 71 As already discussed, an in rem proceeding under the ACPA’s provisions could also be brought under these circumstances, but, given the same limitation on remedies in such proceedings, the UDRP would appear to be the simpler, cheaper, and easier route to pursue, where it applies.

316

D. Application of Traditional Trademark Principles to Domain Names registration of domain names. However, the full implementation of a pre-emptive registration programme can be time consuming, expensive, and sometimes impossible, given the many gTLDs and ccTLDs and the many potential variations and misspellings. • Monitor cybersquatters and third-party users A brand owner can better understand the trends of infringement and develop a coherent enforcement policy by monitoring the use by others of its brands. Cost effective and efficient online methods for policing brands are now readily available. • Utilize the UDRP Through careful selection of cases and consistent use, companies can strengthen the distinctiveness of their brands at minimal cost and establish a reputation that discourages infringers and cybersquatters. The cases most appropriate for UDRP action are usually those where bad faith is easily established and monetary relief is not an important consideration. • Utilize the ACPA In appropriate cases, the ACPA may afford trademark owners an efficient means for resolving disputes concerning a great number of domain names in one proceeding with significant statutory damage awards.

D. Application of Traditional Trademark Principles to Domain Names As already suggested, the tension, or difficult marriage, between trademark law and domain 14.98 names arises first from the uniqueness characteristic of domain names. There can be only one ritz.com, although the RITZ mark can co-exist in the trademark world on different goods and services without conflict. This tension is revealed in the UDRP in several ways. First, under traditional trademark law, infringement of rights depends on the use in com- 14.99 merce of another device that is likely to cause confusion in the marketplace. Without use and likelihood of confusion, there is no traditional trademark conflict. Similarly, no harm is done when a mark is in use and another uses his desired mark for unrelated goods or services. The same is no longer true when dealing with domain names. Domain names may cause 14.100 harm to trademark rights even if they are not in actual use or even if they are in use for unrelated goods or services because they will prevent the ability of the trademark owner to use its mark in the same domain name space. The handling of this problem under the UDRP is instructive. The policy recognizes that 14.101 certain forms of conduct may be a violation that would not be an infringement of trademark rights. For example, a key basis for establishing bad faith registration under the UDRP is the attempt to register and sell a domain name for profit based on similarity with another’s mark. The harm from domain name trafficking of this type may arise merely from registration, without any use of the domain name in commerce, other than the use involved in the attempted sale. In contrast, traditional trademark infringement claims require use of the allegedly infringing mark in commerce in a manner that causes a likelihood of confusion or loss of distinctiveness among consumers. The mere registration of a domain name would not be an infringement under traditional trademark law principles. Thus, the UDRP provides relief in circumstances that do not involve confusion or loss of distinctiveness and would not be an infringement under traditional trademark law principles. A second area of tension arises from the limits in the UDRP. The policy is not intended 14.102 to cover garden variety trademark disputes or complicated cases of conflicting rights. 317

Chapter 14: Domain Names and Trademarks Rather, successful UDRP claims should be limited to abusive domain name registrations. Thus, it is common for claims to be denied if the conflict centres on interpretation of a licence or franchise relationship. Similarly, claims under the UDRP may be denied where trademark infringement may exist without a deliberate attempt to misdirect internet traffic or interfere with the rights of another. Conduct that would be found to be a trademark infringement in court is not necessarily a violation of the UDRP. 14.103 As a hypothetical example, suppose Party A is the owner of a mark AMCE for used shoe

stores in Texas, located in the South Central United States. Assume further that Party B is a junior good faith user of the same mark for shoe stores in Minnesota, located in the north central part of the United States. Both operate in their respective regions for years without conflict until Party B expands to do business on the internet using the domain name www. acme.com. Party A objects under the UDRP. 14.104 The expansion by Party B presents a potential claim for trademark infringement, and there

is certainly a possibility that Party A may prevail in court to prevent that expansion. But Party A would probably be unsuccessful in a UDRP claim because Party B had a legitimate interest in using the name. Although the use is a potential infringement, it is not an obvious act of cybersquatting. The point is this: conduct that may be an infringement is not necessarily a violation of the UDRP. 14.105 A third significant area in which there is a tension between domain names and trademarks

arises when a domain name is used as a means of expression rather than as a commercial tool to sell products. Free speech issues are strong in the domain name world, where names are often selected to convey a message. A criticism about ACME shoes may lead a disgruntled consumer to launch a protest site at www.acme.com. 14.106 In the traditional world, that would not prevent use of the ACME mark by its owner. But in

the internet world, the domain name would prevent the trademark owner from reflecting its mark at the .com domain. Thus, the harm to the trademark owner is double—the mark is used to convey a critical message and the owner of the mark may not use the same name for an internet address. The balance under the UDRP recognizes that the critical domain name may be used for this purpose without violating the trademark owner’s rights. 14.107 In short, and as will be apparent from comparing the UDRP with traditional trademark law,

the law of trademarks is not a perfect match for the problems created by domain names. The UDRP and other similar procedures do not simply involve a complete grafting of trademark law rules to a new medium. There are subtle but significant differences between trademarks and domain names that have mandated related but different rules and regulations. We are not simply applying the old rules of trademark law to a new medium. The new medium has required new rules and creative solutions.

E. Application to Hypothetical 14.108 Applying the principles outlined above to the hypothetical described at the beginning of the

chapter leads to the following likely outcomes. 14.109 With respect to the fan website including a store where others may offer

used BANANA BRAND products for resale, there is no evidence of bad faith on the part of 318

F. Summary the registrant. This type of use, referring to actual BANANA BRAND products, would likely be characterized as a fair use rendering an action under either the ACPA or UDRP inappropriate. Similarly, the website owned by the Banana Growers’ Association and 14.110 used for email addresses without an active website also presents a situation where proof of bad faith would be difficult. The registrant appears to have a legitimate interest in the domain name and its use for email addresses appears to be bona fide. As such, neither a UDRP nor ACPA proceeding would be warranted without further evidence of bad faith. In order to determine this information, an ACPA claim with subsequent discovery into the registrant’s argument of plausible good use may be warranted. However, the website registered to a Russian company which uses the 14.111 site for adult entertainment goods and services represents a scenario in which either an ACPA or UDRP action may be taken against the registrant. As noted above, diversion to pornographic material is typically evidence of bad faith and these types of clear cut cases are well-suited to a UDRP action. Moreover, the international registrant further weighs in favour of a UDRP action to alleviate jurisdictional issues. Similarly, the domain name being used by a South Korean company for 14.112 pay-per-click advertisements, including links to Banana Corporation and its competitors, could be the subject of either an ACPA or UDRP action. In this case, a UDRP action would probably recover the domain name in a faster and more cost-effective manner, particularly in light of the international registrant.

F. Summary This chapter can be summarized in the following bullet points: • Domain name disputes began to appear in the mid 1990s. Many of the problems posed by domain names did not fit neatly with the existing legal structure of trademark law. • The principal point of difference between domain names and trademarks arises from the uniqueness factor of domain names. There can only be one www.acme.com. In contrast, the mark ACME can coexist in the traditional trademark world for various goods and services without conflict. • The response to the problems created by domain names lead to the creation of new rules and procedures for addressing domain name problems, including the UDRP (Uniform Dispute Resolution Policy) and the ACPA (Anti-Cybersquatting Consumer Protection Act). Other policies and national laws followed this lead. • The conflict between domain names and trademarks will soon enter a new phase where trademarks and conflicting names may be adopted and used as top-level domains (TLDs).

319

14.113

This page intentionally left blank

15 PUBLICITY RIGHTS, TRADEMARK RIGHTS, AND PROPERTY RIGHTS Sheldon W. Halpern, Albany Law School

A. Hypothetical B. The Right of Publicity: Protecting the Associative Value of Persona C. Taxonomy, Categorization, and the Analogical Explosion D. The Right of Publicity as a Right Appurtenant: Constitutional and Intellectual Boundaries Attenuating Property Rights

(2) Associative value and the limitations of an appurtenant right (3) Merchandising the persona: an absolute property right and the limits of an appurtenant right

15.01 15.04 15.23

15.33 (1) First Amendment, newsworthiness, and commercial speech 15.33

E. Trademark Rights as Rights Appurtenant: Property Rights in the Mark Itself F. Conclusion: A Functional Balance G. Summary

15.36

15.42

15.58 15.67 15.68

Editors’ note

A. Hypothetical In a very few years, George Anderson has become the most well-known football (what 15.01 Americans call ‘soccer’), indeed sports player, in the world, and his likeness is equally wellknown by sports and non-sports fans alike in six continents. Rare is the person who, upon seeing his likeness, cannot identify George Anderson by name. Anderson has come to realize that, in addition to his huge salary, there may be massive potential 15.02 value in commercializing his name and likeness. However, Anderson is concerned about how he can commercialize his name and likeness successfully while at the same time protecting the manner by which such commercialization will take place. Moreover, he has heard from friends that the laws that might protect his name and likeness differ from country to country. For example, if someone puts a likeness of Anderson on a T-shirt without Anderson’s permis- 15.03 sion, can Anderson stop that person? Under what circumstances can Anderson stop someone from using his name on products? When can Anderson sell rights in the George Anderson name to a third party?

321

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights

B. The Right of Publicity: Protecting the Associative Value of Persona 15.04 Kids, at least in the United States, really like bubble gum; kids, at least in the United States,

really like baseball and, particularly, pictures of baseball players. This confluence of tastes, whatever else its consequences, produced in the United States that peculiar legal construct we call the ‘right of publicity’. 15.05 It is generally understood that the right of publicity began in 1953 with a brief opinion by

Judge Jerome Frank of the United States Court of Appeals for the Second Circuit in Haelan Laboratories, Inc v Topps Chewing Gum, Inc,1 holding that a celebrity2 has a right to damages and other relief for the unauthorized commercial appropriation of his or her persona, and that such right is independent of any common law or a statutory right of privacy.3 This opinion, in its brevity and its focus on marketplace reality, suggests that it is not simple coincidence that Judge Frank was one of the founders of the US legal realist movement. 15.06 The recognition by Judge Frank of a ‘right of publicity’ did not take place in a vacuum. By

1953, a very substantial number of courts and legislatures in the various states had already come to recognize a ‘right of privacy’, providing a remedy for the unconsented use and public dissemination of a person’s name or likeness.4 The lineage of this right can be traced to an 1890 law review article by Louis Brandeis and Samuel Warren, in which the authors purported to have found such a right in the English common law.5 While their ‘discovery’ of such a common law right is, at best, debatable, the force of their argument for its recognition ultimately carried the day in US common law and statutory jurisprudence.6 15.07 The problem in Haelan arose out of the peculiar facts of that case. A professional baseball

player had granted to the plaintiff, a seller of bubble gum, the exclusive right to use and distribute his image on cards accompanying the bubble gum. Baseball cards, with pictures and statistics about baseball players, were very popular and bubble gum purveyors competed for the rights. In this case, however, after granting the exclusive right to the plaintiff, the player granted to the defendant, a competitor of the plaintiff, a right to use his image. 15.08 Apart from breach of contract claims that the plaintiff may have had against the player, the

plaintiff sought to enforce its exclusive rights, as the player’s assignee, against the defendant. 1

202 F 2d 866 (2nd Cir) (‘Haelan’), cert. denied, 346 US 816 (1953). For present purposes, the right of publicity is considered peculiarly celebrity-based, arising only in the case of an individual who has attained some degree of notoriety or fame. See Rogers v Grimaldi, 875 F 2d 994, 100304 (2nd Cir 1989)(the common law right of publicity, where it has been recognized, grants celebrities an exclusive right to control the commercial value of their names and to prevent others from exploiting them without permission). But cf Gillian Black, Publicity Rights and Image Exploitation and Legal Control (Oxford: Hart Publishing, 2011); Roberta Rosenthal Kwall, ‘Is Independence Day Dawning for the Right of Publicity?’, (1983) 17 U C Davis L Rev 191, 202-03 (advocating recognition of a universal right of publicity). 3 See Sheldon W. Halpern, ‘The Right of Publicity: Commercial Exploitation of the Associative Value of Personality’, (1986) 39 Vanderbilt L Rev 1199 (‘Right of Publicity’). 4 See, eg, Sheldon W. Halpern, ‘Rethinking the Right of Privacy: Dignity, Decency, and the Law’s Limitations’, (1991) 43 Rutgers L Rev 539. 5 Warren and Brandeis, ‘The Right to Privacy’, (1890) 4 Harv L Rev 193 See Diane L. Zimmerman, ‘False Light Invasion of Privacy: The Light That Failed’, (1989) 64 NYU L Rev 364, 364-65. See also Dorothy Glancy, ‘The Invention of the Right to Privacy’, (1979) 21 Ariz L Rev 1. 6 See Felcher and Rubin, ‘Privacy, Publicity, and the Portrayal of Real People by the Media’, (1979) 88 Yale L J 1577(‘In the process of searching for a [right of privacy, Warren and Brandeis] succeeded in inventing it’). Ibid., at 1581. 2

322

B. The Right of Publicity: Protecting the Associative Value of Persona New York, whose law was applicable to the case, had a statute specifically recognizing a right of privacy, creating a claim by an individual against one who uses the individual’s ‘name, portrait or picture’, without consent, for advertising purposes or for the purposes of trade.7 The difficulty for the plaintiff, claiming rights as assignee of the player, was that the right of 15.09 privacy, in New York, and wherever it had been recognized, was considered a ‘personal’ right, protecting a purely personal and subjective interest.8 As such a personal right, the statutory right was not assignable; the effect of a purported exclusive licence was simply a waiver of the individual’s right to sue under the statute. In short, although the defendant used the player’s ‘name, portrait or picture . . . for the purposes of trade’, the relief provided by the statutory right was not available to the plaintiff as the assignee of the person whose name and likeness were so used. 15.10

As Judge Frank described the problem, Defendant argues that, even if [the allegations] are proved, they show no actionable wrong, for this reason: The contract with plaintiff was no more than a release by the ballplayer to plaintiff of the liability which, absent the release, plaintiff would have incurred in using the ballplayer’s photograph, because such a use, without his consent, would be an invasion of his right of privacy under Section 50 and Section 51 of the New York Civil Rights Law; this statutory right of privacy is personal, not assignable; therefore, plaintiff’s contract vested in plaintiff no property right or other legal interest which defendant’s conduct invaded.9

The task for Judge Frank in Haelan, if relief was to be afforded the plaintiff,10 was to separate 15.11 and differentiate what he described as a new right of publicity from its ties to the existing personal, subjective right of privacy.11 This separation was predicated on recognition of the decidedly different and purely economic interest in the commercial value of persona.12 Judge Frank’s focus was on what has since been described as, . . . the marketable product [consisting of ] the ability of a person’s name or likeness to attract the attention and evoke a desired response in a particular consumer audience. That response is a kind of good will or recognition value generated by that person . . . While this product is concededly intangible, it is not illusory.13

In a remarkably brief opinion, for the panel majority, Judge Frank begins with the existential 15.12 fact of the marketable value of celebrity persona, finding an economic interest, whether or not denominated a specific property interest, distinct from the personal, subjective interest embraced by the right of privacy. On the basis of such a distinction, he could then fashion a remedy by proposing that, with such a significant difference, the interest involved was 7

New York Civil Rights Law 50, 51. As the New York Court of Appeals put it, in connection with that state’s privacy statute, ‘The primary purpose of this legislation was to protect the sentiments, thoughts and feelings of an individual’ Flores v Mosler Safe Co, 7 NY 2d 276, 280 (1959). 9 Haelan, 202 F 2d at 868. 10 The issue of inducing breach of contract is not relevant to the matters here discussed. (‘in the contract, the ball-player also promised not to give similar releases to others. If defendant, knowing of the contract, deliberately induced the ball-player to break that promise, defendant behaved tortiously’. Haelan, 202 F 2d at 868.) 11 See generally Sheldon W. Halpern, The Law of Defamation, Privacy, Publicity and Moral Right: Cases and Materials on Protection of Personality Interests 4th edn (Columbus, OH: JPm Books, 2000). 12 As the Tenth Circuit observed many years later, publicity rights . . . are meant to protect against the loss of financial gain, not mental anguish. Cardtoons, LC v Major League Baseball Players Ass’n, 95 F 3d 959, 976 (10th Cir 1996). 13 Lugosi v Universal Pictures, 603 P 2d 425, 437-38 (Cal 1979) (Bird, CJ, dissenting) (citations omitted). 8

323

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights outside the purview of the statutory (or common law) right of privacy and was something distinct. The result was an interest not dependent on analogy to anything else but an independent exclusive right to exploit the economic value associated with a persona. 15.13 In short, Judge Frank found a distinct common law right of publicity and opined that the

highest court of New York, had the matter been before it, would have similarly found such a common law right, separate and distinct from that state’s statutory right of privacy. Moreover, as an economic right, this interest, much as other economic interests, whether or not denominated property interests, could be assigned and, therefore, could be enforced by an assignee, . . .We think that, in addition to and independent of that right of privacy (which in New York derives from statute), a man has a right in the publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his picture, and that such a grant may validly be made in gross, i.e., without an accompanying transfer of a business or of anything else. Whether it be labeled a property right is immaterial; for here, as often elsewhere, the tag property simply symbolizes the fact that courts enforce a claim which has pecuniary worth. This right might be called a right of publicity. For it is common knowledge that many prominent persons (especially actors and ball-players), far from having their feelings bruised through public exposure of their likenesses, would feel sorely deprived if they no longer received money for authorizing advertisements, popularizing their countenances, displayed in newspapers, magazines, buses, trains and subways. This right of publicity would usually yield them no money unless it could be made the subject of an exclusive grant which barred any other advertiser from using their pictures. We think the New York decisions recognize such a right.14 15.14 Thus was born in the United States the common law right of publicity. 15.15 The Haelan decision became the foundation for what is now a widely recognized state15

common law or statutory right,16 whose independence from whatever privacy-based roots it might have had is generally acknowledged.17 The language of the United States Court of Appeals for the Eight Circuit, applying Minnesota law, is instructive, and typical, We believe that the Minnesota Supreme Court would recognize the tort of violation of publicity rights. We are aware that Minnesota does not recognize the fourfold tort of invasion of privacy. . . however, the right of publicity differs substantially from the right to privacy. [T]he policy underlying the right to publicity is different in several important respects. The right to publicity protects the ability of public personae to control the types of publicity that they receive. The right to publicity protects pecuniary, not emotional interests . . . As such, the policy underlying the right to publicity is more akin to the policy underlying the protection of trade names, which Minnesota recognizes . . . Thus, we believe that the Minnesota courts would recognize the right to publicity . . .18 14

Haelan, 202 F 2d at 868. The right of publicity is a creature of state law. ETW Corp v Jireh Publishing, Inc, 332 F 3d 915, 928 (6th Cir 2003). 16 In California, it is both a common law and a statutory right. See, eg, Abdul-Jabbar v General Motors Corp, 85 F 3d 407, 414 (9th Cir1996). 17 For a comprehensive examination of the right of publicity, its relation to the other interests, and a detailed examination of the state and federal, common law and statutory treatment of the subject, see generally J. Thomas McCarthy, The Rights of Publicity and Privacy 2012 edn (Minnesota: West Publishing Co, 2012). 18 Ventura v Titan Sports, Inc, 65 F 3d 725, 730 (8th Cir 1995). See Carson v Here’s Johnny, 698 F 2d 831 (6th Cir 1983). See Jim Henson Productions, Inc v John T. Brady & Associates, Inc, 867 F Supp. 175, 189 (SDNY 15

324

B. The Right of Publicity: Protecting the Associative Value of Persona Although Judge Frank’s opinion in Haelan is unequivocal in its assumption that the New York 15.16 Court of Appeals would recognize a common law right of publicity distinct from that state’s statutory privacy right, it is more than a little ironic that when New York’s highest court finally addressed the question, some thirty years after the Second Circuit decided Haelan, it expressly held to the contrary,19 leaving New York as a prominent exception to the generally recognized independent status of the right of publicity. The near universal recognition of the independent right,20 is reflected in Section 46 of the 15.17 Third Restatement of the Law of Unfair Competition, which expressly acknowledges the independent right of publicity, Appropriation of the Commercial Value of a Person’s Identity: The Right of Publicity. One who appropriates the commercial value of a person’s identity by using without consent the person’s name, likeness, or other indicia of identity for purposes of trade is subject to liability for [monetary and injunctive] relief.21

In short, by the mid 1990s, the right of publicity was a mature, widely recognized right, 15.18 protecting a distinct economic interest, unleashed from its privacy moorings.22 That interest was perceived as the economic23 interest in an individual’s persona, and was predicated on the assumption that, as a fact of modern life, the phenomenon of celebrity generates commercial value. As opposed to that of the private person, the celebrity’s persona carries with it what has been termed an associative value,24 the perceived ability to confer value on that which might be associated with the celebrity; ie, the right of publicity does not protect one’s name per se; rather, it protects the value associated with that name.25 The economic value, the marketing component, that celebrity will frequently carry, is sepa- 15.19 rate from those activities that initially produced the celebrity status itself. Thus, for example, there is a difference between the value that a successful tennis professional such as Rafael Nadal gives to an instructional video about tennis and the merchandising value that use of his name imparts to a line of tennis shoes. It is that latter iteration of the economic value of a persona that informs the right of publicity. Whether it is good or bad for society that there is such a marketing attribute of celebrity, [i]t would be difficult for any court . . . to be unaware of the manner in which celebrities exploit the public’s recognition of their name and image . . . There are few every day activities

1994): ‘[I]n an age where star athletes make tenfold more from their endorsement contracts than from their team salaries, it denies reality to believe other than that an individual’s persona can constitute valuable economic property. Moreover, the nature of that property is such that its value is diluted by unauthorized use.’ 19 Stephano v News Group Publications, Inc, 474 NE 2d 580, 583 (NY 1984): ‘Since the right of publicity is encompassed under the Civil Rights Law as an aspect of the right of privacy, which . . . is exclusively statutory . . ., the plaintiff cannot claim an independent common-law right of publicity.’ 20 See Jim Henson Productions, Inc v John T. Brady & Associates, Inc, 867 F Supp. 175, 189 (SDNY 1994). 21 Restatement (Third) of the Law of Unfair Competition §46 (1995). 22 See Sheldon W. Halpern, ‘The Right of Publicity: Maturation of an Independent Right Protecting the Associative Value of Personality’, (1995) 46 Hastings Law Journal 853(‘Maturation of an Independent Right’). 23 ‘[T]he right of publicity is essentially an economic right’. Comedy III Productions, Inc v Gary Saderup, Inc, 25 Cal 4th 387, 403, 106 Cal Rptr 2d 126, 139, 21 P 3d 797, 807 (2001). 24 ‘At its heart, the value of the right of publicity is associational’. McFarland v Miller, 14 F 3d 912, 919 (3rd Cir 1994). See generally Sheldon W. Halpern, ‘Right of Publicity’, n 3. 25 Matthews v Wozencraft, 15 F 3d 432, 437 (5th Cir 1994).

325

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights that have not been touched by celebrity merchandising . . . These endorsements are of great economic value to celebrities and are now economic reality.26 15.20 The associative value of celebrity is not a function of merit or desert;27 rather, as the Ninth

Circuit has observed, it is simply a matter of marketplace reality, Television and other media create marketable celebrity identity value. Considerable energy and ingenuity are expended by those who have achieved celebrity value to exploit it for profit. The law protects the celebrity’s sole right to exploit this value whether the celebrity has achieved her fame out of rare ability, dumb luck, or a combination thereof.28 15.21 Of course, the simple assertion of economic reality, understanding that something has value,

is the starting point, as it was for Judge Frank; it does not lead inexorably to the conclusion that the law must protect that value. The emergence and maturation of the right of publicity reflects an American societal determination, through the courts and the legislatures, that the individual’s interest in the associative value of his or her persona merits legal protection. 15.22 When the court observes, as above, that the law protects the interest, it articulates the policy

determination made by the courts and various state legislatures to provide that legal recognition. As discussed below, that determination is by no means universal, as jurisdictions outside of the United States continue to struggle with the fundamental policy determination whether that marketplace reality justifies legal recognition of the interest. Suffice it to say, that the American model has become increasingly the subject of intense scrutiny elsewhere.29

C. Taxonomy, Categorization, and the Analogical Explosion 15.23 Notwithstanding the clarity of the language of Haelan that the right of publicity was the

name given to that legal construct specifically directed to recognition of the associative value of persona, it did in fact take the American courts a considerable number of years finally to recognize the independent nature of the right. Over the years, courts and commentators attempted to find an appropriate pigeonhole, a conceptual garment, some analogue of what was already part of our legal lexicon, in which to clothe this rather self-evident construct. 15.24 Thus, not only were there attempts to analogize the right of publicity to its privacy roots, but

also further analogies were drawn to the law of misappropriation and unfair competition, on the one hand, and property law on the other. In 1977, the United States Supreme Court discussed the right of publicity in terms of proprietary interests and drew an analogy to copyright and patent law as means of protecting the right of the individual to reap the reward of

26

Tennessee ex rel Presley Int’l Memorial Found v Crowell, 733 S W 2d 89, 94 (Tenn Ct App 1987). Fame is not inconsistent with merit but neither is it evidence of merit. David Lange, ‘Recognizing the Public Domain’, (1981) 44 Law & Contemp Probs 147, 163. 28 White v Samsung Elecs Am, Inc, 971 F 2d 1395, 1399 (9th Cir 1992), cert. denied, 508 US 951, 113 S Ct 2443 (1993). 29 See Huw Beverley-Smith, The Commercial Appropriation of Personality (Cambridge: Cambridge University Press, 2002) (discussing activities in the United Kingdom and other jurisdictions relating to their versions of the right of publicity).‘To American lawyers, the whole project [ie, the United Kingdom inquiry into the extent to which to recognize these rights] may have a vaguely nineteenth-century feel, as the English courts continue to debate whether to recognise interests that the US courts have recognised and protected in various forms for over a century’.Ibid., at xi. See also Gillian Black, n 2. 27

326

C. Taxonomy, Categorization, and the Analogical Explosion his endeavours.30 So, too, some courts either had to clear away or be buried in the debris attendant to analogizing the right to the personal right of privacy.31 As this author had noted some time ago, before the current consensus congealed, Battle lines are drawn over whether the creature emerging from the fermenting ooze of modern mass communications is a species of property or a purely personal privacy interest. Everywhere one finds the bodies of tortured analogies. Is the Chimera more like copyright? Should it be in the trademark or service mark bestiary? Do we perhaps have simply another version of the old torts of misappropriation and unfair competition?32

Over-extended analogies (ie, the reliance on misappropriation, copyright, trademark, defamation, or other recognized legal labels for guidance) create problems and misconceive the interests upon which the right of publicity is based. Thus, it has been noted that, [t]he strength of an analogical approach is that once the equivalence is established, previously developed rationales and conclusions can be brought to bear on the new situation . . . But a major difficulty with analogies, derived from precisely the same source as their strength, is that they tend to impose a mature, elaborated system on what may well be an unformulated situation. The choice of the analogy may not be fully justifiable, and the analogy’s application to the situation may carry with it a misleading certainty. [N]one of the analogies of privacy, defamation, or property law seems correct to apply to the publicity issue.33

Although it took about 40 years and much judicial agonizing, from the time that Judge 15.25 Frank asserted a fully formed, independent right that protected a distinct interest, to incorporation of that right into the Restatement (Third) of Unfair Competition,34 there is now largely a consensus35 as to the nature of the right, sans analogy. However, when the context for discussing the right of publicity shifts from the United States 15.26 to the United Kingdom, or to other parts of the world, the battle of analogies seems to be conducted at a fever pitch. The UK is a perfect laboratory for analysing the process by which an interest may be identified, a right enunciated, and a remedy provided. I suggest that it is a perfect laboratory because to all intents and purposes, in attempting to articulate a right of publicity for the UK, we can write on a clean slate. While the problem for the US lay in separating publicity rights from privacy rights, neither 15.27 of these rights had a foundation in the common law of the United Kingdom.36 Rather, despite efforts, through various Royal Commissions and otherwise, neither the pri- 15.28 vacy nor publicity constructs, as developed and understood in the United States, could find a home in the common law of the UK. Occasional, idiosyncratic cases, producing similarly

30

Zacchini v Scripps-Howard Broadcasting Co, 433 US 562 (1977). Cf Carson v National Bank, 501 F 2d 1082 (8th Cir 1974) and Carson v Here’s Johnny Portable Toilets, Inc, 698 F 2d 831, 834-35 (6th Cir 1983). 32 Sheldon W. Halpern, Right of Publicity, n 3. 33 Felcher and Rubin, ‘The Descendibility of the Right of Publicity: Is There Commercial Life After Death?’, (1980) 89 Yale L J 1125, 1127–28. 34 See n 21. 35 With the exception of New York; see n 19. From time to time a court will lapse back into the older privacybased analysis; see, eg, Toffoloni v LFP Publishing Group, 572 F 3d 1201 (11th Cir 2009). 36 For thorough discussion of the privacy/publicity issue in the United Kingdom, see Gillian Black, n 2 and Huw Beverley-Smith, n 29. These works provide the background and source for the material that follows. 31

327

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights idiosyncratic results,37 required courts and commentators to seek a conceptual underpinning for an ill-defined legal complex. 15.29 The emergence of the European Convention on Human Rights38 as part of the law of the

UK,39 with the consequent application in the UK of the privacy provisions of Article 8, served to complicate an already muddy situation. The Convention required the UK to come to grips with issues that underlay the exploitation of persona; it became necessary to articulate a conceptual foundation for what was emerging from an earlier consensus of nonrecognition. From an American law perspective, in looking at the current struggle in the UK, there is a strange sense of déjà vu. As a recent UK commentator observed, Courts and legal commentators, . . . struggle to identify and agree on a common legal response to publicity. Confusion ranges from terminology to taxonomy. How should we refer to the practice of buying and selling image or reputation or gossip? Is it image rights, character merchandising, personality rights or publicity rights? How should we analyze the rights or assets in question? Do breaches raise issues of publicity, privacy, breach of confidence, goodwill, property rights, or nothing at all? Should legal development be influenced by concerns for personal dignity and autonomy or economic considerations, or both?40 15.30 In this search for an analogical framework, much effort is expended in trying to determine if

the interest and the right to be protected can be categorized as a property interest.41 This, in turn, necessarily generates a discussion of the nature of property and the nature of persona, all in the cause of finding an appropriate conceptual pigeonhole in which to deposit a developing legal construct. It is submitted however, that, even beyond self-evident considerations of efficiency, such exercise cannot be productive. Little can be gained in a zero sum game between personality and property and much can be lost. 15.31 Judge Jerome Frank chose his words very carefully in Haelan when he referred to his newly

created right of publicity as the law’s recognition of an economic interest, and he specifically avoided labelling it a property right: ‘Whether it be labelled a “property right” is immaterial; for here, as often elsewhere, the tag “property” simply symbolizes the fact that courts enforce a claim which has pecuniary worth.’42 15.32 In short, and as the subsequent development of the right of publicity through the courts and

legislatures in the United States demonstrates, the publicity construct is unique in its recognition of a highly specific interest. While it certainly has attributes akin to related constructs, such as privacy, misappropriation, and the economic bundle under the rubric ‘property’, it nevertheless is distinct, and the recognition of that distinctiveness is essential to what became the most important task in American law with respect to the right of publicity, determining the limits and boundaries of the right.

37

See, eg, Douglas v Hello!, [2006] QB 125; Lyngstad v Anabas Products Ltd, [1977] ESR 62. Convention for the Protection of Human Rights and Fundamental Freedoms, Rome, 4 November 1950. 39 Human Rights Act 1998. 40 Gillian Black, n 2, at 1–2. 41 See, eg, ibid., at 145 (Inalienability and the Property Status of Publicity). 42 Haelan, 202 F 2d at 868. 38

328

D. The Right of Publicity as a Right Appurtenant

D. The Right of Publicity as a Right Appurtenant: Constitutional and Intellectual Boundaries Attenuating Property Rights (1) First Amendment, newsworthiness, and commercial speech In American jurisprudence, the rights of privacy and publicity, as implicating communicative 15.33 torts, clearly invoke First Amendment concerns. One must create appropriate boundaries so that these rights may coexist with the constitutional protections for speech and press. To a large extent these concerns and the appropriate boundaries arising from these concerns have been addressed and effectively dealt with by means of doctrines of newsworthiness and commercial speech. The right of publicity as recognized by statute and common law is fundamentally constrained by the public and constitutional interest in freedom of expression.43 This constraint is part of the very nature of the right, however, as any claim must be based on 15.34 the commercial appropriation of identity; news, information, even entertainment uses, by the very definition of the right,44 are outside its scope. Thus, while using a celebrity as the subject of a book, play, magazine or newspaper articles, usually involves a measure of gain for the author or publisher, such entertainment or newsworthy uses are beyond the reach of the right of publicity.45 The broad newsworthiness shelter 46 that insulates many uses of an individual’s identity from right of privacy claims47 is no less applicable to the right of publicity,48 and has been the means by which the courts have consistently defined the ambit of constitutionally protected dissemination of ideas.49 As the Restatement (Third) of the Law of Unfair Competition makes clear, the right of publicity does not ordinarily extend to the use of a person’s identity in news reporting, commentary, entertainment, or in works of fiction or nonfiction or in advertising that is incidental to such uses.50 In short, despite some judicial indulgence in a kind of deconstructive critique of the right itself,51 the right of publicity, as properly understood, is not inconsistent with newsworthy, entertainment, critical, satirical, or parodic uses. Notwithstanding the occasional commentary viewing the right of publicity with alarm,52 except perhaps at the margins, the right easily coexists with the First Amendment. 43

Restatement (Third) of the Law of Unfair Competition §46, Comment c (1995). As well as direct statutory formulation in many jurisdictions. See J. Thomas McCarthy, The Rights of Publicity and Privacy 2012 edn (Minnesota: West Publishing, Co, 2012). 45 See, eg, New Kids on the Block v News Am Publishing, Inc, 971 F 2d 302 (9th Cir 1992). 46 The newsworthiness limitation is one of constitutional dimension . . . controlled by federal rather than state law. Virgil v Time, Inc, 527 F 2d 1122 (9th Cir 1975), cert. denied, 425 US 998 (1976). See also Sheldon W. Halpern, ‘Rethinking the Right of Privacy: Dignity, Decency and the Law’s Limitations’, (1991) 43 Rutgers L Rev 539. 47 See Sheldon W. Halpern, The Law of Defamation, Privacy, Publicity and Moral Right n 11, 2.5 (newsworthiness may be found in the plaintiff’s status as a public figure or in the legitimate public interest in the subject-matter. However it arises, it confines the right of privacy). See, eg, Freihofer v Hearst Corp, 65 N Y 2d 135 (1985). 48 Halpern, n 11, 3.3(B). 49 See, eg, Hoffman v Capital Cities/ABC, Inc, 255 F 3d 1180 (9th Cir 2001); Stephano v News Group Publications, Inc, 474 N E 2d 580 (N Y 1984). 50 Restatement (Third) of the Law of Unfair Competition § 47 (1995). 51 Cf the rather laboured analysis in Cardtoons, LC v Major League Baseball Players Ass’n, 95 F 3d 959 (10th Cir 1996); cf, C.B.C. Distribution and Marketing, Inc v Major League Baseball Advanced Media, L.P., 505 F 3d 818 (8th Cir 2007). 52 See, eg, Michael Madow, ‘Private Ownership of Public Image: Popular Culture and Publicity Rights’, 81 Cal L Rev 125v (1993); George M. Armstrong Jr, ‘The Reification of Celebrity: Persons as Property’, 51 La L Rev 443 (1991). 44

329

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights Of course, the First Amendment constraint on the rights of privacy and publicity are peculiar to the United States and its constitutional jurisprudence. 15.35 Thus, although Article 10 of the European Convention on Human Rights does recognize

certain interests of free speech and free press, this recognition is conditional and subject to the interests in individual dignity recognized by Article 8; so too, to the extent that the rights are slowly being recognized in the United Kingdom, they are not constrained by any overall constitutional doctrine of newsworthiness. The result is that at present a claim arising from tabloid coverage of a celebrity’s wedding, which would clearly be barred by newsworthiness in the United States irrespective of its theoretical underpinnings, could be maintained in the United Kingdom.53 (2) Associative value and the limitations of an appurtenant right 15.36 In the United States, the right of publicity is bounded not only by a robust application of

First Amendment doctrines of newsworthiness and commercial speech, but by the essence of the right itself. Essentially, as discussed above, while the courts have recognized the economic nature of the right of publicity, they have not treated it simply as a property right. As the courts have made clear, the publicity right is not a right in gross, a right in the thing itself, such as a copyright or patent interest, but is rather a right protecting the economic interest in the associative value of a persona.54 It relates to, it attaches to, something other than itself. This author has suggested elsewhere that, The right of publicity does not reach beyond the interest it is designed to protect, i.e., the associative value, the hard economic commercial value of an individual’s identity, and thus is limited to commercial exploitative uses. It is this exploitative appropriation of a property interest, and not simply a formulaic approach to commercial speech, that precludes First Amendment protection for the appropriator.55 15.37 Thus, a television programme that simply provides information about an athlete’s achieve-

ments would not implicate the right of publicity.56 On the other hand, such implication would arise from a television advertisement that uses that information about an athlete to frame the advertiser’s commercial message; the liability arises not simply from the mere fact of using the athlete’s name, but in doing so in a manner that associates the athlete with the product.57 15.38 When considered properly as an appurtenant, rather than an absolute right, the right of

publicity, protecting the interest in the associative value of persona, can be rather easily understood and bounded, perhaps in ways that are surprisingly at odds with a simple property right. A sophisticated, nuanced approach, predicated on an understanding of the associative, appurtenant nature of the right of publicity can both obviate apparent problems and provide a bright-line definition setting a clearly articulated boundary. 53

Douglas v Hello! [2006] QB 125. At its heart, the value of the right of publicity is associational: McFarland v Miller, 14 F 3d 912, 919 (3rd Cir 1994). 55 Sheldon W. Halpern, Maturation of an Independent Right, n 22, at 868. 56 As the Comments to the Restatement of Unfair Competition put it: ‘The use of a person’s identity primarily for the purpose of communicating information or expressing ideas is not generally actionable as a violation of the person’s right of publicity.’ Restatement (Third) of the Law of Unfair Competition § 47 Comment c (1995). 57 Abdul-Jabbar v General Motors Corp, 85 F 3d 407 (9th Cir 1996). 54

330

D. The Right of Publicity as a Right Appurtenant For example, in Rogers v Grimaldi,58 involving both trademark and right of publicity claims 15.39 arising out of the use of a well-known actress’ name in the title of the motion picture, Fred and Ginger, a story about the travails of an Italian dance team, Judge Newman observed that the use of Ginger Rogers’ name in the title was not an appropriation of her name, or exploitation of the value of her name. Rather, her name was used in an iconic sense, a kind of shorthand in which the phrase Fred and Ginger did not refer so much to the specific people (Fred Astaire and Ginger Rogers) as it did to the form of elegant ballroom dancing that they had come to represent.59 That is, some aspect of a celebrity may transcend his or her own persona and become evoca- 15.40 tive of a more general, if not generic concept involving use of language rather than use of persona. The inappropriateness of the right of publicity in such a situation is self-evident. Although much may be said in favour of categorical rules under appropriate circumstances,60 in dealing with the interface between language and persona, the idea of name is much too flexible to give rise to a categorical rule supplanting analysis.61 As the Court of Appeals for the Seventh Circuit has noted, The scope of a rule is often . . . limited by its rationale. Or, to make the same point differently, one way of going astray in legal analysis is to focus on the semantics of a rule rather than its purpose.62

Such a circumstantial analysis (applied to the image evoked by the American game show 15.41 hostess Vanna White) might well have been used to avoid the controversial result in the Ninth Circuit’s White v Samsung opinion.63 A nuanced analysis of publicity claims would recognize that use of a name or image or other indicia of persona does not per se implicate the right of publicity, that a contextual analysis of the use is necessary in order to determine if there has been an appropriation of the associative value of the persona. That analytic model, rather than a categorical conclusion predicated solely on a property model, provides 58

875 F 2d 994 (2nd Cir 1989). Ibid., at 1001: As Fellini explains in an affidavit, Rogers and Astaire are to him a glamorous and care-free symbol of what American cinema represented during the harsh times which Italy experienced in the 1930s and 1940s. In the film, he contrasts this elegance and class to the gaudiness and banality of contemporary television, which he satirizes. 60 See, eg, Wal-Mart Stores, Inc v Samara Bros, Inc, 529 US 205 (2000) (adopting a categorical rule precluding inherent distinctiveness for product design). 61 Cf Peaceable Planet v Ty Inc, 362 F 3d 986, cert. denied 543 US 869 (7th Cir 2004), involving the name Niles for a toy stuffed camel, in which Judge Posner refused to apply a categorical rule with respect to trademark distinctiveness and names merely because the mark at issue could also serve as a person’s name. 62 Ibid., 362 F 3d at 989–90. 63 White v Samsung Elecs Am, Inc, 971 F 2d 1395, 1396 (9th Cir 1992), cert. denied, 113 S Ct 2443 (1993). The case involved a Samsung advertisement for a videocassette recorder that pictured a robot, dressed in a wig, gown, and jewellery consciously selected to resemble [Vanna] White’s hair and dress. The robot was posed next to a game board which is instantly recognizable as the Wheel of Fortune game show set, in a stance for which White is famous. 971 F 2d at 1396. As this author has noted elsewhere: ‘In this context, it is arguable that the defendants did not so much appropriate Vanna White’s identity as they used it to evoke the subject (ie the Wheel of Fortune game show) with which she has been associated . . . Arguably, it is not Vanna White, but a role she has come to epitomize, that was the subject of the advertisement. One may well claim that for purposes of Wheel of Fortune or a similar game show, Vanna White has become generic, her name and general dressed-up appearance a shorthand way of referring to a type, so that any other woman, similarly dressed and performing a similar act, even if otherwise totally unlike White, might be described as being another ‘Vanna’ . . . The defendants used the White stereotype, but not necessarily to evoke her. The generic defense was rejected by the White majority, but without serious analysis of its specific application to the facts there.’ Sheldon W. Halpern, Maturation of an Independent Right, n 22 at 864–65. 59

331

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights one of the requisite boundaries that allows a robust right of publicity to exist easily with free expression. (3) Merchandising the persona: an absolute property right and the limits of an appurtenant right 15.42 Before the right of publicity emerged from its privacy moorings, and was simply, and errone-

ously, considered the appropriation branch of the right of privacy, it was assumed that, just as with the right of privacy, any trafficking in anyone’s image for commercial purposes gave rise to a claim (within the statutory or common law limitations).64 In the context of the right of privacy, a clearly commercial public dissemination of an individual’s image, without consent, will support a privacy claim by the person pictured.65 The only serious issue in privacy litigation in those circumstances would be whether the otherwise commercial use could be saved by some reasonable tie to newsworthiness.66 Accordingly, in that privacy context, our concern is solely with the public and commercial dissemination of the image and not with its associative value or linkage between the persona and the person disseminating that image. Of course, in that context, there is little trading in the image itself or what we now call merchandising rights. 15.43 On the other hand, such merchandising concerns and trading or trafficking in the image

itself, arise frequently in the context of right of publicity claims. On a superficial, propertybased level, transfer of the privacy model to the sale or merchandising of the celebrity image itself would seem to be axiomatic. Thus, the Supreme Court of Georgia, responding to a certified question from the federal court, held both that the right of publicity was descendible in that state, and that Dr Martin Luther King’s estate had a right of publicity claim against one who sold, without consent, statuettes of Dr King.67 Similarly, it is assumed, where descendibility of publicity rights is recognized, that the estate of Elvis Presley may assert right of publicity claims against those purporting to sell Presley photos.68 15.44 More recently, right of publicity claims were brought against the sale of lithographs and

T-shirts bearing drawings of the images of the Three Stooges69 and serigraphs and lithographs of a painting of the professional golfer, Tiger Woods.70 As discussed further, the courts in these cases assume the applicability of the common law or statutory rights of publicity to the defendants’ use and sale of the images. They recognize not only the economic interest, the value of the image itself, but focus exclusively on that value in the abstract, as a property interest. As a result, the only issue in the litigation was whether the court should construct and apply a complex fair use or first amendment exception to the right. 64

See Titan Sports, Inc v Comics World Corporation, 870 F 2d 85 (2nd Cir 1989). See, eg, Messenger v Gruner + Jahr Printing and Publishing, 94 N Y 2d 436 (2000). 66 Ibid. 67 Martin Luther King, Jr, Center for Social Change, Inc v American Heritage Products, Inc, 250 Ga 135, 296 S E 2d 697 (1982). 68 See, eg, Factors Etc., Inc v Pro Arts, Inc, 579 F 2d 215 (2nd Cir 1978), cert. denied, 440 US 908 (1979) (finding descendibility); Memphis Development Foundation v Factors Etc., Inc, 616 F 2d 956 (6th Cir), cert. denied, 449 US 953 (1980) (refusing to find descendibility under Tennessee law, a determination subsequently questioned by Tennessee courts); Factors Etc., Inc v Pro Arts, Inc, (applying Memphis Development to reverse the descendibility holding in the 2nd Circuit’s earlier ruling). See Halpern, n 11 at 605–17. 69 Comedy III Productions, Inc v Gary Saderup, Inc, 25 Cal 4th 387, 106 Cal Rptr 2d 126, 21 P 3d 797 (2001). 70 ETW Corp v Jireh Publishing, Inc, 332 F 3d 915 (6th Cir 2003). 65

332

D. The Right of Publicity as a Right Appurtenant In the Three Stooges case (Comedy III v Saderup), the California Supreme Court sought to 15.45 resolve a conflict between the right of publicity and the First Amendment and to develop a test that will unerringly distinguish between forms of artistic expression protected by the First Amendment and those that must give way to the right of publicity.71 It proposed borrowing the fair use construct of transformative use from the unrelated United States Supreme Court’s copyright opinion in Campbell v Acuff-Rose Music, Inc.72 The court found the Campbell inquiry into whether a work is transformative to be necessarily at the heart of any judicial attempt to square the right of publicity with the First Amendment,73 When artistic expression takes the form of a literal depiction or imitation of a celebrity for commercial gain directly trespassing on the right of publicity without adding significant expression beyond that trespass, the state law interest in protecting the fruits of artistic labor outweighs the expressive interests of the imitative artist . . . On the other hand, when a work contains significant transformative elements, it is not only especially worthy of First Amendment protection, but it is also less likely to interfere with the economic interest protected by the right of publicity. . . In sum, when an artist is faced with a right of publicity challenge to his or her work, he or she may raise as affirmative defense that the work is protected by the First Amendment inasmuch as it contains significant transformative elements or that the value of the work does not derive primarily from the celebrity’s fame.74

Concluding that the defendant’s drawings, however skilful they might be, were simply 15.46 appropriative of the images without any transformative effects, the court held for the plaintiff, assignee of the Stooges’ publicity rights.75 In ETW, the divided Sixth Circuit panel concluded that the painting at issue ‘has substantial 15.47 informational and creative content which outweighs any adverse effect on ETW’s market and that [the] work does not violate Woods’s right of publicity.’76 The court, expressly adopting the Ninth Circuit’s Comedy III model, holds that the defendant’s image of Tiger Woods in the painting77 it sold was sufficiently transformative, so that Woods’s right of publicity must yield to the First Amendment.78 If one considers the right of publicity simply a subset of property rights, these attempts at a 15.48 constitutional balance would be laudable, however difficult and cumbersome they may be in application and however unpredictable the result in a given case in which the subject-matter

71 Comedy III Productions, Inc v Gary Saderup, Inc, 25 Cal 4th at 403, 106 Cal Rptr 2d at 138–39, 21 P 3d at 807. 72 510 US 569 (1994). 73 Comedy III Productions, Inc v Gary Saderup, Inc, 25 Cal 4th at 404, 106 Cal Rptr 2d at 139–140, 21 P 3d at 808. 74 Ibid., at 405– 407, 106 Cal Rptr.2d at 140–142, 21 P 3d at 808–810. 75 ‘[W]e can discern no significant transformative or creative contribution. His undeniable skill is manifestly subordinated to the overall goal of creating literal, conventional depictions of The Three Stooges so as to exploit their fame’. Ibid., at 408, 106 Cal Rptr 2d at143, 21 P 3d at 811. 76 ETW Corp v Jireh Publishing, Inc, 332 F 3d 915, 937 (6th Cir 2003). 77 As the court describes it: ‘In the foreground of Rush’s painting are three views of Woods in different poses. In the center, he is completing the swing of a golf club, and on each side he is crouching, lining up and/or observing the progress of a putt. To the left of Woods is his caddy, Mike Fluff Cowan, and to his right is his final round partner’s caddy. Behind these figures is the Augusta National Clubhouse. In a blue background behind the clubhouse are likenesses of famous golfers of the past looking down on Woods.’ Ibid., at 918. 78 Ibid., at 938.

333

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights is the bare merchandising of an image. But just as the right of publicity had to be unmoored from its privacy cognate, it must similarly be unmoored from a bare property categorization. I would suggest that the underlying premise in these cases is flawed and that if one considers the essential nature of the right of publicity and the interest it protects, this kind of laboured and, essentially ad hoc, analytic model, is both unnecessarily convoluted and, simply, unnecessary. 15.49 At best the methodology of these cases is needlessly complex and less than helpful in provid-

ing a consistent and predictable set of limits on the right of publicity. Thus, while two members of the ETW panel found the painting transformative and protected, the third vigorously dissented and called for summary judgment for the plaintiff on the right of publicity claim, saying it was ‘difficult to discern any appreciable transformative or creative contribution in the Defendant’s prints so as to entitle them to First Amendment protection.’79 Post hoc determinations of what is transformative are inherently idiosyncratic. 15.50 The tortured exercises of the courts in dealing with the problem of marketing the persona

itself make it abundantly clear that the courts are uncomfortable. The attempt to engraft onto the right of publicity the highly nuanced copyright fair use construct in these circumstances, much as the related application of the copyright first sale doctrine to shelter re-sales of a celebrity image,80 reflects this discomfort. Perhaps more significantly, I would suggest that the discomfort is a recognition that the right of publicity does not really fit here. 15.51 Of course quite often (as can be the case with categorical rules) predictability and consistency

are not necessarily the optimal result. Many areas of intellectual property law must accommodate to uncertainty; living with post-hoc determinations and consequent limited predictability is often the optimal approach to some complex problems.81 But we should choose the path of uncertainty only where there is not a viable and more predictable alternative consistent with the underlying legal principles. It seems to me that with respect to bare merchandising of the persona, recognition that we are not dealing with a simple property right can lead to a simple and predictable and useful alternative predicated on the inherent nature of the right of publicity. 15.52 Briefly, an interest-based approach to the right of publicity predicated on the fact that it

functions not in a vacuum but as a right appurtenant, much like a trademark, whose purpose is to protect the interest in the economic associative value of a well known persona, leads to the conclusion that the right does not itself extend to exploitation of the persona standing alone. As a right appurtenant, rather than an absolute property right, it is invoked only when there is something real to which it is appurtenant. The right arose with recognition that a persona (generally, a well-known person’s persona) could lend value to someone else’s goods or services. The value recognized by the right of publicity is not in the image alone but in its

79

Ibid., at 959 (Clay, J, dissenting). Allison v Vintage Sports Plaques, 136 F 3d 1443 (11th Cir 1998). 81 The copyright construct of fair use is certainly a prime example of that kind of necessary uncertainty; the doctrine of fair use is the most troublesome in the whole law of copyright: Dellar v Samuel Goldwyn, Inc, 104 F 2d 661, 662 (2nd Cir 1939). See Pierre Leval, ‘Toward a Fair Use Standard’, 103 Harv L Rev 1105–07 (1990). Similarly, the courts have had to accommodate to the inherent unpredictability in applying the doctrine of conceptual separability to articles of industrial design. See, eg, Brandir International, Inc v Cascade Pacific Lumber Co, 834 F 2d 1142 (2nd Cir 1987). 80

334

D. The Right of Publicity as a Right Appurtenant association with another’s product.82 The publicity right simply is not implicated absent circumstances in which the persona is associated with another’s product or service.83 Interestingly, in Comedy III, a tentative argument along these lines was broached and, with 15.53 little analysis, essentially not considered. The California right of publicity statute concerned the use of an image ‘on or in products’ or merchandise and the defendant argued that sale of the images of the Stooges on lithographs or t-shirts did not invoke the statutory remedy. Judge Mosk rejected the defence summarily, Saderup’s lithographic prints of The Three Stooges are themselves tangible personal property, consisting of paper and ink, made as products to be sold and displayed on walls like similar graphic art. Saderup’s T-shirts are likewise tangible personal property, consisting of fabric and ink, made as products to be sold and worn on the body like similar garments.84

As this author has suggested elsewhere, the court’s analysis, centring on the existence of ink, 15.54 paper, and fabric, is overly simplistic. What is being sold is the image itself and not something else to which that image might lend value. Assuming that what the buyer wants is the image, then the fact that the image is embodied tangibly in the paper of a lithograph or the fabric of a T-shirt standing alone, cannot implicate an association of the person depicted with the seller. Absent such an association, the basis for the right of publicity disappears; to apply it in these circumstances gives it a far broader property attribute than its history suggests is proper. The situation is analogous to the failed trademark counterfeiting claim at issue in United 15.55 States v Giles.85 The defendant sold patches consisting of trademarked logos that purchasers could affix to products identified with the trademark owner. In this criminal prosecution for sale of counterfeit goods (eg, a patch bearing a logo), the court held that the criminal statutory provision relating to counterfeit goods does not forbid the mere act of trafficking in counterfeit labels that are unconnected to any goods.86 The court concluded that, at least for purposes of the criminal statute, the logo itself (as embodied in the patch) was not ‘goods’.87 At the heart of the separation of publicity rights from privacy rights, the construct that drove 15.56 the Haelan opinion, and that distinguishes this economic right from its analogues, is the imparting of the economic value of the persona to something else. If property rights are to be recognized in the image alone, apart from whatever rights may arise as a matter of a privacy

82 At its heart, the value of the right of publicity is associational: McFarland v Miller, 14 F 3d 912, 919 (3rd Cir 1994). 83 Cf Allison v Vintage Sports Plaques, 136 F 3d 1443, 1450–51 (11th Cir 1998): ‘We conclude that the district court properly determined that, as a matter of law, Vintage merely resells cards that it lawfully obtains . . .We think it unlikely that anyone would purchase one of Vintage’s plaques for any reason other than to obtain a display of the mounted cards themselves. Although we recognize that the plaques that include a clock pose a closer case, we conclude that it is unlikely that anyone would purchase one of the clock plaques simply to obtain a means of telling time, believing the clock to be, for example, a Hershisher Clock or an Allison Clock.’ 84 Comedy III Productions, Inc v Gary Saderup, Inc, 25 Cal 4th 387, 394–395, 106 Cal Rptr 2d 126, 131–32, 21 P 3d 797, 801–02 (2001). 85 213 F 3d 1247 (10th Cir 2000). 86 Ibid., at 1251. 87 Mr Giles’ conduct did not confuse any consumer about the origin of goods because there were no goods involved in the transaction: Ibid., at 1252.

335

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights interest,88 then the basis for such rights must lie in an interest different from the associational interest that supports the right of publicity. 15.57 Conceivably, such a right in the image per se could be so recognized (in addition to or apart

from any statutory or common law privacy right) and the purported First Amendment accommodation achieved through the copyright vehicle of transformative use; but that is a matter apart from the right of publicity.

E. Trademark Rights as Rights Appurtenant: Property Rights in the Mark Itself 15.58 There is a certain conceptual commonality between the right of publicity and trademark

rights. It is not merely fortuitous that in recent years, virtually all high profile right of publicity claims in the United States have been coupled with trademark infringement claims,89 generally as unregistered marks pursuant to Section 43(a) of the Lanham Act.90 The commonality derives from the fact that, much like publicity rights, trademark rights are rights appurtenant, rather than self-supporting intellectual property rights. Indeed, there are real conceptual problems in having the umbrella of intellectual property shelter trademark along with copyright and patent rights. As this author has suggested elsewhere, [T]he principal function of classic trademark law had been to protect the consuming public from being defrauded by one person’s use of another’s trademark. Thus the central issue is the likelihood that the consuming public will be confused as to the source or origin of the goods or services to which the trademark related. It has been argued that a more accurate, historical justification for trademark law focuses on the producer rather than the consumer of the goods, and trademark law is directed toward preventing the diversion of trade by means of unauthorized use of one producer’s trademark by a competing producer. Thus, trademark law is a subset of the broader law of unfair competition. In either case, the relationship of trademark law to the fundamental structure of intellectual property law is, at best, tenuous and incidental. Neither of these teleological constructs involves matters of originality, creativity, or novelty, the indicia of intellectual activity underlying intellectual property. Only at the simplest level of abstraction, the intangible nature of trademark rights, do we find commonality supporting the joinder of copyright, patent, and trademark.91 15.59 Trademark is a peculiar hybrid, possessing its own quantum-like instability, with its own

uncertainty principle. It sometimes exhibits the independent property-like aspects of its intellectual property siblings and at other times reverts to its traditional persona of a device to protect the public from fraud and unfair competition. In its classic form, the trademark

88 We do not need to resolve here the question whether a celebrity, someone who has chosen to be exposed regularly to the public, can assert traditional privacy rights. Cf Bi-Rite Enterprises, Inc v Button Master, 555 F. Supp 1188, 1198 (SDNY 1983) (‘as public figures, with their likenesses, names and images already in the public domain, [plaintiffs] have waived their rights to claim intrusions into their common law privacy rights’) and Ann-Margret v High Society Magazine, Inc, 498 F Supp 401, 404 (SDNY 1980) (‘It is clear that a public figure does not, simply by virtue of his or her notoriety, lose all rights to privacy’). 89 See, eg, ETW Corp v Jireh Publishing, Inc, 332 F 3d 915, 937 (6th Cir 2003); White v Samsung Elecs Am, Inc, 971 F 2d 1395, 1396 (9th Cir 1992), cert. denied, 113 S Ct 2443 (1993). 90 Lanham Act, Ch 540, 60 Stat 427 (1946) (codified as amended at 15 USC §§1051-1129 (2006)). 91 See Sheldon W. Halpern, ‘Trafficking in Trademarks: Setting Boundaries for the Uneasy Relationship Between Property Rights and Trademark and Publicity Rights’, (2009) 58 DePaul Law Review 1013 at 1014– 15 (2009) (footnotes omitted) (‘Trafficking’).

336

E. Trademark Rights as Rights Appurtenant: Property Rights in the Mark Itself right, much like the right of publicity, is a right appurtenant, rather than a free-standing property right.92 A United States federal trademark infringement claim, whether the mark be registered or 15.60 unregistered, required (and still requires) a demonstration that the mark was used in such a manner as to create a likelihood of confusion as to the source, origin, or sponsorship of goods or services. A significant expansion in the scope and breadth of trademark law throughout the latter part of the twentieth century,93 together with the proliferation of unanticipated forms of communication, advertising, and marketing, have eroded the simplicity of the fundamental trademark model. As a result, ‘modern trademark law differs fundamentally from its traditional counterpart in its understanding of what a trademark does and how it adds value.’94 Nevertheless, in a series of United States Supreme Court opinions starting in 2000 the Court 15.61 sought to adumbrate the boundaries of trademark law and refocus it on its original mission.95 However complex the context in which trademark law now functions, the basic nature of an infringement claim still requires that there be some kind of use96 of the mark by another and that that use not only exploits the mark, but is likely to create a likelihood of confusion as to the source, origin, or sponsorship of goods or services. Trademarks, unlike copyright and patent, have no inherent function outside of their marketplace.97 This appurtenant nature of the right has not changed. The appurtenant nature of trademark rights has been attenuated by the concept of trademark 15.62 dilution, a separate right of certain trademark owners whose enforcement is not conditioned on some degree of consumer confusion. While outside the purview of this chapter, which relates to the paradigmatic trademark infringement situation, suffice it to say that the very basis of trademark dilution, as a legal construct, is separate and distinct from the basic postulates of trademark law and requires a separate enforcement mechanism, at both the state and federal levels in the United States.98 In the sense that a trademark claim requires more than the simple allegation of an uncon- 15.63 sented use of the mark, its appurtenant nature is a cognate of the appurtenant nature of publicity rights. The cognate, however, is not an exact translation. For a trademark claim to 92 Hanover Star Milling Co v Metcalf, 240 US 403, 413-14 (1916); see Mark P. McKenna, ‘The Normative Foundations of Trademark Law’, (2007) 82 Notre Dame L Rev 1839, 1885: ‘Courts traditionally saw a trademark as little more than a vehicle through which consumers could match products with their producers.’ Ibid., at 1843. 93 See Sheldon W. Halpern, ‘A High Likelihood of Confusion: Walmart, TrafFix, Moseley, and Dastar. The Supreme Court’s New Trademark Jurisprudence’, (2005) 61 NYU Annual Survey of American Law 237 (‘Likelihood of Confusion’). 94 McKenna, n 92, at 1843. 95 Halpern, Likelihood of Confusion, n 93. 96 See the opinion, and accompanying appendix, of Judge Pierre Leval, in Rescuecom Corp v Google, Inc, 562 F 3d 123 (2nd Cir 2009) for a discussion of the complexity of the question of trademark use. 97 See, eg, Ty Inc v Perryman, 306 F 3d 509, 510 (7th Cir 2002) (Posner, J): ‘The fundamental purpose of a trademark is to reduce consumer search costs by providing a concise and unequivocal identifier of the particular source of particular goods. The consumer who knows at a glance whose brand he is being asked to buy knows whom to hold responsible if the brand disappoints and whose product to buy in the future if the brand pleases. This in turn gives producers an incentive to maintain high and uniform quality, since otherwise the investment in their trademark may be lost as customers turn away in disappointment from the brand.’ 98 Federal Trademark Dilution Act, Lanham Act § 1125(c) (2000) (amended 2006).

337

Chapter 15: Publicity Rights, Trademark Rights, and Property Rights succeed, there must be some demonstration of the likelihood of consumer confusion, whereas the publicity claim requires a demonstration of appropriation of the economic, associative value. True, both exist in the context of some kind of commercial use, but their underpinnings differ. For example, a clear, unequivocal disclaimer of affiliation of any kind can generally be used as a defence to an infringement claim, whereas such a disclaimer in the publicity context, which is not dependent upon endorsement, could well serve to exacerbate the appropriation. 15.64 The similarity, and the related congruity of argument, does apply in connection with

merchandising rights to the trademark itself. That is, there is an analogy between the bare offering for sale of a celebrity’s image and the bare offering for sale of a trademark itself, as in the sale of logos or labels or other items with respect to which what is being sold is simply the mark. Thus, the question whether sale of the mark as such, absent evidence of a likelihood of consumer confusion as to source, origin, or sponsorship, can be actionable under trademark law requires direct confrontation of the limits of a ‘property’ approach to trademark. That the US courts have been inconsistent,99 is not very surprising in the context of extremely large and widespread merchandising efforts that focus on the sale of tags, patches, T-shirts, baseball caps, to those seeking to exhibit their loyalty to a sports team or an institution. 15.65 Although the market produces the inconsistencies, understanding of the nature of trade-

mark rights leads to simplification. As the court in Giles v US100 put it, a label or patch displaying a trademark logo is itself not goods. That determination is consistent with the essential nature of trademark rights as distinct from self-supporting property rights and would seem to be unassailable. Nevertheless, the public perception of a stand-alone merchandising right appears unchanged and the large financial engine for which it serves as the base charges forward. ‘[T]rademark owners, competitors, and perhaps even consumers act as though the merchandising theory is a fait accompli’.101 15.66 Much as with the question of publicity rights in the merchandising of an image itself, there

is a legitimate policy question whether property-like rights should be recognized for a trademark, standing alone. However, if the essential nature of trademark is to be maintained, this policy debate must take place outside the boundaries of trademark law itself.

F. Conclusion: A Functional Balance 15.67 In recent years, the United States Supreme Court has been very much concerned with

boundaries and balance in the area of intellectual property.102 It has sought to constrain and contain rights in order to preserve a balance created by differing constitutional grants and limitations. Consistent with the Supreme Court’s strong admonition to restore and recognize the balance among the different intellectual property constructs, is the well-established proposition that trademark rights are essentially appurtenant, conditional rights, rather than self-sustaining property rights. That leads to the conclusion that trademark law cannot be the

99

See Halpern, Trafficking, n 91. 213 F 3d 1247 (10th Cir 2000). 101 Stacey L. Dogan and Mark A. Lemley, ‘The Merchandising Right: Fragile Theory or Fait Accompli?’, (2005) 54 Emory L J 461, 506. 102 See Sheldon W. Halpern, Likelihood of Confusion, n 93. 100

338

G. Summary vehicle for enforcing claims arising out of the merchandising of the mark itself, absent clear evidence of real (rather than spurious) consumer confusion as to source, origin, or sponsorship of goods or services.103 In the same vein, the right of publicity, if properly understood and bounded, similarly is an appurtenant right, rather than an absolute exclusionary property right in a name or image; that recognition accordingly precludes a publicity claim based solely on exploitation of the image itself without association with the user of the image. Focus on the fundamental nature of the underlying legal constructs of trademark law and of the cognate right of publicity allows application of a conceptual occam’s razor, a simplification that sets the proper boundaries and balance.104 Editors’ note

G. Summary • Right of publicity grants a person protection from the unauthorized commercial appro- 15.68 priation of his or persona. The source of the right of publicity under US law is state common-law and statutory law. • Right of publicity is a right separate and apart from a right of privacy. • Right of publicity is viewed as an economic right in an individual persona, based on the perceived commercial value of a person. It protects the economic interest in the associative value of a persona to something else rather than a right en gros in the persona itself. • Because right of privacy is a personal, subjective right such right may not be licensed or assigned, as opposed to simply being the subject of a waiver. Right of publicity, being a commercial right, may, under the law of states that recognize the right, unequivocally be licensed or assigned. • Right of publicity is similar to a trademark right in that each is a right appurtenant to something else. However, for a trademark to succeed, there must be a showing of likelihood of confusion, while for a claim of misappropriation of a right of publicity, there must be an unauthorized taking of the economic, associative value of the persona. • A disclaimer of affiliation is a recognized defence to a trademark infringement action, while a disclaimer in a publicity context will likely have the opposite effect, namely strengthening a claim for misappropriation.

103 ‘The zeal to protect the full value of marks, and the feelings and economic interests that fuel it, . . . cannot negate the fact that unfair competition law clearly requires confusion as to the source of goods before it will protect against the unauthorized use of a mark.’ Bi-Rite Enterprises, Inc v Button Master, 555 F Supp 1188, 1194 (SDNY 1983). See Sheldon W. Halpern, Trafficking, n 91. 104 Ibid.

339

This page intentionally left blank

16 THE RELATIONSHIP BETWEEN TRADEMARK RIGHTS AND UNFAIR COMPETITION LAW Axel Nordemann, Boehmert & Boehmert and Tara Mooney Aaron, Aaron & Sanders Law PLLC

A. Hypothetical B. Introduction C. Legal Background (1) European Union and Germany (2) United States

D. Slavish Imitations under Unfair Competition Law and Trademark Law (1) European Union and Germany (2) United States

16.01 16.02 16.05 16.05 16.07

E. Consumer Deception by Creating Confusing Similarity between Trademarks and/or Products under Unfair Competition Law and Trademark Law 16.23 (1) European Union and Germany (2) United States

F. Comparative Advertising 16.10 16.10 16.17

(1) European Union and Germany (2) United States

G. Discussion and Summary

16.24 16.37 16.41 16.41 16.48 16.56

A. Hypothetical You are a trademark lawyer whose client is a designer and manufacturer of a line of infant and 16.01 children’s clothing sold under the name ‘BABYCAKES’. The clothing is appliquéd with designs of confections, and sold in packages shaped like birthday cakes and cupcakes. You have registered for the client the name BABYCAKES as a word mark. You also registered the cake design as a three-dimensional trademark, or trade dress mark, years ago. You will have to review the file to confirm, but you believe that there is a possibility that this trade dress mark was cancelled. In the ensuing years, though, the clothing line has become wildly popular, and as sure as the sun rises in the east, knock-offs have begun to appear on the market. The first knock-off appears under the name SWEET THINGS but is sold in confectioner packaging that is a clear imitation of the BABYCAKES packaging. Your client returns to your office even more distressed when a second more blatant knock-off appears, this one looking identical to her packaging and also being sold under the name BABYCAKES. As the clothing line begins to gain attention in parenting magazines across the United States and Europe, yet another competitor enters the market. This third one, she tells you, is called ICE CREAM and sells clothing in bags decorated with ice cream scoops; neither the mark nor the packaging is substantially similar to your client’s, but the competitor is advertising that its products are less expensive and of better quality than the BABYCAKES line. Finally, exasperated, 341

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law your client tells you that a US company has begun manufacturing cupcake-shaped ashtrays and smoking paraphernalia painted with pictures of confections and other snacks, sold under the name BABY BAKES with the tag line, ‘Your baby will love this!’ Have BABYCAKE’s trademark rights been infringed? What of the possible cancellation of the trade dress registration? Has the advertising mentioning the company been unfair? Has her mark been diluted by the use of a similar mark in connection with an (arguably) objectionable but totally unrelated product? And if all of these knock-offs had been the product of a single competitor, would these actions fall under a single theory of unfair competition, or would there be separate and distinct claims to be made?1

B. Introduction 16.02 In both Europe and the United States, laws against unfair competition are meant to ensure

that the competition between market participants is conducted in a proper fashion and that the rules of fairness are observed. Unfair competition law broadly covers wrongdoings that cause economic injury to a business. In Europe, unfair competition law, recognizing that commercial enterprises should be fundamentally free to imitate,2 largely stands independent of trademark law and as a result, certain difficulties arise at the intersection of the two. In the United States, trademark law is to a certain extent one prong of the body of unfair competition law. In both territories, however, trademark law addresses one of the primary concerns of unfair competition law, namely, that consumers decisions should not be influenced and skewed by unfair methods of marketing.3 16.03 Numerous situations arise where trademark infringements and unfair competitive practices

coincide; we will examine the following three in this chapter: • The form of the good or the form of the packaging can be registered as a three-dimensional trademark or a trade dress, or such a previously existing registration can be cancelled; if the form of the good or packaging is ‘slavishly copied’ by third parties (or if there is confusing similarity between the junior and senior user’s goods or packaging), the question arises as to whether the trademark owner can assert claims of unfair competition either in addition to his trademark infringement claims or after the cancellation of his three-dimensional or trade dress marks. • The mark and/or a product’s trade dress are imitated to the extent that the consumer mistakes product B for the original product A; such cases may constitute not only trademark infringement, but false or misleading advertising as well. • Comparative advertising requires the specific mention of a mark; if the limit of what is permitted as comparative advertising is exceeded, this can constitute both a trademark 1 Hypothetical loosely based on the facts of the United States cases of Wal-Mart Stores, Inc v Samara Brothers, Inc, 529 US 205 (2000) and Louis Vuitton Malletier v Haute Diggity Dog, LLC, 507 F 3d 252 (4th Cir 2002). 2 Cf ICON, BGH, GRUR (2008), 1115, 1118, para 32; Imitationswerbung, BGH, GRUR (2008), 628, 631, para 25; Handtaschen, BGH, GRUR (2007), 795, 799, para 51; Götting in Fezer, Lauterkeitsrecht, Kommentar, 2nd edn (Munich: CH Beck, 2010), § 4 marg. no. 9.2b and 9.3; Köhler in Köhler,Bornkamm, Gesetz gegen den unlauteren Wettbewerb UWG, 29th edn (Munich: CH Beck, 2011) § 4 UWG marg. no. 9.3; Ohly in Piper, Ohly, Sosnitza, UWG Gesetz gegen den unlauteren Wettbewerb, Kommentar, 5th edn (Munich: CH Beck, 2010) § 4.9 marg no 2; Begr. RegE on § 4 no 9, BT-Printed Paper 15/1487, 18. 3 Götting in Götting, Nordemann, UWG, Kommentar, 1st edn (Berlin: Nomos, 2010) Introduction marg. no. 2.

342

C. Legal Background infringement as well as false or misleading advertising. And what will happen if the original product is parodied or made to look ridiculous? In the following, the above will be analysed under European law, with specific examples 16.04 from German law, and under the laws of the United States. Attention will be drawn to the differences between the US and the European or German approach.

C. Legal Background (1) European Union and Germany Trademark law in the European Community has largely been harmonized through the Trade 16.05 Marks Directive.4 Through the Community Trade Mark,5 there exists a uniform trademark right across the entire Community such that a Community Trade Mark (CTM) has equal effect in relation to the entire territory of the Community, ie, it can be registered or transferred, be surrendered or be the subject of a decision revoking the rights of the proprietor or declared invalid only in respect of the whole Community. Furthermore, its use shall not be prohibited only except for the entire Community (Art 1 para 2 Community Trade Mark Regulation (CTMR)). It should be noted, however, that only the law pertaining to registered marks has been harmonized, not the whole law governing commercial signs. German trademark law fills in some of the gaps left in harmonization and also protects, in the non-harmonized area, non-registered marks that have acquired a secondary meaning in relevant trade circles (Sec. 4, No. 2 German Trade Mark Act, MarkenG), notorious trademarks (Sec. 4, No. 3 MarkenG), commercial signs such as company names and work titles (Sec. 5 MarkenG), as well as geographical indications (Sec. 126 MarkenG). The law against unfair competition has been less harmonized in the European Union than 16.06 has trademark law, but certain Directives do exist, namely the Directive on Misleading and Comparative Advertising6 and the Directive on Unfair Commercial Practices (the UCP Directive).7 Both Directives speak to the relationship between trademark law and competition law: comparative advertising usually cannot avoid mentioning the competitor’s mark, hence the Directive necessarily assumes a link to trademark law. The UCP Directive, which constitutes a complete harmonization of regulations on unfair business-to-consumer commercial practices,8 contains, in Art 6, para 2(a) a provision which is formulated similarly to a prohibition claim under trademark law and under which a commercial practice is considered misleading if, taking into account all its features and the facts and circumstances, it causes or is likely to cause the average consumer to make a transactional decision that he would not have taken absent confusing two products or two trademarks with each other. Furthermore, several of the European Union’s member states’ legislation against unfair 4 First Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trademarks in the version of 22 October 2008 as Directive 2008/95/EC. 5 Regulation (EC) No 40/94 of the Council of 20 December 1993 on the Community Trade Mark, newly encoded through the Regulation No 207/2009 of 24 March 2009. 6 Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning Misleading and Comparative Advertising. 7 Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning Unfair Business-to-Consumer Commercial Practices in the Internal Market. 8 ECJ, Judgment of 14 January 2010 in C-304/08, Zentrale zur Bekämpfung unlauteren Wettbewerbs v Plus Warenhandelsgesellschaft mbH, para 41(Plus Warenhandelsgesellschaft).

343

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law competition also include provisions which pertain to the slavish imitation of products; these provisions also to a certain degree overlap with trademark law in their scope of application. For example, under Sec. 4, No. 9 of the German Act Against Unfair Competition (UWG), someone is considered to have acted unfairly if he offers goods or services which are imitations of the goods or services of a competitor and if he thereby causes avoidable deception of consumers as to the respective commercial origin of such goods or services unreasonably exploits or impairs the reputation of the imitated goods or services or if he has dishonestly obtained the knowledge or documents required to produce the imitations. (2) United States 16.07 The relationship between the various Directives relating to trademark and unfair competition

law that govern the whole of the European Community and laws of the Member States of the European Union is somewhat parallel to the relationship between US federal trademark law and the laws of the states, although the specific provisions may reside under different jurisdictions. The Lanham Act, at 15 USC §1001 et seq is the source of the federal right to a nationwide trademark right and sets out the procedure for the registration of such marks. The Lanham Act is largely a codification of common law trademark rights but includes also the registration scheme that is the purview of the US Patent and Trademark Office and the protections against ‘unfair competition’ that reside in Section 43(a).9 Section 43(a) grants some measure of protection against unfair competition by providing rights against infringement to owners of non-registered marks that are substantially similar to those granted to registrants under Section 32.10 Section 43(a) prohibits the use of ‘any word, term, name, symbol, or device, or any combination thereto’ (registered or not) in a manner that is likely to cause confusion. It also prohibits false advertising defined as the misrepresentation of ‘the nature, characteristics, qualities or geographic origin of [the advertiser’s] or another person’s goods, services, or commercial activities.’ A claim for trade dress infringement (related to the concept of ‘slavish imitation’ under EU law) may also be brought under Section 43(a) of the Lanham Act. To this extent, unfair competition law is codified in the federal statutes under trademark law, a curious outcome when one considers that protection of trademarks is but one prong of the law against unfair competition. 16.08 Section 43(a) of the Lanham Trademark Act is not without limitations, however; claims

under this provision are often brought in conjunction with a claim of unfair competition under the relevant state laws which are often more expansive.11 16.09 To the extent that the Lanham Act covers both traditional infringement claims relating to

registered trademarks, as well as claims of unfairly using a third party’s unregistered mark or symbol or engaging in false advertising, it is clear that Congress has recognized that trademark and unfair competition laws are inextricably linked.

9

15USC §1125 (2010). 15USC §1114 (2010). 11 See, eg, California Business and Professional Code §17200–17209, defining ‘unfair competition’ as ‘any unlawful, unfair or fraudulent business act or practice [or] unfair, deceptive, untrue or misleading advertising’. 10

344

D. Slavish Imitations under Unfair Competition Law and Trademark Law

D. Slavish Imitations under Unfair Competition Law and Trademark Law (1) European Union and Germany As already explained, unfair competition law has only been partly harmonized in the 16.10 European Union. There as yet does not exist any harmonized legislation for the so-called supplementary industrial property protection, commonly referred to as protection against slavish imitation. In order to examine the relationship between trademark law and competition law as it relates to slavish imitation, we must look at a regulation in the German Act Against Unfair Competition (UWG). (a) Overview The relevant provision can be found in Sec. 4 No. 9 UWG which contains the following 16.11 requirements for an offence: 1. The original product must have a characteristic quality on the market, that is to say display something special which benefits the imitated party; characteristic quality is said to exist if the specific embodiment or individual characteristics of a product are suitable for indicating commercial origin or special features in the course of trade;12 2. An imitation must have occurred; 3. There must be special unfairness criteria which show that the imitation is unfair, namely either (a) an avoidable deception of the purchaser as to the commercial origin; or (b) an unreasonable exploitation or impairment of the reputation of the imitated goods or services; or (c) dishonestly obtained knowledge or documents required for the imitation. 4. Finally, an overall evaluation must always be undertaken as the degree of imitation and the intensity of the special unfairness criteria are interlinked: the greater the degree of imitation the less distinct the special unfairness criteria have to be and vice versa.13 The language of Sec. 4 No. 9 UWG thus echoes the prohibitions against likelihood of confu- 16.12 sion in the harmonized trademark law: the three characteristics, ‘imitation’, ‘characteristic quality on the market’, and ‘special unfairness criteria’ interact with one another just like the requirements for assessing confusing similarity: ‘distinctiveness,’ ‘identity or similarity of signs,’ and ‘identity or similarity of goods or services’ stipulated in Art 8, para 1(b) and Art 9, para 1(b) CTMR as well as Sec. 14 Par. 2 No. 2 of the German Trade Mark Act (MarkenG).14 By the same token, a higher degree of imitation and the presence of the special unfairness criteria may compensate for a weaker evidentiary showing of a characteristic quality on the 12 See, eg, Modulgerüst II, BGH, GRUR (2010), 536, 540, para 48; Oracle, BGH, GRUR (2010), 343, 346, para 40; LIKEaBIKE, BGH, GRUR (2010), 80, 83, paras 34 et seq. 13 Cf from current jurisprudence only Modulgerüst II, BGH, GRUR (2010), 536, 540, para 48; LIKEaBIKE, BGH, GRUR (2010), 80, 82, para 21; Gebäckpresse, BGH, GRUR (2009), 79, 82, para 27; Rillenkoffer, BGH, GRUR (2008), 793, 795, para 27; Gartenliege, BGH, GRUR (2007), 984, 985, para 14; Stufenleitern, BGH, GRUR (2007), 339, 342, para 24. 14 On the interrelation in trademark law cf: AIDA v AIDU, BGH, GRUR (2010), 235, 235, para 15 et seq; METROBUS, BGH, GRUR (2009), 484, 486, para 23; INTERCONNECT v T-InterConnect, BGH, GRUR (2008), 258, 260, para 20; Augsburger Puppenkiste, BGH, GRUR (2009), 772, 776, para 51; weg.de, OLG Köln, MarkenR (2010), 190 (LS).

345

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law market, and vice versa.15 Moreover, just as an absolute limit for dissimilarity16 exists in trademark law, the supplementary industrial property protection also ceases to apply if one of the three elements of the infringement ‘imitation’, ‘characteristic quality on the market’, or ‘special unfairness criteria’ is not fulfilled; as in the scope of the assessment of a likelihood of confusion under trademark law, the individual elements of the infringement are necessarily cumulative.17 (b) Relationship to trademark law 16.13 Trademark law is a lex specialis to the German UWG, meaning the former takes precedence

over the latter. In addition, the statutory assessments cover the same scope as those of the supplementary industrial property protection so that the German MarkenG almost completely displaces the supplementary industrial property protection;18 Sec 4 No. 9 UWG is only additionally applicable in cases where trademark protection fails.19 This becomes especially clear in the area of avoidable deception as to origin under Sec. 4 No. 9, a. UWG; the term ‘likelihood of confusion’ under Sec. 14 Par. 2 No. 2 MarkenG supersedes all assessments, including those necessary for determining whether an average consumer would confuse the origin of one product with that of another.20 The same displacement occurs with respect to the protection of the reputation of the mark. Sec. 14 Par. 2 No. 3 MarkenG supersedes the exploitation of the reputation under Sec. 4 No. 9, b UWG. The supplementary industrial property protection can be claimed in a trademark case only if, for instance, the deception as to origin is created by the combination of the imitated mark and the trade dress or in cases of dishonest obtaining of knowledge as per Sec. 4 No. 9, c UWG. There also exists a certain degree of overlap, however, in the area of absolute grounds for refusal with respect to bad faith applications as per Sec. 8, Par. 2 No. 10 MarkenG, and Art 52 (1)(b) CTMR respectively. 16.14 The German Federal Court of Justice (BGH) has clarified on several occasions, in decisions

pertaining to supplementary industrial property protection, that the state of the art must remain free to use.21 This complies with the legal principle applied by the European Court of Justice (ECJ) in evaluating the protectability of three-dimensional marks in the scope of Art 3 para 1(e) Trade Marks Directive—corresponding to Sec.3 Par. 2 MarkenG—which should prevent trademark protection from essentially conferring a monopoly for technical solutions or usage requirements of a good.22 The German Federal Court of Justice also stresses that the company using a technical solution may not be forced to risk trying a different technical solution if the technical solution adopted is part of the free state of the art;23 this 15 Cf eg Gebäckpresse, BGH, GRUR (2009), 79, 82, para 27; Rillenkoffer, BGH, GRUR (2008), 793, 795, para 27. 16 Cf for example, ECJ, Judgement of 18 December 2008 in the case no. C-16/06P, Les Editions Albert Rene SARL v office for Harmonization in the internal Market, para 44 (OBELIX/MOBILIX). 17 Cf A. Nordemann in Götting, Nordemann, see n 3, § 4 marg. no. 9.30. 18 Cf Gewinnfahrzeug mit Fremdemblem, BGH, GRUR (2006), 329, 332, para 36; Aluminiumräder, BGH, GRUR (2005), 163, 165; Köhler in Köhler, Bornkamm, loc. cit. (FN 2), § 4 marg. no. 9.9 et seq with case grouping on the extent of the priority of trademark law. 19 Cf MAC Dog, BGH, GRUR (1999), 161, 162; Wunderbaum, BGH, GRUR (1998), 935, 936. 20 Cf Abschlussstück, BGH, GRUR (2003), 332, 336. 21 Cf Bremszangen, BGH, GRUR (2002), 820, 822; Noppenbahnen, BGH, GRUR (2002), 275, 276 et seq; Laubhefter, BGH, GRUR (2002), 86, 90. 22 ECJ, Judgment of 18 June 2002 in the case no C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, paras 78 et seq (Philips); ECJ, Judgment of 11 June 2009 in case no C-542/07, Imagination Technologies Ltdv. Office for Harmonization in the Internal Market, para 34 (Imagination Technologies v HABM). 23 Laubhefter, BGH, GRUR (2002), 86, 90.

346

D. Slavish Imitations under Unfair Competition Law and Trademark Law corresponds to the jurisprudence of the ECJ on the protection of three-dimensional marks according to which a sign consisting of a technical form may also be excluded from registration even if the technical effect in question may be achieved through other technical forms.24 The ECJ decided accordingly that a company which has developed a technical solution 16.15 cannot be protected against competitors who bring imitations of the form of the goods and the embodiment of exactly the same solution onto the market simply through the registration of a three-dimensional mark having the same form and thus the conferring of a monopoly, when it held that the standard red 2x4 Lego brick was to be cancelled as a three-dimensional mark.25 Nevertheless, the ECJ also noted in the same context that such an imitation of the form of the goods and the embodiment of precisely the same solution may be examined in the light of the rules on unfair competition;26 the ECJ left it to the laws of the respective member states as to whether in such cases an act of unfair competition has been committed. With respect to the imitation of the classic Lego brick itself, that is the offer of building blocks compatible with Lego, several courts of European Union member states had already clarified, however, prior to the decision of the ECJ, that the imitation of Lego blocks does not in itself constitute an unfair business practice.27 The ECJ had to deal with a wholly different question with respect to the golden chocolate 16.16 Easter bunny of the company Lindt. Lindt registered the Golden Easter Bunny as a threedimensional Community Trade Mark in order to obtain additional protection against slavish imitation by competitors, but only after the imitation was first marketed. It is important to know, in this context, that there is no prior use right in European trademark law, ie, whoever merely uses a trade dress of a product without holding a right conferring priority such as a registered design or a copyright has to yield to a younger three-dimensional Community Trade Mark unless the trademark proprietor has acted in bad faith within the meaning of Art 52 (1)(b) CTMR. The ECJ decided that this type of bad faith act did not apply in the Golden Easter Bunny case, finding that the trademark proprietor was pursuing a justifiable aim through the registration, namely better protection against slavish imitation.28 (2) United States The concept that exists in the United States that is most relevant to the idea of ‘slavish imita- 16.17 tion’ or the copying of a characteristic of a product itself rather than the mark associated with the product, is that of trade dress infringement. Trade dress is an idea that is considerably more deeply embedded in US federal trademark law than its counterpart is in EU Directives. Rather than being the subject of a separate statutory scheme, the trade dress of a product design or product packaging has been held to constitute ‘a ‘symbol’ or ‘device’ within the

24 ECJ, Judgment of 18 June 2002 in the case no C-299/99, Koninklijke Philips Electronics NV v Remington Consumer Products Ltd, para 83 (Philips ECJ). 25 ECJ, Judgment of 14 September 2010 in the case no C-48/09 P, Lego Juris A/S v HABM and Mega Brands Inc, para 61(Red Lego brick). 26 Ibid. 27 Germany: Bundesgerichtshof, Judgment of 2 December 2004; Italy: Corte di Cassazione, Judgment of 9 January 2008; France: Court de Cassation, Judgment of 18 October 2000; Holland: Hoge Raad, Judgment of 27 November 2009; Spain: Tribunal Supremo, Judgment of 17 July 2007. 28 ECJ, Judgment of 11 July 2009 in the case no C-529/07, Chocoladenfabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, paras 47–48 (Golden Easter Bunny).

347

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law meaning of Section 2 of the Trademark Act, 15 USC §1052.29 Trade dress as a category of marks can include not only the packaging of a product but the design of the product itself.30 Trade dress marks are registrable on the Principal Register in the same manner as other marks, and unregistered trade dress marks are specifically named for protection under Section 43(a) of the Lanham Act. Finally, the standard for infringement of a trade dress mark is the same, except as explained further, for registered and unregistered trade dress marks as for more traditional trademarks and service marks; distinctive marks are protected from likelihood of confusion among consumers as to the source or association of the goods or services provided under the mark.31 16.18 However, just as in Europe, the law in the United States will not allow a manufacturer to take

useful features of a product out of the hands of its competitors merely by wielding a trademark.32 To this end, the Lanham Act prevents the registration of functional material under no fewer than five provisions: 1. Section 2(e)(5) of the Trademark Act, 15USC §1052(e) (5), prohibits registration on the Principal Register of ‘matter that, as a whole, is functional’. 2. Section 2(f ) of the Act, 15 USC §1052(f ), provides that, matter that as a whole, is functional may not be registered even on a showing that it has become distinctive. 3. Section 23(c) of the Act, 15USC §1091(c), provides that a mark that, as a whole, is functional may not be registered on the Supplemental Register. 4. Section 14(3) of the Act, 15USC §1064(3), lists functionality as a ground that can be raised in a cancellation proceeding more than five years after the date of registration. 5. Section 33(b)(8) of the Act, 15USC §1115(b)(8), lists functionality as a statutory defence to infringement in a suit involving an incontestable registration.33 16.19 Similarly, Section 43(a) of the Act expressly allows for claims of trade dress infringement, for

trade dress not registered on the principal register, but places the burden of proof on the plaintiff to show that the matter sought to be protected is not functional.34 Moreover, the ‘competitive need’ of a design element is not by itself determinative of the functionality of such element. As in Germany, competitors under US law are not required to seek alternative solutions. Rather, ‘[a] feature is functional as a matter of law if it is “essential to the use or purpose of the product or if it affects the cost or quality of the device’’’.35 16.20 The Supreme Court has stated concerns similar to those of the ECJ with respect to protecting

competition under trade dress law, The functionality doctrine prevents trademark law, which seeks to promote competition by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a producer to control a useful product feature. It is the province of patent law, not trademark 29 Trademark Manual of Examining Procedure, §1202.02, citing Wal-Mart Stores, Inc v Samara Brothers, Inc (2000) 520 US 205, 209–210. 30 Wal-Mart Stores, Inc, n 1 (citing Ashley Furniture Industries, Inc v Sanciacomo NA, Ltd, 187 F 3d 363 (4th Cir 1999); Knitwaves, Inc v Lollytogs, Ltd, 71 F 3d 996 (2nd Cir 1995); Stuart Hall Co, Inc v Ampad Corp, 51 F 3d 780 (8th Cir 1995). 31 Two Pesos, Inc v Taco Cabana, Inc 505 US 763 (1992). 32 See Qualitex Co v Jacobson Products Co, Inc, 514 US 159, 34 USPQ 2d 1161 (1995). 33 Trademark Manual of Examining Procedure, 1202.02(a)(i). 34 15 USC §1143(a)(3). 35 TMEP, 12.02(a)(iii)(A) (quoting TrafFix Devices, Inc v Marketing Displays, Inc, 532 US 23, 33, 58 USPQ 2d 1001, 1006 (2001)).

348

E. Products under Unfair Competition Law and Trademark Law law, to encourage invention by granting inventors a monopoly over new product designs or functions for a limited time,36 after which competitors are free to use the innovation. If a product’s functional features could be used as trademarks, however, a monopoly over such features could be obtained without regard to whether they qualify as patents and could be extended forever (because trademarks may be renewed in perpetuity).37

In other words, trade dress protection may not be wielded as a sword to gain an unfair com- 16.21 petitive advantage by extending what is the province of the limited term of a patent into an indefinite and potentially perpetual monopoly. The Supreme Court has in more than one case held the line against unfair competition, not 16.22 only by recognizing the power of the Lanham Act, but in delineating its limitations as well. In guarding against the threat to consumers of being ‘deprived of the benefits of competition’ the Court has held that new entrants into a marketplace should not be stifled by claims that a particular design of a product is inherently distinctive and therefore belonging to a senior user. Rather, product design, like colour, requires as a matter of law a showing that it has acquired distinctiveness and consumer recognition.38 Our client in the introductory hypothetical may be barred from preventing later competitors from making children’s clothing designed with cake and cupcake fabric or appliqué, at least during the early years of the business before the design can be shown to be recognized by consumers as designated BABYCAKES as the source of such clothing. Product packaging, on the other hand, such as our client’s unique birthday cake shells, may be inherently distinguishable from competitors’ packaging on its own merits.39

E. Consumer Deception by Creating Confusing Similarity between Trademarks and/or Products under Unfair Competition Law and Trademark Law A conflict between trademark law and unfair competition law can also arise if the use of 16.23 marks or other signs in advertising is deemed misleading under the provisions against unfair competition. (1) European Union and Germany (a) General The Directive on Unfair Commercial Practices (UCP) in the EU and the German Act Against 16.24 Unfair Competition (UWG) each contain two provisions which relate to indications of commercial origin through marks and other signs: Art 6 para 1(b) UCP Directive and correspondingly Sec. 5 Par. 2 sentence 1 no. 1 UWG 16.25 provide that false information which leads to a misleading commercial act may include information pertaining to commercial origin. This provision of the above corresponding regulations, however, has little in common with the relationship between trademark law and competition law. We are tempted to forge a link from the element of a misleading act with 36 37 38 39

35 USC §§154, 173. Qualitex Co, n 32 164–165. Wal-Mart Stores, Inc, see n 1, at 213. Ibid.

349

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law respect to ‘commercial origin’ to the danger of confusion between signs. In fact, though, this part of the prohibition against misleading practices does not refer to commercial origin in the sense of the direct source of products under a mark, but rather to deception as to the type of commercial origin, for example if the additional words ‘only from’ creates the impression that only the respective advertiser offers such products40 or if additional information such as ‘real’ or ‘original’ creates the impression that only the advertiser is offering original products.41 Cases which violate this provision are also conceivable where the use of the sign of a third party creates the impression that the advertiser can obtain original goods for the original price, such as when an internet portal presents itself as an official vendor of admission tickets for football events but in reality sells grey or black market tickets.42 16.26 Furthermore, the so-called black list within the UWG, point 13 of which is based on the

same-numbered provision in the ‘black list’ of the UCP Directive, provides a per se prohibition in the case of intentional deception as to the commercial origin.43 Under this provision a competitive act is always forbidden if the advertisement of a good or service which is similar to the good or service of a competitor is undertaken with the intention of misleading consumers as to the commercial origin of the good or service being advertised.44 16.27 Finally, Art 6 para 2(a) UCP Directive and the corresponding Sec. 5 Par. 2 UWG declare a

commercial practice to be misleading if the marketing of a product, including through comparative advertising, causes a danger of confusion with another product, trademark, trade name or other distinguishing mark of a competitor. Art 6 para 2(a) UCP Directive and Sec. 5 Par. 2 UWG each contain two required elements of an offence in their requirements of unfairness:45 first, the confusion of goods and services or the confusion of marks and other signs; and second, that the consumer was actually or would potentially be induced to make a commercial decision which he otherwise would not have made (Art 6 para 1 UCP Directive and Sec. 3 Par. 2 UWG). In other words, there must be confusion, and it must be material. 16.28 The term ‘likelihood of confusion’ in Art 6 para 2(a) UCP Directive as well as Sec. 5 Par. 2

UWG has been interpreted to follow the meaning of ‘likelihood of confusion’ under trademark law in Art 9 para 1(b) CTMR and Sec. 14 Par. 2 No. 2 MarkenG. Namely, in its O2 decision the ECJ ruled that the term ‘likelihood of confusion’ in Art 4(h) of the Directive on Misleading and Comparative Advertising should be interpreted as having the same meaning as in Art 5 para 1 sentence 2(b) of the Trade Marks Directive upon which Sec. 14 Par. 2 No. 2 MarkenG is based46 and which has the same wording as Art 9 para 1(b) CTMR. Therefore, there exists no obvious indication that the European legislature would have wanted to regulate the term ‘likelihood of confusion’ differently in Art 6 para 2(a) of the UCP Directive, on

40

According to Düssel BGH, GRUR (1964), 458, 461. Sec. 5 Par. 1 in conj. with Par. 2 UWG affirms and infringement against Sec. 4 No. 9 UWG left open: Bauhausklassiker v Möbel im Bauhausstil, Regional Court of Hamburg, Judgment of 12 February 2008, 312 O 525/07, GRUR-RR 2009, 76 (LS). 42 See also bundesligakarten.de, BGH, Judgment of 11 September 2008, GRUR (2009), 173. 43 See Wirtz in Götting, Nordemann, see n 3, § 3 marg. no. 128–129. 44 Cf preamble 17 to the UCP-Directive and Wirtz in Götting, Nordemann see n 3, § 3 marg. no. 110–113. 45 Cf A. Nordemann in Götting, Nordemann, see n 3, § 5 marg. no. 8.4. 46 Cf ECJ, Judgment of 12 June 2008 in the case no C-533/06, O2 Holdings Ltd and others v Hutchison 3G UK Ltd para 49 (‘Bubbles’). 41

350

E. Products under Unfair Competition Law and Trademark Law which Sec. 5 Par. 2 UWG is based.47 The Presiding Judge of the Senate of the German Federal Court of Justice in charge of trademark and unfair competition law matters, Mr Bornkamm, has referred to differences in the assessment of the likelihood of confusion in the German Trade Marks Act and in the German Act Against Unfair Competition.48 Bornkamm’s opinion, however, does not appear to be in line with the ECJ O2 decision. In O2, the term ‘likelihood of confusion’ from Art 5 para 1(b) Trade Marks Directive was compared by the ECJ to Art 3(a) para 1(d) of the Directive against misleading and comparative advertising,49 the English version of which includes the wording ‘does not create confusion in the market place’.50 Nevertheless, the ECJ decreed a uniform interpretation of both provisions; ‘does not create confusion in the market place’ was held to have the same meaning as an existence of a ‘likelihood of confusion’.51 According to the ECJ, any difference in the terminology resided merely in the fact that the test to assess the existence of a likelihood of confusion under the Directive on misleading and comparative advertising refers to the concrete use of the sign by the defendant, but does not provide for the test that exists in registration procedures according to Art 8 para 1(b) CTMR and Sec. 9 Par. 1 No. 2 MarkenG, namely, whether another use of the same sign, which occurred under different circumstances, would also be suitable to create a likelihood of confusion.52 It may also appear initially unclear as to which cases Sec. 5 Par. 2 UWG should fundamen- 16.29 tally apply. The reference in the provision to the marketing of goods or services could lead to the assumption that only those acts are covered that relate to the sales methods rather than to the product itself and its trade dress,53 and in fact the Higher Regional Court of Cologne considers the application of Sec. 5. Par. 2 UWG primarily in the area of non-trademark use of marks and signs.54 Such an understanding of the regulation, however, falls short: a review of Art 6 para 2 a UCP Directive, which is implemented through Sec. 5 Par. 2 UWG, reveals that its scope is broader than the German legislation, covering ‘any’ marketing. Recital 14 of the ECP Directive also highlights the fact that the directive does not intend to reduce consumer choice by prohibiting the promotion of products which look similar to other products unless this similarity confuses consumers as to the commercial origin of the product and is thus misleading;55 Recital 14 therefore does not focus on the similarity of the advertising but the similarity of the products themselves. In any case, one usually does not equate marketing merely with advertising at the expense of other aspects such as product, price, and sales location. Finally, it should be mentioned that Sec. 5 Par. 2 UWG was not classified within misleading information as an additional subsection to Sec. 5 Par. 1 sentence 2 UWG but instead forms an independent regulatory element in the scope of Sec. 5 UWG. Sec. 5 Par. 2 UWG thus covers all commercial acts related to the marketing of a product which could cause a 47 With the proviso of the O2 decision, however, that it can only depend on the specific likelihood of confusion and only an abstract likelihood of confusion is excluded; cf ibid., paras 66 et seq and A. Nordemann in Götting, Nordemann, see n 3, § 5 marg. no. 8.17. 48 Bornkamm in Köhler, Bornkamm, see n 2, § 5 marg. no. 4.212b, arguing that Art 6 Par.2 a UCPDirective uses the notion ‘which creates confusion’ whereas Art 9 para 1(b) CTMR and Sec. 14 Par. 2 No. 2 MarkenG speak of ‘likelihood of confusion’. 49 Cf Bubbles n 46, at paras 49 and 59. 50 In the current codified version of the Directive 2006/114/EC, the provision is found in Art 4 (h). 51 Expressly as such cf Bubbles n 46, para 48. 52 Cf Bubbles n 46 at paras 64 et seq. 53 Cf on this set of issues Peifer in Fezer, see n 2, § 5 marg. no. 429. 54 Amarula und Marulaba, Higher Regional Court of Cologne, MarkenR (2009), 228, 231. 55 See Fezer, WRP 2008, 1, 7.

351

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law likelihood of confusion, including the design of the product itself and its packaging.56 Therefore, Art 6 para 2(a) UCP Directive and Sec. 5 Par. 2 UWG in fact not only protect against misleading advertising, but also the trademarks used and finally the trade dress of a product. That Art 6 para 2(a) UCP Directive and the corresponding Sec. 5 Par. 2 UWG also mention comparative advertising is a legislative mishap. According to Art 3(a) of the Directive on misleading and comparative advertising and correspondingly at Sec. 6 Par. 2 No. 3 UWG, comparative advertising is considered unfair if the comparison leads to confusion between the advertiser and a competitor, between the goods or services offered by them or the signs used by them. Any independent scope of application of the provisions to comparative advertising is not apparent; as a result its mention in Art 6 para 2(a) UCP Directive and thus Sec. 5 Par. 2 UWG is quite simply superfluous. (b) Differences from supplementary industrial property protection 16.30 At first glance it appears unclear as to why a further provision, Sec. 5 Par. 2 UWG, is required

to regulate the likelihood of confusion between goods or services, in addition to the special provision for supplementary industrial property protection in Sec. 4 No. 9 UWG. To recap, the requirements for supplementary industrial property protection are a characteristic quality on the market of the original product, the imitation of such quality by a junior product, and either the creation of an avoidable deception as to its origin, the existence of an exploitation of reputation, or the dishonest obtaining of information.57 16.31 Sec. 5 Par. 2 UWG, in contrast, does not contain any equivalent to the exploitation of

reputation as per Sec. 4 No. 9 b UWG or to the dishonest obtaining of information as per Sec. 4 No. 9 c UWG. Rather a partial overlap only exists with respect to the avoidable deception as to the origin as per Sec. 4 No. 9 a UWG.58 Furthermore, the requirements for an infringement differ: it is true that the causing of a likelihood of confusion is usually associated with a deception as to origin so that the elements of Sec. 5 Par. 2 and Sec. 4 No. 9 a UWG would be fulfilled. However, while in the case of Sec. 4 No. 9 a UWG, the requirements of an offence are fulfilled only if the deception as to origin was avoidable, Sec. 5 Par. 2 UWG does not impose any similar additional requirements for the existence of a likelihood of confusion: if a likelihood of confusion exists, the elements of an offence as per Sec. 5 Par. 2 UWG are fulfilled regardless of whether the likelihood of confusion was avoidable; neither does the MarkenG recognize the test of avoidability of a likelihood of confusion in Sec. 14 Par. 2 No. 2.59 Sec. 5 Par. 2 UWG also differs from Sec. 4 No. 9 a UWG in a further point: while the requirement of an offence for Sec. 4 No. 9 a UWG is the existence of an imitation, Sec. 5 Par. 2 UWG contains no such element. The provision thus goes considerably further than Sec. 4 No. 9 a UWG as Sec. 5 Par. 2 UWG is also applicable in cases that arise out of a crucible other than that of a confusingly similar mark on a similar product, such as similar advertisements or a similar trade dress.

56 Correct but with a different justification, Peifer in Fezer, see n 2, § 5 marg. no. 429; Fezer, WRP 2008, 1, 7, which especially highlighted the differences in the protection aims of the provisions and thus affirms a parallel applicability. Fezer also recognizes that the German MarkenG is an exclusive right in the interests of the proprietor of the mark and protects the economic function, whereas Sec. 5 Par. 2 UWG and Art 6 para 2(a) UCP Directive 2005/29/EC protects the consumer. 57 Cf A. Nordemann in Götting, Nordemann, see n 3, § 4 marg. no. 9.29 et seq. 58 See paras 16.10 et seq. 59 Cf A. Nordemann in Götting, Nordemann, see n 3, § 4 marg. no. 9.52 and § 5 marg. no. 8.29

352

E. Products under Unfair Competition Law and Trademark Law Differences exist between Sec. 4 No. 9 and Sec. 5 Par. 2 UWG as well as ultimately to Black 16.32 List No 13 also in terms of the subjective elements of an offence: while Black List No 13 goes furthest and requires an intention to deceive, it is generally recognized for Sec. 4 No. 9 UWG that the term imitation fundamentally requires that the manufacturer was aware of the product in dispute at the time of creating his own product.60 This cannot be equated to an intentional act but does require at least a certain degree of ‘knowing’.61 In contrast, Sec. 5 Par. 2 UWG only requires the mere causing of a likelihood of confusion for which simple negligence is enough.62 There is also a significant difference between Sec. 4 No. 9 and Sec. 5 Par. 2 UWG in another 16.33 aspect: while the supplementary industrial property protection according to Sec. 4 No. 9 UWG only protects the individual interests of the party impaired by the imitation and thus, as in the case with special protection rights, only the infringed party can pursue the imitation, the provision of Sec. 5 UWG aims to protect all market participants. Therefore, any competitor, with whose products the goods in questions are not even likely to be confused, can sue for infringement of Sec. 5 Par. 2 in conjunction with Sec. 8 Par. 3 UWG.63 That must also apply in cases where the imitated party has reached an agreement with the imitator or has consented to the marketing of his products in some other way; the protection of the consumer from misleading practices can absolutely not be nullified through an agreement between the misleading party and a third party. (c) Differentiation from trademark law As already explained, under the topic of slavish imitation, up until now one assumed that the 16.34 German MarkenG, as a lex specialis, fully displaced the UWG in its scope of application (principle of precedence) and that the UWG could only be applied if trademark law fails.64 However, in the scope of application of Sec. 5 Par. 2 UWG, this view of the precedence principle cannot be upheld as a result of the clear provisions of Art 6 para 2(a) UCP Directive,65 for the simple reason that trademark law does not recognize consumer protection. This independent protection aim is recognized in the UWG and must be applied under the principle of application in conformity with the Directive. Ultimately, Sec. 5 Par. 2 UWG concerns consumers’ right to be able to make decisions free of impairment and not the protection of commercial property of the right owner of the sign.66 Rather the German Trade Marks Act and Sec. 5 Par. 2 UWG are applicable alongside and independent of one another. This has to go far enough that the exclusive protection granted under the MarkenG for the benefit of the trademark proprietor is partly removed from his disposition. While the trademark 60

Cf ICON, BGH, GRUR (2008), 1115, 1117, para 24, Blendsegel, GRUR (2002), 629, 633. Cf A. Nordemann in Götting, Nordemann, see n 3, § 4 marg. no. 9.49 und 9.95. 62 Cf A. Nordemann in Götting, Nordemann, see n 3, § 4 marg. no 9.18 and § 5 marg. no 8.9. 63 Cf OSTSEE-POST, BGH, GRUR (2009), 672, 678, para 57; Köhler, ‘Vom deutschen zum europäischen Lauterkeitsrecht—Folgen der Richtlinie über unlautere Geschäftspraktiken für die Praxis’, (2008) NJW 3032, 3036; Köhler, Die UWG-Novelle 2009, WRP 2009, 110, 115. 64 shell.de, BGH, GRUR(2002), 622, 623; Räucherkate, BGH, GRUR (2005), 419, 422; MAC Dog, BGH, GRUR (1999), 161, 162 et seq; Yoghurt-Gums®, Higher Regional Court of Hamburg, GRUR-RR (2009), 224, 228 et seq. 65 See also Fezer, WRP 2008, 1, 7: the UCP Directive and thus Sec. 5 Par. 2 UWG protects the consumer from misleading trademark practices in the marketing of products without ifs and buts; Köhler, GRUR (2009), 445, 448 with the example and affirmation of Sec. 5 Par. 2 UWG: a businessman puts a no-name product on a sock shelf bearing the name of the manufacturer ‘Falke’. 66 Fezer, WRP 2008, 1, 8; Fezer, ‘Imitationsmarketing als irreführende Produktvermarktung’, GRUR (2009), 451, 454, 456. 61

353

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law proprietor fundamentally has sole authority to decide whether to assert the rights conferred through Sec. 14 Par. 1 MarkenG or not—it is solely his decision whether or not to take action against the use of an identical or confusingly similar younger mark, whether to tolerate its use to reach an agreement with the user of the identical or confusingly similar mark, for example through the conclusion of a pre-right agreement or the granting of use-up or selling-off period—this authority is removed from the proprietor in the scope of application of Sec. 5 Par. 2 UWG. If a misleading commercial practice occurs through the creation of a likelihood of confusion as per Sec. 5 Par. 2 UWG, which is either undertaken with the intent to deceive as per Black List No 13 or which is suitable to significantly affect the informed decision of the consumer as per Sec. 3 Par. 2 UWG or the interests of competitors, consumers, or other market participants as per Sec. 3 Par. 1 UWG, anyone may institute legal proceedings who has a right to sue under Sec. 8 Par. 3 UWG.67 Bornkamm gives the opinion that what he calls competition law protection of signs must also observe the assessments of trademark law where the coexistence of identical or similar signs is tolerated on the basis of a trademark law regulation or a weighing of the interests of the proprietors of both signs under trademark law.68 However, this opinion falls short. It does not take into account the general principle of the protection against misleading practices in s 5 UWG: the principle states that a competitor can not approve of an advertisement which is misleading, significantly affects the consumer’s ability to make a decision, and thus causes him to make a commercial decision which he would not otherwise have made. In other words, the prohibition of misleading practices in Sec. 5 UWG primarily serves the protection of the consumer which may not be circumvented through a private law agreement between two competitors. Any suggestion that the interests and protection of consumers69 has to be subordinate to the interests of competitors and the trademark proprietor, as described by Bornkamm, cannot be deduced from Sec. 1 UWG and would contradict the UCP-Directive.70 There can thus be no exception from this principle for deception through the creation of product or trademark confusion because the consumer ultimately remains deceived even if the proprietor of the younger mark reaches an agreement with the proprietor of an older mark. Such an agreement also fails to remedy the risk that the consumer will make a commercial decision which he would not have made had he not been subject to the danger of confusion71 (Art 6 para 1 UCP Directive and Sec. 3 Par. 2 UWG). It has to be noted in this context that the UCP-Directive as well as the German UWG place the interests of the consumer and consumer protection at the heart of their goal. Nevertheless the consumer himself does not have a right to sue or to claim damages under these provisions, only consumer protection associations have standing according to Sec. 8 (3) UWG. Trademark and competition laws obviously follow different and independent protection purposes and thus demand autonomous application alongside 67 Also OSTSEE-POST, BGH, GRUR (2009), 672, 678, para 57; also Fezer, GRUR (2009), 451, 457: misleading trademark practices of product marketing cannot be legitimated through private contractual provisions; Köhler, GRUR (2009), 445, 451. 68 Bornkamm in Köhler, Bornkamm, see n 2, § 5 marg. no. 4.213b; differentiated into case groups Bornkamm, ‘Markenrecht und wettbewerbsrechtlicher Kennzeichenschutz Zur Vorrangthese der Rechtsprechung,’ GRUR (2005), 97, 99 et seq. 69 Cf Schmitz-Fohrmann and Schwab in Götting, Nordemann, see n 3, § 8 marg. no. 120. 70 Cf in detail on the purpose of protection and the separation of consumer-related and competitor-related unfair competition law, Fezer, ‘Der Dualismus der Lauterkeitsrechtsordnungen des b2c-Geschäftsverkehrs und des b2b-Geschäftsverkehrs im UWG’, WRP 2009, 1163, 1165 and 1167. 71 Cf also Köhler, WRP 2009, 110, 115; Henning-Bodewig, ‘Relevanz der Irreführung, UWGNachahmungsschutz und die Abgrenzung Lauterkeitsrecht/IP-Rechte’, (2007) GRUR Int 986, 990.

354

E. Products under Unfair Competition Law and Trademark Law one another.72 The legislature, however, in its preamble to the act on Sec. 5 Par. 2 UWG, failed to specify this differentiation to trademark law,73 thus transferring the responsibility for clarifying the relationship to the courts. The German Federal Court of Justice therefore assumes in its, as far as we are aware, first and 16.35 only decision in which s 5 para 2 UWG has featured, namely the judgment on OSTSEEPOST, that the requirements of a trademark infringement under Sec. 14 MarkenG and those of a deception through danger of confusion with a mark or another sign as per Sec. 5 Par 2 UWG are two separate subjects for dispute. The German Federal Court of Justice correctly determined that the matters in dispute are different. On the one side the existence of a likelihood of confusion as per Sec. 5 Par. 2 UWG requires the suitability as per Sec. 3 Par. 2 UWG to noticeably influence the market behaviour of the other party, which is not relevant under trademark law, and on the other side all parties who have a right to sue according to Sec. 8 Par. 3 UWG are entitled to pursue competition law claims while trademark claims are only available to the proprietor of the respective right.74 The fact that the term ‘likelihood of confusion’ in Sec. 5 Par. 2 UWG corresponds to the term 16.36 ‘likelihood of confusion’ in Sec. 14 Par. 2 No. 2 MarkenG, has already been mentioned above75; the term ‘likelihood of confusion’ in Sec. 5 Par. 2 UWG is, however, limited to the context of actual use and thus does not include the mere abstract danger of confusion which plays a role in registration procedures.76 (2) United States Guarding against confusion in the marketplace is the bedrock of United States trademark 16.37 law, ‘The touchstone of liability under §1114 is whether the defendant’s use of the disputed mark is likely to cause confusion among consumers regarding the origin of the goods offered by the parties’.77 Trademark law is best thought of as a subset of unfair competition law; indeed Section 43(a) of 16.38 the Lanham Act is the primary vehicle for bringing an unfair competition claim in the federal courts. However, while both Section 32 and Section 43(a) of the Lanham Act may be wielded by manufacturers against competitors who are impinging upon the manufacturer’s exclusive rights to a mark, those rights arise precisely out of the legislative mandate to protect the public, Trademark law protects the public by making consumers confident that they can identify brands they prefer and can purchase those brands without being confused or misled. Trademark laws also protect trademark owners. When the owner of a trademark has spent considerable time and money bringing a product to the marketplace, trademark law protects the producer from pirates and counterfeiters.78

72

Fezer, WRP 2008, 1, 3 et seq. Begr. RegE on the UWG 2008, on s 5 Par. 2 BT-Printed Paper. 16/10145, 37; the fact that the jurisprudence acts superiorly is criticized by Fezer, WRP 2008, 1, 4. 74 OSTSEE-POST, BGH, GRUR 2009, 672, 678, para 57; weg.de, OLG Köln, MarkenR 2010, 190 (LS); adherence to theory of priority also in relation to trademark law and Sec. 5 Par. 2 UWG: Amarula und Marulablu, Higher Regional Court of Cologne, MarkenR 2009, 228, 231. 75 See paras 16.24 et seq. 76 Cf n 46 Bubbles; A. Nordemann in Götting, Nordemann, see n 3, § 5 marg. no. 8.17. 77 See Daddy’s Junky Music Stores, Inc v Big Daddy’s Family Music Ctr, 109 F 3d 275 (6th Cir 1997). 78 See Sen Rep No 100–115 (1988). 73

355

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law Both of these stated purposes of trademark law set out avenues that lead to the same end; a now substantially developed body of case law out of which has evolved a set of factors of analysis for determining whether a trademark, service mark, or trade dress mark, registered or not, is likely to be confused by the public with another. 16.39 The Court of Customs and Patent Appeals first expressed the factors relevant to determining

likelihood of confusion in 1973.79 The du Pont decision lists 12 factors, which have generally remained unchanged through the decades but have been distilled down to the most oftenused. The factors vary slightly among the Circuit Courts, but in general are as follows: (1) the strength of the plaintiff‘s mark, (2) the relatedness of the goods or services offered by the plaintiff and the defendant, (3) the similarity of the marks, (4) any evidence of actual confusion, (5) the marketing channels used by the parties, (6) the probable degree of purchaser care and sophistication, (7) the defendant’s intent in selecting its mark, and (8) the likelihood of either party expanding its product line using the marks.80 The factors listed above are the same both under Section 32 of the Lanham Act for registered marks and under Section 43(a) the unfair competition statute which protects unregistered marks. The Patent Trademark Office uses a similar set of factors in initially deciding whether an applied-for mark is sufficiently different from existing marks so as to be registrable, but includes also the presence of an agreement between the owner-parties in question that allows for the co-existence of the marks.81 Such an agreement is given considerable weight by the PTO, but will not automatically overcome a refusal to register the mark, so paramount is the PTO’s mission to avoid registering marks that will cause confusion among the public. 16.40 Preventing consumer confusion was also Congress’s primary goal in providing for remedies

against trademark infringement and unfair competition, but the courts have held that under neither section did Congress intend to protect consumers by offering them a direct remedy. Both Section 32 and the ‘likelihood of confusion’ prong of Section 43(a) prohibit the use of marks which are ‘likely to cause confusion, or to cause mistake, or to deceive’. Section 43(a) includes additional language so that the confusion, mistake, or deception must exist ‘as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services or commercial activities by another person’,82 but to the extent such language (or the corresponding language in the prior statute) was thought to impose limitations on claims that could be brought under Section 43(a), such reluctance has disappeared in recent decades so that Section 43(a) has become a ‘much used and potent statute’.83 However, large classes of potential plaintiffs have been barred from bringing claims under this Section by the jurisprudence of standing. On the face of the statute, Section 43(a) unfair competition claims may be brought by ‘any person who believes that he or she is or is likely to be damaged by such act’. However, consumers do not have standing to bring a suit under this section.84 Courts across the United States are in disagreement about which other plaintiff groups are barred by prudential standing from bringing Section 43(a) claims, with one court holding that a direct competitor can only bring a claim 79

In re E.I. du Pont de Nemours & Co., 476 F 2d 1357, 177 USPQ 563 (CCPA 1973). Daddy’s Junky Music Stores, Inc, see n 77, at 280. 81 Trademark Manual of Examining Procedure, 1207.01(d)(viii) (7th edn 2010). 82 (15 USC §1125 (a)(1)(A)). 83 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition Law, 4th edn (Eagan, Minn: Westlaw, 2007) §26:6 at 27–52. 84 Ibid., §27:25 at 27–47, 48. 80

356

F. Comparative Advertising when the confusion, mistake, or deception exists as to such competitor’s own product or mark, but not when the defendant has made false claims regarding its own goods or services.85 Corresponding limitations to standing are expressly laid out in the statute under Section 32 covering registered marks; claims under that section may only be brought by the registrant without whose consent a ‘reproduction, counterfeit, copy, or colorable imitation’ of such registrant’s mark was used.86 The upshot is that although trademark infringement statute (and indeed, all of trademark law), as well as the unfair competition statute to a large extent, are in place to protect the public, the public at large does not have access to those statutes to prevent or find remedies for confusion.

F. Comparative Advertising (1) European Union and Germany The Community legislature assumed, when issuing the Directive on Misleading and 16.41 Comparative Advertising,87 that it was essential for goods or services of a competitor to be allowed to be identified by referring to a trademark or trade name belonging to said competitor; as the Community legislature generally wanted to allow such references, certain conditions were laid down in the Directive on Misleading and Comparative Advertising which exclude a trademark infringement action if each of the conditions set forth below is fulfilled and if the only intention is to distinguish between the goods or services and thus objectively highlight differences.88 (a) General Art 2 of the Directive on Misleading and Comparative Advertising defines in point (c) com- 16.42 parative advertising as ‘any advertising which explicitly or by implication identifies a competitor or goods or services offered by a competitor’. This definition is extremely broad as it not only covers the direct but also indirect references to a competitor, its goods, or its services.89 The Directive then lays out the conditions to be fulfilled in Art 4, according to which comparative advertising is allowed. Under this provision, comparative advertising: • may not be misleading, Art 4(a); • must compare goods and services meeting the same needs or intended for the same purpose, Art 4(b); • must objectively compare one or more material, relevant, verifiable and representative features of those goods and services, which may include price, Art 4(c); • may not discredit or denigrate the trademarks, trade names, other distinguishing marks, goods, services, activities or circumstances of a competitor, Art 4(d);

85

Phoenix of Broward, Inc v McDonald’s Corp 489 F 3d 1156 (11th Cir 2007). 15 USC §1114 (1)(a). 87 Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising; original version Directive 84/450/EWG. 88 Directive on Misleading and Comparative Advertising, Recitals 14 and 15. 89 ECJ, Judgment of 18 June 2009 in the case no 487/07, L’Oréal SA and others v Bellure NV and others, para 52 (‘Trésor’); ECJ, Judgment of 8 April 2003 in the case no C-44/01 Pippig Augenoptik GmbH & Co KG v Hartlauer Handelsgesellschaft mbH and others, para 35 (‘Pippig’); ECJ, Judgment of 25 October 2001 in the case no C-112/99, Toshiba Europe GmbH v Katun Germany GmbH, paras 30 et seq (‘Toshiba/Katun’); Saugeinlagen, BGH GRUR (2008), 443, 444 para 15; Genealogie der Düfte, BGH GRUR (2004), 607, 611. 86

357

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law • must, for products with designations of origin, relate in each case to products with the same designation, Art 4(e); • may not take unfair advantage of the reputation of a trademark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products, Art 4(f ); • may not present goods or services as imitations or replicas of goods and services bearing a protected trademark or trade name, Art4(g); • may not create confusion among traders, between the advertisers and a competitor or between the advertiser’s trademarks, trade names, other distinguishing marks, goods or services and those of a competitor, Art 4(h). 16.43 The German legislature implemented the Directive on Misleading and Comparative

Advertising in two different regulations. Unlawful comparative advertising is regulated in Sec. 6 UWG, which lays out the corresponding, extensive conditions for the permissibility of comparative advertising. If comparative advertising is also misleading—irrespective of whether it is permissible under Sec. 690—Sec. 5 Par. 3 UWG is applicable as the German legislature implemented misleading comparative advertising legislation as per Art 4 Directive on Misleading and Comparative Advertising in connection with the prohibition of misleading practices.91 The German legislature did not formulate the permissibility conditions positively as the European legislature did in Art 4 Directive on Misleading and Comparative Advertising, rather the German legislature listed the individual criteria from a negative perspective, as forbidden characteristics; nevertheless, the substantive content remains the same.92 16.44 The ECJ also highlighted that the conditions laid down in Art 4 Directive on Misleading and

Comparative Advertising should fundamentally be interpreted most favourably so that the trader is actually able to objectively compare the characteristics of goods and services; however, it must be ensured that comparative advertising is not undertaken in an unfair way which thus affects the interests of consumers.93 (b) Differentiation from Trademark Law 16.45 Insofar as Art 4 Directive on Misleading and Comparative Advertising draws on terms from

trademark law, such as taking unfair advantage of the reputation of a mark in (f ) or the creation of confusion in (h), these terms are to be interpreted, according to the jurisprudence of the ECJ, according to their respective meanings in Art 5 para 2 CTMR.94 See also the explanations at paragraphs 16.24 et seq. 16.46 Claims based on infringements of trademark law and those based on unfair competition as a

result of unlawful comparative advertising fundamentally exist independently of one another as trademark law does not take precedence over the law governing comparative advertising nor does the law on comparative advertising have priority over trademark law.95 Whilst the requirements for claims in part build upon one another, ie, if a case of infringement of a wellknown mark exists, as per Art 5 para 2 Trade Marks Directive and correspondingly Sec. 14 90 91 92 93 94 95

Stresstest, BGH GRUR (2005), 172, 175. Hormonersatz, BGH GRUR (2002), 633, 634. Cf Köhler in Götting, Nordemann, see n 3, § 6 marg. no. 7–10. Trésor n 89 at para 69. Bubbles n 46 at para 49. Recital 7 of the Trade Marks Directive; Bubbles n 46 at para 37.

358

F. Comparative Advertising Par. 2 No. 2 MarkenG, through unfair exploitation of the good reputation of a trademark, the requirements for the permissibility of comparative advertising as per Art 4(f ) Directive on Misleading and Comparative Advertising and Sec. 6 Par 2 No. 4 UWG automatically cease to apply. Furthermore, if the use of a third party mark in the scope of comparative advertising causes a likelihood of confusion as per s 5 para 1(b) Trade Marks Directive and correspondingly Sec. 14 Par. 2 No. 2 MarkenG, the permissibility requirements for comparative advertising as per Art 4(h) Directive on Misleading and Comparative Advertising and Sec. 6 Par. 2 No. 3 UWG do not apply. As the conditions for permissibility of comparative advertising in Art 4 Directive on Misleading and Comparative Advertising as well as Sec. 6 Par. 2 UWG have to be fulfilled cumulatively, trademark infringements which are committed in the scope of comparative advertising automatically also lead therefore to their being unlawful in the scope of the law against unfair competition. In this sense, for example, the naming of marks of well-known original perfumes in so-called ‘perfume comparison lists’,96 designed to enable cheap imitations to be matched to the original perfumes, usually constitutes, firstly, a trademark infringement as a result of an impairment of the communication, investment, or advertising function of the marks of the original perfumes, both via the protection against identity of mark as per Art 5 para 1(a) Trade Marks Directive and Sec. 14 Par. 2 No. 1 MarkenG and the protection of reputation as per Art 5 para 2(a) Trade Marks Directive and Sec. 14 Par. 2 No. 3 MarkenG through taking unfair advantage of a distinctive characteristic or the reputation of the original perfumer mark. Furthermore, unfair competition also exists in the form of an unlawful comparative advertisement as the conditions for impermissibility as per Art 4(g) Directive on Misleading and Comparative Advertising apply as soon as the relevant trade circles are implicitly given the idea of an imitation or replica of goods bearing a protected trademark. The advantage gained in this way is considered as taking unfair advantage of the reputation of the original mark as per Art 4(f ) Directive on Misleading and Comparative Advertising.97 If not only the marks are used in such ‘perfume comparison lists’ but also the trade dress and the marks for the imitations are based on those of the trade dress and the marks of the original perfumes, the proprietor of the original marks can naturally take action against the distribution of the imitations themselves and not only against the mentioning of original trademarks in the comparison lists, for example via the protection of reputation under Art 5 para 2 Trade Marks Directive and Sec. 14 Par. 2 No. 3 MarkenG. Such protection will be available to the owner of the original marks if the ‘inferior’ imitations of the luxury perfume constitute an unfair exploitation of the distinctive character or repute in that the imitator attempts, through the imitation, to take advantage of the market power of these marks and to profit from their power of attraction, their reputation, or their prestige, or in order to exploit the marketing efforts of the trademark proprietor to create and maintain the image of the mark without paying compensation.98 In the area of comparative advertising, the relationship between trademark law and competi- 16.47 tion law in the European Union and in Germany is thus relatively unproblematic; both legal concepts exist independently alongside one another and complement one another in their requirements and scope of application.

96 97 98

Trésor, see n 89 at para 21. Ibid., at paras 50, 63–65, 73, 75, and 79. Ibid. at paras 46–47, and 50.

359

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law (2) United States 16.48 The law surrounding advertising in the United States is both regulatory and statutory;

comparative advertising is also governed by traditional common law notions of ‘fair use’ of trademarks, since codified in various provisions of the Lanham Act. Comparative advertising as ‘fair use’ is a defence to infringement of registered trademarks, including marks which have been deemed incontestable, under 15 USC §1114(b)(5), if the alleged infringement is in fact ‘a use, other than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin’. To that extent, good faith comparative advertising is not trademark infringement and not otherwise unfair competition, in a relatively straightforward sense. 16.49 Congress gave the Federal Trade Commission (FTC) power to regulate ‘unfair methods of

competition in or affecting commerce and unfair or deceptive acts or practices in or affecting commerce’ (15 USC §44); such power extends to claims of unfair advertising.99 Of course, to determine the parameters of unfair advertising, one is obliged to carve out that which is fair; under the scope of its power under Title 15 of the Code, the FTC promulgated its ‘Statement of Policy Regarding Comparative Advertising’ in 1979, in which the Commission makes clear its strong support for truthful comparative advertising, Comparative advertising, when truthful and non-deceptive, is a source of important information to consumers and assists them in making rational purchase decisions. Comparative advertising encourages product improvement and innovation, and can lead to lower prices in the marketplace. For these reasons, the Commission will continue to scrutinize carefully restraints upon its use.100

The Policy further defined comparative advertising as advertising which (1) compares alternative brands; (2) on objectively measurable attributes or price; and (3) identifies the alternative brand by name, illustration, or other distinctive information.101 16.50 The relationship between comparative advertising and unfair competition can thus be viewed

through the lens of the FTC’s power to regulate advertising. Truthful advertising, including comparative advertising, is to be encouraged and assists consumers in ‘making rational purchase decisions’.102 False advertising is an ‘unfair or deceptive act or practice’ that the FTC has the power to prohibit.103 16.51 Courts have been similarly protective of comparative advertising under free speech concerns

arising out of the First Amendment to the US Constitution. In 1976, the US Supreme Court first held that ‘commercial speech’ is protected under the First Amendment.104 Because of these constitutional concerns, courts have required careful contouring of injunctions in cases of false comparative advertising in order to avoid impinging upon the right of a defendant to engage in truthful comparative advertising.105 Thus, even a competitor who may be in part acting unfairly has constitutional rights that must be protected.

99 100 101 102 103 104 105

Carter Products, Inc, et al v Federal Trade Commission, 323 F 3d 523 (5th Cir 1963). FTC Policy, Subsection (c). FTC Policy, Paragraph 1. FTC Policy, Subsection (c). Ibid. Virginia State Bd of Pharmacy v Virginia Citizens Consumer Council, 425 US 748 (1976). Smith v Chanel, Inc, 402 F 2d 562, 159 USPQ (BNA) 388 (9th Cir 1968).

360

F. Comparative Advertising Of course, comparative advertising must also be viewed through the filter of the primary 16.52 reason for the existence of Section 43(a) of the Lanham Act, namely, preventing likelihood of confusion. Section 43(a) covers two prongs of unfair competition—infringement of trademarks and false advertising. Therefore, a manufacturer may be protected from false statements being made about its products in under a false advertising statute, regardless of whether a likelihood of confusion has occurred. (15 USC §1125 (a)(1)(B), the false advertising prong of the Lanham Act, does not explicitly require a likelihood of confusion in order for a claim to stand.) However, an instance of likelihood of confusion in the advertising context will always also allow for a claim of false advertising, insofar as the likelihood to ‘cause confusion. . .mistake, or to deceive as to the affiliation . . . or . . . origin of . . . goods, services, or commercial activities’106 will necessarily arise from a ‘misrepresentation’ of the ‘nature, characteristics, qualities, or geographic origin’ of the goods.107. Hence, comparative advertising is protectable ‘so long as it does not contain misrepresentations or create a reasonable likelihood that purchasers will be confused as to the source, identity, or sponsorship of the advertiser’s product’.108 Even if one could conceive of a scenario in which an advertisement created a likelihood of confusion but was not ‘false’, a plaintiff would simply forego relief under the false advertising claim and rest its case on infringement. Furthermore, as in the EU, comparative advertising will not be a shield to liability if a trademark owner’s mark is used by a competitor to ride on the owner’s goodwill; the owner may still seek relief under a claim of ‘passing off’ under traditional trademark law. However, as discussed above, unlike in the EU, consumers, either individually or as a group, do not have standing to bring claims under Section 43(a) for false advertising. Finally, a discussion of comparative advertising law in the United States would be incom- 16.53 plete without an examination of the relatively newly codified concept of dilution of trademarks. Dilution is a fundamentally different notion than likelihood of confusion in that it seeks to protect owners of famous marks rather than protecting consumers.109 Dilution protects famous trademarks, namely those that are ‘widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner’110from weakening through association with products or services which do not originate from the owner, eg BUICK for aspirin, DUPONT for shoes, and KODAK for pianos would be actionable under this legislation.111 The owner of a famous mark may seek injunctive relief for dilution by ‘blurring’ which ‘impairs the distinctiveness of the famous mark’, as in the examples presented above,112 the owner may also seek relief for dilution by ‘tarnishment’ which ‘harms the reputation of the famous mark’113 through association with an inferior or offensive product. ‘Fair use’ of a famous mark is a defence to an action based upon dilution, including, 16.54 expressly ‘advertising or promotion that permits consumers to compare goods or services’.114 106

15 USC §1125(a)(1)(A). 15 USC §1125(a)(1)(B). 108 15 USC §1125(c)(2)(A). 109 Ibid. 110 H. Rep. 104–374, p. 1029 at 1030 (1995), cited in Moseley v V Secret Catalogue, Inc, 537 US 418 (2003). 111 15 USC §1125(c)(2)(B). 112 15 USC §1125(c)(2)(C). 113 15 USC §1125(c)(3)(A)(i). 114 Kraft Foods Holdings, Inc v Stuart Helm, 205 F Supp 2d 942 (ND Ill, 7 June 2002). 107

361

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law Notably, this is the only express mention of comparative advertising in the Lanham Act. Little case law exists exploring this defence, as most cases in which ‘tarnishment’ is the claim have been more prone to the second explicit defence under fair use, namely, that the junior use is a parody, or criticism or commentary upon the famous mark owner or her goods or services. For example, Kraft Foods successfully protected its mark VELVEETA for cheese from tarnishment by defendant’s use of the moniker ‘King Velveeda’ in connection with an adult website,15114a while dog chew toys made to resemble Louis Vuitton handbags were protectable parody.115116 16.55 In our hypothetical at the beginning of this chapter, BABYCAKES clothing may well have

had a claim of tarnishment against the makers of BABY BAKES smoking paraphernalia, upon a showing of fame. It is important to note, that BABYCAKES would need to show that it was widely recognized among the general public, not merely among parents who might purchase the clothing for their children. For purposes of the dilution statute, there is no longer any recognition of ‘niche fame’.116117 The law of trademark dilution remains the subject of much controversy, particularly among famous brand owners, and many questions remain unanswered. Dilution law has expanded the traditional trademark notions of unfair competition outside of the realm of likelihood of confusion and false advertising. The limits of such expansion remain to be seen.

G. Discussion and Summary 16.56 While the law of registered trademarks is harmonized in the European Union, unfair

competition law is only partly harmonized. However, national laws and jurisdiction are more and more influenced by ECJ jurisdiction. In the old days, Germans thought that protection under unfair competition law was only supplementary to trademark protection. Therefore, in the case of the first knock-off described in the introductory hypothetical, the owner of the BABYCAKES mark in most cases could not rely on unfair competition law if she had based her claims on a registered trademark and there were no additional unfairness criteria besides the claimed trademark infringement. Due to the EU Directives on Misleading and Comparative Advertising and on Unfair Commercial Practices, however, it is now clear for the whole EU that trademark law and unfair competition law stand independently next to each other. Thus, in the case of the first two scenarios suffered by our client in the introductory hypothetical, a trademark owner can now base claims under unfair competition law next to and independently from claims based on a trademark. Trademark law will to a certain extent guide the interpretation of the provisions of unfair competition law, particularly in the realm of confusing similarity and particularly as long as comparative advertising is allowed only absent confusing similarity, and absent a taking of unfair advantage of a competitor’s reputation. In case of the third competitor in the introductory hypothetical, comparative advertising will be admissible only if the junior product is not an imitation of the original product, and furthermore the other conditions explicitly laid down by the law are fulfilled. However, unfair competition law grants even a broader protection than trademark

114a 115 116

Ibid. Louis Vuitton Malletier v Haute Diggity Dog, LLC, 507 F 3d 252 (4th Cir 2002). USC §1125(c).

362

G. Discussion and Summary law, as it may also be enforced against the passing-off of the design or the original product and its trade dress, so that the manufacturer of the original product will not only get protection against confusing similar junior trademarks, but also against junior products whose design is confusingly similar to the original product’s trade dress. Therefore, the owner of BABYCAKES may well be able to enforce claims under unfair competition law against the owner of SWEET THINGS, the first competitor in the hypothetical above, despite the differences in the marks, merely because the packaging used by SWEET THINGS is so similar to the original BABYCAKES packaging. Unfair competition law therefore gives to the trademark owners in the EU an additional sharp sword to fight piracy and knock-offs of their original trademarks and products. This can cause inconsistent results when trademark law and unfair competition intersect, however; as far as misleading advertising is concerned, consumer protection groups or even competitors may claim confusing similarity under unfair competition law to protect the interests of the consumers, even if the trademark owner explicitly does not want to pursue the infringement, eg because he has settled with the infringer. The scheme in the United States is markedly different, even if the individual cases would 16.57 often garner the same results in both the EU and the US. Rather than unfair competition and trademark law standing alongside each other, trademark law is in many respects only a subset of unfair competition law. On the federal level in the United States, manufacturers of goods, providers of services, and owners of registered trademarks can seek relief from the unauthorized and unfair use of their marks under several regimes; the Lanham Act and the Federal Trade Commission both are avenues open to such parties to prevent or stop trademark infringement, false advertising, and in the case of famous marks, dilution. Thus, in all four scenarios presented in the introductory hypothetical, to the extent the client was the owner of the mark, she would have rights to enforce under all of these regimes. Such federal laws and regulations, as a corollary to the relief they provide mark owners, also set parameters against how far a trademark owner may go to prevent competitors or later entrants into the marketplace from offering similar products or services, or from fairly using such owner’s mark to describe the products and the differences between them. At nearly every level under US federal law, however, trademark law exists to protect consumers from confusion and deceit as to the commercial origin of a particular product, such as in the case of the identical BABYCAKES knock-off in the introductory hypothetical. Real damage can be inflicted upon the public if inferior products are passed off under marks that have developed goodwill through years of reliability, trustworthiness, and consistency. The American public expects a particular level of quality when it purchases Oreo® cookies, Bridgestone® tyres, Tylenol® pain medication, or any other favourite brand. Allowing a third party to sell inferior food, auto parts, or medication could have disastrous consequences. By the same token, the public benefits by the competition that is permitted under the limits on a trademark owner’s ability to create a monopoly through trademark law and through comparative advertising. Thus, when an advertisement has been run unfavourably comparing our client’s BABYCAKES clothing to a different line of clothing, a careful analysis of all the facts will be needed to determine if the advertising was false or if our client’s mark was used in a fair and merely descriptive manner. Players in the marketplace have other weapons against unfair competition at their disposal; 16.58 state laws are often quite expansive and provide relief against other wrongs such as misappropriation of trade secrets or tortious interference with economic interests. The recent federal statutes prohibiting dilution of famous marks may be beginning to strengthen the 363

Chapter 16: The Relationship between Trademark Rights and Unfair Competition Law body of federal law which has as its primary mission the protection of brand owners. Nevertheless, the marketing of a parody of an original product like BABY BAKES, or a dog chewing toy in the form of a famous handbag, will remain permitted under certain circumstances. 16.59 For the time being, though, the federal law of trademarks and (to a less robust extent) unfair

competition, while offering market players certain advantages such as nationwide protection and the ability to bring cases in federal court, exists primarily for the benefit, however indirect, of consumers.

364

17 THE RELATIONSHIP BETWEEN INTELLECTUAL PROPERTY RIGHTS AND COMPETITION LAWS Thomas C. Vinje and Ashwin van Rooijen, Clifford Chance

A. Hypothetical B. Introduction C. A Complementary Yet Tense Relationship D. Internal Balancing in Intellectual Property Rights E. Unilateral Refusals to License under Competition Law

(4) Microsoft: limiting technical development 17.47 (5) Summarizing the duty to licence under EU competition law 17.49 (6) US approaches to unilateral refusals to license 17.62

17.01 17.02 17.07 17.22

F. Specific Issues Involving Standards: Patent Hold-up and the (F)RAND Defence

17.28

(1) Abuse of dominance, refusals to deal, and intellectual property rights 17.28 (2) Volvo v Veng and the existence/exercise doctrine 17.35 (3) The development of the new product test in Magill and IMS Health 17.43

(1) Standards and patent hold-up (2) The FRAND defence case law

G. Conclusion H. Summary

17.69 17.69 17.80 17.84 17.86

A. Hypothetical BigBank owns a valid patent protecting a highly successful biometrical identification system, 17.01 which enables its clients to make guaranteed secure payments in the blink of an eye. Gradually, more and more businesses and public facilities come to accept BigBank’s patent-protected, secure payment system, whereas retailers often add a surcharge for payments made through other payment systems due to their perceived lack of security and associated risk. Meanwhile, BigBank’s competitors find it increasingly difficult to attract new banking customers without the ability to offer them the use of BigBank’s widely accepted but patented payment system. One particular competitor, PiggyBank, known for its historically poor support for innovative payment systems, requests a licence from BigBank to its patented payment technology. PiggyBank claims that a licence to BigBank’s payment technology is essential viably to compete in the market—its customers demand it. Unfortunately, BigBank refuses. Under which circumstances might BigBank be forced to license its patent to PiggyBank?

365

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws

B. Introduction 17.02 At first blush, this is the only chapter dealing with a non-intellectual property right: it

explores the relationship between intellectual property rights and competition laws. However, such a perception ignores the foundational context of intellectual property rights, especially from a historical perspective. 17.03 Intellectual property rights emerged from the interest of the sovereign to exert control over

the nascent forms of intellectual property rights. In this pre-modern context, the first expression of statutory patent rights in England was the Statute of Monopolies of 1623. As for copyright, until the passage of the first copyright statute, the Statute of Anne in 1709, control over printing was first and foremost exerted by means of a sixteenth century royal charter granted to the Stationers’ Guild, that purported to confer on it exclusive control over the publishing industry and for putting into place publishing regulations. 17.04 Trademark statutes came only later, in the nineteenth century, but only after legislative reluc-

tance about the competitive wisdom of allowing an exclusive right over the commercial use of words. Seen from this vantage, intellectual property rights have been from their outset the handmaiden of competition law concerns, both pre-modern and modern, such that the relationship between intellectual property rights and competition law is the oldest and most durable instance of overlap. 17.05 The interaction between these bodies of law has been given significant attention during

recent years in both Europe and the US. Especially in the information economy, it is increasingly apparent that ownership of various types of information through intellectual property rights can give rise to competition concerns. At the same time, in defining intellectual property rights, intellectual property legislators are increasingly asked to take account of the type of economic, effects-based arguments that have long driven the practice of competition law—namely, what will be the effect of a given intellectual property right on innovation and competition in the market? These developments, among others, have led to a more vibrant interaction between these bodies of law, requiring reconciliation between the traditionally more formalistic realm of intellectual property rights and the primarily case-by-case, effectsbased approach used in competition law. 17.06 This Chapter aims to provide an introduction to legal developments at the intersection of

these two bodies of law. After a general discussion on the relationship between intellectual property rights and competition law (Section C), this Chapter will briefly review mechanisms within intellectual property rights that balance exclusivity with free competition (Section D). Section E will explore the ‘external’ correction of intellectual property rights through competition laws in the context of dominant firms’ unilateral refusal to license an essential intellectual property right. Section F explores specific issues surrounding intellectual property rights in standards. Section G concludes.

C. A Complementary Yet Tense Relationship 17.07 Most current literature on the relationship between intellectual property rights and

competition rules distinguishes between a traditional and a more contemporaneous school 366

C. A Complementary Yet Tense Relationship of thinking.1 Thus, intellectual property rights used to be thought of as necessarily being in conflict with competition rules: intellectual property rights, after all, created temporary ‘monopolies’ on intellectual creations, whereas competition rules aimed to protect citizens against the evils of monopoly power. By contrast, under the modern school of thought, it is said that intellectual property rights and competition rules both serve a common purpose, namely stimulating innovation—albeit with different means. As concluded below, both positions may be regarded as extreme, with the reality being more 17.08 nuanced. Although intellectual property rights and competition laws can indeed both be thought of as stimulating innovation, it does not follow that tensions between the two regimes cannot and do not occur. Much depends on the conduct of right holders and on the scope and term of intellectual property rights. Intellectual property rights provide the right holder with the exclusive right to prevent others 17.09 from using the protected subject-matter. This exclusivity enables firms to recoup investments in innovation, which in turn serves to stimulate such innovation. The exclusivity created by intellectual property rights is however not absolute: both the term and scope of intellectual property protection is limited. This enables competitors to use the innovation beyond the scope of protection (eg, by using the ideas embodied in a copyrighted work) or after the term of protection has expired. Through their limited term and scope of protection, intellectual property rights thus aim, inter alia, to promote and balance dynamic efficiency (innovation) and static efficiency (price competition in innovative goods): on the one hand, protection of certain subject-matter enables recoupment in innovation in such subjectmatter, whereas, on the other hand, limitations to such protection enable competitors and society as a whole to use the innovative subject-matter.2 Substantively, competition laws essentially aim to achieve the same goal: by stimulating and 17.10 safeguarding the competitive process, competition rules similarly aim to promote innovation and price competition.3 As firms compete for consumers, they must not only offer their products at lower prices (static efficiency), but they must also innovate (dynamic efficiency). The competition rules achieve this goal by safeguarding the competitive process, inter alia, by prohibiting a firm that occupies a monopoly or dominant market position from abusing that position, thereby excluding competitors and causing consumer harm, by prohibiting restrictive agreements (eg, agreements limiting innovation or causing supra-competitive prices), and by preventing mergers that are likely to create or strengthen a dominant position or otherwise impede competition.

1 See, eg, Antitrust enforcement and intellectual property rights: Promoting innovation and competition, US Department of Justice and Federal Trade Commission, pt 1 (2007). 2 François Lévêque and Yann Méniere, The Economics of Patents and Copyright (Berkeley Electronic Press, 2004). 3 Richard Whish, Competition Law 5th edn (London: LexisNexis UK, 2003) 734; Thomas Dreier, ‘Balancing Proprietary and Public Domain Interests: Inside or Outside of Proprietary Rights?’, in Expanding the Boundaries of Intellectual Property: Innovation Policy for the Knowledge Society, Rochelle, Cooper, Dreyfuss, et al eds, 2001) 312; Josef Drexl, ‘Intellectual Property and Antitrust Law—IMS Health and Trinko—Antitrust Placebo for Consumers Instead of Sound Economics in Refusal-to-Deal Cases’, (2004) IIC 788, 791; Herbert Hovenkamp, et al, ‘IP and Antitrust: An Analysis of Antitrust Principles Applied to Intellectual Property Law 1.9 § 1’ (New York: Aspen Law & Business, 2002) (‘IP and Antitrust’).

367

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws 17.11 In essence, competition rules, through safeguarding the competitive process, stimulate firms

to innovate and lower prices. Intellectual property rights also stimulate firms to innovate in particular by allowing them to recoup investments.4 Thus, the substantive goals of intellectual property rights and competition rules can largely be said to be similar. 17.12 Nevertheless, while serving similar purposes in some respects, competition laws and

intellectual property rights accomplish their goals through different means. Intellectual property rights structurally establish in advance (ex-ante) what subject-matter benefits from protection, during which term, and under which conditions. This structural, ex-ante approach is central to the purpose of stimulating innovation, as it provides the certainty that the innovating firm can indeed recoup its investments in innovation. Competition rules, by contrast, are used to scrutinize market conduct on a case-by-case basis and often ex-post.5 This approach potentially allows for a considerably more accurate balancing of relevant factors by focusing on the circumstances of the individual case. However, this in-depth, caseby-case review under competition law necessarily offers less ex-ante certainty than intellectual property rights. 17.13 It follows that if intellectual property rights become subject to scrutiny through competition

rules, the very certainty of exclusivity that intellectual property rights aim to provide in order to stimulate innovation risks being undermined.6 Thus, subjecting intellectual property rights to competition law scrutiny can undermine the goal of stimulating innovation that is common to both bodies of law. Moreover, because intellectual property rights are already balanced internally, there may not be any general need to scrutinize the use of intellectual property rights under competition rules. Under the modern view, then, ex-post competition scrutiny of intellectual property rights should be carefully circumscribed. 17.14 This modern view of the relationship between intellectual property rights and competition

rules, however, has only relatively recently replaced a nearly opposite perspective. This traditional perspective holds that intellectual property rights and competition rules are inherently in conflict with each other, as intellectual property rights prevent free competition, whereas competition rules aim to promote free competition.7 That traditional view of two regimes in conflict with each other appears to originate primarily from a failure to recognize that competition rules are intended not merely to stimulate price competition, but innovation as well. 17.15 Moreover, while the exclusivity awarded by intellectual property rights can discourage price

competition, it need not conflict with and indeed can promote both price competition and innovation—as long as it is appropriately limited. Indeed, intellectual property rights do not normally create monopolies in an economic sense: they merely confer a limited right of

4 Commission Notice Guidelines on the application of Article 81 of the EC Treaty to technology transfer agreements, European Commission, 7 § Official Journal C 101/2 (2004). 5 Hovenkamp, et al, see n 3, ‘IP and Antitrust’ 1.13. 6 See also Herbert Hovenkamp, et al, ‘Unilateral Refusals to License in the US, in Antitrust, Patents and Copyright: EU and US Perspectives’ (François Lévêque and Howard A. Shelanski eds, 2005) 17 (‘Unilateral Refusals to License in the US’). 7 See, eg, Image Technical Services, Inc v Eastman Kodak Company, 125 F 3d 1195, 1215 (US Court of Appeals, 9th Cir 26 August 1997, 1997). (‘[o]ne body of law creates and protects monopoly power while the other seeks to proscribe it.’)

368

C. A Complementary Yet Tense Relationship exclusivity related to a fairly narrowly described subject-matter, while leaving competitors with sufficient room to compete with non-infringing products within the same market.8 In explaining the limited scope for competition law interference with intellectual property 17.16 rights, Advocate General (A-G) Jacobs noted in Bronner, ‘[w]here such exclusive [copy] rights are granted for a limited period, that in itself involves a balancing of the interest in free competition with that of providing an incentive for research and development and for creativity.’9 Similarly, patents are limited in time, and one can often ‘invent around’ a patent. Moreover, competition laws on their part do not prohibit monopolies or dominance per se, but only abuse of such market power.10 Market power itself may well be the result of competition on the merits, which indeed competition rules aim to promote.11 Nevertheless, concerns about conflict between intellectual property rights and competition 17.17 rules under the ‘old’ school of thought are not entirely obsolete. Whether intellectual property rights primarily promote innovation or obstruct competition is a matter of degree and balancing. Intellectual property rights at times prove too broad in scope of protection and have too long a term of protection, thereby providing more exclusivity and market power than would be necessary to achieve the goal of stimulating innovation and creativity, while substantially harming competition.12 Indeed, A-G Jacobs’ reference to the limited term of copyright protection is arguably one example of a particularly ill-suited balancing mechanism: the general term of copyright protection is 70 years,13 which, in many industries, exceeds the commercial life of the protected subject-matter by a considerable margin.14 Similarly, concerns about the quality of patents suggest that exclusive patent rights may currently be granted too easily.15 Apart from intellectual property rights themselves sometimes offering excessive protection, 17.18 right holders can use intellectual property rights in a clearly abusive manner. This may occur, for example, by intentionally concealing intellectual property rights reading on a candidate technical standard, only to demand excessive licensing fees from implementers of the standard once it is adopted (known as ‘patent ambush’), or by agreeing to license an essential 8 Deutsche Grammophon Gesellschaft mbH v Metro-SB-Großmärkte GmbH & Co KG, (1971) ECR 487, §16,§17 (ECJ 1971); Sirena S.r.l. v Eda S.r.l. and others, (1971) ECR 69, §16 (ECJ 1971). See also Inge Govaere, The Use and Abuse of Intellectual Property Rights in E.C. Law (London: Sweet & Maxwell, 1996) 111. 9 Opinion A-G Jacobs in Oscar Bronner GmbH & Co. KG v Mediaprint Zeitungs- und Zeitschriftenverlag GmbH & Co KG, Mediaprint Zeitungsvertriebsgesellschaft mbH & Co. KG and Mediaprint Anzeigengesellschaft mbH & Co. KG, [1998] ECR I-07791, § 62, ECJ 26 November 1998 (‘Bronner’). 10 Verizon Communications Inc v Law Offices of Curtis V. Trinko, LLP, 540 398, 407, US Supreme Court 13 January 2004. 11 See also Hanns Ullrich, ‘Intellectual Property, Access to Information, and Antitrust: Harmony, Disharmony, and International Harmonization, in Expanding the Boundaries of Intellectual Property: Innovation Policy for the Knowledge Society’, (Rochelle, Cooper, Dreyfuss, et al eds, 2001) 382. 12 Hovenkamp, et al, see n 3 ‘IP and Antitrust’ 1.13. See also Radio Telefis Eireann (RTE) and Independent Television Publications Ltd v Commission of the European Communities, [1995] ECR I-00743, § 14, ECJ 6 April 1995. 13 Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights amend 93/98/EEC. 14 Neelie Kroes, ‘Being open about standards’, speech delivered at the OpenForum Europe Breakfast seminar, 10 June 2008, available at . 15 See, eg, United States v Glaxo Group, 410 US 52, 58, US Supreme Court 1973. (‘It is as important to the public that competition should not be repressed by worthless patents, as that the patentee of a really valuable invention should be protected in his monopoly.’)

369

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws intellectual property right only in conjunction with other, non-protected technology (ie tying), thereby effectively expanding the scope of the intellectual property right.16 In sum, notwithstanding their largely complementary purposes, there remains potential for conflicts between intellectual property rights and competition rules. Such conflicts can be approached within either or both regimes.17 17.19 First, competition rules can be used to scrutinize the exercise of intellectual property rights.

While too much scrutiny can undermine innovation, too little scrutiny can make markets subject to harm where right holders use their intellectual property rights in an abusive manner. Thus, on the one hand, there is reason for caution when reviewing the exercise of intellectual property rights through competition law. On the other hand, scrutiny of competition law over intellectual property rights should not be ruled out entirely. As discussed below, this balancing act is most explicit in the development of the law on unilateral refusals to license intellectual property rights.18 17.20 Second, intellectual property rights can be designed with internal limitations that more

carefully balance incentives to innovate with the need to preserve free competition19: where possible, preventing harm to competition through more carefully designed intellectual property rights seems preferable to curing such harm ex-post through application of competition law. Clearly, a 20-year patent is less likely sustainably to impede free competition than a 200-year patent. Yet, the scope of intellectual property protection should be considered at a considerably more detailed level. For example, the precise scope of copyright protection for computer programs, including whether a program’s interface specifications and functionality are protected, can significantly affect the competitiveness of software markets.20 17.21 In sum, notwithstanding the economic theory of complementarity of intellectual property

rights and competition rules, tensions between both regimes remain. In essence, resolving conflicts between competition and intellectual property rights requires a trade-off between flexibility and certainty. Certainty, offered by intellectual property rights, is necessary in order for innovators to ascertain that their innovations will be protected against misappropriation by competitors. Thus, where structural deficiencies exist within intellectual property rights resulting in too broad a scope of protection, such deficiencies are often best dealt with within these intellectual property rights. Flexibility may however be required to scrutinize individual abuses of such intellectual property rights on a case-by-case basis. In exceptional circumstances, case-by-case scrutiny of a right holder’s conduct under competition law may remain necessary.

16

Hovenkamp, et al, see n 3, ‘IP and Antitrust’ 13.10. Ibid., at 1.14. See also Ashwin van Rooijen, The Software Interface between Copyright and Competition Law: A Legal Analysis of Interoperability in Computer Programs (The Netherlands: Kluwer Law International, 2010). 18 See this Chapter, Section E, for a discussion of unilateral refusals to license intellectual property rights. 19 See generally Jens Schovsbo, ‘As If Made for Each Other—Intellectual Property Rights and Protection of Compatible Products’, (1998) 29 IIC 510. 20 See, eg, Van Rooijen, The Software Interface between Copyright and Competition Law; Pamela Samuelson, et al, ‘A manifesto concerning the legal protection of computer programs’, (1994) 94 Columbia Law Review 2308. 17

370

D. Internal Balancing in Intellectual Property Rights

D. Internal Balancing in Intellectual Property Rights As noted in Section C above, one cause for tensions between intellectual property rights and 17.22 concerns about preserving an appropriate scope for competition can be an overly broad scope of intellectual property protection. From an economic perspective, intellectual property rights must balance an adequate level 17.23 of protection to provide incentives to innovate with competitors’ freedom to use the innovation without permission from the right holder in order to stimulate price competition or follow-on innovation. However, notwithstanding the increasing prevalence of economic analysis of intellectual property rights, intellectual property rights are not primarily rooted in economic theory.21 Many different policies underlie today’s intellectual property laws, including the promotion of cultural diversity and the protection of moral rights.22 Economic justifications of intellectual property law have only more recently become commonplace, and they cannot fully explain why many current intellectual property rights have a particular scope and term of protection. Indeed, commentators have noted that intellectual property rights have generally been expanded in scope and term, often without substantial regard to the economic balance between innovation and free competition.23 Moreover, intellectual property rights are generally applied in a uniform, ‘one size fits all’ 17.24 manner: only a handful of different intellectual property rights—and most notably patent and copyright laws—exist to provide for rights of exclusivity and to promote innovation in a broad range of industries, even if these industries may have very different characteristics. Thus, current patent reform debates in the US focus on how different are the patent issues arising in the pharmaceutical sector from those in the information technology sector. Similarly, using copyright law to protect both functional works such as computer programs and also more traditional literary works like novels, paintings, and plays has arguably led to a number of difficulties, such as an excessive (life of the author plus 70 year) term of protection—at least for some works.24 This notwithstanding, some intellectual property rights contain limitations and exceptions 17.25 expressly adopted for the purpose of facilitating competition.25 For example, European software copyright law—harmonized by Directive 2009/24—provides for an exception that allows competitors to reverse engineer the interfaces by which a computer program interoperates with other computer programs. Designed with the express purpose of facilitating

21

Ullrich, Intellectual Property, see n 11, ‘Access to Information, and Antitrust’ 372. Ibid. 23 Professor Samuelson has noted that US intellectual property rights are more deeply rooted in economic, utilitarian principles than their European counterparts, in part because the US Constitution expressly grants Congress the power to enact intellectual property rights with the express utilitarian aim of ‘promoting the progress of the sciences and the useful arts’. See Pamela Samuelson, ‘Economic and Constitutional Influences on Copyright Law in the United States’, (2001) 23 European Intellectual Property Review 409. 24 Peter S. Menell, ‘An epitaph for traditional copyright protection of network features of computer software’, (1998) 43 Antitrust Bulletin 651, 672. 25 See also P. Bernt Hugenholtz and Ruth L. Okediji, Conceiving an International Instrument on Limitations and Exceptions to Copyright. Final Report, report for the Open Society Institute, 6 May 2008, available at . 22

371

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws competition, these exceptions enable competitors to design new computer programs that are interoperable with a dominant industry standard platform product.26 17.26 In the United States, a similar right has been recognized under the fair use doctrine of US

copyright law.27 In general, the US fair use doctrine has proven to be a robust and flexible mechanism for preventing an overly broad scope of copyright protection. Similarly, European design protection rights have been designed to facilitate interconnections with products protected by design rights, in particular by ‘carving out’ the shape of interconnecting parts from the scope of protection.28 In addition, several intellectual property rights in both Europe and the US allow for repairs of a protected product, thereby preventing a right holder from controlling the aftermarket for repairs or maintenance services.29 17.27 Finally, US patent and copyright misuse doctrines serve internally to prevent exclusionary

uses of these intellectual property rights that are considered to fall beyond the scope of protection.30

E. Unilateral Refusals to License under Competition Law (1) Abuse of dominance, refusals to deal, and intellectual property rights 17.28 The law on unilateral conduct constitutes one of the principal pillars of competition policy. It

recognizes that a firm in a dominant market position can abuse that position anticompetitively to exclude rivals by removing key remaining competitive constraints or by restricting competition on a secondary market, thereby structurally harming competition. Occupation of a dominant or monopoly position as such is not generally unlawful—it is behaviour related to obtaining or exercising such a position that gives rise to competition law issues. In Europe, this principle is codified in Article 102 of the Treaty on the Functioning of the European Union (TFEU); in the United States, it is contained in Section 2 of the Sherman Antitrust Act.31 This section discusses how the exercise of intellectual property rights can be unlawful under these respective antitrust laws. 26 See Thomas C. Vinje, ‘The development of interoperable products under the EC software directive’, (1991) 8 The Computer Lawyer; Thomas C. Vinje, The Legislative History of the EC Software Directive, in A Handbook on European Software Law (Michael Lehmann & Colin Tapper eds., Oxford: Oxford University Press, 1993). 27 See Jonathan Band, et al, ‘The US decision in Computer Associates v Altai compared to the EC Software Directive: transatlantic convergence of copyright standards favoring software interoperability’, (1992) 8 Computer Law & Practice 137. 28 J. Schovsbo, ‘as if made for each other—Intellectual property rights and protection of compatible products’, (1998) 29(5) International Review of Industrial Property and Copyright Law 510. 29 See also Jeannine Bartmann, Grenzen der Monopolisierung durch Urheberrechte am Beispiel von Datenbanken und Computerprogrammen: Eine rechtsvergleichende Studie des europäischen, deutschen und US-amerikanischen Rechts (Carl Heymanns Verlag. 2005). 30 See, eg, James A.D. White, ‘Misuse or fair use: that is the software copyright question’, (1997) 12 Berkeley Technology Law Journal 251; Lucie M.C.R. Guibault, Copyright Limitations and Contracts: An Analysis of the Contractual Overridability of Limitations on Copyright University of Amsterdam (2002); Brett Frischmann and Dan Moylan, ‘The Evolving Common Law Doctrine of Copyright Misuse: A Unified Theory and its Application to Software’, (2000) 15 Berkeley Technology Law. 31 The two provisions are however not equal; both the statutes and the case law interpreting them are different in the US and Europe. Generally, European competition law applies a considerably lower threshold for a finding of a dominant position: a dominant position is presumed for market shares of 50% or higher, whereas US courts tend to find Section 2 of the Sherman Act applicable only in cases of market shares of 75% or higher. In addition, Article 102 TFEU is broader than Section 2 of the Sherman Act as it not only prohibits exclusionary

372

E. Unilateral Refusals to License under Competition Law The starting point of the analysis under both European and US competition rules is that all 17.29 firms are encouraged to compete on merits. Even a firm having a monopoly or dominant position is generally free to choose its business partners and thus to deal or not to deal with other firms. The freedom not to deal with a competitor also applies to intellectual property rights. Indeed, the very essence of an intellectual property right is to confer upon the right holder a right of exclusivity. Thus, under neither the US nor the EU law on unilateral conduct is there a general requirement to deal with competitors, or a duty to license intellectual property rights to competitors—even for dominant firms. Nevertheless, it has been recognized that in certain circumstances, a dominant firm’s refusal 17.30 to deal with competitors can structurally harm competition in the market to the detriment of consumers, in particular where the refusal relates to an input controlled by the dominant firm that is indispensable to compete. Thus, in several cases, US and European courts have held that a refusal to provide competitors access to an indispensable input controlled by the dominant firm can constitute an abuse of a dominant position under competition laws. As a remedy for the abuse, the court may order the dominant firm to supply access to the input on (fair,) reasonable, and non-discriminatory or (F)RAND terms.32 A dominant firm’s ‘duty to deal’ has been held to exist on two distinguishable grounds. In 17.31 some cases, a dominant firm’s refusal to supply access to an input indispensable to competition has constituted part of a broader pattern of exclusionary conduct that does not constitute competition on the merits. Some of these cases involved a cessation of supply of an indispensable input as part of a termination of a previously profitable business relationship with competitors.33 The dominant firm may also engage in discriminatory refusals to supply to firms deemed most competitive. A different ground for imposing a duty to deal is the socalled ‘essential facilities’ doctrine. Under this doctrine, it is not the conduct of the dominant firm as much as the fact that the facility it controls is structurally indispensable to competition in a downstream market that gives rise to a duty to deal.34 However, whether based on the dominant firm’s conduct or on an essential facilities ground, 17.32 imposing a duty to deal remains controversial.35 First, imposing a duty to deal can significantly impede incentives to invest as it can remove the competitive advantage that a firm can achieve by investing in new infrastructure or other facilities. Incentives to invest can also be undermined for those seeking access to the dominant firm’s facilities, as they no longer need to invest themselves. Furthermore, imposing a duty to deal conflicts with a central ingredient of a free-market economy—the principle of freedom of contract. Finally, in the absence of

conduct, but also so-called exploitative abuses, which are not as such unlawful under Section 2. On the other hand, unlike Article 102 TFEU, Section 2 of the Sherman Act not only prohibits the abuse of a dominant position, but also the improper acquisition or maintenance of monopoly power. 32 Hovenkamp, et al, see n 6, ‘Unilateral Refusals to License in the US’ 20. 33 See, eg, Aspen Skiing Company v Aspen Highlands Skiing Corporation, 472 US 585, (US Supreme Court 19 June 1985); Istituto Chemioterapico Italiano S.p.A. and Commercial Solvents Corporation v Commission of the European Communities, 1974 223 (ECJ 6 March 1974). 34 See, eg, United States of America v Terminal Railroad Association of St. Louis et al, 224 US 383 (US Supreme Court 22 April 1912); Bronner see n 9. 35 Whish, Competition Law see n 3; Phillip Areeda, ‘Essential Facilities: An Epithet in Need of Limiting Principles’, (1990) 58 ABA Antitrust Law Journal 841.

373

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws an agreement by the parties, imposing a duty to deal introduces problems of how to determine the terms of access and monitoring compliance with such terms.36 17.33 It was long unclear whether the principle of an abusive refusal to deal was also applicable to

intellectual property rights, as the very essence of intellectual property rights is the right to exclude and thus to prevent others from using the protected subject-matter.37 Could use of the exclusionary power inherent in intellectual property rights amount to the type of unlawful conduct susceptible to competition scrutiny? 17.34 Courts in Europe have increasingly come to accept that a refusal to license an essential

intellectual property right can, in exceptional circumstances, constitute an abuse of a dominant position in violation of Article 102 TFEU. Whereas in the first such case—Volvo v Veng, discussed in (2)—the Court of Justice of the European Union (CJEU) expressed reluctance to force a dominant firm to license its intellectual property rights, later cases, including Magill, IMS Health, and Microsoft, have shown more willingness to impose such licences. As discussed in (6), different federal courts in the United States have adopted different approaches to this problem, ranging from a per se rule under which the exercise of intellectual property rights is almost always lawful, to a rule of reason under which the exercise of intellectual property rights is a presumptively valid (but rebuttable) business justification for excluding competitors. (2) Volvo v Veng and the existence/exercise doctrine 17.35 Earlier European cases on the interplay between intellectual property laws and competition

rules approached tensions between these regimes in a rather formalistic manner, by inquiring which of the two bodies of law—intellectual property rights or competition rules— outranked the other. Thus, it was argued that the competition rules of the EC Treaty (now Treaty on the Functioning of the European Union) were, in principle, superior to intellectual property rights, which, after all, were generally defined by the laws of the member states. However, an exception to that rule was believed to exist in Article 295 of the Treaty, which provides that ‘[t]his Treaty shall in no way prejudice the rules in Member States governing the system of property ownership’. As ‘property ownership’ was considered to comprise, inter alia, the system of intellectual property rights,38 application of Article 295 reversed the EC Treaty’s prevalence over nationally granted intellectual property rights: the EC Treaty’s competition rules not could normally set aside (nationally granted) intellectual property rights. 17.36 The existence/exercise doctrine, which originated from European case law on the free move-

ment of goods, was applied to allow for exceptions to this pecking order—ie, to define cases in which intellectual property rights could be overridden by the EC Treaty’s competition rules. To that end, the doctrine distinguishes between those uses of intellectual property rights that can be considered to constitute the ‘specific subject matter’ (core) of such intellectual property rights, and, conversely, those uses that did not form part of the specific

36 Areeda, ‘Essential Facilities: An Epithet in Need of Limiting Principles’ see n 35, at 853. See also Hovenkamp, et al, ‘Unilateral Refusals to License in the US’ see n 6, at 18. 37 See, eg, Continental Paper Bag v Eastern Paper Bag, 210 US 405, 429 (US Supreme Court 1908). (‘such exclusion may be said to have been of the very essence of the right conferred by the patent, as it is the privilege of any owner of property to use or not use it, without question of motive’.) 38 Établissements Consten S.à.R.L. and Grundig-Verkaufs-GmbH v Commission of the European Economic Community, ECR 299 (ECJ 13 July 1966).

374

E. Unilateral Refusals to License under Competition Law subject-matter. Only the latter uses were deemed susceptible to scrutiny by the EC Treaty provisions on free movement of goods, and, later, on competition.39 The existence/exercise doctrine was applied in the first competition case involving an alleged 17.37 abusive refusal to license an intellectual property right—Volvo v Veng.40 In that case, car manufacturer Volvo owned design rights not only in its car models,41 but also in the spare body parts of those respective models. Veng, an independent garage, imported certain spare body parts into the UK in order to offer repair services to the relevant Volvo cars. Volvo, however, refused to license its design rights in these spare body parts to Veng and other independent garages, thereby preventing them from operating on the ‘aftermarket’ for repairs to Volvo cars. The CJEU held that Volvo’s ‘bare’ refusal to license these nationally granted design rights in 17.38 spare body parts, which enabled the car manufacturers to control the aftermarket for such spare parts, fell within the specific subject-matter (or existence) of such design rights and could not therefore be scrutinized under competition law.42 In other words, a ‘bare’ refusal to license a nationally granted intellectual property right 17.39 could not constitute an abuse, even if it eliminated all competition on a secondary market, as such use of the intellectual property right constituted specific subject matter of such rights. By contrast, if Volvo were to engage in certain additional abusive conduct beyond the mere refusal to license, such conduct could amount to the ‘exercise’ of intellectual property rights, which in turn could be susceptible to competition law scrutiny. As examples of such conduct, the court mentioned ‘the arbitrary refusal to supply spare parts 17.40 to independent repairers, the fixing of prices for spare parts at an unfair level or a decision no longer to produce spare parts for a particular model even though many cars of that model are still in circulation’.43 Note that the examples of additional abusive conduct provided by the court are unrelated to the refusal to license per se; they are rather ‘separate’ abuses.44 The existence/exercise or specific subject-matter approach underlying the Volvo judgment 17.41 has been subject to criticism. Commentators have pointed out that the distinction between the existence and exercise is artificial. For example, Valentine Korah has noted, ‘the existence of an intellectual property right comprises all the ways in which it may be exercised’.45 Furthermore, it is unclear whether the doctrine should have any relevance beyond purely nationally defined intellectual property rights, such as in the case of harmonized intellectual property rights. Moreover, as Vinje has noted, it may well be incorrect to conclude that Article 295 TFEU 17.42 prevents competition law from overriding nationally granted intellectual property rights. The original rationale of this article appears to have been to allow member states to continue 39

Govaere, The Use and Abuse of Intellectual Property Rights in E.C. Law, see n 8. AB Volvo v Erik Veng (UK) Ltd, [1988] ECR 6211 (ECJ 5 October 1988) (‘Volvo’). 41 European design rights provide protection for the two- and three-dimensional shape of utility designs. They serve a purpose similar to US design patents. 42 Volvo, § 8. 43 Ibid. 44 It should also be noted these examples primarily concern exploitative rather than exclusionary behaviour. 45 Valentine Korah, Intellectual Property Rights And the EC Competition Rules (Oxford: Hart Publishing, 2006). 40

375

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws state ownership of various undertakings despite the Treaty’s rules favouring competition between privately owned undertakings; a concern that has little to do with intellectual property rights.46 Indeed, later European cases have less explicitly relied on the existence/exercise doctrine. (3) The development of the new product test in Magill and IMS Health 17.43 Magill was a 1995 judgment by the ECJ involving the (collective) refusal by three Irish

television broadcasters to license their respective copyrighted TV listings to Magill. Magill intended to use the listings to produce a new, comprehensive TV guide,47 thereby obviating the then-existing need for consumers to consult the three individual TV listings sold by the three main broadcasters separately. The broadcasters, however, refused to supply these listings, which they defended based on copyrights in the TV listings. 17.44 In assessing whether the broadcasters’ refusal amounted to an abuse of their dominant posi-

tion, the ECJ cited Volvo, noting that a ‘bare’ refusal to license an intellectual property right could not, without more, constitute an abuse of a dominant position; such could only be the case if the right holder engaged in additional, abusive conduct.48 Unlike in Volvo, however, the CJEU found additional abusive conduct to exist, The appellants’ refusal to provide basic information by relying on national copyright provisions thus prevented the appearance of a new product, a comprehensive weekly guide to television programmes, which the appellants did not offer and for which there was a potential consumer demand.49 17.45 Thus, rather than a ‘bare’ refusal to license, the ECJ found that the broadcasters’ conduct

involved an abusive element—namely, preventing the emergence of a new product for which there was substantial consumer demand—which distinguished it from that under scrutiny in Volvo and justified imposing a duty to license. The reference to ‘consumer demand’ appears to introduce an element of consumer harm into the analysis—ie, it must be shown that a refusal to license an intellectual property right leads to harm for consumers in the form of a reduced level of innovation. 17.46 The holding in Magill was confirmed in the subsequent 2004 ECJ judgment in IMS Health,50

which concerned the refusal to license a copyrighted ‘brick structure’—in essence, a map of Germany divided into 1,860 areas used for the collection of pharmaceutical sales data—that had become a de facto industry standard.51 Applying Magill, the CJEU held that a refusal to license this brick structure could be unlawful if it prevented the emergence of a new product.52 In his opinion, Advocate General Tizzano suggested that the purpose of the new product condition was to ensure that a refusal to license be found unlawful only where it 46 Thomas C. Vinje, ‘Magill: its impact on the information technology industry’, (1992) 14 European Intellectual Property Review 397, 398; Guiliano Marenco and Karen Banks, Intellectual Property and the Community. Rules on Free Movement: Discrimination Unearthed’, (1989) 15 European Law Review 224, 226. 47 Radio Telefis Eireann (RTE) and Independent Television Publications Ltd. v Commission of the European Communities [1995] ECR I-00743, §14, ECJ 6 April 1995. 48 Ibid., at §49. 49 Ibid., at §54. 50 IMS Health GmbH & Co. OHG v NDC Health GmbH & Co. KG, [2004] ECR I-05039, (ECJ 29 April, 2004). 51 Ibid., at §4–§5. 52 Ibid., at § 49.

376

E. Unilateral Refusals to License under Competition Law resulted in actual consumer harm.53 IMS Health judgment has been interpreted as holding that the new product factor constitutes a necessary precondition to a finding of an abusive refusal to license,54 although the judgment is ambiguous on this point.55 (4) Microsoft: limiting technical development The General Court’s 2007 Microsoft judgment is the most recent European court judgment 17.47 on refusals to license intellectual property rights. Microsoft concerned the leveraging of Microsoft’s near-monopoly position in client PC operating systems, where its Windows operating system runs on over 90 per cent of all PCs worldwide, into the adjacent market for workgroup server operating systems (ie, small network operating systems), where, prior to Microsoft’s exclusionary conduct, there were multiple competing vendors. Microsoft was alleged to have foreclosed the latter market by ceasing to supply the essential interoperability information—which Microsoft claimed was protected by various intellectual property rights—by which the Windows client PC operating system interoperated (or communicated) with the workgroup server operating system. The General Court did not conclude whether Microsoft’s intellectual property rights were valid, but presumed—for the sake of argument—that they were.56 Building upon Volvo, Magill, and IMS Health, the General Court (then the Court of First 17.48 Instance) held that a refusal to license can be unlawful only in ‘exceptional circumstances’.57 The General Court did not however accept that such exceptional circumstances were limited to the prevention of strictly new product development. Applying an arguably somewhat broader test, the Court relied on the statutory language in Article 102(b) TFEU, holding that a refusal to license an intellectual property right could be held unlawful in particular where the refusal, ‘limit[ed] technical development to the prejudice of consumers’.58 This holding appears to mean that a refusal to license an intellectual property right will not generally be found unlawful unless the refusal prevents the firms requesting a licence from developing innovative technologies different from those existing already that fulfil consumer demand. (5) Summarizing the duty to licence under EU competition law It may be tempting to deduce from the above-cited case law a number of general require- 17.49 ments for a finding of an abusive refusal to license under European competition law. Indeed, in IMS Health and Microsoft, the ECJ and CFI, respectively, appear to have formulated a ‘four-part test’ for a finding of an abusive refusal to license. These four requirements would be: (1) the refusal relates to an intellectual property right which is indispensable to compete in a ‘secondary’ market; (2) the refusal is such as to eliminate all effective competition in such

53

Opinion of A-G Tizzano in ibid., at § 66. Ibid., at § 49. 55 Ibid., at § 38. 56 Microsoft Corporation v Commission of the European Communities (Case T-201/04), [2007] ECR II-03601, § 314 (GC 17 September 2007). 57 The Court recited the following factors: (i) the interoperability information which Microsoft refused to supply proved indispensable to compete, (ii) such that effective competition in workgroup server operating systems was eliminated as a result of the refusal, (iii) the refusal limited technical development to the prejudice of consumers, and (iv) the refusal was not objectively justified. By using the words ‘in particular’, the court was careful not to rule out the potential relevance of other factors. See ibid., at § 332. 58 Ibid. 54

377

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws a market; (3) the refusal prevents the emergence of a new product for which there is consumer demand, or otherwise impedes technical development to the prejudice of consumers; and (4) the refusal is not objectively justified.59 17.50 These four factors could be interpreted quite broadly, implying broad scope for antitrust

liability of intellectual property right holders.60 For example, it has been suggested that the requirements of indispensability and of elimination of all effective competition are essentially one and the same thing, ie, an input is necessarily indispensable if a refusal to provide access to it results in elimination of competition, and vice versa. Moreover, with respect to dominance, the fact that its intellectual property right(s) are genuinely ‘indispensable’ to compete can contribute to a finding of a dominant position. 17.51 It has further been pointed out that objective justifications are rarely accepted, such that the

fourth condition is typically met.61 As noted, the new product condition could be perceived as having been broadened in Microsoft, as the court allowed ‘limit[ations] on technical development’ rather than on strictly new products to satisfy the ‘new product’-test.62 Thus, at first sight, the four-pronged test appears to leave room for broad antitrust liability for right holders who refuse to license their essential intellectual property rights to competitors. 17.52 However, it may well be incorrect to reduce the already discussed case law to ‘black letter law’

in the form of this four-part test. We submit that the European case law on refusals to license is driven by an increasingly fact-intensive and -specific analysis, in which the actual or likely effects on competition of a refusal to license are central to the question of whether an abuse has been committed. 17.53 First, the courts have reiterated that there is no general obligation under competition law for

intellectual property right holders to license their rights to competitors unless there are exceptional circumstances.63 By their very nature, exceptional circumstances do not easily lend themselves to a rigid legal test; rather, exceptional circumstances call for a case-by-case analysis.64 17.54 Second, the court has placed increasing emphasis on a showing of consumer harm, suggesting

that merely meeting the four requirements mentioned above will not suffice to establish an abusive refusal to license if it cannot in addition be shown that the dominant right holder’s refusal resulted in actual consumer harm. As noted, the introduction of the ‘new product’ 59

Ibid., at § 332; IMS Health, at § 52. Bo Vesterdorf, ‘Article 82 EC: Where do we stand after the Microsoft judgement?’, (2008) Global Antitrust Review 1, 10:it would seem that [the Microsoft judgment] has expanded the case law on four important fronts: the first is regarding the indispensability criterion, which now in addition to objective indispensability also covers ‘economic viability’ [. . .]; secondly, that the new product criterion no longer covers only new products in strict terms but also a technical development of an existing product; thirdly, elimination of competition means elimination of all effective competition and not all competition; finally, the value of the IPR or the degree of innovation involved or the negative effect on incentives to invest does not – at least easily – count as objective justification for a refusal by the dominant undertaking to grant a licence of its IPR(s). 61 Barry Doherty, ‘Just what are essential facilities?’, (2001) 38 Common Market Law 397, 428; James Turney, ‘Defining the Limits of the EU Essential Facilities Doctrine on Intellectual Property Rights: The Primacy of Securing Optimal Innovation’, (2005) 3 Northwestern Journal of Technology and Intellectual Property 179, § 48. See generally Paul John Loewenthal, ‘The Defence of “Objective Justification” in the Application of Article 82 EC’, (2005) 28 World Competition 455. 62 See n 60. 63 See, eg, Magill, see n 47, at § 50. 64 See also Hovenkamp, et al, see n 6, ‘Unilateral Refusals to License in the US’ 18. 60

378

E. Unilateral Refusals to License under Competition Law factor in Magill and its application in IMS Health,65 has generally been interpreted as a means of establishing consumer harm,66 even if economists have questioned whether the new product condition is indeed an adequate proxy for consumer harm.67 Similarly, in Microsoft, the CFI extensively cited economic evidence showing that but for 17.55 Microsoft’s foreclosing conduct, consumers would have benefitted from competing products that were superior on various points to which they attached great importance.68 The Commission has also noted that it is unlikely to pursue an alleged abusive refusal to license in the absence of consumer harm.69 Some of the cases discussed above may further be explained by the peculiar nature of the 17.56 intellectual property rights relied upon. Although it may be necessary to protect intellectual property right against ex-post scrutiny by competition laws in order to protect incentives to innovate,70 it is questionable whether incentives to innovate were truly at stake in some of these cases. It has been suggested that in Volvo, Magill, IMS Health, and Microsoft, the intellectual property rights upon which the respective firms relied were of limited relevance to their incentives to invest. This is so, for example, because the relevant information would undoubtedly have been 17.57 created even in the absence of such rights (eg, in Magill, the broadcasters would necessarily have created the TV listings as part of their broadcasting activities even if they could not obtain copyright protection, and the court referred to the listings as ‘basic information’).71 In part, then, these cases may illustrate imbalances in European intellectual property rights. In the United States, limiting principles within intellectual property rights, such as fair use in copyright law and equitable estoppel in patent law, may to some extent help to prevent similar competition problems from emerging in the first place.72 This leads to a related point: protecting incentives to invest is not the exclusive domain of 17.58 intellectual property rights; property rights in tangible goods often serve a similar purpose.73 This is true in particular where property rights protect unique infrastructures or similar facilities. In Bronner, Austrian magazine publisher Bronner claimed that Mediaprint—which operated not only a newspaper but also a nationwide distribution network—abused its

65

Opinion of A-G Tizzano in IMS Health, see n 50, at §66. Opinion of A-G Tizzano in ibid., at §64. It will be recalled that in Magill, the consumer harm subsisted in the fact that consumers, because of the refusal to license, were deprived of a comprehensive TV guide, which did not exist at the time. 67 François Lévêque, ‘Innovation, Leveraging and Essential Facilities: Interoperability Licensing in the EU Microsoft Case’, (2005) 28 World Competition 71. 68 Microsoft, see n 56, at §652. 69 European Commission, Guidance on the Commission’s enforcement priorities in applying Article 82 of the EC Treaty to abusive exclusionary conduct by dominant undertakings. pt. §5 (2009). 70 See this Chapter, Section C. 71 See also Ian S. Forrester, ‘Article 82: Remedies in search of theories?’, (2005) 28 Fordham International Law Journal 919. 72 Robert P. Merges, Who Owns the Charles River Bridge? Intellectual Property and Competition in the Software Industry, UC Berkeley Public Law and Legal Theory Working Paper (1999), available at . See also this chapter, Section D. 73 See generally Ashwin van Rooijen, ‘The Role of Investments in Refusals to Deal’, (2008) 31 World Competition 63. See also C. Ritter, ‘Refusal to Deal and “Essential Facilities”: Does Intellectual Property Require Special Defence Compared to Tangible Property?’, (2005) 28 World Competition 281. 66

379

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws dominant position by refusing to include Bronner’s publications in Mediaprint’s Austrian distribution network.74 17.59 With a view to protecting incentives to invest,75 the CJEU found that access to Mediaprint’s

distribution network might have been beneficial for Bronner but not indispensable, as nothing prevented Bronner from establishing a competing distribution network.76 The CFI in Microsoft appears to have invited dominant firms to demonstrate, under the heading of objective justifications, how and why their incentives to invest would be diminished by an order to deal with a competitor.77 This ‘defence’ would appear to be available to dominant firms refusing to license intellectual property rights as well as those refusing to supply access to other types of inputs. 17.60 Another important factor may be whether the refusal to license is a ‘bare’ refusal to license or

rather can be said to involve additional abusive conduct. In Volvo, the court held that a ‘bare’ refusal to license did not constitute abusive behaviour unless it involved a separate form of abusive conduct. Later cases, including Magill and IMS Health, could be interpreted as holding that a ‘bare’ refusal to license can in fact be abusive as long as that intellectual property right is objectively indispensable to develop new products even if no separate abusive conduct is present. 17.61 It should be noted, however, that a right holder’s conduct may continue to be a factor in the

courts’ analysis. Thus, the Magill court appeared to be unimpressed with the broadcasters’ somewhat pretextual copyright claim, while the refusal seemed engineered actively to prevent competition from a more innovative product.78 In Microsoft, the court cited evidence showing that Microsoft‘s refusal to license did not constitute a ‘bare’ refusal to license, but rather was a termination of a previous supply.79 In addition, the court found that Microsoft’s conduct was contrary to industry practice from non-dominant firms.80 Finally, the anticompetitive intent of Microsoft’s conduct appeared to be highlighted by various internal documents. Thus, the court’s analysis of the conduct of these respective dominant right holders beyond their ‘bare’ refusal to supply seems likely to have played a part in the court’s finding of an abuse. (6) US approaches to unilateral refusals to license 17.62 Unlike in Europe, US courts, especially the federal courts of appeal, which are the primary

source for the leading judgments, have adopted divergent approaches to the problem of unilateral refusals to license essential intellectual property rights.81 It is noted the US Supreme Court has not yet decided this issue.

74

Bronner see n 9. Opinion of A-G Jacobs in ibid. 76 Ibid. See also Microsoft, para 310. (‘Bronner concerned access to an infrastructure that had required significant investment’.) 77 Microsoft, see n 56, at § 697–§ 698. 78 Magill, see n 47, at § 54. 79 Microsoft see n 56. 80 Ibid. 81 Hovenkamp, et al, see n 3, ‘IP and Antitrust’ 13.25. 75

380

E. Unilateral Refusals to License under Competition Law In In re ISO Antitrust Litigation,82 the Federal Circuit adopted a near per se legality rule, 17.63 according to which the use of an intellectual property right is nearly always lawful. The court noted, ‘[i]n the absence of any indication of illegal tying, fraud in the Patent and Trademark Office, or sham litigation, the patent holder may enforce the statutory right to exclude others from making, using, or selling the claimed invention free from liability under the antitrust laws.’83 This approach essentially leaves no room for any ex-post corrections of intellectual property rights through competition rules and is therefore at odds with European law.84 Other US courts have however adopted less rigid approaches. In Data General,85 the First Circuit adopted a presumption of legality, according to which the 17.64 exercise of an intellectual property right is a rebuttable, but presumptively valid business justification: ‘we hold that while exclusionary conduct can include a monopolist’s unilateral refusal to license a copyright, an author’s desire to exclude others from use of its copyrighted work is a presumptively valid business justification for any immediate harm to consumers.’86 The First Circuit’s approach is akin to recognizing that a refusal to license can constitute an abuse of a dominant position in exceptional circumstances. However, the First Circuit did not offer any guidance as to which circumstances might be so qualified. A somewhat similar approach was adopted by the Ninth Circuit in Image Technical Services 17.65 v Eastman Kodak Company,87 in which Kodak refused to supply spare parts for its photocopiers to independent service organizations (ISOs), thereby risking to foreclose competition in the aftermarket for maintenance of Kodak photocopiers.88 Citing Data General, the Ninth Circuit found that Kodak had a presumptively valid justification for refusing to supply parts that were protected by intellectual property rights. However, that presumption was negated by evidence of pretext. In particular, Kodak raised 17.66 its intellectual property defence to its refusal to supply only late in the proceedings, while its refusal covered both protected and non-protected parts. Based on this evidence, the Ninth Circuit found that Kodak could not benefit from the presumptively valid business justification for refusing to supply based on its intellectual property rights. Yet another approach to the interface between intellectual property rights and competition 17.67 law was offered in United States v Microsoft.89 In this case, the Court of Appeals for the DC Circuit observed, [Microsoft] claims an absolute and unfettered right to use its intellectual property as it wishes: ‘[I]f intellectual property rights have been lawfully acquired,’ it says, then ‘their subsequent exercise cannot give rise to antitrust liability.’ That is no more correct than the proposition that

82 In re Independent Service Organizations Antitrust Litigation, 203 F 3d 1322 (US Court of Appeals, Federal Circuit 17 February 2000). 83 Ibid., at 1327. 84 See also Hovenkamp, et al, n 6, ‘Unilateral Refusals to License in the US’, 17. 85 Data General Corporation v Grumman Systems Support Corporation, 36 F 3d 1147 (US Court of Appeals, First Circuit 14 September 1994). 86 Ibid., at 1187. 87 Image Technical Services v Eastman Kodak Co., 125 F.3d 1195 (US Court of Appeals, Ninth Circuit 26 August 1997). 88 Ibid., at 1219. 89 United States v Microsoft Corporation, 34 F 3d 34 (US Court of Appeals, DC Circuit 28 June 2001).

381

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws use of one’s personal property, such as a baseball bat, cannot give rise to tort liability. [citation omitted]90 17.68 The US Supreme Court has not yet answered the question of whether a refusal to license an

intellectual property right can amount to a violation of Section 2 of the Sherman Act. However, in Verizon v Trinko, the Supreme Court adopted a narrow view of the role of antitrust law to correct for refusals to supply.91 In that case, the court found that Trinko’s claim of Verizon’s refusal to supply access to its network to AT &T was baseless, inter alia, as the 1996 Telecommunications Act already mandated such access. The court noted, ‘[w]here access exists, the [essential facilities] doctrine serves no purpose.’92 The Court further noted that Aspen Skiing—a case in which the Supreme Court found that a termination of an existing supply violated Section 2—was ‘at or near the outer boundary of §2 liability.’93 These observations may suggest that, were the court to rule on an unlawful refusal to license an intellectual property right, it could well find that such rights are already internally balanced, leaving little or no room for antitrust law to force access to intellectual property rights.

F. Specific Issues Involving Standards: Patent Hold-up and the (F)RAND Defence (1) Standards and patent hold-up 17.69 Competition problems originating from unilateral control over intellectual property rights

can manifest themselves in particular where the intellectual property rights protect aspects of technical or other standards. Technical standards are often used in industries where interoperability with other products is important, such as in the information and communications technology (ICT) industries. For example, UMTS and CMDA are standards used in mobile communications; HTML4, XML, and VESA are standards used in the computing and software industries. 17.70 When standards are used, conformity with such standards is often economically necessary as

the implementer benefits from direct or indirect network effects: by adhering to the standard, a product can ‘interoperate’ with the largest selection of other products, or users of the product can communicate with users of other standard-compliant products.94 Non-compliance with the standard risks foregoing these significant benefits and may therefore not be economically viable. Because the adoption of a standard often involves the selection of a certain technology at the expense of others, there is a risk that implementing the selected technology requires licensing of specific intellectual property rights ‘reading’ on part of the standard—ie, that are essential to implementing the standard. 17.71 The combination of these two factors—the economic necessity of compliance with the stan-

dard and the fact that certain intellectual property rights may be essential to implementing the standard—can give the relevant right holders substantial market power. By refusing to 90

Ibid., at 63. See Hovenkamp, et al, n 6, ‘Unilateral Refusals to License in the US’, 21. 92 Verizon Communications Inc. v Law Offices of Curtis v Trinko, Llp 540 U.S. 398, 411 (US Supreme Court 13 January 2004). 93 Ibid., at 879. 94 Thomas C. Vinje, et al, ‘Addressing Standards Creation: Divergence or Convergence Across the Atlantic?’, (2011) 25 Antitrust Magazine 58. 91

382

F. Specific Issues Involving Standards: Patent Hold-up and the (F)RAND Defence license their right after adoption of the standard, these intellectual property right holders can ‘hold up’ implementers of the standard and demand supra-competitive royalties,95 or prevent rivals from using the standard altogether. Standards may either emerge autonomously (de facto) or be agreed upon in a formalized 17.72 standard-setting process between competitors. The above-discussed judgments in Microsoft and IMS Health are examples of unilateral control over intellectual property rights in de facto standards. In these respective cases, competitors had no viable alternative to using the de facto standards controlled by Microsoft (the Microsoft Windows interface and protocol specifications) and IMS Health (the IMS Health brick structure). Therefore, the refusal by Microsoft and IMS Health to license these intellectual property rights resulted in elimination of effective competition on the respective markets. However, competition problems can also arise in collaborative standard settings contexts, in 17.73 which standards are adopted by agreement between stakeholders. In particular, a right holder can intentionally ‘conceal’ his or her intellectual property rights covering (parts of ) a candidate standard, thereby increasing chances of the candidate standard being adopted, only to enforce these intellectual property rights against implementers of the standard once the standard has been set (known as ‘patent ambush’). Rambus, which owned patents in DRAM PC memory technology, was investigated by both 17.74 the US FTC96 and the European Commission for precisely this conduct. In 2007, the Commission preliminarily found that Rambus had concealed its intellectual property rights reading on the then-candidate DRAM memory technology, only subsequently to demand excessive royalties from implementers of that standard.97 The Commission also found that the DRAM standard was much less likely to have been agreed upon if the stakeholders had known about Rambus’ patent rights. Rambus defended itself noting that the rules of the relevant standard setting organization did not require disclosure. Although it did not issue a final decision concluding that Rambus had indeed abused a dominant position, the Commission did accept commitments offered by Rambus consisting of a licensing program containing capped royalty fees for relevant technology.98 In another investigation related to standards, the Commission investigated whether 17.75 Qualcomm had abused a dominant position in third-generation mobile network technology by charging excessive royalties for patents reading on the UMTS standard in breach of Qualcomm’s commitment to various standard setting organizations to license these patents on FRAND terms.99 Qualcomm’s defence was, inter alia, that it could not be established that its licensing terms were not FRAND. The Commission ultimately closed the investigation, indicating only that the investigation had ‘raised important issues about the pricing of technology after its adoption as part of an industry standard. In practice, such assessments may 95 See, eg, European Commission, Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements § 269 (2011). 96 Vinje, et al., ‘Addressing Standards Creation’, see n 94. The US ultimately failed to demonstrate that but for Rambus’ deceptive conduct, the DRAM standard would not have been adopted. 97 Commission Decision of 9.12.2009 relating to a proceeding under Article 102 of the Treaty on the Functioning of the European Union and Article 54 of the EEA Agreement (European Commission, 9 December 2009). 98 Ibid. 99 Charging excessive royalties may constitute an ‘exploitative abuse’ under Article 102 TFEU. Under US antitrust law, by contrast, enjoying the benefits of monopoly power by charging supra-competitive prices is not an offence under Section 2 of the Sherman Act.

383

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws be very complex, and any antitrust enforcer has to be careful about overturning commercial agreements.’100 17.76 The recent AstraZeneca judgment by the European General Court may shed some light on

unilateral deceptive conduct such as that under scrutiny in Rambus.101 Upholding the Commission’s 2005 Decision, the Court found that AstraZeneca had abusively deceived various national patent offices about the entry date of its patented drug Losec in order to obtain longer supplemental protection certificates.102 This holding appears to confirm that deceptive conduct—which could also include intentionally concealing intellectual property rights in a candidate standard—can constitute an abuse. 17.77 Second, AstraZeneca was found to have abused its dominant position by withdrawing the

market authorization for its Losec drug, thereby forcing generic drug makers to re-submit generic versions of the Losec drug for a lengthy market authorization process and thus artificially delaying their entry. The Court found that the mere fact that such withdrawals were explicitly allowed by relevant legislation did not negate the abusive nature of AstraZeneca’s conduct. Applying this holding to the standard-setting context, it would appear that the mere fact that the rules of a standard-setting organization do not require right holders to disclose their intellectual property rights in a candidate standard ex-ante, would not preclude a finding that a failure to do so may nonetheless be found abusive under Article 102 TFEU. 17.78 Ex-post competition law interference in standards cases may well be unavoidable because the

effects of intellectual property rights covering aspects of standards are to a significant extent case-specific and therefore difficult to anticipate within intellectual property right legislation itself.103 For example, whether compliance with a particular standard is necessary can only be assessed ex-post in the context of the market and the market power of the relevant standard,104 including the availability of alternative technologies and the existence of network effects. Some commentators have however suggested an ex-ante standards-exception within intellectual property rights, which would make right holders subject to a compulsory licence should their rights prove indispensable for implementation of a particular standard.105 17.79 Similarly, the risks of patent hold-up and patent ambush can be anticipated within the rules

of a standard-setting body, by having the stakeholders agree in advance to disclose essential intellectual property rights reading on candidate standards and to license such rights on Fair and Reasonable, Non-Discriminatory terms. Many SSOs indeed require their members to agree to such terms, although the details of disclosure and licensing commitments vary greatly.106 The European Commission’s new Horizontal Guidelines create a safe harbour

100 European Commission, Antitrust: Commission closes formal proceedings against Qualcomm, MEMO/09/ 516, 24 November, 2009. 101 Case T-321/05 AstraZeneca v Commission, not yet published (EU General Court 1 July 2010). 102 Such certificates are available to owners of pharmaceutical patents to compensate for the time lost during the market authorization process for a new drug. 103 Ashwin van Rooijen, ‘The Software Interface between Copyright and Competition Law’ see n 17, at 113. 104 See also European Commission, Communication from the Commission—Guidelines on the applicability of Article 101 of the Treaty on the Functioning of the European Union to horizontal co-operation agreements, Official Journal C11, 14 January 2011, § 269. 105 Kamiel J. Koelman, ‘An Exceptio Standardis: Do We Need an IP Exemption for Standards?’, (2006) IIC 823. 106 See also Vinje, et al., ‘Addressing Standards Creation’, n 94.

384

G. Conclusion against competition scrutiny for standard-setting agreements that require stakeholders to disclose essential intellectual property rights reading on a candidate standard, and to license such rights on (F)RAND terms.107 (2) The FRAND defence case law As noted, under certain circumstances, a refusal to license intellectual property rights that are 17.80 essential to implement a standard may constitute an abuse of a dominant position under Article 102 TFEU. Some defendants being accused of patent infringement in implementing a technical standard have therefore sought to defend themselves against the infringement claim by arguing that the enforcing right holder abused its dominant position by constructively refusing to license. Two member state courts—in Germany and in the Netherlands—have recently adopted 17.81 different approaches to this issue. Incidentally, both cases concerned the same Orange Book standard for compact disc indexes, in which Dutch Philips Electronics held a number of patents. These patents were essential to anyone selling or manufacturing CD-R or DVD-R discs. In both cases, Philips sued defendants selling such discs without a licence from Philips. In Orange Book, the German Bundesgerichtshof held that a defence to a patent infringement 17.82 action could be available to implementers of standards being confronted with enforcement actions from right holders owning essential intellectual property rights in such standard. This is so if the implementing company acted as a ‘licensee in good faith’ by determining and regularly depositing reasonable licensing fees.108 In its judgment of 17 March 2010, the Dutch court explicitly rejected the German approach, 17.83 noting that it created a fundamental tension with the patent system, contributed to legal uncertainty, and was unnecessary to protect the legitimate interests of the defendant.109 According to the Dutch court, in the absence of an actual request for a licence, the mere enforcement of a(n essential) patent could not be construed as a refusal to license even if the implementing company determined and regularly deposited what it considered to be FRAND licensing fees. Unlike the German court, the Dutch court did not consider whether a FRAND defence might nonetheless be available to companies that had in fact requested a licence but were denied one on FRAND terms. It remains to be seen how other courts will approach this issue.

G. Conclusion Contemporary case law and commentary considers intellectual property rights and compe- 17.84 tition rules to be largely complementary rather than conflicting regimes, at least from an economic perspective: both regimes aim to stimulate innovation. This view is to be contrasted with the now obsolete view of two regimes in conflict with each other. It does not

107

Ibid. Orange Book-standard (Bundesgerichtshof 6 May 2009). 109 Royal Philips Electronics NV v SK Kassetten GMBH & CO. KG (District Court, The Hague 17 March 2010). 108

385

Chapter 17: The Relationship between Intellectual Property Rights and Competition Laws follow, however, that all use of intellectual property rights is immune from competition scrutiny. 17.85 Courts in both Europe and the US have accepted that, in exceptional circumstances, a domi-

nant company’s refusal to license an essential intellectual property right can constitute an abuse of a dominant position, in particular where such refusal to license is part of a larger pattern of abusive conduct. European and US courts have adopted somewhat divergent approaches to this problem, however, with European courts appearing more willing to impose a duty to license an intellectual property right under competition rules.

H. Summary 17.86 In summary, we would note the following points:

• It is difficult to argue that a strict legal test exists that determines whether a dominant firm is under a duty to license its essential intellectual property rights. • Much depends on the circumstances of the case and in particular the conduct of the right holder and evidence of consumer harm. • Nonetheless, courts appear more willing to accept that a refusal to license constitutes an abuse where: • The right holder occupies a dominant position; • The intellectual property right is essential to compete and not merely beneficial; • The refusal to license on balance impedes innovation; and • There are no objective or business justifications for the refusal to license. • Where possible, preventing competition problems by conceiving more carefully balanced intellectual property rights appears to be preferable to an ex-post competition approach.

386

COMPARISON TABLES Australia Katherine Chandler and Tim Golder, Allens Arthur Robinson

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Two- or three-dimensional marks; also extending to colour, sound or scent. Manner of Protection Registration for trademarks; proof of goodwill and injury for passing off, no registration required. Extent of Rights Potentially full overlap. Duration of Rights Initial registration period plus unlimited number of fixed-term renewal periods for registered trademarks; no time limitation for passing off. Enforcement Injunctive and monetary relief available for both; courts are sensitive to double recovery; additional damages are available for trademark infringement. Major Unresolved Issues Do ‘famous marks’ apply to a passing off claim?; can passing off claim rest solely on goodwill without proof of confusion/injury?; can there be a licence of a right entitled to protection under passing off?

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Patents require registration; no registration for trade secret protection. Extent of Rights Mutually exclusive; trade secret protection is available for valuable information that remains confidential and is not protected and/or protectable as a patent. Duration of Rights 20 years for patents; trade secret protection survives for so long as confidentiality is maintained. Enforcement Remedy for trade secrets lies in equitable action for breach of confidence. Injunctive and monetary relief available for both claims; additional damages available for patent infringement but not for breach of confidence. Major Unresolved Issues Sources of legal authority that give rise to trade secret protection; relationship between trade secrets and non-compete undertakings.

387

Comparison Tables IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Patents cover functional inventions; design registrations cover ornamental features of articles that are industrially produced. Manner of Protection Registration is a prerequisite for both forms of protection. Extent of Rights Rights are complementary; patent provides a monopoly right to exploit the protected invention; design provides monopoly right in respect of functional/ ornamental features. Duration of Rights Both confer protection for fixed statutory periods; standard patent term is for 20 years; designs are registered for five years, with the possibility of a single renewal for another five years (maximum 16-year term under previous law). Enforcement Injunctive and monetary relief are available for both; additional damages are available for relief for both; courts are sensitive to double recovery. Major Unresolved Issues Principled test for distinguishing between functional and ornamental aspects of an article.

Copyright/Design Rights

Overlapping Subject-Matter Protected A literary or artistic work used as an ornamental feature of an industrially produced article. Manner of Protection Registration is a prerequisite for design protection; copyright protection subsists in an original work in a material form, no registration required. Extent of Rights Design registration gives monopoly rights; copyright protects against unauthorized copying; dual copyright and design protection generally not possible, thus where copyright subsists in a work and a corresponding design is or has been registered, it is not an infringement of copyright to reproduce the work by embodying that, or any other, corresponding design in a product. Duration of Rights Copyright subsists in the main for 70 years plus the life of the author; designs are registered for five years, with the possibility of a single renewal for another five years (maximum 16-year term under previous law). Enforcement Injunctive and monetary relief available for both; additional damages are available for relief for both; courts are sensitive to double recovery. Major Unresolved Issues When can copyright subsist in the ornamental features of a useful article?; to what extent can the common law ground of unjust enrichment be relied upon in the absence of a design registration or copyright protection, or in lieu of being required to register multiple designs with a short commercial life?

Trademarks/Copyright

Overlapping Subject-Matter Protected Literary, artistic, and musical works. Manner of Protection Registration for trademarks (unregistered marks may be protected by passing off); registration not required for copyright protection. Extent of Rights Trademarks protect the source-identification function of the work; copyright protects original work from unauthorized copying.

388

Australia IP Regimes

Overlap

Trademarks/Copyright

Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for registered trademarks; for copyright, in the main, protection is 70 years plus life of the author. Enforcement Injunctive and monetary relief available for trademark and copyright infringement; additional damages are available for relief for trademark and copyright infringement; courts are sensitive to double recovery. Major Unresolved Issues Extent to which phrases might be protected either by copyright or trademark; extent to which the common law ground of unjust enrichment can be relied upon when there is no valid copyright or trademark right.

Trademarks/Designs

Overlapping Subject-Matter Protected Non-functional/ornamental features of two- and especially three-dimensional articles. Manner of Protection Registration is a prerequisite for design protection; registration for trademarks (unregistered marks may also be protected by passing off). Extent of Rights Trademarks protect the source-identification function of the non-functional features of the article; design registration gives monopoly rights in respect of unauthorized copying of functional/ornamental features. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for registered trademarks (no limitation for duration of passing off); registration for an initial fixed-term with possibility of one fixed-term renewal period for designs. Enforcement Injunctive and monetary relief available for trademark and design infringement; additional damages available for trademark and design infringement; courts are sensitive to double recovery. Major Unresolved Issues The extent to which trademark and design rights will be treated as mutually exclusive.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Registration for trademarks (unregistered marks may be protected under passing off); appellations of origin (or ‘geographical indications’) for wines and spirits are registered pursuant to Australian Wine and Brandy Corporation Act 1980 (AWBC Act); appellations of origin also protected by general statutory prohibitions on falsely representing the origin of goods. Extent of Rights Both rights protect the source function of a mark, however, an appellation of origin is limited to protecting the geographic origin of the product. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for registered trademark; unlimited protection for appellation of origin, however appellations registered under AWBC Act can be removed from the register in limited circumstances.

389

Comparison Tables IP Regimes

Overlap

Trademarks/Appellations of Origin (cont.)

Enforcement Injunctive and monetary relief available for trademark infringement; additional damages available for trademark infringement; injunctive relief available for misuse of geographical indication registered under AWBC Act (criminal enforcement in certain circumstances). Major Unresolved Issues Validity of appellation of origin when product is produced outside the geographical area; distinction between geographical descriptiveness under trademark law and registrability as an appellation of origin.

Database Right/Copyright

Overlapping Subject-Matter Protected Databases. Manner of Protection No sui generis database right; structure and (less likely) contents of databases may attract copyright protection. Extent of Rights Copyright protects against unauthorized reproduction and subsists in an original work in a fixed form. Duration of Rights Copyright is valid, in the main, for 70 years plus life of the author. Enforcement Monetary and injunctive relief available; additional damages available for copyright infringement. Major Unresolved Issues Extent to which a database attracts copyright protection; extent to which reproduction of information contained in a database amounts to copyright infringement.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary or dramatic works. Manner of Protection Each right subsists in an original work in a fixed form, no registration required; moral rights only vest in natural persons. Extent of Rights Complementary; copyright protects against unauthorized reproduction; moral rights protect the author’s right of integrity and attribution and the right not to have the work falsely attributed. Duration of Rights Both rights are valid in the main for 70 years plus the life of the author. Enforcement Monetary and injunctive relief for both; courts are sensitive to double recovery; additional damages are available for relief for copyright infringement, but are not available for moral rights infringements. Major Unresolved Issues Right of waiver of moral rights.

390

Australia IP Regimes

Overlap

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Overlap where there are restrictive trade practices involving the exercise of an intellectual property right. Manner of Protection NA Extent of Rights Contravention of competition laws does not affect the validity of the relevant intellectual property right. Duration of Rights NA Enforcement Monetary and injunctive relief for infringement of intellectual property rights and for restrictive trade practices; other remedies available for restrictive trade practices; additional damages for infringement of intellectual property rights; courts are sensitive to double recovery. Major Unresolved Issues Extent to which terms of a licensed intellectual property right will not attract competition law scrutiny because all of the restraints are derived directly from the exercise of the intellectual property right itself.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected No action for unfair competition; the extent to which the law of unjust enrichment may be relied upon is unclear. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement Equitable remedies for unjust enrichment, if appropriate; injunctions and monetary relief available for patent and copyright infringement; additional damages are available for relief for patent infringement; courts are sensitive to double recovery. Major Unresolved Issues Scope of application of the law of unjust enrichment.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected No action for unfair competition; the extent to which the law of unjust enrichment may be relied upon is unclear. Manner of Protection NA Extent of Rights NA Duration of Rights NA

391

Comparison Tables IP Regimes

Overlap

Unfair Competition/ Trademarks (cont.)

Enforcement Equitable remedies are available for unjust enrichment; monetary and injunctive relief available for trademark infringement; additional damages are available for relief for trademark infringement; courts are sensitive to double recovery. Major Unresolved Issues Scope of application of the law of unjust enrichment.

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, likeness or voice of (and, potentially, information about) a person. Manner of Protection Registration for trademarks; personal information is protected by privacy legislation; misuse of a person’s name, likeness, or voice is protected by passing off and by certain statutory prohibitions on misleading and deceptive conduct. Extent of Rights Trademark registration protects the source-identification function of the name or likeness; privacy legislation protects the collection, correction, use, and disclosure of personal information; passing off and misleading and deceptive conduct prohibitions protect against a misrepresentation arising regarding unauthorized use of a person’s name, likeness, or voice. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for registered trademarks; privacy legislation protections do not apply to deceased individuals; passing off and misleading and deceptive conduct prohibitions extend beyond the life of the individual. Enforcement Monetary and injunctive relief for trademark infringement, passing off and misleading and deceptive conduct; courts are sensitive to double recovery; additional damages available as relief for trademark infringement; injunctive relief for contravention of privacy legislation. Major Unresolved Issues Existence of a common law or equitable right to privacy.

Patents/Utility Model (Petty Patents)

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required as a prerequisite for both (Petty Patent system replaced by Innovation Patents system in 2001). Extent of Rights The inventiveness threshold for innovation patents is lower; innovation patents are granted without examination, however they cannot be enforced until they have been examined, at the request of either the patentee, Commissioner, or a third party. Duration of Rights Both are protected for a fixed statutory period (standard patents for 20 years; innovation patents for eight years). Enforcement Injunctive and monetary relief available for both; additional damages available for both. Major Unresolved Issues NA

392

Australia IP Regimes

Overlap

Domain Names/Trademarks

Overlapping Subject-Matter Protected Two-dimensional marks. Manner of Protection Trademarks are protected by registration; domain names are registered on the registry. Extent of Rights Registration for trademarks; domain name licences are allocated provided eligibility rules are satisfied, including relevant Australian connection and that the domain must be either an exact match, abbreviation, or acronym of the registrant’s name or trademark or otherwise closely and substantially connected to the registrant. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods; period of registration/renewal differs for each right. Enforcement Injunctive and monetary relief available for trademark infringement; cancellation or transfer of the domain name to the complainant. Major Unresolved Issues The extent of the impact on trademark owners of the .brand TLD system announced by ICANN.

Patents/Plant Breeders’ Rights Protection

Overlapping Subject-Matter Protected Patents protect invention of a product or process, while plant breeder’s rights protect certain defined types of new plant varieties. Manner of Protection Each right requires registration under its respective statute; plant varieties must be distinct, uniform, and stable. Extent of Rights Partial mutual exclusivity; plant-related discoveries not covered by a breeder’s right registration may still be protected by patent; plant breeder’s right and patent may apply to the same plant variety. Duration of Rights Patents are registered for a 20-year term, plant breeder’s rights are for a 25-year term for tree and vine varieties, and a 20-year term for all other varieties. Enforcement Monetary and injunctive relief for both; additional damages are also available for patent infringement but not infringement of plant breeder’s rights; courts are sensitive to double recovery. Major Unresolved Issues The interrelationship between names of registered plant varieties and trademark protection.

Patents/Copyright

Overlapping Subject-Matter Protected Certain useful works that may be expressed in literary form within the meaning of the copyright law, most notably computer software. Manner of Protection Patents require registration; copyright requires creation of an original work in a fixed form for protection, no registration required.

393

Comparison Tables IP Regimes

Overlap

Patents/Copyright (cont.)

Extent of Rights Partially complementary. Duration of Rights Patents are valid for 20 years; in the main, copyright protection subsists for 70 years plus life of the author. Enforcement Both rights provide for monetary and injunctive relief; additional damages are also available for copyright and patent infringement; courts are sensitive to double recovery. Major Unresolved Issues Patentability of computer software; the extent to which databases and pure data attract copyright protection and/or constitute patentable subject-matter.

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions involving therapeutic goods, in respect of which data is provided to the appropriate administration to obtain marketing approval. Manner of Protection Registration is required for patent protection; data provided to the administration may be protected as a trade secret and may attract data exclusivity protection under the Therapeutic Goods Act 1989 if data are not publicly available, the goods contain a new ‘active component’ and the administrative registry does not already list a therapeutic good with the same active component. Extent of Rights Patent protection can co-exist with data exclusivity protection (publication of the invention does not necessarily disclose the data); patent protection and trade secret protection are mutually exclusive (because publication of the invention destroys its secrecy). Duration of Rights Patents are protected for 20 years, while data will be protected as a trade secret for so long as it remains confidential. Data exclusivity is provided for five years from the date the related therapeutic good is first listed. Enforcement Injunctive and monetary relief available for breaches of confidence and patent infringement; additional damages available for patent infringement; prohibition against the agency using protected information when evaluating other therapeutic goods. Major Unresolved Issues NA

394

Brazil

Brazil Benny Spiewak, ZCBS-Zancaner Costa, Bastos e Spiewak Advogados

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Two- or three-dimensional marks. Manner of Protection Registration for trademarks; proof of goodwill and proof of damages required for passing off, no registration required. Extent of Rights Partial overlap; passing off provides for protection of signs more broadly. Duration of Rights Initial registration period of ten years, plus unlimited number of ten-year renewal periods for trademarks; no time limitation for duration of rights for passing off. Enforcement Mutual exclusivity of remedies, but courts are sensitive to double recovery. Major Unresolved Issues Do ‘famous and well known marks’ apply to a passing off claim?; can a passing off claim rest solely on goodwill without proof of confusion/injury?; can there be a licence of a right entitled to protection under passing off?

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions, utility patents. Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights Regarding overlapping subject-matter, mutually exclusive, since disclosure under patent laws excludes protection as a trade secret; trade secret protection is available for valuable information not protected and/or protectable as a patent. Duration of Rights 20 years from application for invention patents; 15 years from application for utility patents; unlimited protection of trade secrets, provided secrecy is maintained. Enforcement Injunctive and monetary relief available for both rights, although injunctive relief may be of limited value regarding unauthorized disclosure of a trade secret; statutory damages are available for misappropriation of trade secrets; damages and injunctive relief are available. Major Unresolved Issues Sources of legal authority that give rise to trade secret protection; relationship between trade secrets and non-compete undertakings.

395

Comparison Tables IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Different aspects of invention; patents cover functional inventions whilst designs cover the ornamental features of articles that are industrially produced. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights The two sets of rights may be complementary regarding the same article; patents cover unauthorized exploitation of the protected invention, whilst designs protect against unauthorized copying of the ornamental features. Duration of Rights Both are protected for a fixed statutory period of 20 years; designs are registered for an initial fixed term of ten years, with possibility of three fixed-term renewal periods of five years each. Enforcement Injunctive and monetary relief available for both rights, the likelihood of possible double recovery is low. Major Unresolved Issues Principled test for distinguishing between functional and ornamental aspects of an article.

Copyright/Design Rights

Overlapping Subject-Matter Protected A literary or artistic work that may be used as an ornamental feature of an industrially produced article. Manner of Protection Registration is a prerequisite for patent protection; copyright protection subsists in an original work in a fixed form, no registration required. Extent of Rights The two sets of rights are mutually exclusive to the extent that no copyright can subsist in a design unless the design is not intended for industrial reproduction. Duration of Rights Copyright subsists in the main for 70 years plus the life of the author; designs are registered for an initial fixed-term of ten years with possibility of three fixed-term renewal periods of five years each. Enforcement Injunctive and monetary relief available for both rights; statutory damages are available for relief for infringement of copyright. Major Unresolved Issues Under what circumstances can copyright subsist in the ornamental features of a useful article?

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original literary, artistic, and musical works under copyright may also be protected as a trademark. Manner of Protection Registration for a trademark; creation of the work in a fixed form for protection of a copyrighted work, no registration required. Extent of Rights Trademarks protect the source-identification function of the original work; copyright protects the original, artistic work from unauthorized copying.

396

Brazil IP Regimes

Overlap

Trademark/Copyright

Duration of Rights Trademarks are valid for ten-year periods, renewable for equal and successive unlimited periods, provided that the title holder complies with applicable statutory formalities, such as payment of fees. Copyrights are valid for the author’s life, plus 70 years. Enforcement Injunctive and monetary relief available for both rights; statutory damages are available for infringement of copyright; statutory damages for unfair competition as complementary claim to trademark infringement. Major Unresolved Issues Extent to which logo might be protected either by copyright or trademark

Trademarks/Designs

Overlapping Subject-Matter Protected Non-functional/ornamental features of two- and especially three-dimensional articles. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Trademarks protect the source-identification function of the non-functional features of the article; design law protects against unauthorized copying of these functional/ornamental features. Duration of Rights Initial period of ten years, plus potentially unlimited number of ten-year term renewal periods for trademarks; registration for an initial fixed term of ten years with possibility of three five-year renewal periods for designs. Enforcement Injunctive and monetary relief available for both rights; judicial concern for double recovery and difficulty in fashioning complementary relief. Major Unresolved Issues The extent to which the Registry will treat trademark and design rights as mutually exclusive, except in special circumstances.

Trademarks/Geographical Indications

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Under the Industrial Property Law, each right requires registration as a prerequisite for protection; registration of geographical indications follows the guidelines set by the Brazilian Patent and Trademark Office. Extent of Rights Both rights protect the source function of a mark; however, an appellation of origin is limited to protecting the geographic origin of the product. Duration of Rights Initial period of ten years plus potentially unlimited number of ten-year renewal periods for trademarks; validity of the geographical indication is strictly related to the maintenance of the geographical conditions that initially entitled the registration, eg climate features.

397

Comparison Tables IP Regimes

Overlap

Trademarks/Geographical Indications (cont.)

Enforcement Injunctive and monetary relief available for both infringement of trademark and geographical names. Major Unresolved Issues Extent to which appellation of origin remains valid when the product is produced outside of the geographical area; distinction between geographical descriptiveness under trademark law and registrability as an appellation of origin.

Database Right/Copyright

Overlapping Subject-Matter Protected Original/non-trivial contents and/or the structure and organization of a database. Manner of Protection Copyright protection subsists in an original work in a fixed form, no registration required. Extent of Rights Unitary form of protection since there is no separate statutory protection for a database under Brazilian law. Duration of Rights 70 years plus the life of the author of the original work. Enforcement Injunctive and monetary relief, including statutory damages, are available. Major Unresolved Issues Extent to which investment and effort in creating a database can be protected under the Industrial Property Law, even in the absence of copyright protection.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary, or dramatic works. Manner of Protection Each right subsists in an original work in a fixed form, no registration required; natural person required for moral rights. Extent of Rights Complementary, since they protect different aspects of the same original work; copyright protects against unauthorized reproduction, whilst moral rights protect the author’s right of paternity and integrity in the work (excluding computer software). Duration of Rights Copyrights are valid for 70 years plus the life of the author; moral rights are perpetual. Enforcement Both rights provide for injunctive, monetary relief; statutory damages are available; judicial sensitivity to double recovery. Major Unresolved Issues Right of waiver and/or transfer of moral rights, mainly in works made for hire.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Overlap where there is a potential restraint of trade involving the exercise of an intellectual property right. Manner of Protection NA

398

Brazil IP Regimes

Overlap

Competition Law/Intellectual Property Rights

Extent of Rights Finding of violation of competition law will not affect the validity of the relevant intellectual property right. Duration of Rights Under the Industrial Property Law, a lawsuit based on patent, trademark, or for an industrial property-like injury must be commenced within five years following the injury. Enforcement Abrogation of the anticompetitive provisions in the licence; injunctive and monetary relief; fines. Major Unresolved Issues Extent to which the terms of a licensed intellectual property right will not attract competition law scrutiny because all of the restraints are derived directly from the exercise of the intellectual property right itself.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected The Industrial Property Law has sometimes been relied upon when there is no valid intellectual property right (eg trade dress, look and feel), but there has been conduct that is tantamount to infringement or misappropriation of the intellectual property right. Manner of Protection NA Extent of Rights NA Duration of Rights Under the Industrial Property Law, a lawsuit based on patent or industrial property-like injury must be commenced within five years following the injury. Enforcement If unfair competition is found, monetary and injunctive relief is available. Unresolved Issues Scope of application of unfair competition provisions of the Industrial Property Law to copyright and patent-like rights.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected De facto, unregistered trademarks. Manner of Protection NA Extent of Rights NA Duration of Rights Under the Industrial Property Law, a lawsuit based on a trademark-like injury must be commenced within five years following the injury. Enforcement If unfair competition is found, monetary and injunctive relief is available. Major Unresolved Issues Scope of application of unfair competition provisions of the Industrial Property Law to de facto trademark.

399

Comparison Tables IP Regimes

Overlap

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name of a person. Manner of Protection Registration is required for a trademark; both the Brazilian Federal Constitution and Civil Code provides for the protection of privacy and publicity rights. Extent of Rights Trademarks protect the source-identification function of the name or likeness; right of privacy protects the person from an invasion of his privacy (personal rights) by the unauthorized use of his name. Duration of Rights Initial period of ten years plus potentially unlimited number of ten-year renewal periods for trademarks; right of privacy is arguably valid only for the life of a person. Enforcement Both rights provide for monetary and injunctive relief; basis for relief for breach of privacy relies on Constitutional principles. Major Unresolved Issues Can the right of privacy be transferred or bequeathed?

Patents/Utility Model (Petty Patents)

Overlapping Subject-Matter Protected There is no separate protection for a petty patent under Brazilian law; all useful inventions must satisfy the same requirements for patentability under the Industrial Property Law in order to be protected. Manner of Protection Registration is required as a prerequisite for patent protection. Extent of Rights All inventions governed under a unitary system. Duration of Rights Patents are protected for a fixed statutory period. Enforcement Injunctive and monetary relief are both available. Major Unresolved Issues Possibility of future statutory enactment of a petty patent-like regime.

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect two-dimensional marks; trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; the system for registration of Country Code Top Level Domains (.br) and Generic Top Level Domains (.extension.br) domain names are coordinated by the Brazilian Internet Management Committee-CGI. Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration (except for well-known trademarks) is based solely on ‘first-come, first-served’; well-known trademarks (as registered by the Brazilian Patent and Trademark Office) are subject to title and ownership confirmation process before being registered as a domain name.

400

Brazil IP Regimes

Overlap

Domain Names/ Trademarks

Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods, but the periods of registration/ renewal differ for each right. Enforcement Injunctive and monetary relief are available for infringement of a trademark; cancellation or transfer of the domain name to the complainant are the available remedies for a successful challenge of a domain name. Major Unresolved Issues The extent to which principles that apply to trademark registration and protection should be applied to a challenge of a domain name registration.

Patents/Plant Breeders’ Rights Protection

Overlapping Subject-Matter Protected Utility patents protect invention of a product or process, whilst breeder’s rights protect certain defined types of new plant varieties. Manner of Protection Each right requires registration as a prerequisite for protection; plant varieties are separately protected by the UPOV system. Extent of Rights Partial mutual exclusivity; limited overlap between breeders’ rights and trademark law regarding the naming of a registered plant variety. Duration of Rights Patents are valid for 20 years, whilst plant varieties are valid for up to 18 years (wine trees). Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues The interrelationship between names of registered plant varieties and trademark protection.

Patents/Copyright

Overlapping Subject-Matter Protected Certain useful works that may be expressed in literary form within the meaning of the copyright law, most notably computer software. Manner of Protection Patents require registration as a prerequisite for protection; under the Brazilian Industrial Property Law, software ‘as is’ is not subject to patent protection; copyright requires creation of an original work in a fixed form for protection, no registration required. Extent of Rights The two sets of rights are partially complementary, especially with respect to computer code. Duration of Rights Patents are valid for a fixed statutory period; in the main, copyright protection subsists for 70 years plus the life of the author. Enforcement Both rights provide for monetary and injunctive relief Major Unresolved Issues The scope of patent protection for computer software and more generally the extent of copyright protection for a useful product; the extent of copyright protection upon expiry of a patent.

401

Comparison Tables IP Regimes

Overlap

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions, especially in the pharma-chemical area, with respect to the data obtained from clinical trials. Manner of Protection Registration is required as a prerequisite for patent protection; data is protected by administrative confidentiality; specific provisions for the protection and granting of data exclusivity are available only for animal drugs and do not cover human drugs. Extent of Rights The two sets of rights are partially complementary. Duration of Rights Patents are protected for a fixed statutory period; no explicit term for the duration of exclusive rights in data. Enforcement Injunctive and monetary relief are available for patents; improperly disclosed data find may be protected under the unfair competition provisions of the Industrial Property Law. Major Unresolved Issues Whether producers of follow-on, generic versions of human-oriented drugs unfairly compete with the initial, pioneer drug producer by relying upon the data of the latter for the purposes of obtaining market authorization.

402

Canada

Canada Robert A. Fashler and Sean Alexander, Gowling Lafleur Henderson LLP

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks Passing Off)

Overlapping Subject-Matter Protected Word marks, design marks, three-dimensional marks, and certification marks. Manner of Protection Trademarks are protected by registration; unregistered trademarks are recognized and enforced by statutory and common law actions for passing off. Extent of Rights Significant overlap, but passing off provides for protection of a broader variety of items and is more flexible. Duration of Rights Registered marks protected for renewable 15 year terms; unregistered marks have no fixed duration. Enforcement Injunctions, damages for lost profits, accounting of profits, nominal damages, and punitive damages. Major Unresolved Issues Extent to which signs not registrable as a trademark may still be protected by passing off.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration required for patents; maintaining the secrecy of valuable information is required for trade secrets; no provision for registering trade secrets. Extent of Rights The rights overlap before official publication of the patent application; trade secrets cease to be enforceable when they are made available to the public. Duration of Rights Issued patents are protected for 20 years; no time limit for the protection of trade secrets, as long as secrecy is maintained. Enforcement Injunctions, damages for lost profits, an accounting of profits, and nominal damages; injunctive relief may be of limited value regarding enforcement of a trade secret. Major Unresolved Issues Extent of patent protection available for business methods, purely computational computer programs, and life forms.

403

Comparison Tables IP Regimes

Overlap

Patents/Industrial Design Rights

Overlapping Subject-Matter Protected Patents cover functional inventions; industrial designs cover the ornamental features of manufactured articles. Manner of Protection Registration required for both. Extent of Rights The rights may be complementary; patents address unauthorized exploitation of the protected invention while industrial designs protect against unauthorized copying of ornamental features of the article. Duration of Rights Patents are protected for 20 years; industrial designs are protected for ten years. Enforcement Injunctions, damages for lost profits, an accounting of profits, nominal damages, and punitive damages. Major Unresolved Issues Dividing line between the ornamental and the purely functional; possibility of obtaining industrial design registration for the visual attributes of a patented object.

Copyright/Industrial Design Rights

Overlapping Subject-Matter Protected Visual designs that appeal to the eye and that are applied to a useful article. Manner of Protection Industrial designs must be registered; copyright arises from the time that the copyright work is authored, with optional registration. Extent of Rights Generally, when a useful article that bears the design is manufactured in quantities greater than 50, design is protectable only as industrial design, subject to significant exceptions; designs dictated entirely by a utilitarian function are not enforceable either by copyright or industrial design. Duration of Rights Copyright in most works subsists for approximately 50 years after the death of the author; industrial designs are valid for ten years. Enforcement Injunctions, damages for lost profits, an accounting of profits, and punitive damages; statutory damages for copyright infringement; copyright registration may provide certain advantages. Major Unresolved Issues What kinds of works remain enforceable as copyright after being manufactured in numbers greater than 50?; when does a utilitarian design also have an ornamental attribute?

Trademark/Copyright

Overlapping Subject-Matter Protected The design elements of trademarks, such as logos, labels, or lettering/font. Manner of Protection Trademarks are protected by registration and passing off action; copyright arises from the time that the copyright work is authored, with optional registration. Extent of Rights Trademarks protect against the use of the design element in a manner likely to cause confusion as to source; copyright protects against copying of the protected work.

404

Canada IP Regimes

Overlap

Trademark/Copyright

Duration of Rights Registered trademarks are protected for renewable 15-year terms; unregistered marks have no fixed term of protection; copyright in most works subsists for approximately 50 years after the death of the author. Enforcement Injunctions, damages for lost profits, accounting of profits, nominal damages, and punitive damages; statutory damages for infringement of copyright; copyright registration may provide certain advantages. Major Unresolved Issues Respective rights when one person owns the copyright in the design component of a trademark, but a different person owns the trademark.

Trademarks/ Industrial Designs

Overlapping Subject-Matter Protected Visual designs that are applied to the surface or shape of a useful article or packaging. Manner of Protection Industrial designs must be registered; trademarks may be registered. Extent of Rights Trademark actions protect against designs that are likely to cause confusion; registered industrial designs protect against unauthorized copying of the protected design. Duration of Rights Registered marks are protected for renewable 15-year terms; unregistered marks have no fixed term of protection; registered industrial designs are protected for ten years. Enforcement Injunctions, damages for lost profits, accounting of profits, nominal damages, and punitive damages. Major Unresolved Issues The dividing line between a purely functional design, an ornamental design, and a design that serves to distinguish products or services.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Geographical indications for wine and spirits may be entered in a statutory list; appellation of origin may be registered as a certification mark and may also be protected by a passing off action. Extent of Rights Geographical indication listing is available only for qualified wine and spirits; appellations of origin may be registered as certification marks, which have the same legal characteristics as a registered trademark except that they distinguish products by reference to geographic origin and related standards; passing off actions are available to protect against confusion about the geographic origin of products. Duration of Rights Geographical indication listings continue indefinitely, but may cease to be enforceable in certain circumstances; registered certification marks may be renewed for successive 15-year terms; common law rights in appellations of origin may be enforced so long as they enjoy a reputation in Canada.

405

Comparison Tables IP Regimes

Overlap

Trademarks/Appellations of Origin (cont.)

Enforcement Injunctions, damages for lost profits, accounting of profits, nominal damages, and punitive damages. Major Unresolved Issues The interplay and overlap of geographical indications, registered certification marks, common law rights in appellations of origin, and regular trademarks have not been clarified.

Database Right/Copyright

Overlapping Subject-Matter Protected Compilations of data that result from the selection or arrangement of data; no separate law in Canada protecting databases. Manner of Protection Copyright and trade secret; copyright arises from the time that the copyright work is authored, registration is optional but highly recommended. Extent of Rights A compilation of data will not attract copyright protection unless it is an ‘original intellectual creation’; if the data in a database is not generally available to the public, it may also be protected as a trade secret. Duration of Rights Data covered by copyright subsists for approximately 50 years after the death of the author. Enforcement Injunctive relief, damages for lost profits, an accounting of profits and statutory damages, are available; copyright registration may provide certain advantages. Major Unresolved Issues When does a compilation of data constitute an ‘original intellectual creation’?

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary, or dramatic work. Manner of Protection Each right subsists in every original work expressed in a fixed form; optional registration for copyright. Extent of Rights Copyright protects against unauthorized reproduction of a work; the applicable component of the moral right of integrity may be infringed by the distortion, mutilation, or other modification. Duration of Rights Copyright and moral rights each arise when the work is created and subsist for approximately 50 years after the death of the author. Enforcement Injunctions, damages for lost profits, an accounting of profits, statutory damages, and punitive damages; copyright registration may provide certain advantages. Major Unresolved Issues When does modification of a work prejudice the honour or reputation of the author?

406

Canada IP Regimes

Overlap

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected The Competition Act may apply where any form of intellectual property is used so as to unduly restrain or lessen competition, trade, or commerce; the Commissioner of Patents has authority to deal with ‘patent abuse’. Manner of Protection The Competition Act remedies are enforceable only by the Attorney General; patent abuse provisions may be initiated by the Attorney General or any affected party. Extent of Rights The Federal Court (for Competition Act cases) and the Commissioner of Patents (for Patent Act cases) has discretion to assess whether a there is a problem and, if so, how to address it. Duration of Rights No limitations on enforcement of competition and patent abuse proceedings other than applicable limitation periods. Enforcement Remedies for violation of the Competition Act include setting aside anticompetitive contracts, directing the grant of licences to others, and restraining conduct or directing particular remedial acts; the Commissioner may order the patentee to grant licences or may revoke the patent. Major Unresolved Issues The scope of the provisions and the applicable process for invoking them.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected In Canadian practice, ‘unfair competition’ does not constitute a precise legal term of art designating a precise body of law; to the extent that the words ‘unfair competition’ are used in Canada, they usually denote passing off; they also appear as a heading for Section 7 of the Trade-Marks Act, which includes statutory passing off provisions (s 7(b) and (c)). Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected In Canadian practice, ‘unfair competition’ does not constitute a precise legal term of art designating a precise body of law. To the extent that the words ‘unfair competition’ are used in Canada, they usually denote passing off; they also appear as a heading for Section 7 of the Trademarks Act, which includes statutory passing off provisions (s 7(b) and (c)). Manner of Protection NA

407

Comparison Tables IP Regimes

Overlap

Unfair Competition/ Trademarks (cont.)

Extent of Rights NA Duration of Rights NA Enforcement NA. Major Unresolved Issues NA

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, pseudonym, likeness, portrait, voice, or signature of a person. Manner of Protection Trademarks may be registered; provincial law protects personality rights by common law actions; some provinces have also passed legislation protecting personality rights. Extent of Rights The Trade-Marks Act prohibits falsely suggesting a connection with any living individual or using the portrait or signature of any individual who is living or has died within the preceding 30 years; attributes of personality are protected from misappropriation by provincial laws, especially if the personality in question can easily be identified. Duration of Rights Registered marks are protected for renewable 15-year terms; the Trade-Marks Act continues protection for 30 years after death; provincial personality rights usually subsist only while the person is alive. Enforcement Injunctions, damages for lost profits, accounting of profits, nominal damages, and punitive damages; action for privacy can rely on remedies available for a tort claim, including injunctions, compensatory damages, and nominal damages. Major Unresolved Issues Can the right of privacy be transferred or bequeathed?; when does the right of free speech take precedence?; must the person be famous or well-known?

Patents/Utility Model (Petty Patents)

Overlapping Subject-Matter Protected Inventions; there is no separate protection for a petty patent or utility model under Canadian law. Manner of Protection Registration is required as prerequisite for patent protection. Extent of Rights All inventions governed under a unitary system. Duration of Rights Patents are protected for 20 years. Enforcement Injunctions, damages for lost profits, an accounting of profits, nominal damages, and punitive damages. Major Unresolved Issues Should Canada provide a legal monopoly for innovations that do not satisfy full requirements for patenting?

408

Canada IP Regimes

Overlap

Domain Names/Trademarks

Overlapping Subject-Matter Protected Two-dimensional marks; trademarks serve as an indicator of source, while a domain name is an alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration under the Trade-Marks Act and by passing off action; domain names in the TLD are registered with the Canadian Internet Registration Authority (CIRA); when domain names are used as trademarks, they receive trademark protection. Extent of Rights Trademarks must meet requirements for registration; domain names are registered on a ‘first-come, first-served’ basis provided that the applicant satisfies Canadian presence requirement. Duration of Rights Registered trademarks are protected for renewable 15-year terms; domain names may be registered for fixed period of time and renewed on the same basis. Enforcement Injunctions, damages for lost profits, accounting of profits, nominal damages, and punitive damages; remedies in a domain name proceeding are cancellation or transfer of the domain name. Major Unresolved Issues The extent to which mere registration of a domain name will be considered to violate trademark rights; should principles regarding trademark registration and protection be applied in domain name proceedings?

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Utility patents protect inventions; plant breeder’s rights protect certain types of new plant varieties. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Plants per se are considered to be higher life forms that are not patentable; partial mutual exclusivity since certain vegetative discoveries not covered by a breeder’s right registration may still be protectable by a patent. Duration of Rights Patents are valid for 20 years; breeders’ rights subsist for 18 years. Enforcement Injunctions, damages for lost profits, an accounting of profits, nominal damages, and punitive damages. Major Unresolved Issues What is a non-patentable multi-cellular life form?

409

Comparison Tables IP Regimes

Overlap

Patents/Copyright

Overlapping Subject-Matter Protected Written and graphic material regarding computer software, algorithms, and schematics. Manner of Protection Registration required for patent; copyright arises from the time that the copyright work is authored, with optional registration. Extent of Rights The two sets of rights are complementary, especially with respect to computer code. Duration of Rights Patents are valid for one fixed term of 20 years; in the main, copyright normally subsists for approximately 50 years after the death of the author. Enforcement Injunctions, damages for lost profits, an accounting of the defendant’s profits, nominal damages, and punitive damages. Major Unresolved Issues The scope of patent protection for computer programs; the extent of copyright protection for works embodied in useful products.

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Data submitted to regulatory authority in connection the process to approve the sale of new drugs, which drugs are often also the subject of patents or patent applications. Manner of Protection Registration required for patent; data exclusivity is protected by administrative procedures. Extent of Rights Patents prevent the unauthorized use of invention; data exclusivity prevents use of the protected data in a subsequent application for marketing authorization. Duration of Rights Patents are protected for 20 years; generally, data exclusivity prevents a third party from using the data in an application for marketing authorization for the first six years following approval and from securing approval for at least eight years after that date. Enforcement Available remedies for patents include injunctions, damages for lost profits, an accounting of the defendant’s profits, nominal damages, and punitive damages; data exclusivity is enforced by administrative procedures. Major Unresolved Issues How does the subsequent drug manufacturer prove ‘similarity’?; how to determine the time period for the data exclusivity?

410

China

China Matthew Murphy, MMLC Group

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Well-known trademarks. Manner of Protection Registration for trademarks; proof of reputation of trademark and injury for passing off, no registration required. Extent of Rights Only unregistered well-known trademarks are protected under the Chinese Trademark Law. Duration of Rights Initial registration period plus unlimited number of fixed-term renewal periods for trademarks; no time limitation for duration of rights for unregistered well-known trademarks. Enforcement Cessation of infringing act and payment of compensation for damages apply to both rights. Major Unresolved Issues Criteria for identifying ‘well-known trademark’.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights The two sets of rights are mutually exclusive; however, before a patent application is published, it can be protected as a trademark secret under the Law Against Unfair Competition. Duration of Rights 20 years from application for invention patents; unlimited protection of trade secrets, provided secrecy is maintained. Enforcement Cessation infringing act and payment of compensation for damages apply to both rights. Enforcement under the Patent Law is usually stricter than that under Law Against Unfair Competition. Major Unresolved Issues Weakness of protection of trade secrets; identification of infringement of trade secrets by ex-employees.

Patents/Design Rights

Overlapping Subject-Matter Protected Designs are protected under the Patent Law. Manner of Protection Registration is required as a prerequisite for patent protection and design protection.

411

Comparison Tables IP Regimes

Overlap

Patents/Design Rights (cont.)

Extent of Rights Design rights are included within patent rights under the Patent Law. Duration of Rights Inventions are protected for 20 years; designs are protected for ten years, without any renewal period. Enforcement Cessation of infringing act and payment of compensation for damages. Major Unresolved Issues NA

Copyright/Design Rights

Overlapping Subject-Matter Protected A literary or artistic work that may be used as an ornamental feature of an industrially produced article. Manner of Protection Copyright protection subsists in an original work in a fixed form, no registration required; registration is a prerequisite for patent protection. Extent of Rights The two sets of rights are mutually exclusive, the right owner may either claim its copyright or design right in the work. Duration of Rights Copyright subsists in the main for 50 years plus the life of the creator; design registration is for a ten-year term without renewal. Enforcement Cessation of infringing act and payment of compensation for damages apply to both rights; elimination of effects of the act and an apology are available for relief for infringement of copyright. Major Unresolved Issues Whether copyright subsists in an industrially applied artistic work.

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original literary, artistic works, photography, or sculpture works under copyright may also be protected as a trademark. Manner of Protection Registration for a trademark; creation of the work in a fixed form for protection of a copyrighted work, no registration required. Extent of Rights Trademarks protect the source-identification function of the original work; copyright protects the original work from unauthorized copying. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for trademarks; in the main, 50 years plus the life of the author of the work. Enforcement Cessation of infringing act and payment of compensation for damages apply to both rights; elimination of effects of the act and an apology are available for relief for infringement of copyright. Major Unresolved Issues Extent to which phrases might be protected either by copyright or trademarks.

412

China IP Regimes

Overlap

Trademarks/Designs

Overlapping Subject-Matter Protected Two- and three-dimensional designs that do not present the general name, main functions, use, or raw materials of goods can be registered as a trademark. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Trademarks protect the source-identification function of the non-functional features of the article; design law protects against unauthorized copying of these functional/ornamental features. Duration of Rights Initial period ten years plus potentially unlimited number of fixed-term (ten years) renewal periods for trademarks; registration for a ten-year term without renewal for designs. Enforcement Cessation of infringing act and payment of compensation for damages apply to both rights. Major Unresolved Issues Enforcement of a three-dimensional trademark regarding a product shape is inconsistent across China, whereas a design patent for the product shape is easily enforced.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Each right requires registration as a prerequisite for Protection. Extent of Rights Appellations of origin are protected in China as a form of trademark, namely an origin certification trademark. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods. Enforcement Cessation of infringing act and payment of compensation for damages are available for infringement of a trademark. Major Unresolved Issues Appellations of origin can also be registered with the departments in charge of entry-exit inspection and quarantine in China; how to solve the disputes arising due to different review rules applied by different governmental departments.

Database Right/Copyright

Overlapping Subject-Matter Protected No concept of database right in China; databases are protected generally under the Chinese Copyright Law and Law Against Unfair Competition. Manner of Protection The protection of the copyright in a database copyright subsists in an original work in a fixed form, no registration required. Extent of Rights Unitary form of protection since there is no separate statutory protection for a database under Chinese law.

413

Comparison Tables IP Regimes

Overlap

Database Right/ Copyright (cont.)

Duration of Rights Copyright is valid for 50 years plus the life of the author. Enforcement Cessation of infringing act, elimination of effects of infringement, such as deletion of the infringing portions; payment of compensation for damages and an apology are available for relief for infringement of copyright. Major Unresolved Issues NA

Copyright/Moral Rights

Overlapping Subject-Matter Protected Copyright consists of moral rights and property rights under the Chinese Copyright Law; both moral rights and property rights are granted to the author. Manner of Protection Copyright requires creation of an original work in a fixed form for protection, no registration required. Extent of Rights Moral rights include the right of publication, authorship, alteration, and integrity under the Chinese Copyright Law. Duration of Rights The property rights of copyright are valid for 50 years plus the life of the author; no time limitation for duration of the moral rights. Enforcement Cessation of infringing act, elimination of effects of the act, payment of compensation for damages and an apology are available for relief for infringement of copyright. Major Unresolved Issues If an entity can claim moral rights; if moral rights can be transferred or inherited.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected No special Competition Law in China; Competition limitation is prohibited under the Anti-monopoly Law. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement Competition is mainly protected by administrative enforcement. Major Unresolved Issues If finding a violation under the Anti-Monopoly Law can affect the validity of the relevant intellectual property right.

414

China IP Regimes

Overlap

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected The relationship of intellectual property law and unfair competition law is both special law and general law; the Law against Unfair Competition provides additional protection for intellectual property. Manner of Protection Patent/Copyright Law is given priority to be applied. Extent of Rights The Law against Unfair Competition law provides additional protection for patent and copyright. Duration of Rights Patents and copyright are both protected for a limited duration; no limit to claim under the Law against Unfair Competition. Enforcement The enforcement under the Patent/Copyright Law is usually stricter than the enforcement under the Law Against Unfair Competition. Major Unresolved Issues Scope of application of the Unjust Enrichment Law to copyright and patent-like rights.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Use without authorization of other’s registered trademark on the goods for sales may violate both the Law Against Unfair Competition and the Trademark Law. Manner of Protection The Trademark Law is given priority as applied to such a violation, as per the principle that ‘a special law is superior to a general law’. Extent of Rights The Law against Unfair Competition provides additional protection for trademark rights. Duration of Rights NA Enforcement Enforcement under the Trademark Law is usually stricter than under the Law against Unfair Competition. Major Unresolved Issues Scope of application of the Law against Unfair Competition to trademark-like rights.

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name or likeness of a person. Manner of Protection Registration is required for a trademark; the name or likeness of a person is protected under the PRC General Principles of the Civil Law (there is no special privacy law in China). Extent of Rights Trademarks protect the source-identification function of the name or likeness; right of privacy protects the person from an invasion of his privacy by the unauthorized use of his name or likeness. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for trademarks; right of privacy is arguably valid only for the life of a person.

415

Comparison Tables IP Regimes

Overlap

Trademarks/Publicity (Privacy) (cont.)

Enforcement Cessation of infringing act and payment of compensation for damages apply to both rights; elimination of effects of the act and an apology are available for relief for infringement of privacy. Major Unresolved Issues Can the right of privacy be transferred or bequeathed?; does the use of the name of deceased celebrity constitute infringement?

Patents/Utility Model (Petty Patents)

Overlapping Subject-Matter Protected No separate protection for a petty patent under Chinese law; all utility models must satisfy the requirements for novelty, inventiveness, and practical applicability under the Chinese Patent Law in order to be protected. Manner of Protection Registration is required as a prerequisite for utility model patent protection. Extent of Rights Three kinds of patents (invention, utility model, and design) are governed under a unitary system. Duration of Rights Inventions are protected for 20 years; utility models and designs are protected for ten years. Enforcement Cessation of infringing act and payment of compensation for damages are available for patent infringement. Major Unresolved Issues NA

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect word marks; trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; domain names are registered with CNNIC via registrars. Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration is based solely on a ‘first-come, first-served’ basis. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods; period of validity of each renewal of trademark registration is ten years, whilst the period of validity of each renewal of domain name is at least one year and no cap. Enforcement Cessation of infringing act and payment of compensation for damages are available for infringement of a trademark; cancellation or transfer of the domain name to the complainant are the available remedies for a successful challenge of a domain name. Major Unresolved Issues How to effectively solve the disputes arising when a trademark is used in a domain name but both the trademark and the domain name are registered without any clear prior rights.

416

China IP Regimes

Overlap

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Invention patents protect breeding methods, while plant variety rights protect certain defined types of new plant varieties. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Breeding methods are protected by patent as a method invention; the propagating material of plants are protected as a new variety. Duration of Rights 20 years from application for invention patents; 20 years for vines, forest trees, fruit trees, and ornamental plants and 15 years for other plants from the date of grant. Enforcement Cessation of infringing act and payment of compensation for damages apply to both; plant variety is also protected by administrative enforcement, such as confiscation of unlawful earnings and a fine. Major Unresolved Issues Extent of the subject protected by plant variety right—propagating material, as well as the plant itself and its processed products.

Patents/Copyright

Overlapping Subject-Matter Protected Certain useful works that may be expressed in literary form within the meaning of the copyright law, most notably computer software. Manner of Protection Patents require registration as a prerequisite for protection; copyright requires creation of an original work in a fixed form for protection, no registration required. Extent of Rights The two sets of rights are partially complementary, especially with respect to computer code. Duration of Rights Patents are valid for a fixed statutory period; in the main, copyright protection subsists for 50 years plus the life of the author (no time limitation for duration of the rights of authorship, alteration, and integrity). Enforcement Cessation of infringing act and payment of compensation for damages apply to both rights; elimination of effects of the act and an apology are available for relief for infringement of copyright. Major Unresolved Issues The scope of patent protection for computer software and more generally the extent of copyright protection for a useful product; the extent of copyright protection upon expiry of a patent.

417

Comparison Tables IP Regimes

Overlap

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions with respect to the data obtained from clinical trials. Manner of Protection Registration is required as a prerequisite for patent protection; data is protected by administrative confidentiality. Extent of Rights The two sets of rights are partially complementary. Duration of Rights 20 years from application for invention patents; six years from approval/licence by authority for drugs, including new chemical(s). Enforcement Cessation of infringing act and payment of compensation for damages are available for patents; improperly disclosed data is protected by administrative enforcement. Major Unresolved Issues Definition of ‘new chemical(s)’; type of trial data; procedures of obtaining of data protection; definition of ‘improper commercial use (of data)’.

418

France

France Bertrand Cochet, France Telecom, Valérie Dureisseix, Frédéric Glaize, Gilles Ringeisen, and Catherine Touati, Cabinet Plasseraud

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected The notion of an unregistered trademark (other than well-known mark) or passing off does not exist as such under French law; see, however, below regarding Unfair Competition/Trademarks. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Patents/Trade Secrets

Overlapping Subject-Matter Protected Technical inventions Manner of Protection Filing a patent application is required to obtain a patent; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights With respect to overlapping subject-matter, mutually exclusive, since disclosure under patent laws excludes protection as a trade secret; trade secret protection is available for valuable information not protected and/or protectable as a patent. Duration of Rights 20 years from the date of application for patents; unlimited protection of trade secrets as long as secrecy is maintained. Enforcement Injunctive and monetary relief are available for both patent infringement and misappropriation of trade secrets (as form of unfair business practice); an action for nullification of the patent can be initiated by the alleged patent infringer. Major Unresolved Issues Sources of legal authority that give rise to trade secret protection; relationship between trade secrets and non-compete undertakings.

Patents/Design Rights

Overlapping Subject-Matter Protected Different aspects of invention; patents cover functional inventions; designs cover the ornamental and aesthetic features of articles. Manner of Protection Patents, as well as both French and Community registered designs, require registration as a prerequisite for protection; unregistered Community designs are protected by disclosure within the European Union.

419

Comparison Tables IP Regimes

Overlap

Patents/Design Rights (cont.)

Extent of Rights Respective rights may be complementary regarding the same article; patents cover unauthorized exploitation of the protected invention whilst designs protect against unauthorized copying of the ornamental and aesthetic features. Duration of Rights Both are protected for a fixed statutory period; patents are protected for a maximum of 20 years; registered designs are registered for an initial fixed term of five years with possibility of four additional five-year renewal periods; unregistered Community designs are protected for three years from their disclosure. Enforcement Injunctive and monetary relief available for both rights; there may be recovery for each, if each right is separately infringed. Major Unresolved Issues Difficulty in distinguishing between functional and ornamental aspects of an article.

Copyright/Design Rights

Overlapping Subject-Matter Two- and three-dimensional non-functional/ornamental features of products, especially logos and product shapes. Manner of Protection Registration is a prerequisite for registered design protection; copyright protection subsists in an original work in a fixed form, no registration required; unregistered Community design is protected by disclosure within the European Union. Extent of Rights Complementary since they both protect the ornamental and aesthetic features of articles. Duration of Rights Copyright subsists in the main for 70 years plus the life of the creator; registered design is registered for an initial fixed term of five years with possibility of four additional five-year renewal periods of five years; unregistered Community design is protected for three years from its disclosure. Enforcement Injunctive and monetary relief available for both rights; there may be recovery for each, if each right is separately infringed. Major Unresolved Issues The demarcation between the two rights remains unclear.

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original literary or artistic works under copyright may also be protected as a trademark (word, device or three-dimensional work). Manner of Protection Registration required for a trademark; creation of the work in a fixed form for protection of a copyrighted work, no registration required. Extent of Rights Trademarks protect the source-identification function; copyright protects the original work from unauthorized copying.

420

France IP Regimes

Overlap

Trademark/Copyright

Duration of Rights Initial period of ten years plus potentially unlimited number of fixed-term renewal periods of ten years for trademarks; in the main, copyright protection is for 70 years plus the life of the author. Enforcement Injunctive and monetary relief available for both rights. Major Unresolved Issues Extent to which slogans or titles of a work may be protected either by copyright or trademark.

Trademarks/Designs

Overlapping Subject-Matter Protected Two- and three-dimensional non-functional/ornamental features of products, especially logos and product aspects. Manner of Protection Each right requires registration as a prerequisite for protection, with the exception of well-known marks and unregistered Community designs. Extent of Rights May be complementary; trademarks protect the source-identification function of the non-functional features of the article while design law protects against unauthorized copying of ornamental features. Duration of Rights Initial period plus potentially unlimited number of ten-year renewal periods for a trademark; registration for an initial five-year term with possibility of four five-year renewal periods for a design; unregistered Community design is protected for three years from their disclosure. Enforcement Injunctive and monetary relief available for both rights. Major Unresolved Issues NA.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Each right requires registration as a prerequisite for protection; appellations of origin registered pursuant to the Lisbon Convention. Extent of Rights Both rights indicate the origin of a product and have a source function; scope of protection of appellations of origin is broader; a degree of mutual exclusivity because registration of an appellation of origin will result in the cancellation of prior identical marks and prevent the registration of later similar marks (except for producers from the corresponding geographical area, who are allowed to register trademarks, including the appellation of origin, in combination with other elements). Duration of Rights Initial period of ten years plus potentially unlimited number of ten-year renewal periods for trademarks; appellation of origin does not need to be renewed. Enforcement Injunctive and monetary relief available for infringement of both rights. Major Unresolved Issues NA.

421

Comparison Tables IP Regimes

Overlap

Database Right/Copyright

Overlapping Subject-Matter Protected Original contents and/or the structure and organization of a database. Manner of Protection No registration required for either right; creation of database in a fixed form triggers copyright protection, whilst creation of database and proof of a substantial financial investment triggers database right protection. Extent of Rights Copyright protects the structure and organization of a database; database right protects the content of the database and the investment in its creation. Duration of Rights 70 years plus the life of the author of the original database for copyright protection; 15 years from the date of production for database right protection, renewed after every subsequent substantial investment affecting the database. Enforcement Differing injunctive relief and monetary relief are available for both rights. Major Unresolved Issues Extent to which financial investment triggers database right.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary, or dramatic work. Manner of Protection Each right subsists in an original work in a fixed form, no registration required; natural person required for moral rights, except for collective works, the moral rights of which are owned ab initio by a legal entity. Extent of Rights Complementary, since they may protect different aspects of the same original work; copyright protects against unauthorized reproduction, while moral rights protect the author’s right of paternity and integrity. Duration of Rights Copyright is valid for 70 years plus the life of the author; moral rights are unlimited in time and are transmittable to the heirs of the author(s). Enforcement Injunctive and monetary relief available for both rights; there may be recovery for each, if both rights are separately infringed. Major Unresolved Issues Challenge in accommodating the adaptation right, which is part of the copyright and can be assigned to a third party (whereas moral rights can never be assigned), with moral rights (especially regarding the integrity of the work, which is an element of moral rights and always remains with the author).

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Overlap where there is a potential restraint of trade involving the exercise of an intellectual property right. Manner of Protection NA Extent of Rights Finding of violation of competition law will not affect the validity of the relevant intellectual property right.

422

France IP Regimes

Overlap

Competition Law/Intellectual Property Rights (cont.)

Duration of Rights Period of statutory protection for intellectual property right; competition law subject to relevant statute of limitations. Enforcement Abrogation of the anticompetitive provisions in the licence; injunctive and monetary relief; fines. Major Unresolved Issues Definition of the relevant market; qualifying the abuse of a dominant position.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Overlapping is rather thin, if any. Manner of Protection No prerequisite for unfair competition; registration is required for a patent; copyright subsists in an original work in a fixed form. Extent of Rights Conduct by a competitor with respect to patent or copyright in an unfair manner that causes prejudice to another; patent protects against infringement while copyright protects against unauthorized copying. Duration of Rights 20 years for patents; 70 years for copyright; a statute of limitations of five years applies to actions based on unfair competition. Enforcement Relief under unfair competition relies on principles of civil liability; injunctive and monetary relief for both patent and copyright. Major Unresolved Issues NA.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Packaging and features of the aspect of a product; verbal signs (company names, trade names, and domain names can enjoy protection under unfair competition regime). Manner of Protection No prerequisite for unfair competition; registration is required for a trademark, with the exception of well-known mark. Extent of Rights Conduct by a competitor with respect to a trademark that causes prejudice to another; trademarks protect source-identification function of a sign. Duration of Rights Initial period plus potentially unlimited number of ten-year renewal periods for trademarks; statute of limitations of five years applies to action based on unfair competition. Enforcement Trademarks provide for monetary and injunctive relief; relief under unfair competition relies on principles of civil liability. Major Unresolved Issues Nature of the conduct that constitutes unfair competition with respect to a trademark.

423

Comparison Tables IP Regimes

Overlap

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name or likeness of a person Manner of Protection Registration is required for a trademark, with the exception of well-known marks; there is no explicit requirement regarding protection of a person’s likeness (protected as droit à l’image). Extent of Rights Trademarks protect the source-identification function; right of privacy protects the person from unauthorized use of his name or likeness. Duration of Rights Initial period of ten years plus potentially unlimited number of ten-year renewal periods for a trademark; right of privacy is valid for the life of a person. Enforcement Both rights provide for monetary and injunctive relief; basis for relief for breach of privacy relies explicitly on principles of civil liability. Major Unresolved Issues Does the right of privacy extend to the representation of goods owned by a person?

Patents/Utility Model (Petty Patents)

Overlapping Subject-Matter Protected Technical inventions. Manner of Protection Patent granted only after an examination procedure; registration without prior art search or examination for obtaining a utility patent protection. Extent of Rights Identical extent of protection. Duration of Rights 20 years from the date of application for patents; six years from the date of registration for utility patent. Enforcement Both rights give rise to the same injunctive and monetary relief. Major Unresolved Issues Utility patents are cheaper, but their enforceability is more uncertain (no examination) and their duration of protection is shorter.

Domain Names/ Trademarks

Overlapping Subject-Matter Protected Verbal signs Manner of Protection Trademarks are protected by registration, with the exception of well-known marks; domain names need to be registered; they can be protected as distinctive signs if publicly used (ie, by having a website activated with actual content). Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration is based solely on a ‘first-come, first-served’ basis. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods, but the periods of registration/ renewal differ for each right.

424

France IP Regimes

Overlap

Domain Names/ Trademarks

Enforcement Injunctive and monetary relief are available for infringement of a trademark; cancellation or transfer of the domain name to the complainant are the available remedies for a successful challenge of a domain name. Major Unresolved Issues The extent of the notion of ‘bad faith’ when challenging a domain name registration.

Plant Breeders’ Rights

Overlapping Subject-Matter Protected Certain kinds of plant varieties. Manner of Protection Each right requires registration as a prerequisite for protection; certain plant variety rights (‘Certificat d’Obtention Végétale’ [COV]) are excluded from patent protection. Extent of Rights Partial mutual exclusivity; plant-related discoveries that are not covered by plant variety registration may still be protected by patent as an invention. Duration of Rights Both are registered for a fixed period of time; patents are protected for 20 years and plant varieties are protected for 25–30 years according to the plant. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues Determination of the characteristics regarding the distinctivity.

Patents/Copyright

Overlapping Subject-Matter Protected Certain useful works that may be expressed in literary form within the meaning of the copyright law, most notably computer programs. Manner of Protection Filing a patent application is required for patent protection; copyright subsists in the creation of an original work in a fixed form for protection, no registration required. Extent of Rights Partially complementary, especially with respect to computer programs; the functionality of a computer program can be protected with a patent, while the computer code is protected by copyright. Duration of Rights Patents are valid for a 20-year period; in the main, copyright protection subsists for 70 years plus the life of the author. Enforcement Both rights provide for differing monetary and injunctive relief. Major Unresolved Issues The scope of patent protection for computer programs; the extent of copyright protection for a useful technical product; the extent of copyright protection upon expiry of a patent.

425

Comparison Tables IP Regimes

Overlap

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions relating to new chemical entities in the pharma area with respect to the data obtained from clinical trials. Manner of Protection Registration is a prerequisite for patent protection; data is protected by administrative confidentiality. Extent of Rights Data exclusivity protects the data obtained from clinical trials, while patents protect the product or/and its uses as such. Duration of Rights Patents are protected for 20 years (possibility of five-year extension); data exclusivity is protected for a fixed statutory period (8+2+1 years). Enforcement Injunctive and monetary relief are available for patents; improperly disclosed data is protected by administrative enforcement. Major Unresolved Issues Issue about the period of time for data exclusivity—global marketing authorization.

426

Germany

Germany Kai Westerwelle, Taylor Wessing

IP Regimes

Overlap

Registered Trademark/ (Unregistered Trademark/ Passing Off)

Overlapping Subject-Matter Protected Protection available as registered or unregistered trademark. ‘Passing Off’ has no direct equivalent in German law but similar protection may be available under unfair competition law and trademark law. Manner of Protection Trademark protection primarily available through registration. Unregistered trademarks may be protected through commercial use, provided that the trademark has acquired substantial recognition. Extent of Rights Trademarks safeguard guarantee of origin of goods and/or services furnished under such trademark and are protected against identical or similar trademarks used for identical or similar goods and/or services. Protection also exists against third parties taking unfair advantage of the trademark’s reputation. Duration of Rights Initial period of protection for a registered trademarks is ten years; registration can be renewed unlimited times for ten year-terms each. Unregistered trademarks depend upon the persistence of the mark’s recognition. Enforcement Trademark protection enforced by court proceedings, including accelerated court proceedings in particular preliminary injunctions. Possible claims include cease-and-desist orders, destruction, right of information on infringement, and damages. Major Unresolved Issues NA

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration required for patents; trade secrets protected under criminal law, unfair competition law, and civil law. Extent of Rights Patent registration is exclusive right for patent owner; patent application requires disclosure of the invention and excludes protection as trade secret; trade secret protection available for undisclosed invention, valuable information not protected as patent. Duration of Rights Patents protected 20 years from application date; trade secrets have unlimited protection. Enforcement Possible claims include cease-and-desist orders, destruction, damages, information on extent, and inspection of and claim for documentation of the infringement, only for patents. Major Unresolved Issues NA.

427

Comparison Tables IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected With respect to same object, patents cover technical inventions, design rights protect the aesthetical appearance. Manner of Protection Registration for patents (prerequisites for registrations are verified by patent office); design rights: registered (prerequisites for registration are not verified by patent office) or unregistered (Community Design Regulation). Extent of Rights Mutually exclusive IP rights; inventions possibly protected as patent (technical features) and design right (aesthetical appearance). Duration of Rights Patents protected for 20 years from application; design rights protected for 25 years from application (if registered); three years from making available to public (if unregistered). Enforcement Possible claims include cease-and-desist orders, damages, obliteration/recall, information on extent of the infringement, inspection and documentation of the infringements. Major Unresolved Issues NA

Copyright/Design Rights

Overlapping Subject-Matter Protected Original artistic works. Manner of Protection Registration or publication prerequisite for design rights; copyright protection subsists automatically upon creation (no registration). Extent of Rights Complementary; design rights can be registered. Duration of Rights Copyright protected for 70 years after the death of the author; registered design rights protected for 25 years, unregistered design rights protected for three years. Enforcement Claims include cease-and-desist orders, damages, obliteration/recall, information on the extent and documentation of infringement. Major Unresolved Issues NA

Trademark/Copyright

Overlapping Subject-Matter Protected Original artistic or literary works may be protected as well as word, phonetic, or figurative trademarks, but not necessarily vice versa since the requirement for protection under copyright law (originality) is greater than the requirement for, eg distinctiveness in the Trademark Law. Manner of Protection Trademarks protected through registration or use (substantial recognition required); copyright subsists upon creation (no registration). Extent of Rights Trademarks provide protection as guarantee of origin and prohibits use of identical or similar goods or exploitation of reputation. Copyright provides protection against copying or any undue exploitation.

428

Germany IP Regimes

Overlap

Trademark/Copyright

Duration of Rights Initial period of protection for a registered trademark is ten years; registration can be renewed unlimited times for ten-year terms each; copyright is protected for 70 years after the death of the author. Enforcement Both can be enforced by court proceedings, including accelerated court proceedings; possible claims under both rights include: cease-and-desist orders, destruction, information on the extent of the infringement, damages. Major Unresolved Issues NA

Trademark/Designs

Overlapping Subject-Matter Protected Designs. Manner of Protection Both require registration for protection; well-recognized trademarks also protected through use; design rights protected by publication. Extent of Rights Trademarks provide protection as guarantee of origin; both prohibit use of identical or similar goods or exploitation of reputation protected. Duration of Rights Initial period of protection for a registered trademarks is ten years; registration can be renewed unlimited times for ten-year terms each; registered designs rights protected for 25 years (maintained by payments at five-year intervals); unregistered design rights for three years. Enforcement Court proceedings, including accelerated court proceedings; claims include cease-and-desist orders, destruction of infringing objects, information on the extent of infringement, damages. Major Unresolved Issues NA

Trademark/Appellation of Origin

Overlapping Subject-Matter Protected Signs that contain a geographic indication (geographical designations are restricted from trademark protection). Manner of Protection Registered or unregistered trademarks, unregistered Appellation of Origin subject to collective goodwill of location and origin of goods may be registered under European law (eg in accordance with Article 66 of CTMR or Regulation 510/2006 EC). Extent of Rights Trademarks provide protection as guarantee of origin and prohibits use of identical or similar goods or exploitation of reputation; appellation of origin protects against any misleading use of the origin (ie products not originating from the named origin shall not be named accordingly). Duration of Rights Initial period of protection for a registered trademark is ten years; registration can be renewed unlimited times for ten-year terms each; Appellation of Origin enjoys unlimited protection as a non-IP right.

429

Comparison Tables IP Regimes

Overlap

Trademark/Appellation of Origin (cont.)

Enforcement By court proceedings, including accelerated court proceedings; possible claims are cease-and-desist orders, destruction of infringing objects, information on the extent of the infringement, damages. Major Unresolved Issues Discussion on extension of the protection of Applications of Origins under German law (eg by the adoption of EC-Regulation 510/2006 or the adoption of rules concerning the protection of trade designations).

Database Right/Copyright

Overlapping Subject-Matter Protected Collection of works, data or other systematically or methodically arranged elements. Manner of Protection Copyright subsists in an original work (no registration); database right is an ancillary right to copyright (no registration). Extent of Rights Copyright protects against unauthorized reproduction, distribution, exhibition, and communication. Database right grants the exclusive right to reproduce, distribute, and communicate in public. Duration of Rights Copyright protection is for 70 years after death of the author; database right protection is for 15 years. Enforcement By court proceedings, including accelerated court proceedings; possible claims include cease-and-desist orders; destruction of infringing works, information on the extent of the infringement, damages. Major Unresolved Issues Degree of ‘substantial’ investment in database as prerequisite for database right.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Copyright always includes the moral right of the author for all types of protectable works. Manner of Protection Creation of original work (no registration). Extent of Rights Complementary; copyright protects against unauthorized reproduction, distribution, exhibition, communication; moral rights protect author’s right of dissemination, paternity, and integrity. Duration of Rights 70 years. Enforcement By court proceedings, including accelerated court proceedings; possible claims based on copyright include cease-and-desist orders, destruction of infringing works, information on the extent of the infringement, damages; claims under moral rights include monetary and injunctive relief, damages, and compensation. Major Unresolved Issues NA

430

Germany IP Regimes

Overlap

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Potential restraint of trade due to the exercise of an intellectual property right. Manner of Protection Registration required for patents; no registration for copyright; the competition law protects against abuse of dominant position and anticompetitive agreements (subject to block exemptions). Extent of Rights Agreements not subject to a block exemption are void. Duration of Rights Intellectual property right is valid for its statutory term; the competition law has no limitation on duration. Enforcement Invalidity of contracts, injunctions, disgorgement, fines, penalties, cease-anddesist orders, damages. Major Unresolved Issues Extent of the block exemptions under the competition law.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Unfair competition/patents: competitive inventions; unfair competition/ copyright: intellectual creations. Manner of Protection Patents are protected by registration; copyright protection does not require registration; inventions not otherwise protected may be protected under unfair competition. Extent of Rights Patents and copyright are independent exclusive rights; a claim for both unfair competition and infringement of the intellectual property right cannot both be claimed in this same action. Duration of Rights Patents are protected for 20 years; copyright is protected for 70 years after the death of the author; unfair competition does not have a limitation of duration. Enforcement Copyright and patents are protected by cease-and-desist orders, damages claim, obliteration/recall of infringing products, information on the extent of and inspection of and documentation of infringement; unfair competition does not allow claims for inspection and documentation, but allows a claim for disgorgement. Major Unresolved Issues NA

Unfair Competition/Trademark

Overlapping Subject-Matter Protected Complementary protection of trademarks under unfair competition is highly controversial. Manner of Protection Registered and unregistered trademarks. Extent of Rights Trademarks provide protection as guarantee of origin and prohibits use of identical or similar goods or exploitation of reputation; unfair competition provides protection for a variety of claims that prohibit camouflage or deception; trademarks not otherwise protected may be protected under unfair competition when used in a misleading manner.

431

Comparison Tables IP Regimes

Overlap

Unfair Competition/ Trademark (cont.)

Duration of Rights Initial period of protection for a registered trademark is ten years; registration can be renewed unlimited times for ten-year terms each; unfair competition does not have a limitation of duration. Enforcement Trademarks are protected by court proceedings, including accelerated court proceedings; possible claims include cease-and-desist orders, destruction of the infringing product, information on the extent of the infringement, and damages; unfair competition does not allow claims for inspection and documentation, but allows a claim for disgorgement. Major Unresolved Issues Influence of the Unfair Commercial Practices Directive to trademark law.

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected Name, likeness, or voice of a person. Manner of Protection Registered or unregistered trademark; privacy protects the individual person with regard to the identity of a person in his social environment. Extent of Rights Trademarks provide protection as guarantee of origin. A trademark prohibits use of identical or similar goods or exploitation of reputation; Privacy protects against invasion of privacy by the unauthorized use of name, likeness, voice, other expressions of personality. Duration of Rights Initial period of protection for a registered trademark is ten years; registration can be renewed unlimited times for ten-year terms each; duration of protection for privacy not yet fully determined. Enforcement Both rights by court proceedings, including accelerated court proceedings; possible claims include cease-and-desist orders, destruction of infringing item, information on the extent of infringements, and damages. Major Unresolved Issues Duration of privacy right.

Patents/Utility Model (Petty Patents)

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration required for both patents and utility patents (no examination of protectability by Patent Office). Extent of Rights Requirements for utility patents lower than for patents (novelty, inventive step); double protection possible. Duration of Rights Patents are protected for 20 years; utility patents are protected for ten years. Enforcement Both rights are protected by court proceedings, including accelerated court proceedings (but unlikely due to complexity); possible claims include cease-and-desist orders, destruction of infringement, inspection of infringement information on the extent of infringements and damages. Major Unresolved Issues NA

432

Germany IP Regimes

Overlap

Domain Name/Trademark

Overlapping Subject-Matter Protected Two-dimensional marks can be registered as a domain name; generic domain names possible. Manner of Protection Registered and unregistered trademarks; domain names registered with DENIC eG (for top level domain ) on ‘first-come, first-served’ basis. Extent of Rights Trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol). Duration of Rights Initial period of protection for a registered trademark is ten years; registration can be renewed unlimited times for ten-year terms each; domain names registration is for an unlimited duration subject to periodic renewal. Enforcement Injunctive and monetary relief are available for infringement of a trademark; cancellation or transfer of the domain name are the available remedies for a successful challenge of a domain name; trademark claims against domain names only available if domain name is used in commerce; dispute entry prevents owner of domain name from transferring it while being attacked. Major Unresolved Issues NA

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Patents protect technical inventions; plant variety protects distinct, uniform, stable, new, and designated plants. Manner of Protection Registration required for both. Extent of Rights Plant varieties are excluded from patent protection. Duration of Rights Patents are protected for 20 years; most plant varieties are protected for 25 years some varieties for 30 years. Enforcement Both are protected by court proceedings, including accelerated court proceedings (but unlikely due to complexity); possible claims include cease-and-desist orders, destruction of infringement, information on the extent of infringement, damages. Major Unresolved Issues NA

Patents/Copyright

Overlapping Subject-Matter Protected Illustrations of scientific or technical nature; computer programs (‘computerimplemented inventions’). Manner of Protection Patents require registration; original works of a certain creativity automatically protected by copyright (no registration possible). Extent of Rights Partially complementary.

433

Comparison Tables IP Regimes

Overlap

Patents/Copyright (cont.)

Duration of Rights Patents are protected for 20 years; copyright is protected for 70 years after the death of the author. Enforcement By court proceedings, including accelerated court proceedings (but unlikely for patents due to complexity); possible claims include cease-and-desist orders, destruction of infringing item, information on extent of the infringement, damages. Major Unresolved Issues Patent protection for computer software.

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Pharmaceutical inventions referring to data included in documents submitted by holder of original marketing authorization in support of application for marketing authorization for a new drug. Manner of Protection Patent requires registration; data subject to data exclusivity protects against use by manufacturers of generic drugs when applying for marketing authorization. Extent of Rights Complementary; data exclusivity might provide holder of original marketing authorization with limited form of protection against marketing of generic drug even after patent protection of the original drug has expired. Duration of Rights Patents are protected for 20 years; data subject to data exclusivity may only be referred to by third parties in their application for marketing authorization for generic drugs after a period of eight years after marketing authorization for original drug has been granted. Enforcement For patents, claims include cease-and-desist orders, removal, damages, information on extent and inspection of infringement, documentation of infringement; for data exclusivity, action to rescind marketing authorization for a generic drug. Major Unresolved Issues NA

434

India

India Ravi Bhola, Deepak Gogia, Rajendra Kumar, Latha R. Nair, and Madhusudan Siddara Thippappa, K&S Partners

IP Regimes

Overlap

Registered Trademark/ (Unregistered Trademarks/ Passing Off )

Overlapping Subject-Matter Protected Two- or three-dimensional marks. Manner of Protection Registration for trademarks; common law remedy of passing off available to unregistered trademarks upon proof of goodwill and reputation. Extent of Rights Infringement under the current trademark statute covers use in respect of similar as well as dissimilar goods, including dilution. Duration of Rights Trademark registration is for a ten-years period; renewable for subsequent periods of ten years each. Enforcement Combined remedies of infringement and passing off possible in a single civil action; punitive and exemplary damages are common; criminal penalties for falsifying and falsely applying trademark. Major Unresolved Issues Scope of dilution as an independent claim in an infringement action.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for trade secrets; parties must rely on contracts to protect trade secrets. Extent of Rights No real overlap of the rights since disclosure is a precondition for patent grant and secrecy is essential for the protection of trade secrets. Duration of Rights 20 years from the filing date; trade secrets enjoy unlimited protection provided secrecy is maintained. Enforcement Injunctive and monetary relief available for patent rights; infringing goods can be seized; since India does not have a specific law for protecting trade secrets, the obligations in this behalf are governed by contract law and related judicial precedents. Major Unresolved Issues Providing statutory protection for a trade secret.

435

Comparison Tables IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Different aspects of invention; patents cover functional inventions; design registration covers the ornamental and eye-appealing features applied to an article. Manner of Protection Each right requires registration. Extent of Rights The two sets of rights may be complementary regarding the same article; patents cover unauthorized exploitation of the protected invention whilst designs protect against unauthorized copying of the ornamental features. Duration of Rights Patent protection is provided for 20 years from the date of filing; design registration subsists for an initial fixed term of ten years with one fixed-term renewal period of five years. Enforcement Injunctive and monetary relief available for both rights; no criminal remedies are available. Major Unresolved Issues Can a design that cannot be applied on an article be protected under the design statute?; treatment of simple/insignificant variations of the same article.

Copyright/Design Rights

Overlapping Subject-Matter Protected A two- or three-dimensional artistic work that may be used to industrially produce an article bearing a particular design. Manner of Protection Registration required for a design; works are to be in fixed form for copyright protection; registration not mandatory but serves as proof of ownership subject to evidence to the contrary; in absence of registration, copyright notice may also serve as evidence of ownership. Extent of Rights Partial mutual exclusivity; copyright protection ceases when article to which the design has been applied has been reproduced more than 50 times by an industrial process; however, the original artistic work continues to enjoy protection for the entire statutory term. Duration of Rights Copyright subsists in original artistic work for a period of 60 years plus the life of the author; design protection is for an initial period of ten years with one renewal of five years. Enforcement Injunction and damages for both rights; criminal remedies under specific circumstances, punishable with both imprisonment or fine; statutory damages for design infringement. Major Unresolved Issues NA

436

India IP Regimes

Overlap

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original literary, artistic, and musical works under copyright may also be protected as a trademark. Manner of Protection Registration necessary for trademark; works are to be in fixed form for copyright protection; registration not mandatory but serves as proof of ownership subject to evidence to the contrary; in absence of registration, copyright notice may also serve as evidence of ownership. Extent of Rights Trademarks protect the source-identification function; copyright protects the original work from unauthorized copying. Duration of Rights Copyright subsists in the original literary/artistic work for a period of 60 years plus the life of the author; trademark registration for a ten-year period with subsequent periods of ten years each. Enforcement Combined remedies for trademark infringement and passing off possible in a single action; injunction and damages, and criminal remedies of imprisonment and fine are available for violation of both rights. Major Unresolved Issues NA

Trademarks/Designs

Overlapping Subject-Matter Protected Non-functional shapes of goods or ornamental features in two- or threedimensional form. Manner of Protection Registration necessary for design protection; shape of goods is registrable as trademark upon proving secondary meaning; passing off action also possible if secondary meaning can be established. Extent of Rights Trademarks protect the source-identification function; design protects from unauthorized copying of the ornamental features of the article. Duration of Rights Trademark registration is for a period of ten years with subsequent renewal periods of ten years each; design protection is for an initial period of ten years with one renewal period of five years. Enforcement Combined remedies of trademark infringement and passing off possible in a single action; punitive and exemplary damages are common; criminal remedies of imprisonment and fine; injunction and damages are available for design rights; statutory damages available for design infringement. Major Unresolved Issues NA

437

Comparison Tables IP Regimes

Overlap

Trademarks/Geographical Indications

Overlapping Subject-Matter Protected Geographical names as well as non-geographical traditional names. Manner of Protection Registration is not mandatory for protection of both these rights, rights acquired through use are also protected. Extent of Rights Both rights have the source-identifying function; whilst trademark rights are private monopoly rights, geographical indications are community collective rights; the remedy of infringement under the geographical indications statute is broad enough to cover all acts of unfair competition under the Paris Convention. Duration of Rights Protection for both trademark and geographical indication is for an initial period of ten years, with unlimited renewal periods of ten years each. Enforcement Injunction and damages; criminal remedies of imprisonment and fines are available for both the rights; exemplary and punitive damages for trademarks. Major Unresolved Issues NA

Database Right/Copyright

Overlapping Subject-Matter Protected Form and structure of presentation of a database is protected under copyright law. Manner of Protection Works are to be in fixed form for copyright protection; registration not mandatory but serves as proof of ownership subject to evidence to the contrary; in absence of registration, copyright notice may also serve as evidence of ownership. Extent of Rights The form and structure of presentation of a database is protected under copyright law; no separate statutory protection for database contents; protection is through contract law and the tort of wrongful misappropriation. Duration of Rights Copyright subsists for 60 years plus the life of the author of the database; for database rights, copyright depends on the terms of the contract or in principle statute of limitations for tortious conduct Enforcement Injunction and damages; exemplary or punitive damages; criminal sanctions of imprisonment and fines for copyright. Major Unresolved Issues NA

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary or dramatic works, sound recordings, and cinematograph films Manner of Protection Works are to be in fixed form for copyright protection; registration not mandatory but serves as proof of ownership subject to evidence to the contrary; in absence of registration, copyright notice may also serve as evidence of ownership; no registration required for moral rights.

438

India IP Regimes

Overlap

Copyright/Moral Rights

Extent of Rights Complementary. Copyright protects against unauthorized reproduction, whilst moral rights protect the author’s right of paternity and integrity in the work. Duration of Rights Copyright is valid for 60 years plus the life of the author; ‘author’s special right’ is coterminous with the term of copyright in so far as it relates to violation of moral rights. Enforcement Injunction and damages; criminal remedies of imprisonment and fine for copyright. Major Unresolved Issues NA

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Overlap with the Competition Act, 2002 to the extent of enforcing rights under the Trade Marks Act, 1999, Patents Act, 1970, Designs Act, 2000, Geographical Indications of Goods (Registration and Protection) Act, 1999, and Copyright Act, 1957. Manner of Protection NA Extent of Rights To the extent of permitting actions of infringement under the patent and copyright statutes and imposing reasonable conditions for protecting the rights conferred therein. Duration of Rights NA Enforcement Restraining orders and monetary damages. Major Unresolved Issues NA

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected No explicit provision for protection from unfair competition under Indian law; the laws of torts and equity have sometimes been relied upon when there is no valid intellectual property right. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement If unfair competition is found, monetary relief is available. Major Unresolved Issues NA

439

Comparison Tables IP Regimes

Overlap

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected No explicit provision for protection for unfair competition under Indian law; passing off can be seen as a species of unfair competition, the overlapping subject-matter protected is trademark rights. Manner of Protection No codified law in India for unfair competition except under the statute protecting geographical indications, which has borrowed the language of Section 10bis of the Paris Convention; protection against unfair competition enforced through passing off actions. Extent of Rights To the extent the plaintiff can prove his rights in the mark. Duration of Rights NA Enforcement If unfair competition is found, injunctive relief as well as damages are available. Major Unresolved Issues Scope of application of unfair competition law to trademark-like rights.

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, likeness, or voice of a person. Manner of Protection Registration is not mandatory for protection of trademark rights; rights acquired through use are also protected. Extent of Rights Trademarks protect the source-identification function of the name or likeness; right of privacy protects the person from an invasion of his privacy by the unauthorized use of his name or likeness. Duration of Rights Trademark registration is for an initial ten-year period with subsequent renewal periods of ten years each. Enforcement Both rights provide for monetary and injunctive relief; basis for relief for breach of privacy relies explicitly on tort law principles; trademark law also provides for criminal remedies. Major Unresolved Issues NA

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected No separate protection for utility models under Indian law; all useful inventions must satisfy the same requirements for patentability. Manner of Protection Registration is required. Extent of Rights All inventions are governed under a unitary system. Duration of Rights Patents are protected for a fixed statutory period of 20 years from the filing date of the application. Enforcement Injunctive and monetary relief are both available. Major Unresolved Issues Possible legislation for utility models.

440

India IP Regimes

Overlap

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect two-dimensional marks; trademarks serve as a source indicator, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; country level domains are registered and administered by National Internet Exchange of India (NIXI). Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration is based solely on ‘first-come, first-served’. Duration of Rights Trademark registration is for a ten-year period with subsequent renewal periods of ten years each; domain names may also be registered and renewed periodically. Registrant may choose the period of registration Enforcement Injunction and damages, punitive and exemplary damages, imprisonment and fine are available for trademark rights. Regarding domain names, apart from claiming cancellation or transfer of the domain name, one can also maintain a passing off action based on the domain name. Major Unresolved Issues NA

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Patents protect invention of a product or process, whilst breeder’s rights protect certain defined types of new plant varieties. Manner of Protection Each right requires separate registration. Extent of Rights Full mutual exclusivity. Duration of Rights Patent protection is for 20 years from the date of filing; as for plant varieties for extant varieties, 15 years from the date of notification, for trees and vines 18 years from the date of registration and for others 15 years from the date of registration. Enforcement Both rights provide for injunctive and monetary relief; the Plant Variety Protection Law also provides for criminal imprisonment and exemplary and punitive damages for infringement. Major Unresolved Issues NA

441

Comparison Tables IP Regimes

Overlap

Patents/Copyright

Overlapping Subject-Matter Protected Certain useful works that may be expressed in literary form within the meaning of the copyright law, most notably computer software. Manner of Protection Patents require registration; works are to be in fixed form for copyright protection; registration not mandatory but serves as proof of ownership subject to evidence to the contrary; in absence of registration, copyright notice may also serve as evidence of ownership. Extent of Rights The two sets of rights are partially complementary; however, computer codes per se are not protectable as a patent. Duration of Rights Patents are valid for a period of 20 years; copyright protection subsists for 60 years plus the life of the author. Enforcement Both rights provide for monetary and injunctive relief; statutory damages and exemplary and punitive damages available as relief for infringement of copyright. Major Unresolved Issues None

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions, especially in the pharmaceutical area, with respect to the data obtained from clinical trials. Manner of Protection Registration is required for patent protection; no statutory protection for the clinical data submitted to regulatory authorities for product approval. Extent of Rights Data protected in India under contract law. Duration of Rights Patents are valid for a period of 20 years. Enforcement Injunctive and monetary relief only are available for patents. Major Unresolved Issues Providing/legislative or other legal basis for protection of clinical data.

442

Israel

Israel Neil Wilkof, Dr Eyal Bressler & Co; Special IP Counsel, Herzog & Neeman

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Two- or three-dimensional marks. Manner of Protection Registration for trademarks; proof of goodwill and injury for passing off, no registration required. Extent of Rights Partial overlap; passing off provides for protection more broadly of signs. Duration of Rights Initial registration period plus unlimited number of fixed-term renewal periods for trademarks (periods have changed under the law); no time limitation for duration of rights for passing off. Enforcement Mutual exclusivity of remedies but courts are sensitive to double recovery; statutory damages without proof of damage available for passing off. Major Unresolved Issues Do ‘famous marks’ apply to a passing off claim?; can a passing off claim rest solely on goodwill without proof of confusion/injury?; can there be a licence of a right entitled to protection under passing off?

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights With respect to overlapping subject-matter, mutually exclusive, since disclosure under patent laws excludes protection as a trade secret; trade secret protection is available for valuable information not protected and/or protectable as a patent. Duration of Rights Usually 20 years from application for patents; unlimited protection of trade secrets, provided secrecy is maintained. Enforcement Injunctive and monetary relief available for both rights, although injunctive relief may be of limited value regarding unauthorized disclosure of a trade secret; statutory damages are available for misappropriation of trade secrets. Major Unresolved Issues Sources of legal authority that give rise to trade secret protection; relationship between trade secrets and non-compete undertakings.

443

Comparison Tables IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Different aspects of invention; patents cover functional inventions; design patents cover the ornamental features of articles that are industrially produced. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights The two sets of rights may be complementary regarding the same article, patents cover unauthorized exploitation of the protected invention while designs protect against unauthorized copying of the ornamental features. Duration of Rights Usually 20 years from application for patents; design patents are registered for an initial fixed term of five years with possibility of two fixed-term renewal periods of five years each. Enforcement Injunctive and monetary relief available for both rights, the likelihood of possible double recovery is low. Major Unresolved Issues Principled test for distinguishing between functional and ornamental aspects of an article.

Copyright/Design Rights

Overlapping Subject-Matter Protected A literary or artistic work that may be used as an ornamental feature of an industrially produced article. Manner of Protection Registration is a prerequisite for patent protection; copyright protection subsists in an original work in a fixed form, no registration required. Extent of Rights The two sets of rights are mutually exclusive to the extent that no copyright can subsist in a design unless the design is not intended for industrial reproduction. Duration of Rights In the main, copyright subsists for 70 years plus the life of the creator; design patents are registered for an initial fixed term of five years with possibility of two fixed-term renewal periods of five years each. Enforcement Injunctive and monetary relief available for both rights; statutory damages are available for relief for infringement of copyright; judicial concern for double recovery. Major Unresolved Issues Under what circumstances can copyright subsist in the ornamental features of a useful article?; claim of right under the Unjust Enrichment Law in lieu of being required to register multiple designs with a short commercial life.

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original literary, artistic, and musical works under copyright may also be protected as a trademark. Manner of Protection Registration for a trademark; creation of the work in a fixed form for protection of a copyrighted work, no registration required.

444

Israel IP Regimes

Overlap

Trademark/Copyright

Extent of Rights Trademarks protect the source-identification function of the original work; copyright protects the original work from unauthorized copying. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for trademarks (periods have changed under the law); in the main, 70 years plus the life of the author of the work. Enforcement Injunctive and monetary relief available for both rights; statutory damages are available for infringement of copyright; statutory damages for passing off as complementary claim to trademark infringement. Major Unresolved Issues Extent to which phrases might be protected either by copyright or trademark (as a slogan).

Trademarks/Designs

Overlapping Subject-Matter Protected Non-functional/ornamental features of two- and especially three-dimensional articles. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Trademarks protect the source-identification function of the non-functional features of the article; design law protects against unauthorized copying of these functional/ornamental features. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for trademarks periods have changed under the law; registration for an initial fixed term of five years with possibility of two fixed-term renewal periods of five years each for designs. Enforcement Injunctive and monetary relief available for both rights; judicial concern for double recovery and difficulty in fashioning complementary relief. Major Unresolved Issues The extent to which the Registry will treat trademark and design rights as mutually exclusive, except in special circumstances.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Each right requires registration as a prerequisite for protection; appellations of origin registered pursuant to the Lisbon Convention; also protection for geographical indications and geographical indications for wines and spirits. Extent of Rights Both rights protect the source function of a mark; appellations of origin and geographical indications are limited in essence to protecting the geographic origin of the product. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods (periods have changed under the law for trademarks); initial period of ten years plus unlimited renewal period of ten years each for appellation of origin.

445

Comparison Tables IP Regimes

Overlap

Trademarks/Appellations of Origin (cont.)

Enforcement Injunctive and monetary relief. Major Unresolved Issues Extent to which appellation of origin remains valid when the product is produced outside of the geographical area; distinction between geographical descriptiveness under trademark law and registrability as an appellation of origin; monetary relief for appellations of origin and geographical indications.

Database Right/Copyright

Overlapping Subject-Matter Protected Original/non-trivial contents and/or the structure and organization of a database. Manner of Protection Copyright protection subsists in an original work in a fixed form, no registration required. Extent of Rights Unitary form of protection since there is no separate statutory protection for a database under Israeli law. Duration of Rights In the main, 70 years plus the life of the author of the original work. Enforcement Injunctive relief and monetary relief, including statutory damages, are available. Major Unresolved Issues Extent to which investment and effort in creating a database can be protected under the Unjust Enrichment Law, even in the absence of copyright protection.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary, or dramatic works. Manner of Protection Each right subsists in an original work in a fixed form, no registration required (natural person required for moral rights). Extent of Rights Complementary, since they may protect different aspects of the same original work. Copyright protects against unauthorized reproduction, while moral rights protect the author’s right of paternity and integrity in the work (excluding computer software). Duration of Rights Both rights are valid for 70 years plus the life of the author. Enforcement Both rights provide for monetary and injunctive relief; statutory damages are available; judicial sensitivity to double recovery. Major Unresolved Issues Right of waiver and/or transfer of moral rights.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Overlap where there is a potential restraint of trade involving the exercise of an intellectual property right. Manner of Protection NA Extent of Rights Finding of violation of competition law will not affect the validity of the relevant intellectual property right.

446

Israel IP Regimes

Overlap

Competition Law/Intellectual Property Rights

Duration of Rights NA Enforcement Abrogation of the anticompetitive provisions in the licence; injunctive and monetary relief; fines. Major Unresolved Issues Extent to which the terms of a licensed intellectual property right will not attract competition law scrutiny because all of the restraints are derived directly from the exercise of the intellectual property right itself.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected There is no explicit overlap because unfair competition is a not recognized right under Israeli law; Unjust Enrichment Law has sometimes been relied upon when there is no valid intellectual property right, especially but not limited to a design right, when there has been conduct that is tantamount to infringement or misappropriation of the intellectual property right. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement If unfair competition is found, monetary and in rare instances injunctive relief is available. Major Unresolved Issues Scope of application of Unjust Enrichment Law to copyright and patent-like rights.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected There is no explicit overlap because unfair competition is not a recognized right under Israeli law; Unjust Enrichment Law has sometimes been relied upon when there is no valid intellectual property right, especially but not limited to a design right, when there has been conduct that is tantamount to infringement or misappropriation of the intellectual property; application to trademarks is however extremely doubtful. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement If unfair competition is found, monetary and in rare instances injunctive relief is available. Major Unresolved Issues Scope of application of Unjust Enrichment Law to trademark-like rights.

447

Comparison Tables IP Regimes

Overlap

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, likeness, or voice of a person. Manner of Protection Registration is required for a trademark; there is no explicit requirement regarding how protection arises under the Protection of Privacy Law. Extent of Rights Trademarks protect the source-identification function of the name or likeness; right of privacy protects the person from an invasion of his privacy by the unauthorized use of his name or likeness. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for trademarks (periods have changed under the law for trademarks); right of privacy is arguably valid only for the life of a person. Enforcement Both rights provide for monetary and injunctive relief; basis for relief for breach of privacy relies explicitly on tort law principles. Major Unresolved Issues Can the right of privacy be transferred or bequeathed?

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected There is no separate protection for a petty patent under Israeli law; all useful inventions must satisfy the same requirements for patentability under the Israel Patent Law, 1967, in order to be protected. Manner of Protection Registration is required as a prerequisite for patent protection. Extent of Rights All inventions governed under a unitary system. Duration of Rights Patents are protected for a fixed statutory period. Enforcement Injunctive and monetary relief are both available. Major Unresolved Issues Possibility of future statutory enactment of a petty patent-like regime.

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect two-dimensional marks; trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; domain names are registered on the registry maintained by ISOC-Israel. Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration is based solely on ‘first-come, first-served’. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods, but the periods of registration/ renewal differ for each right.

448

Israel IP Regimes

Overlap

Domain Names/ Trademarks

Enforcement Injunctive and monetary relief are available for infringement of a trademark; cancellation or transfer of the domain name to the complainant are the available remedies for a successful challenge of a domain name. Major Unresolved Issues The extent to which principles that apply to trademark registration and protection should applied to a challenge of a domain name registration

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Utility patents protect invention of a product or process; breeders’ rights protect certain defined types of new plant varieties. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Partial mutual exclusivity; plant-related discoveries that are not covered by breeders’ right registration may still be protected by patent as an invention; limited overlap between breeders’ rights and trademark law regarding the naming of a registered plant variety. Duration of Rights Patents are usually valid for 20 years; breeders’ rights are usually valid for 20 years; valid for 25 years after registration with regard to multi-year breeds. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues The interrelationship between names of registered plant varieties and trademark protection.

Patents/Copyright

Overlapping Subject-Matter Protected Utility patents protect invention of a product or process; breeders’ rights protect certain defined types of new plant varieties. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Partial mutual exclusivity; plant-related discoveries that are not covered by breeders’ right registration may still be protected by patent as an invention; limited overlap between breeders’ rights and trademark law regarding the naming of a registered plant variety. Duration of Rights Patents are usually valid for 20 years; breeders’ rights are usually valid for 20 years; valid for 25 years after registration with regard to multi-year breeds. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues The interrelationship between names of registered plant varieties and trademark protection.

449

Comparison Tables IP Regimes

Overlap

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions, especially in the pharma-chemical area, with respect to the data obtained from clinical trials. Manner of Protection Registration is required as a prerequisite for patent protection; data is protected by administrative confidentiality. Extent of Rights The two sets of rights are partially complementary. Duration of Rights Patents are usually protected for 20 years; duration of exclusive rights in data are set by administrative rules. Enforcement Injunctive and monetary relief are available for patents; improperly disclosed data is protected by administrative enforcement. Major Unresolved Issues The time period for data exclusivity.

450

Japan

Japan Taku Fujiwara, Takeshi Kanda, Kozo Yabe, and Takashi Yamada, Yuasa and Hara1

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Letters, figures, signs, three-dimensional shapes, and a combination thereof. Manner of Protection Registration for registered trademarks; proof is required that the mark is well-known or famous in the case of unregistered marks. Extent of Rights Almost complete overlap covering the use of identical or similar marks on same/similar goods and services. Duration of rights Trademarks have an initial duration of ten years, with unlimited renewal periods of ten years each; unregistered trademarks do not require registration and are protected with some requirements under the Unfair Competition Prevention Act. Enforcement Injunctive and monetary relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved issues Some gap of protection between registered and unregistered marks due to the difference of requirements for protection.

Patent/Trade Secrets

Overlapping Subject-Matter Inventions as products of technical creativity. Manner of Protection Registration is required for patents; trade secrets must be kept secret as defined by the Unfair Competition Prevention Act. Extent of Rights Disclosure under patent law excludes protection as a trade secret; trade secret protection is available for valuable information not protected and/or protectable as a patent. Duration of Rights Patents have a duration of 20 years from the date of filing. Trade secrets are protected as long as they remain secret. Enforcement Injunctive and monetary relief available for both rights, and additionally penalties are available; patent infringer may also be required to restore business reputation by such means as publishing an apology in newspapers. Major Unresolved Issues In patent litigation, how to protect trade secrets that might be relevant to validity and other claims and the sufficiency of a confidentiality order in such circumstances.

1

With the assistance of Christopher Blizzard, Santa Clara University.

451

Comparison Tables IP Regimes

Overlap

Patent/Design Rights

Overlapping Subject-Matter Protected Patents cover functional design elements while industrial designs cover ornamental design elements; overlapping subject-matter might arise regarding aspects that are neither purely functional nor purely ornamental. Manner of Protection Registration is required for both nights. Extent of rights Both patent and design right holders have an exclusive right to ‘work’ the design and designs identical or similar to it. ‘Working’ means manufacturing, using, assigning, leasing, or importing. Duration of Rights Patents have a duration of 20 years starting from the date of filing; design rights have a duration of 20 years beginning from registration. Enforcement Injunction, damages, and measures to restore business reputation available for both rights, additionally penal penalties available where infringement is intentional; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved issues NA

Copyright/Design Rights

Overlapping Subject-Matter Protected Original expressions embodied in product/work appearance/shape protected by copyright, if used as a design of an industrial product, will be protected by design rights. Manner of Protection Copyright arises from creation of the work without registration, subject to requirement of fixation. Registration is required for design right. Extent of Rights Design for an industrial/practical product is protected by copyright only if the design is deemed to be the creative equivalent to a unique product. Duration of Rights Usually 50 years plus the life of the creator for copyright (after publication when the author is an entity) except for 70 years regarding movie work; usually duration of 20 years from the registration date for design rights. Enforcement Injunctive and monetary relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved Issues Extent to which creative designs of industrial/practical products can be protected by copyright and/or by design rights; copyright requires higher degree of artistic/creative expression to satisfy the uniqueness requirement; design rights must have a degree of creativeness but can be copied and applied industrially.

Trademark/Copyright

Overlapping Subject-Matter Protected Expressions via phrase/logo/mark design, either in two or three dimensions. Manner of Protection A registration is required for trademark rights. Copyrights arise from creation and fixation without registration.

452

Japan IP Regimes

Overlap

Trademark/Copyright

Extent of Rights Trademarks protect the source-identification function of marks; copyright protects against unauthorized reproduction of the work Duration of Rights Initial period of ten years with unlimited renewal periods of ten years for trademark rights; the duration for copyright is usually 50 years plus the life of a creator (after publication when the author is an entity). Enforcement Injunctive and monetary relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved Issues Whether or not works in the public domains, such as a character whose copyright protection period has expired, can still be protected by trademarks.

Trademarks/Designs

Overlapping Subject-Matter Protected Shapes, especially three-dimensional shapes, patterns and colours of articles will be protected by both rights. Manner of Protection Registration is required for both rights. Extent of Rights Trademarks protect the source-identification function of marks; design rights protect designs from unauthorized exploitation. Duration of Rights Initial period of ten years from the registration date and unlimited renewals, each for a period of ten years, for trademark rights; usually 20 years from the registration date for design rights. Enforcement Injunctive and monetary relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved Issues Extent to which three-dimensional shapes, which may be protected for a limited period by design registration, may be thereafter protected as a trademark with potentially unlimited renewals.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names that have acquired a secondary meaning and can be registered as a trademark, no registration for an appellation of origin since Japan is not a member country of the Lisbon Convention. Manner of Protection Trademarks require registration; otherwise no special registration for appellations of origin but can seek protection under unfair competition. Extent of Rights Either as a registered trademark or certain interests protected from unfair competition regarding the use of a mark of geographical origin of a product. Duration of Rights Registered trademarks have an initial duration of ten years, with unlimited renewal periods of ten years each; appellations of origin do not require separate registration.

453

Comparison Tables IP Regimes

Overlap

Trademarks/Appellations of Origin (cont.)

Enforcement Injunctive and monetary relief for both trademark and acts of unfair competition; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved issues Gap in the requirements for the cumulative protection available for trademarks and appellations of origin.

Database Right/Copyright

Overlapping Subject-Matter Protected Databases which, by reason of the selection or systematic construction of information contained therein, constitute intellectual creations. Manner of Protection Copyright protection subsists in the above databases; no separate database right. Extent of Rights Protection against unauthorized reproduction of the selection of data and the structure of the database. Duration of Rights Copyright is valid for 50 years after the death of the creator of the database (or after publication when the author is an entity). Enforcement Injunctive relief and monetary relief are both available. Major Unresolved Issues Extent to which investment and effort in creating a database can be protected under copyright.

Copyright/Moral Rights

Overlapping Subject-Matter Protected A literary, scientific, artistic, or musical work in which thoughts or sentiments are expressed in a creative manner. Manner of Protection Copyright arises from creation without registration. Extent of Rights Copyright protects against unauthorized reproduction, while moral rights protect the author’s rights of publicizing, paternity and integrity in the work. Duration of Rights Copyright is valid for 50 years after the author’s death (after publication when the author is an entity); moral rights are valid only during the author’s life (or the association’s existence), but some limited protection thereafter for an unlimited duration. Enforcement Both rights provide for monetary and injunctive relief; moral rights also provide for measures to restore the author’s honour. Major Unresolved Issues Right of waiver of moral rights; conflict between statutory rights permitting certain unauthorized uses or modification and moral rights.

454

Japan IP Regimes

Overlap

Competition Law/Intellectual Property

Overlapping Subject-Matter Protected Overlap where there is a potential restraint or hindrance of competition in the market involving the exercise of an intellectual property right. Manner of Protection NA Extent of Rights Exercise of intellectual property rights is exempt from competition law under the Antimonopoly Act unless such exercise deviates from the purpose of its legal protection in an anticompetitive way. Duration of Rights NA Enforcement Cease-and-desist orders, injunctive and monetary relief, administrative penalties, and criminal penalties. Major Unresolved Issues Extent to which the exercise of intellectual property rights is exempt from competition law.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Copying and putting into a market a competitor’s patented or copyrighted product. Manner of Protection Patents require registration; no registration required to claim unfair competition under the Unfair Competition Prevention Act. A patentee or a copyright owner can claim either or both these sets of rights. Extent of Rights Exercise of one right does not affect the other; protection under the Unfair Competition Prevention Act extends to unpatented or non-copyrighted products. Duration of Rights Duration of patent or copyright in accordance with their statutory provisions; no duration for unfair competition. Enforcement Monetary and injunctive relief is available for both rights; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved Issues Extent to which patented or copyrighted products are protected by unfair competition law on the basis of similarities between the respective industrial products.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Marks and shapes of goods or services. Manner of Protection Registration is required for trademark rights. The Unfair Competition Prevention Act does not require any registration. Extent of Rights Trademark rights protect the source-identification function of marks; Unfair Competition Prevention Act protects marks of goods or services, and shapes of goods, from specific conduct stipulated under the Act.

455

Comparison Tables IP Regimes

Overlap

Unfair Competition/ Trademarks (cont.)

Duration of Rights Initial duration of ten years from the registration date and unlimited renewal periods of ten years each for a trademark; the Unfair Competition Prevention Act has no restriction regarding duration, except for a three-year restriction from the initial distribution of the goods regarding the protection of shapes of goods. Enforcement Injunctive and monetary relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved Issues Difference in the requirements and effects of each lead to gaps in protection between the two sets of rights, especially for the protection of shapes of goods.

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected Name and likeness/portrait of a person. Manner of Protection Registration is required for trademark protection; no manner is provided by statute regarding protecting rights of publicity. Extent of Rights Trademark rights protect the source-identification function of a registered name or likeness; right of publicity prohibits using commercially the name or likeness of a famous person; prohibition against taking the picture of another person or using his portrait without consent. Duration of Rights Trademarks are valid for an initial ten-year period with an unlimited number of ten-year renewal periods; right of publicity and portrait right are potentially valid only during the life of the person. Enforcement Monetary and injunctive relief; for copyright, statutory presumption of damages assists calculation of actual damages in addition to already realized damages; no statutory presumption of damages for privacy. Major Unresolved Issues The elements of the right of publicity; can the right of publicity be inherited?

Patents/Utility Model (Petty Patents)

Overlapping Subject-Matter Protected A ‘utility model’ is an invention with less stringent patentability requirements with no examination by a patent examiner at the application filing and registration. Manner of Protection Registration is required for both; however, a utility model patent is not required to be reviewed by the examiner. Extent of Rights Utility model patents protect creations of products or processes that nevertheless do not constitute advanced technical inventiveness as is required for patents. Duration of Rights A utility model is valid for ten years from the application date; a patent is valid for 20 years from its application date.

456

Japan IP Regimes

Overlap

Patents/Utility Model (Petty Patents)

Enforcement Injunctive/monetary relief; the statutory presumption of damages assists calculation of actual damages in addition to already realized damages; the technical evaluation of the patent office with warning notice is required to enforce the utility model right, without which enforcement is invalid. Unresolved Issues Extent to which the scope of utility model patent protection is extended to patents.

Domain Names/Trademarks

Overlapping Subject-Matter Protected Two-dimensional marks; domain names are alphanumeric characters that are associated with an IP (internet protocol) address. Manner of Protection Trademarks require registration; domain names (such as , ) are registered on a first-come, first-served basis and are maintained by the Japan Registry Services Co, Ltd Extent of Rights Trademark right holders have exclusive right to use the trademark in connection with designated goods or services; once a domain name is registered, only the registrant can use it as a domain name. Duration of Rights Trademark rights are valid for an initial ten-year period plus an unlimited number of renewal periods of ten years each; domain name registration is valid for a certain initial period subject to periodic renewal. Enforcement Injunctive and monetary relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages; domain names can be cancelled or transferred when challenged successfully. Major Unresolved Issues Whether or not to enact a new law giving courts the power to order the transfer a registered domain name.

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Patents protect the invention of a product or a process; breeder’s rights protect certain defined types of new plant varieties. Manner of Protection Both rights require registration. Extent of Rights Patent holders have the exclusive right to ‘work’ the patented invention. Rights holder of a breeder’s right has exclusive right to ‘exploit’ a variety; invention related to a new plant variety can also be registered as a patent. Duration of Rights Patent is valid for 20 years from the filing date; a breeder’s right is valid for 25 years from the date of registration. Enforcement Monetary and injunctive relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved Issues Whether the law should be amended to provide that a breeder’s right may not be exercised when the variety registration has been adjudicated as invalid.

457

Comparison Tables IP Regimes

Overlap

Patents/Copyright

Overlapping Subject-Matter Protected Patents protect the invention of a product or a process; copyrights protect a work produced and expressed in a creative way. Manner of Protection Patents require registration; copyright arises from creation of the work without registration. Extent of Rights Patents and copyright may both protect a computer program; patent holder has the exclusive right to ‘work’ the patented invention; copyright protects against unauthorized reproduction of the work Duration of Rights Patent is valid for 20 years from the filing date; Copyright is valid for 50 years after the death of the creator of the work (or after publication when the author is an entity). Enforcement Monetary and injunctive relief; statutory presumption of damages assists calculation of actual damages in addition to already realized damages. Major Unresolved Issues Degree of creativeness required to protect a computer program by copyright; scope of copyright protection for computer programs.

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Exclusive data obtained through invention that is not published in the patent publications or in other forms (especially in pharmaceutical area). Manner of Protection Exclusive data is protected as trade secrets under the Unfair Competition Prevention Act and an obligation to protect secrets under public service laws; patent holder has the exclusive right to ‘work’ the patented invention. Extent of Rights Complementary. Duration of Rights Patents are protected for 20 years from application; exclusive rights in data are protected for an unlimited duration. Enforcement Injunctive and monetary relief; statutory presumption of damages assists calculation of actual damages in addition to damages already realized damages; exclusivity of data is also protected against unjustifiable disclosure by disciplinary, administrative, and criminal penalties. Major Unresolved Issues Time period for data exclusivity.

458

Korea

Korea Hoo Dong Lee and In Gi Min, Bae, Kim & Lee LLC

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Two- or three-dimensional marks that are well-known to the public; passing off of an unregistered trademark requires that the mark be well-known to overlap; the passing off of a registered trademark does not require the mark to be well-known. Manner of Protection Registration for trademarks; for passing off: (1) evidence demonstrating goodwill (which is stated as ‘famous marks and/or business facilities’ under the Korean Unfair Competition law); and (2) evidence of confusion, no registration required. Extent of Rights Partial overlap; passing off leads to broader protection of signs. Duration of Rights Ten years from registration plus unlimited number of ten-year renewal terms for trademarks; no time limit for duration of passing off rights. Enforcement Injunctive and monetary relief available for both. Major Unresolved Issues Unclear whether a licence to a right is entitled to protection under passing off.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights Regarding overlapping subject-matter, mutually exclusive, since disclosure under patent laws excludes protection as a trade secret; trade secret protection is available for valuable information not protected and/or protectable as a patent. Duration of Rights 20 years from application for patents; unlimited protection for trade secrets so long as the secrecy requirement is fulfilled. Enforcement Injunctive and monetary relief are available for both rights. Major Unresolved Issues Whether information learned while performing a job is attributed to the company at all times and is regarded as a trade secret.

459

Comparison Tables IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Different aspects of invention; patents cover the practical/functional use and technical aspects of inventions; design rights cover the ornamental features of industrially produced articles. Manner of Protection Each right requires registration. Extent of Rights Patents prohibit the unauthorized use of inventions; designs prohibit the unauthorized copying of ornamental features. Duration of Rights 20 years from application for patents; 15 years from the date of registration for designs. Enforcement Injunctive and monetary relief are available for both rights. Major Unresolved Issues NA

Copyright/Design Rights

Overlapping Subject-Matter Protected Original artistic work that may be used as an ornamental feature of an industrially produced article. Manner of Protection Works are required to be creative expression that express human thoughts and emotion for copyright protection (no fixation requirement), no registration required; registration required for design right. Extent of Rights Partial overlap; works of applied art under copyright law includes the design so that if a design, which has been registered, is intended for industrial reproduction, there may also be copyright protection. Duration of Rights Copyright is valid for 50 years plus the life of the creator; 15 years from the date of registration for design. Enforcement Injunctive and monetary relief are available for both. Major Unresolved Issues Circumstances under which a copyright can subsist in the ornamental features of a useful article.

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original literary and artistic works under copyright may also be protected as trademarks. Manner of Protection Registration required for a trademark; works require creative expression of human thoughts and emotion for copyright protection (no fixation requirement), no registration required. Extent of Rights Trademarks protect the source-identification function of the original work; copyright protects the original work from unauthorized copying. Duration of Rights Ten years from registration plus unlimited number of ten year renewal terms for trademarks; 50 years plus the life of the author of the work.

460

Korea IP Regimes

Overlap

Trademark/Copyright

Enforcement Injunctive and monetary relief are available for both. Major Unresolved Issues Extent to which the title of a book may be protected by copyright.

Trademarks/Designs

Overlapping Subject-Matter Protected Ornamental features of two- and especially three-dimensional articles. Manner of Protection Registration required for both. Extent of Rights Complementary protection; trademarks protect the source-identification function of the non-functional features of the article; designs protect against unauthorized exploitation of these ornamental features. Duration of Rights Ten years from registration plus unlimited number of ten-year renewal terms for trademarks; 15 years from the date of registration for designs. Enforcement Injunctive and monetary relief are available for both rights. Major Unresolved Issues NA

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographic names; no separate protection for appellations of origin; such a mark must satisfy the requirements under the trademark law to be protected. Manner of Protection Registration is required. Extent of Rights All marks, including a geographic name, are governed by a unitary system under the Korean trademark law. Duration of Rights Ten years from registration plus potentially unlimited number of ten-year renewal terms. Enforcement Injunctive and monetary relief available. Major Unresolved Issues Extent of the degree of recognition required for a geographic name to be registered as trademark.

Database Right/Copyright

Overlapping Subject-Matter Protected Original structure and organization of a database. Manner of Protection No registration required for either right. Extent of Rights Copyright protects the original arrangement and/or composition of subjectmatters that form a component of the database; database right relates to the whole or substantial part of a database, no originality required. Duration of Rights Copyright is valid for 50 years plus the life of the author; Database right is valid for five years from the date of production or material modification of a database.

461

Comparison Tables IP Regimes

Overlap

Database Right/Copyright (cont.)

Enforcement Injunctive and monetary relief are available. Major Unresolved Issues The scope of investment and effort necessary to grant protection of a database.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original works that express human thoughts and emotions. Manner of Protection Each right subsists in an original work, no registration required. Extent of Rights Copyright protects against unauthorized reproduction of copyrighted works; moral rights protect the author’s right of integrity, paternity and divulgation in the work. Duration of Rights Copyright is valid for 50 years plus the life of the author, while moral rights remain valid only for life of the author. Moral right is generally valid for the life of the author due to the personal nature of the right; under Korean law, even after the death of the author, no person who exploits the author’s work may commit an act which would be prejudicial to the author’s moral right if he/she were alive. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues Amount of alteration required to be regarded as an infringement of integrity in the work.

Competition Law/Intellectual Property Law

Overlapping Subject-Matter Protected Overlap where there is a potential restraint of trade involving the exercise of an intellectual property right. Manner of Protection NA Extent of Rights In principle, intellectual property right will remain valid even if an act violates provisions of the competition law. Duration of Rights NA Enforcement If the exercise of an intellectual property right is unjust, there is the possibility of monetary relief and/or imposition of penalty by the governmental authority. Major Unresolved Issues Extent of the conduct that is acceptable as a justifiable exercise of the right.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Inventions regarding the shape of goods that are copied without authorization. Manner of Protection Inventions are not required to be well-known to the public; no registration is required for copyright; registration is required for patents.

462

Korea IP Regimes

Overlap

Unfair Competition/Patents and Copyright

Extent of Rights Partial overlap; the Unfair Competition Prevention Act protects against inventions regarding the shape of goods; copyright protects the original work from unauthorized copying; a patent protects the protected invention from unauthorized exploitation. Duration of Rights There is no time limit for protection under the Unfair Competition Prevention Act; copyright is valid for 50 years plus the life of the author; 20 years from the application of a patent. Enforcement Monetary and injunctive relief are available. Major Unresolved Issues The scope of conduct, performed on the basis of a patent and/or copyright that is nevertheless prohibited under the Unfair Competition Prevention Act.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Trademarks that are well-known to the public. Manner of Protection A trademark is required to be well-known to the public for protection under the Unfair Competition Prevention Act; registration is required for trademarks. Extent of Rights Partial overlap; the Unfair Competition Prevention Act protects against the use of any mark that is identical or similar to the well-known trademark of another person; trademark law protects against registration of any mark that is identical or similar to the trademark of another person. Duration of Rights No time limit for protection under the unfair competition law; ten years from registration plus potentially unlimited number of ten-year renewal terms for trademarks. Enforcement If unfair competition is found, monetary and injunctive relief is available. Major Unresolved Issues The scope of conduct, performed on the basis of the trademark that may be prohibited under the Unfair Competition Prevention Act.

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, signature, or likeness of a person. Manner of Protection Registration is required for a trademark; no registration is required and there are no explicit requirements for protection of publicity rights under Korean law. Extent of Rights Trademarks protect source-identification functions of the name, signature, or likeness of a person; publicity rights protect the economic value of such name or likeness. Duration of Rights Ten years from the date of registration plus unlimited number of ten-year renewal terms for trademarks; basically, a person has protection of publicity rights during his lifetime.

463

Comparison Tables IP Regimes

Overlap

Trademarks/Publicity (Privacy) (cont.)

Enforcement Monetary and injunctive relief are available for both. Major Unresolved Issues The scope, duration, and applicability of publicity right; it is unclear whether a deceased person or judicial person has publicity rights.

Petty Patents/Utility Patents

Overlapping Subject-Matter Protected Inventions (the creation of a useful device). Manner of Protection Registration is required for both rights. Extent of Rights Both rights prohibit the unauthorized exploitation of the protected invention. Duration of Rights The Utility Model Act guarantees ten years of protection for petty patents; utility patents are protected for 20 years from the date of its application. Enforcement Injunctive and monetary relief is available for both. Major Unresolved Issues The standard of non-obviousness requirement for a petty patent.

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect letter(s) or character(s); the alphanumeric representation of an IP (internet protocol) address may be registered as a trademark. Manner of Protection For trademarks, registration is required; domain names should be registered with the relevant registry. Extent of Rights Trademarks must satisfy certain registration requirements; a domain name registration is granted to the first person to register such domain. Duration of Rights Ten years from registration plus unlimited number of ten-year renewal terms for trademarks; domain name may be registered for a ten-year period and renewal is possible. Enforcement Injunctive and monetary relief is available for infringement of a trademark; domain name may be cancelled or transferred to the complainant as an enforcement measure. Major Unresolved Issues Under the circumstances, whether the use of domain names may be regarded as an infringement of trademark or act of unfair competition.

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected The Korean Patent Law protects inventions of plant varieties, genes, cells or breeding methods of plants; the Seed Industry Act only protects a breeder’s invention of new plant varieties. Manner of Protection Each right requires registration.

464

Korea IP Regimes

Overlap

Patents/Plant Breeders’ Rights

Extent of Rights Patent rights provide a wider scope of protection than breeder’s rights; new genes, cells, and breeding methods are not protected as breeder’s rights but as patent rights. Duration of Rights Both are protected for a fixed statutory period of 20 years. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues Unclear whether the patent right of specific plant varieties, genes, or breeding methods prohibit study and/or research conducted by using such plant as protected by the relevant patent.

Patents/Copyright

Overlapping Subject-Matter Protected Certain original works that may be expressed in literary form, such as computer programs. Manner of Protection Patents require registration; copyright requires creation of an original work for protection (no fixation requirement), no registration required; for patent registration of a computer program, the program itself is required to be merged with a physical object; copyright protects the computer program itself. Extent of Rights The rights partially overlap, especially with respect to computer code. Duration of Rights Patents are valid for 20 years from the date of application; a copyright is valid for 50 years plus the life of the author. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues The extent of copyright protection once the patent period expires.

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions, especially pertaining to clinical trial data in the pharma-chemical industry. Manner of Protection Registration is required for patent protection; data is protected by administrative confidentiality. Extent of Rights The two sets of rights are partially complementary. Duration of Rights Patents are protected for 20 years from the date of application; data exclusivity rights are granted for a period as set by administrative rules. Enforcement Injunctive and monetary relief are available for patents; improperly disclosed data is protected by administrative enforcement. Major Unresolved Issues The reasonable time period for data exclusivity is unclear.

465

Comparison Tables

Mexico Roberto Arochi, Manuel Morante, Arochi, Marroquín & Lindner, SC

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Two- and three-dimensional trademarks. The Industrial Property Law recognizes the possibility of protecting both types of marks. Manner of Protection Registration is good against third parties for a registered mark; an unregistered trademark requires evidence of sufficient use of the trademark. Extent of Rights Registered trademarks are more easily protected in legal proceedings than are unregistered marks; unregistered trademarks enjoy the same protection as a registered mark, provided they satisfy the evidentiary threshold. Duration of Rights Initial registration period of ten years plus unlimited number of ten-year renewal periods; no time limitation for unregistered trademarks based on use. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible. Major Unresolved Issues Unregistered ‘famous trademarks’; jurisprudence regarding what constitutes ‘fame’.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for a patent; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights Regarding inventions, mutually exclusive, since disclosure under the Industrial Property Law excludes protection as a trade secret; trade secret protection is available for valuable information not protected and/or protectable as a patent. Duration of Rights 20 years from application for patents; unlimited protection of trade secrets, provided secrecy is maintained. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible, trade secrets are enforced through criminal procedures since misappropriation or unlawful disclosure of a trade secret is considered a crime. Major Unresolved Issues Award of damages for trade secrets violation; relation between trade secrets and data exclusivity.

466

Mexico IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Different aspects of invention; patents cover functional inventions; design inventions cover the ornamental features of articles that are industrially produced. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights These rights may be complementary regarding the same article or product; patents cover unauthorized exploitation of the protected invention while designs protect against unauthorized copying of the ornamental features. Duration of Rights Both types of rights are protected for a fixed statutory period; patents protected for 20 years; designs protected for 15 years; neither has any renewal period. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible. Major Unresolved Issues The difficulty to distinguish between functional and ornamental features.

Copyright/Design Rights

Overlapping Subject-Matter Protected A literary or artistic work that may be used as an ornamental feature of an industrially produced article. Manner of Protection Registration is a prior requisite for design protection; copyright protection subsists in an original work in a fixed form, although registration is required for declaratory purpose to enhance protection. Extent of Rights These rights are mutually exclusive to the extent that no copyright can subsist in a design unless it is not intended for industrial application. Duration of Rights Copyright subsists in the main for 100 years plus the life of the author or creator; designs are registered for a fixed term of 15 years with no possibility of renewal. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible. Major Unresolved Issues The possible subsistence of both rights in the same article.

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original artistic and musical works, and reservation of rights under the Copyright Law may also be protected as a trademark. Manner of Protection Registration for a trademark; creation of the work in a fixed form for protection of a copyrighted work; although registration is not required, it has declaratory effect so as to enhance protection; registration or reservation of rights of exclusive use.

467

Comparison Tables IP Regimes

Overlap

Trademark/Copyright (cont.)

Extent of Rights Trademark protects the source-identification function and distinctiveness of the work; copyright protects the original work from unauthorized copying; reservation of rights protects the exclusive use and exploitation of works such as titles, names, designations and distinctive physical and psychological characteristics. Duration of Rights Initial period of ten years plus potentially unlimited number of ten-year renewal periods for trademarks; in the main, 100 years plus the life of the work’s author; certificate of reserved rights shall be valid for a fixed initial term, differing upon the type of right preserved; protection covered by a certificate of reserved rights may be renewed for successive periods of equal duration. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible. Major Unresolved Issues Extent to which phrases or distinctive physical and psychological characteristics, both human and fictional, might be protected by trademark, copyright or reservation of right.

Trademarks/Designs

Overlapping Subject-Matter Protected Non-functional/ornamental features of two and especially three-dimensional articles. Manner of Protection Design requires registration as a prerequisite for protection; trademark can be protected even if it is not registered. Extent of Rights Trademarks protect the source-identification and distinctive function of the non-functional features of the product; design rights protect against unauthorized copying of the functional/ornamental features. Duration of Rights Initial period of ten years, plus potentially unlimited number of ten year renewal periods for trademarks; registration for designs is for 15-year term without any renewal term. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible. Major Unresolved Issues Extent to which the Registry will treat trademark and design rights as mutually exclusive.

Trademarks and Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Trademarks can be protected even if they are not registered; registration is recommended for purposes of more efficient protection; appellations of origin must be declared by Mexican Institute of Industrial Property in order to obtain international registration through the Lisbon Agreement.

468

Mexico IP Regimes

Overlap

Trademarks and Appellations of Origin

Extent of Rights Both rights protect the source function of a mark; however, an appellation of origin is limited to protecting the geographic origin and the traditional production of the product. Duration of Rights For trademarks, initial period of ten years plus potentially unlimited number of ten-year renewal periods; for appellation of origin, unlimited in time as long as the geographical, human, and natural conditions of the product exist. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible for trademark enforcement; appellations of origin can only be enforced through an administrative infringement action filed at the Mexican Institute of Industrial Property. Major Unresolved Issues Extent to which appellation of origin remains valid when the product is produced outside of the geographical area; relationship with collective marks is not clearly delineated.

Database Right/Copyright

Overlapping Subject-Matter Protected Original contents and/or the structure and organization of a database. Manner of Protection Copyright protection subsists in an original work in a fixed form; although no registration is required, it is recommended for protection against third party actions. Extent of Rights Unitary form of protection since there is no statutory protection for a database under Mexican law. Duration of Rights In the main, 100 years plus the life of the author/creator of the original work. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible Major Unresolved Issues Enactment of specific law or regulations for database protection.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary, or dramatic works. Manner of Protection Each right subsists in an original work in a fixed form; although no registration is required, it is recommended for protection against third party actions; moral rights are recognized even when there is no registration. Extent of Rights Complementary, copyright protects against unauthorized reproduction of the original work, while moral rights protect the author’s right of paternity and integrity in the work.

469

Comparison Tables IP Regimes

Overlap

Copyright/Moral Rights (cont.)

Duration of Rights Copyright is protected for 100 years plus the life of the author; moral rights do not have any limitation on duration of protection and are not subject to cancellation. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible. Major Unresolved Issues Prohibition against waiver and/or transfer of moral rights.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected The Federal Economic Competition Law specifically states that the Federal Competition Commission is not legally capable to resolve issues regarding any abuse of intellectual property rights. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Engaging in acts contrary to proper practice and custom in industry, commerce and services, which amount to unfair competition and which relate to the subject-matter regulated by the Industrial Property Law, shall constitute an administrative infringement before the Mexican Institute of Industrial Property. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

470

Mexico IP Regimes

Overlap

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Engaging in acts contrary to proper practice and custom in industry, commerce and services, which amount to unfair competition and which relate to the subject-matter regulated by the Industrial Property Law, shall constitute administrative infringement. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, likeness, or voice of a person. Manner of Protection For the use or registration of a trademark consisting of a person’s name or likeness (in Mexico sound trademarks are not recognized), express consent of the person concerned is required; regarding privacy issues, express consent of the person concerned is required, pursuant to the Federal Personal Data Protection Law. Extent of Rights Trademarks protect the source-identification and distinctiveness functions of the name or likeness; right of privacy protects the person from an invasion of his/her privacy by the unauthorized use of his/her name or likeness. Duration of Rights Initial ten year-period plus potentially unlimited number of ten-year renewal periods for trademarks; right of privacy is arguably valid only for the life of a person. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible; right of privacy is protected through fines and possible criminal trial. Major Unresolved Issues The Federal Personal Data Protection Law has recently come into force; expected that multiple issues regarding the protection of the right to privacy and trademarks will emerge in the near future.

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected There is no protection for a petty patent under Mexican Law; all useful inventions must satisfy the same requirements for patentability under the Mexican Industrial Property Law. Manner of Protection A granted patent is a prerequisite for protection. Extent of Rights All inventions are governed under a signal system.

471

Comparison Tables IP Regimes

Overlap

Patents/Utility Models (Petty Patents) (cont.)

Duration of Rights Patents are protected for a fixed statutory period of 20 years. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible. Major Unresolved Issues Possible future statutory enactment of a petty patent-like regime.

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect alphanumeric trademarks. Trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; domain names registered on the or registry by NIC-Mexico. Extent of Rights Trademark must comply with the requirements for registration; a domain name registration is based solely on ‘first-come, first-served’. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods, but the periods of registration/ renewal differ for each right. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible for trademarks; cancellation or transfer of the domain name to the complainant are the available remedies for a successful challenge of a domain name. Major Unresolved Issues The extent to which principles that apply to trademark registration and protection should apply to a challenge of a domain name registration.

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Patents protect inventions of a product or process, while breeder’s rights protect certain defined types of new plant varieties; the Industrial Property Law provides that plant varieties are not patentable. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Mutual exclusivity under Mexican law. Duration of Rights Both rights are registered for a fixed period of time. Enforcement Administrative infringement action, including injunctive relief filed at the Mexican Institute of Industrial Property; damages awarded by a civil court upon finding liability; criminal enforcement is possible for patents; for breeders’ rights, injunctive relief is available; administrative infringement may be filed at the Ministry of Agriculture against the infringer. Major Unresolved Issues The possible interrelationship between breeders’ rights and other IP rights, such as trademarks or appellations of origin.

472

Mexico IP Regimes

Overlap

Patents/Copyright

Overlapping Subject-Matter Protected Overlapping subject-matter is not possible, because the Industrial Property Law and the Federal Copyright Law exclude such a possibility, a software program protected by copyright is not deemed patentable; software protected by a patent may not be protected by copyright. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Although data exclusivity is present in many treaties that Mexico has signed and ratified, it is not an enforceable right in Mexico; neither the General Health Law nor its Regulations have established the rules and requirement for data exclusivity protection and its duration. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

473

Comparison Tables

Netherlands Tim Iserief, Moïra Truijens, and Josine van den Berg, Klos Morel Vos & Schaap

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Words and other signs that distinguish goods or services. Manner of Protection Registration required; protection for unregistered word mark possible as a trade name if name serves to distinguish undertaking; must prove bona fide use; protection also possible under unfair competition. Extent of Rights Partial overlap (protection against likelihood of confusion); registered trademark applies to all the Benelux countries. Duration of Rights Initial registration period of ten years plus unlimited number of ten-year renewal periods for trademarks; no time limitation for duration of trade names or protection under unfair competition. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible); for trademarks also administrative and criminal remedies. Major Unresolved Issues NA

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration required for patents; no sui generis trade secret law; reliance on various other laws; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights Mutually exclusive subject-matter, since disclosure under patent laws excludes protection as a trade secret; trade secret protection is available for valuable information not disclosed in relation to a patent application or otherwise. Duration of Rights Patents are protected for 20 years; unlimited protection of trade secrets, provided secrecy is maintained. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible) and criminal remedies for patent infringement; trade secrets protected under various laws, remedy will depend upon offence. Major Unresolved Issues NA

474

Netherlands IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Patents cover technical inventions; design rights cover ornamental features; exterior features that perform a technical function are excluded from design protection; designs (not performing a technical function) cannot be protected by patents. Manner of Protection Both patent and design protection require registration. Extent of Rights Rights may overlap regarding the same product, but they protect different aspects; design rights apply to all the Benelux countries. Duration of Rights Patents are protected for 20 years; registered designs are protected for an initial fixed term of five years, with possibility of four five-year renewal periods. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible), criminal remedies. Major Unresolved Issues NA

Copyright/Design Rights

Overlapping Subject-Matter Protected Portion of the exterior appearance of products and drawings/patterns. Manner of Protection No registration is required for copyright protection; design must be registered. Extent of Rights Regarding an object, copyright protects the original work of authorship from unauthorized use while design rights cover unauthorized use of ornamental features; copyright protection is broader as it protects the ‘corpus mysticum’ (the intellectual creation as such); design rights apply to all the Benelux countries. Duration of Rights Copyright protection extends for 70 years plus the life of the author; designs are protected for an initial fixed term of five years with possibility of four, five-year renewal periods. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible); and criminal remedies; for trademarks also administrative remedies. Major Unresolved Issues Design rights/copyrights in works and designs for hire.

Trademark/Copyright

Overlapping Subject-Matter Protected Original works of authorship that also serve to distinguish goods or services. Manner of Protection Registration required for protection of a trademark; no registration required for copyright protection. Extent of Rights Trademarks protect the source-identification of the mark; copyright protects the original work of authorship from unauthorized use; rights can only be invoked simultaneously; trademarks apply to all the Benelux countries.

475

Comparison Tables IP Regimes

Overlap

Trademark/Copyright (cont.)

Duration of Rights Initial registration period of ten years plus unlimited number of ten-year renewal periods for trademarks; copyright protection extends for 70 years plus the life of the author. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible) criminal remedies; for trademarks also administrative remedies. Major Unresolved Issues NA

Trademarks/Designs

Overlapping Subject-Matter Protected Two-dimensional and three-dimensional signs. Manner of Protection Both designs and trademarks require registration. Extent of Rights Trademarks protect the source-identification function of the sign; design rights protect against unauthorized use of ornamental features; trademarks apply to all the Benelux countries. Duration of Rights Initial registration period of ten years plus an unlimited number of ten-year renewal periods for trademark protection; designs are protected for an initial fixed term of five years with possibility of four, five-year renewal periods. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible) criminal remedies; for trademarks also administrative remedies. Major Unresolved Issues NA

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names or indications. Manner of Protection Trademark requires registration; geographical indications are protected on EU level; The Netherlands is not a party to the Lisbon Convention. Extent of Rights Trademarks protect the source-identification of a mark; trademarks apply to all the Benelux countries; a trademark may include a (geographical) appellation of origin if, for the relevant public, it does not connote an appellation of geographical origin and does not mislead as to origin or if it was registered bona fide before 1996. Duration of Rights Trademarks are valid for initial period of ten years plus potentially unlimited number of ten-year renewal periods; geographical indication/appellations of origin are in accordance with Council Regulation 510/2006 (EC). Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible); administrative remedies, criminal remedies. Major Unresolved Issues NA

476

Netherlands IP Regimes

Overlap

Database Right/Copyright

Overlapping Subject-Matter Protected Structure (contents and/or arrangement) of a database. Manner of Protection Copyright protection subsists in an original work, no registration required; databases are protected sui generis, but only when a substantial investment in the database has been made, no registration required. Extent of Rights Copyright protects the original work from unauthorized use; the Dutch Database Act protects against the unauthorized use of a substantial part of a database for which a substantial investment has been made by the producer. Duration of Rights For copyright, the duration of protection is 70 years plus the life of the author; database protection commences on the day that the database is finished and ends after 15 years after the first of January of the year after completion. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible), criminal remedies. Major Unresolved Issues NA

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original works of authorship. Manner of Protection Both rights subsist in an original work of authorship, no registration required. Extent of Rights Complementary, since these rights protect different aspects of the same original work of authorship; copyright protects against unauthorized use; moral rights protect the author’s right of paternity and integrity in the work. Duration of Rights Both rights are valid for 70 years plus the life of the author. Enforcement Civil remedies in accordance with Enforcement Directive (preliminary measures possible), criminal remedies. Major Unresolved Issues Can legal entities also claim moral rights, or is a natural person required (as the author) for moral rights?

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Overlap where there is a potential restraint of trade involving the exercise of a valid intellectual property right. Manner of Protection NA Extent of Rights A violation of competition law will not affect the validity of the relevant intellectual property right. Duration of Rights No limitation of time for claim of restraint of trade, other than the claim must relate to a valid intellectual property right.

477

Comparison Tables IP Regimes

Overlap

Competition Law/Intellectual Property Rights

Enforcement Abrogation of the anticompetitive provisions in a licence for use of the intellectual property can be sought both in civil proceedings and by filing a complaint with the Dutch Anti-Competition Authority. Major Unresolved Issues The extent to which the terms of a licensed intellectual property right will not attract competition law scrutiny because all of the restraints are derived directly from the exercise of the intellectual property right itself.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Mainly non-technical appearance of products. Manner of Protection No specific law deals with unfair competition; claims may be based on general tort law, ie, action based on ‘slavish copying’ if the appearance of a product has its own distinguishing character in the relevant market. Extent of Rights General tort law protects against circumstances where the third party could have easily altered aspects to avoid the likelihood of confusion; claim based on unfair competition in addition to claim based on intellectual property infringement only if separate legal interest exists. Duration of Rights Proceedings for a claim of unfair competition may be filed within the term fixed by the general laws of procedure; copyright is valid for 70 years plus the life of the author; patents are protected for 20 years. Enforcement Regarding patent or copyright infringement, civil remedies in accordance with Enforcement Directive (preliminary measures possible); criminal remedies; normal civil remedies in case of general tort law. Major Unresolved Issues NA

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Non-technical appearance of products, words, and signs. Manner of Protection No specific law deals with unfair competition; claims may be based on general tort law, ie action based on ‘slavish copying’; general tort law in principle not applicable to signs that qualify as a trademark. Extent of Rights General tort law protects against circumstances where the third party could have easily altered aspects to avoid the likelihood of confusion; claim based on unfair competition in addition to claim based on trademark infringement only if separate legal interest exists. Duration of Rights Proceedings for a claim of unfair competition may be filed within the term fixed by the general laws of procedure; initial period of ten years plus an unlimited number of ten-year renewal periods for trademarks. Enforcement In the case of trademark infringement, civil remedies in accordance with Enforcement Directive (preliminary measures possible), criminal remedies; normal civil remedies in case of general tort law. Major Unresolved Issues NA

478

Netherlands IP Regimes

Overlap

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, likeness, or voice of a person. Manner of Protection Registration is required for a trademark; there is no explicit requirement regarding privacy protection. Extent of Rights Trademarks protect the source-identification function of a name or likeness; trademarks apply to all the Benelux countries; the right to privacy protects the person from an invasion of privacy by the unauthorized use of his name or likeness. Duration of Rights Initial period of ten years plus an unlimited number of ten-year renewal periods for trademarks; no specific duration for publicity rights. Enforcement In case of trademark infringement, civil remedies in accordance with Enforcement Directive (preliminary measures possible), criminal remedies; normal civil remedies in case of privacy protection. Major Unresolved Issues NA

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected No such distinction under Dutch law, all inventions are subject to a unified law of patents. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Domain Names/Trademarks

Overlapping Subject-Matter Protected The alphanumeric representation of an IP (internet protocol) address that also serves to distinguish goods or services; trade name law may also apply. Manner of Protection Trademarks are protected by registration; domain names are registered with SIDN. Extent of Rights Trademarks protect the identification-function of a mark; trademarks apply to all the Benelux countries; a domain name registration is based on ‘first-come, first-served’. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods.

479

Comparison Tables IP Regimes

Overlap

Domain Names/ Trademarks (cont.)

Enforcement Administrative remedies (based on UDRP) for domain names; civil remedies in accordance with Enforcement Directive (preliminary measures possible) for trademarks. Major Unresolved Issues NA.

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Certain types of plant-related discoveries. Manner of Protection Each right requires registration. Extent of Rights Partial mutual exclusivity; plant-related discoveries that are not covered by a plant breeder’s right registration may still be protected by patent as an invention. Duration of Rights Patents are protected for 20 years; plant breeders’ rights are valid for 20 years, and 25 years for trees and vine-stocks; the Ministry of Agriculture may designate species that are protected for 30 years. Enforcement Civil remedies in accordance with Enforcement Directive (summary and main proceedings). Major Unresolved Issues NA.

Patents/Copyright

Overlapping Subject-Matter Protected Patents cover technical inventions, including computer software; in principle, no overlap because copyright does not protect the technical elements of software, and design features that perform a technical function are excluded from copyright protection; however, copyright protection held possible for products if no other design is available for technical solution. Manner of Protection Patents require registration; copyright requires creation of an original work of authorship, no registration required. Extent of Rights The two sets of rights are partially complementary, especially with respect to computer software. Duration of Rights Patents are valid for 20 years; in the main, copyright protection subsists for 70 years plus the life of the author. Enforcement Civil remedies in accordance with Enforcement Directive (summary and main proceedings); criminal remedies. Major Unresolved Issues Scope of patent protection for computer software and more generally the extent of copyright protection for a useful product; the extent of copyright protection upon expiry of a patent.

480

Netherlands IP Regimes

Overlap

Patents/Data Exclusivity

Overlapping Subject-Matter Protected No overlap; patents protect inventions, while data exclusivity prevents marketing authorization of a generic medicinal product meant for human use. Manner of Protection Patents require registration; data protection is granted upon the initial marketing authorization. Extent of Rights The two sets of rights are complementary. Duration of Rights Patents are valid for 20 years; terms for data protection are protected for ten years from the initial authorization of the reference product. Enforcement In case of patent infringement, civil remedies in accordance with Enforcement Directive (preliminary measures possible); access to prior clinical trial data is governed by administrative law. Major Unresolved Issues NA

481

Comparison Tables

Russia Marina I. Drel and Dmitry S. Semenov, Gowlings International Inc.

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Passing off right does not exist under Russian law, unregistered marks are not protected. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights With respect to overlapping subject-matter, mutually exclusive, since disclosure under patent laws excludes protection as a trade secret; trade secret protection is available for valuable information not protected and/or protectable as a patent. Duration of Rights 20 years from application for patents; unlimited protection of trade secrets, provided secrecy is maintained. Enforcement Injunctive and monetary relief available for both rights, although injunctive relief may be of limited value regarding unauthorized disclosure of a trade secret. Major Unresolved Issues Extent of patent protection available for business methods.

Patents/Industrial Design Rights

Overlapping Subject-Matter Protected Different aspects of an invention; patents cover functional inventions; design patents cover the ornamental features of articles that are industrially produced. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights The two sets of rights may be complementary regarding the same article, patents cover unauthorized use of the protected invention whilst designs protect against unauthorized copying of the ornamental features.

482

Russia IP Regimes

Overlap

Patents/Industrial Design Rights

Duration of Rights Both rights are protected for a fixed statutory period; patents are registered for 20 years from application; design patents are registered for an initial fixed term of 15 years with possibility of one fixed-term renewal period of ten years. Enforcement Injunctive and monetary relief available for both rights; there is a likelihood of possible double recovery provided infringement of both rights has been proved. Major Unresolved Issues Test for distinguishing between functional and ornamental aspects of an article.

Copyright/Industrial Design Rights Overlapping Subject-Matter Protected A literary or artistic work that may be used as an ornamental feature of an industrially produced article. Manner of Protection Registration is a prerequisite for design patent protection; copyright protection subsists in a creative work in a fixed form, no registration required. Extent of Rights The two sets of rights are complementary regarding the same work; designs protect against unauthorized copying of the ornamental features; copyright protects against unauthorized copying or reworking. Duration of Rights Copyright subsists in the main for 70 years plus the life of the creator; design patents are registered for an initial fixed term of 15 years with a possibility of one fixed-term renewal period of ten years. Enforcement Injunctive and monetary relief available for both rights; statutory damages are also available as a relief for copyright infringement. Major Unresolved Issues Under what circumstances can copyright subsist in the ornamental features of a useful article; double recovery for infringement involving both a design patent and copyright; possibility of simultaneous protection of a design as a copyright, and/or an industrial design, and/or a trademark. Trademark/Copyright

Overlapping Subject-Matter Protected The design elements of trademarks or literary work or its part that are registered as trademarks are also subject to copyright protection, including logos, labels, and, in some cases, lettering/font, and slogans. Manner of Protection Registration for a trademark; creation of the work in a fixed form for protection of a copyrighted work, no registration required. Extent of Rights Trademarks protect the source-identification function of the original work; copyright protects the creative work from unauthorized copying or reworking. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for trademarks of ten years each; for copyright, in general, the life of the author plus 70 years.

483

Comparison Tables IP Regimes

Overlap

Trademark/Copyright (cont.)

Enforcement Injunctive and monetary relief available for both rights; statutory damages are available for both copyright and trademark infringement. Major Unresolved Issues Extent to which phrases might be protected either by copyright or trademark (as a slogan); whether infringement of a trademark may also be considered as a copyright infringement; extent to which one person, who owns the copyright in the design component of a particular trademark, can enforce his rights against the owner of said trademark and vice versa.

Trademarks/Designs

Overlapping Subject-Matter Protected Non-functional/ornamental features of two- and especially three-dimensional articles. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Trademarks protect the source-identification function of the non-functional features of the article; designs protects against unauthorized copying of these functional/ornamental features. Duration of Rights Initial period plus potentially unlimited number of fixed-term renewal periods for trademarks of ten years each; registration for an initial fixed term of 15 years with a possibility of one fixed-term renewal period of ten years for designs. Enforcement Injunctive and monetary relief available for both rights; statutory damages recovery is available for trademark infringement. Major Unresolved Issues Double recovery.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Each right requires registration as a prerequisite for protection; appellations of origin should also be registered as a separate right. Extent of Rights Both rights protect the source function of a mark; however, an appellation of origin is limited to protecting the geographic origin of the product. Duration of Rights Initial period of ten years plus potentially unlimited number of fixed-term renewal periods of ten years each for both trademarks and appellations of origins. Enforcement Injunctive and monetary relief as well as statutory damages are available for infringement of trademark and violation of an appellation of origin. Major Unresolved Issues Extent to which appellation of origin remains valid when the product is produced outside of the geographical area; distinction between geographical descriptiveness under trademark law and registrability as an appellation of origin.

484

Russia IP Regimes

Overlap

Database Right/Copyright

Overlapping Subject-Matter Protected Creative contents and/or the structure and organization of a database. Manner of Protection Copyright protection subsists in a creative work in a fixed form, no registration required. Extent of Rights Both rights are protected under copyright law; a database whose structure and organization have no creative features but consists of at least 10,000 elements or more is protected against copying or extraction of its substantial part under neighbouring right to the database. Duration of Rights In the main, 70 years plus the life of the author of the original work; database under neighbouring right subsists for 15 years with a possibility for renewal of 15 years should the database have been updated. Enforcement Injunctive relief and monetary relief, including statutory damages, are available. Major Unresolved Issues Double protection of database under copyright and neighbouring right; notion of ‘substantial part’ in the event of infringement of database right both under copyright and neighbouring right.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary, or dramatic works. Manner of Protection Each right subsists in a creative work in a fixed form, no registration required (only natural person may possess moral rights). Extent of Rights Complementary, since they may protect different aspects of the same creative work; copyright protects against unauthorized reproduction, whilst moral rights protect the author’s right of paternity and integrity in the work. Duration of Rights Copyright is valid for 70 years plus the life of the author; moral rights are protected perpetually. Enforcement Both rights provide for monetary and injunctive relief; statutory damages are available only for copyright infringement. Major Unresolved Issues Right of waiver and/or transfer of moral rights; the scope of the right to recall publication.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected The goals of the Russian Competition Law 2006 are to prevent monopolistic activities and unfair competition on the market, to ensure free movement of commodities, freedom of economic activities, protection of competition and efficient functioning of the commodities markets; Competition law does not apply to copyright, trademarks and patents except for a ban for unfair competition involving unauthorized use of copyright, trademarks and patents. Manner of Protection NA

485

Comparison Tables IP Regimes

Overlap

Competition Law/Intellectual Property Rights (cont.)

Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Overlap where unauthorized use of patents or copyright is involved. Manner of Protection Patents must be registered for protection; copyright work subsists in a creative work in a fixed form; competition between patent/copyright holder and the competitor in the same segment of the Russian market is required to launch unfair competition procedure and cease unauthorized use of patents or copyright. Extent of Rights Complementary. Duration of Rights Unfair competition claims are limited to the terms of patents and copyright validity. Enforcement Injunctive relief and fines. Major Unresolved Issues Very few unfair competition cases that focus on patents or copyrights; no clear legal requirements as to what activities constitute violation of the Russian Competition Law.

Unfair Competition/Trademarks

Overlapping Subject-Matter Protected Overlap where unauthorized use of trademarks is involved. Manner of Protection Trademark requires registration; competition between trademark holder and the competitor in the same segment of the Russian market is required to launch unfair competition procedure to cease unauthorized use of trademarks. Extent of Rights Complementary. Duration of Rights Available only during the term of trademark validity. Enforcement If unfair competition is found, injunctive relief and fines are available. Major Unresolved Issues No clear legal requirements as to what activities constitute violation of the Russian Competition Law.

486

Russia IP Regimes

Overlap

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The likeness of an individual. Manner of Protection Registration is required for a trademark; no explicit requirement regarding how protection arises under the Privacy Laws. Extent of Rights Trademarks protect the source-identification function of the name or likeness; right of privacy protects the individual from an invasion into his privacy through unauthorized use of his likeness. Duration of Rights Initial period of ten years plus potentially unlimited number of fixed-term renewal periods for trademarks of ten years; right of privacy is arguably valid only for the life of an individual; post mortem use of the individual’s likeness requires consent of his/her close relatives. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues It is unclear whether voice and name of an individual are protected under the Privacy Laws and, if so, to which extent; it is also unclear whether use of likeness parts, for example, body parts, consists violation of the Privacy Laws.

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected Petty patents are not provided by Russian law; under the Russian Civil Code, only inventions, utility models, and industrial designs are patentable. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect two-dimensional marks; trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; domain names are registered on the registry maintained by various registrars. Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration is based solely on ‘first-come, first-served’. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodical renewal periods; the periods of registration/ renewal differ for each right.

487

Comparison Tables IP Regimes

Overlap

Domain Names/ Trademarks (cont.)

Enforcement Injunctive and monetary relief are available for infringement of a trademark; statutory damages are available for trademark infringement only; cancellation or transfer of the domain name to the complainant are the available remedies in a successful challenge of a domain name. Major Unresolved Issues Extent to which principles that apply to trademark registration and protection should be applied to a challenge of a domain name registration; cancellation and transfer of ‘dead’ domain names.

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Utility patents protect invention of a product or process, whilst breeders’ rights protect certain defined types of new plant and animals varieties; generally, varieties of plants, breeds of animals and the biological methods for producing them, except for microbiological methods and products produced by such methods, are not patentable. Manner of Protection Each right requires registration. Extent of Rights Partial mutual exclusivity; microbiological methods and products produced by such methods that are not covered by a breeder’s right registration may still be protected by patent as an invention; a limited overlap between breeders’ rights and trademark law regarding the naming of a registered plant variety. Duration of Rights Both are registered for a fixed period of time. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues The interrelationship between names of registered plant varieties and trademark protection.

Patents/Copyright

Overlapping Subject-Matter Protected Patents and copyright are separate rights under Russian law and no overlap between them exists. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

488

Russia IP Regimes

Overlap

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Russian law provides no mechanism for protection of data exclusivity except as a trade secret, which subsists as long as the information is kept secret. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

489

Comparison Tables

Singapore Gilbert Leong, Rodyk & Davidson LLP

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Signs that are used by traders to denote the source of goods or services; these signs may be two- or three-dimensional marks. Manner of Protection Registration is required for protection to be given under the Trade Marks Act; under passing off, the mark need not be registered but the proprietor would need to prove goodwill, misrepresentation, and damage. Extent of Rights Passing off is a common law action and provides, more broadly, for protection of signs. Duration of Rights Trademarks are protected for an initial period of ten years, with an unlimited number of renewal periods of ten years each; no limitation on duration of rights under passing off. Enforcement Generally by orders for injunctive or monetary relief obtained from the courts which are wary of double recovery for registered trademark and passing off; criminal sanctions available for registered trademarks but not under passing off. Major Unresolved Issues Whether and to what extent the use of a registered trademark may be a defence against a passing off claim.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Patents must be registered under the Patents Act; keeping the trade secret confidential or secret is prerequisite for an action under common law for breach of confidence. Extent of Rights As they relate to an invention, the rights are mutually exclusive; grant of patent requires the information to be disclosed whilst protection of trade secrets require the information to be kept confidential; disclosure of an invention prior to an application for a patent may destroy novelty, thereby rendering it not possible to obtain a patent; at the same time, disclosure would result in the information not being protectable as a trade secret. Duration of Rights 20 years for patents from application date; provided that the information remains secret, unlimited for trade secrets. Enforcement Injunctive relief and damages available for both rights. Major Unresolved Issues NA

490

Singapore IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Patents protect an invention; design rights protect the outward or visible manifestation of an object, namely the ‘shape, configuration, pattern or ornament applied to an article by features of any industrial process’; the manner or method used to obtain that design may be protected by a patent. Manner of Protection Patents are registered under the Patents Act whilst designs are protected if registered under the Registered Designs Act. Extent of Rights Complementary rights, since patents protect the ‘inside’ of an article whereas designs protect the external, aesthetic, and ornamental features; registered design protects against the unauthorized copying or imitation of the design. Duration of Rights Initial period of protection for a registered design is five years, renewable every subsequent five years up to a maximum of 15 years; patent registration lasts 20 years from application. Enforcement Injunctive relief and damages available for both rights; depending on the factual matrix, recovery for both patent and design infringement arising from the same set of facts may be possible. Major Unresolved Issues NA

Copyright/Design Rights

Overlapping Subject-Matter Protected Artistic work, or a work of artistic craftsmanship that is industrially applied. Manner of Protection Registration is required for design protection; copyright protection does not require any registration; where the design is registrable, there will be no copyright protection in the artistic work under the Copyright Act and the protection will have to be sought under the Registered Designs Act. Extent of Rights Mutually exclusive to the extent that there is no copyright protection for a design that has been industrially applied or deemed industrially applied. Duration of Rights In the main, copyright subsists for literary, musical, artistic, and dramatic works for the lifetime of the author plus 70 years; initial period of protection for a registered design is five years, renewable every subsequent five years up to a maximum of 15 years. Enforcement Court-granted injunctive relief and damages available for both rights; criminal sanctions available under Copyright Act for certain kinds of infringement. Major Unresolved Issues New advancements in technology make it a challenge for copyright law to keep up, eg uncertainty as to what is the level of protection that would be granted to machine-created works and designs.

491

Comparison Tables IP Regimes

Overlap

Trademark/Copyright

Overlapping Subject-Matter Protected The definition of a sign under the Trade Marks Act includes certain works protected under the Copyright law as well, namely artistic works. Manner of Protection Registration is required for protection under the Trade Marks Act; no registration is required for protection under copyright. Extent of Rights Copyright protects original works. Others are not permitted to copy this original work. Duration of Rights Trademarks are protected for an initial period of ten years, with an unlimited number of renewal periods of ten years each; in the main, copyright subsists for literary, musical, artistic, and dramatic works for the lifetime of the author plus 70 years. Enforcement Injunctive relief, damages, criminal sanctions, and statutory damages available for both rights. Major Unresolved Issues Interaction between defences available under copyright law in a trademark infringement situation.

Trademarks/Industrial Designs

Overlapping Subject-Matter Protected Aesthetic features of three-dimensional articles used as a registered trademark. Manner of Protection Registration is required for protection under the Trade Marks Act; designs are only protected if registered. Extent of Rights A trademark functions as a source identifier of a product or service; a design protects against the unauthorized copying of the aesthetic features of the article. Duration of Rights Trademarks are protected for an initial period of ten years, with an unlimited number of renewal periods of ten years each; initial period of protection for a registered design is five years, renewable every subsequent five years up to a maximum of 15 years. Enforcement Injunctive relief and damages available for both rights. Major Unresolved Issues Possibility of double recovery for damages if a registered design is also a registered trademark; issue of infringement of a two-dimensional trademark of a three-dimensional design.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names or indications. Manner of Protection Trademarks need to be registered; relevant right is geographical indication, as provided for by the Geographical Indications Act (GIA); automatically protected for the countries which are members of the World Trade Organization, a party to the Paris Convention, or a country designated by the Singapore Government as a qualifying country; producer, trader or association of such persons of any such geographical indication may invoke the GIA.

492

Singapore IP Regimes

Overlap

Trademarks/Appellations of Origin

Extent of Rights Geographic indication informs consumers about geographic origin of a product and its related special qualities; a trademark functions as a source identifier of a product. Duration of Rights Trademarks are protected for an initial period of ten years, with an unlimited number of renewal periods of ten years each; a geographical indicator remains protected for so long as it remains protected its country or territory of origin, or has not fallen into disuse in that country or territory, or has not become the common name of the goods or services in Singapore. Enforcement Injunctive relief, damages, and an account for profit are available for infringement of both trademark and geographic indication. Major Unresolved Issues Operation of exceptions under the Geographical Indications Act; can geographic indication also function as a trademark?

Database Right/Copyright

Overlapping Subject-Matter Protected There are no sui generis laws in Singapore protecting databases. To the extent that a database constitutes a ‘compilation’ work as defined in the Copyright Act, it is protected as such. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Copyright/Moral Rights

Overlapping Subject-Matter Protected Both deal with original artistic, musical, literary, or dramatic works; copyright is more of an ‘economic right’ that may be divorced from the creator of the work, while moral rights are concerned with the connection between the work and its creator. Manner of Protection No registration required for either copyright or moral rights; moral rights accrue only to natural persons. Extent of Rights Copyright protects against unauthorized reproduction of a work whilst moral rights protect the author’s right to be attributed as the creator and to protect the integrity of his work. Duration of Rights Both rights are valid for 70 years plus the life of the author.

493

Comparison Tables IP Regimes

Overlap

Copyright/Moral Rights (cont.)

Enforcement Injunctive relief and damages available for both rights; The Copyright Act requires the court to take into consideration damages, if any, recovered in other proceedings ‘arising out of the same operation or transaction’. Major Unresolved Issues May moral rights be waived?; degree of enforcement of moral rights in Singapore.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected There is no overlap per se but there exists a risk that a patent or copyright holder may use its rights to distort competition in the marketplace. Manner of Protection Under the Patents Act, a compulsory licence may be granted if necessary to remedy an anticompetitive practice; The Competition Commission may conduct investigations into anticompetitive acts; no similar licensing provisions in the Trade Marks Act or the Copyright Act. Extent of Rights Competition law targets the abuse of monopolies and not the fact that a party has a monopoly. As such, a finding of anticompetitive behaviour by reason of abuse of an intellectual property right would not by itself affect the validity of such right. Duration of Rights NA Enforcement If an agreement is found to be anticompetitive, such agreement would be void and of no effect; additionally, a fine may be imposed. Major Unresolved Issues The manner and extent in which competition law would control an IP owner’s prerogative to license his IP, particularly to his competitors.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected There are no specific laws in Singapore that deal with ‘unfair competition’; claims of unfair competition may be resolved by reference to contract law, intellectual property laws, competition law, and the common law. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

494

Singapore IP Regimes

Overlap

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected There are no specific laws in Singapore that deal with ‘unfair competition’; claims of unfair competition may be resolved by reference to contract law, intellectual property laws, competition law, and the common law. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected There are no specific laws in Singapore which deal with right of publicity; rights of publicity may be dealt with under the tort of passing off or defamation; tort of defamation cannot apply to a deceased person. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected Singapore does not have a petty patent regime; all inventions are regulated by a unitary system. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

495

Comparison Tables IP Regimes

Overlap

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both concern the use of words and numerals. Trademarks serve as source identifier whilst domain names are alphanumeric representation of an IP (internet protocol) address. Manner of Protection Registration is required for protection under the Trade Marks Act; domain names are registered with SGNIC. Extent of Rights A trademark functions as a source identifier; domain name registration is based on a ‘first-come, first-served’ basis, subject to certain restrictions such as a domain name cannot suggest a link to the Government of Singapore, include any words or references that are obscene, scandalous, indecent, or contrary to law or morality, or contain geographical names; there is no property right in a domain name, registration merely allows the registrant to use that domain name. Duration of Rights Trademarks are protected for an initial period of ten years, with an unlimited number of renewal periods of ten years each; domain names may be registered for initial periods of 12 or 24 months, renewable subject to SGNIC’s rules then in force. Enforcement Injunctive and monetary relief are available for infringement of a trademark; domain name may be cancelled or transferred after adjudication by a dispute resolution panel. Major Unresolved Issues Whether a decision of a dispute resolution adjudication panel may be appealed against or be otherwise subject to review by the courts.

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Patents protect an invention or technology, while a breeder’s rights protect certain defined types of new plant varieties. Manner of Protection Registration under the Patents Act or the Plant Varieties Protection Act required. Extent of Rights Registration under the Plant Varieties Protection Act confers protection over the breed itself, specifically restrictions in connection with the dealing of propagating material; plant-related discoveries not covered by plant varieties registration may still be protected under the Patents Act as an invention; limited overlap between breeders’ rights and trademark law regarding the naming of a registered plant variety. Duration of Rights 20 years for patents; up to 25 years for plant varieties. Enforcement Injunctive relief and damages available for both rights. Major Unresolved Issues NA

496

Singapore IP Regimes

Overlap

Patents/Copyright

Overlapping Subject-Matter Protected Where an invention is expressed in words or diagrams, possible overlap between protection of invention and human-readable expression of the invention. Manner of Protection Registration is required for patent protection; no registration is required under the Copyright Act. Extent of Rights Partially complementary; copyright does not protect against use of invention behind the expression; patents do not protect the expression per se but use of the invention. Duration of Rights Patents are valid for 20 years from application date; generally, copyright subsists for a period of 70 years after the life of the author. Enforcement Injunctive relief and damages available for both rights. Major Unresolved Issues NA

Patents/Data Exclusivity

Overlapping Subject-Matter Protected There are no statutory provisions in Singapore dealing with data exclusivity, which is normally dealt with by way of contract between the parties; data are normally treated as confidential information or trade secrets and protected as such for a potentially indeterminate period; subject to application of competition laws and product approvals for collusive behavior. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

497

Comparison Tables

South Africa Stephen Goldberg, FJ Labuschagne, and Shamin Raghunandan, Spoor & Fisher

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected Two- or three-dimensional marks. Manner of Protection Registration for trademarks; proof of reputation/goodwill and injury for passing off, no registration required. Extent of Rights Partial overlap; passing off provides, more broadly, for protection of signs. Duration of Rights Initial ten-year period plus unlimited number of ten-year renewal periods for trademarks; no time limitation for duration of rights for passing off. Enforcement Injunctive and monetary relief available for both rights; remedies for unregistered trademarks/passing off may be ancillary to remedies for trademarks but do not exclude the other. Major Unresolved Issues NA

Trademark/Copyright

Overlapping Subject-Matter Protected Certain original literary, artistic, works of artistic craftsmanship, and musical works under copyright may also be protected as a trademark. Manner of Protection Registration for a trademark; creation of the work in a fixed form, skill and effort for protection of a copyright work, no registration required. Extent of Rights Trademarks protect the origin/source-identification function of the mark; copyright protects the original work from unauthorized copying. Duration of Rights Initial period of ten years plus potentially unlimited number of ten-year renewal periods for trademarks; for copyright, in the main, the life of the author plus 50 years. Enforcement Injunctive and monetary relief available for both rights; statutory damages are available for infringement of copyright; actual damages for passing off as ancillary claim to trademark infringement. Major Unresolved Issues Extent to which phrases might be protected by copyright.

Trademark/Designs

Overlapping Subject-Matter Protected A product forming the subject-matter of a registered design may also be protected as a three-dimensional trademark. Manner of Protection Each right requires registration.

498

South Africa IP Regimes

Overlap

Trademark/Designs

Extent of Rights Trademarks protect the source-identification/origin function of the features of the article; a registered design protects the external appearance of a manufactured product; two types of designs (‘aesthetic designs’ relate to the ‘eye appeal’ of the article; ‘functional designs’ relate to features of design that are necessitated by the function of the article). Duration of Rights Initial period of ten years plus unlimited number of ten-year renewal periods for trademarks; registration for a fixed term of either ten or 15 years, depending on whether an aesthetic design or functional design is registered. Enforcement Interdict and damages. Major Unresolved Issues NA

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographic names; no specific legislation for appellations of origin; if the geographical indication is not used in a factually correct manner, the law of unlawful competition may provide the basis for an action against the offending use; possible reliance on Merchandise Marks Act or Liquor Products Act in suitable circumstances. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Database Right/Copyright

Overlapping Subject-Matter Protected No separate database legislation; if the offending conduct does not constitute copyright infringement, consideration should be given to whether there is unlawful competition (see later discussion on Unfair Competition and Patent and Copyright). Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

499

Comparison Tables IP Regimes

Overlap

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original artistic, musical, literary, or dramatic works. Manner of Protection Each right subsists in an original work in a fixed form, no registration required (natural person required for moral rights). Extent of Rights Complementary, since they may protect different aspects of the same original work. Copyright protects against unauthorized reproduction, while moral rights protect the author’s right of paternity and integrity in the work (excluding computer software). Duration of Rights Both rights are valid for the life of the author plus 50 years. Enforcement Both rights provide for monetary and injunctive relief; statutory damages are available for both; judicial sensitivity to double recovery. Major Unresolved Issues Right of waiver and/or transfer of moral rights.

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Unlawful competition law (as it is called in South Africa) is sui generis and derived from the Roman Lex Aquila; goodwill is protected under unlawful competition by common law; rights of a person at common law are not affected by the Trade Marks Act to bring action for passing off, which is a species of unlawful competition. Manner of Protection Registration for a trademark. Extent of Rights NA Duration of Rights Initial period of ten years plus unlimited number of ten-year renewal periods for trademarks; no term or time limit for unlawful competition. Enforcement Damages and interdictory relief based on Roman law action of Lex Aquila. Major Unresolved Issues NA

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, likeness, or voice of a person; no legislation covering right privacy or publicity, but could rely on unlawful competition in suitable circumstances (as already discussed). Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

500

South Africa IP Regimes

Overlap

Domain Names/Trademarks

Overlapping Subject-Matter Protected Both protect two-dimensional marks. Trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; domain names are registered on the register administered by Uniforum. Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration is given on a ‘first-come, first served’ basis. Duration of Rights Both rights are registered for an initial period and thereafter subject to an unlimited number of periodic renewal periods, but the periods of registration/ renewal differ for each right. Enforcement Injunctive and monetary relief are available for infringement of a trademark; cancellation or transfer of the domain name to the complainant are the available remedies for a successful challenge of a domain name. Major Unresolved Issues The extent to which principles that apply to trademark registration and protection should apply to a challenge of a domain name registration.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions (which, until published, would qualify as a trade secret or know-how). Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for know-how; inventions can only be protected as know-how until they are published during the patenting process. Extent of Rights Rights in know-how are not deemed to be real proprietary rights and are sometimes referred to as a ‘beneficial possession’; patentee has a genuine right of ownership of the patent. Duration of Rights 20 years from application for patents; unlimited protection of know-how, provided secrecy is maintained. Enforcement Interdict, damages, and costs of suit for infringement of a patent and misappropriation/unauthorized disclosure of know-how; interdictory relief may be of limited value regarding unauthorized disclosure of know-how; misappropriation of know-how is governed by the common law. Major Unresolved Issues Sources of legal authority that give rise to rights in know-how relationship between the disclosure of know-how and restraint-of-trade agreements; distinction between the skill and experience of an employee and know-how of the employer.

501

Comparison Tables IP Regimes

Overlap

Patents/Registered Design Rights

Overlapping Subject-Matter Protected Different aspects of a product may be protected; a patent covers technical functions or processes; a registered design protects the external appearance of a manufactured product; two types of designs (‘aesthetic designs’ relate to the ‘eye appeal’ of the article; ‘functional designs’ relate to features of design that are necessitated by the function of the article). Manner of Protection Each right requires registration. Extent of Rights The two sets of rights may be complementary regarding the same article; patents protect against specified types of unauthorized exploitation; design protects against making, improving, using or disposing any article in which the design is registered. Duration of Rights Registered designs of a functional nature are for ten years; of an aesthetic nature for 15 years, renewable until expiry; patents are registered for a term of 20 years, renewable until expiry. Enforcement Injunctive and damages available for both rights, including delivery up. Major Unresolved Issues Interpretation of statement of novelty for designs; interpretation of ‘spare part and nature of spare part’ in design infringement proceedings.

Copyright/Design Rights

Overlapping Subject-Matter Protected Overlap between copyrighted works and designs subject to copyright existing in a work which forms the basis of a design registration, (such as a drawing). Manner of Protection Registration is required for design protection; copyright protection subsists in an original work in a fixed form, no registration required. Extent of Rights Mutually exclusive to the extent that that no copyright can subsist in a design unless the design is not intended for industrial reproduction. Duration of Rights Copyright generally subsists for the life of the author plus 50 years; designs are registered for a fixed term of either ten or 15 years, depending on whether an aesthetic design or functional design is registered. Enforcement Injunctive remedies, damages, and delivery up are available for both rights; criminal liability for copyright. Major Unresolved Issues NA

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Potential restraint of trade, such as in a licence or distributor agreement involving the exercise of an intellectual property right. Extent of Rights Violation of the Competition Act, 89 of 1998 will not affect the validity of the relevant intellectual property right. Enforcement Complaint to the Competition Commission; referral to Competition Tribunal, Interdict, administrative fines; criminal sanctions.

502

South Africa IP Regimes

Overlap

Competition Law/Intellectual Property Rights

Major Unresolved Issues Relationship between know-how and restraint-of-trade agreements; whether. exclusive licence/distribution agreements of intellectual property right may be anticompetitive.

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected No explicit overlap; in the course of trade, unlawful competition law (as it is called in South Africa) is sui generis and is based on Roman Lex Aquila; may feature either as unlawful competition or as passing off through misrepresentation (see section on Unfair Competition/Trademarks already discussed). Manner of Protection Interdictory; court can enforce a right akin to an intellectual property right in the case of unlawful competition. Extent of Rights NA Duration of Rights NA Enforcement Damages and interdictory relief based on Roman law action of Lex Aquila. Major Unresolved Issues NA

Patents/Utility Models (Petty Patent)

Overlapping Subject-Matter Protected Useful inventions; no separate protection for a petty patent. Manner of Protection South Africa is a non-examining jurisdiction; all useful inventions must satisfy the same requirements for patentability in order to be protected. Extent of Rights All inventions governed under a unitary system. Duration of Rights Patents are protected for a fixed statutory period of 20 years. Enforcement Injunctive and monetary relief are both available. Major Unresolved Issues NA

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Patents protect inventions; Plant Breeders’ Rights protect certain defined types of new plant varieties. Manner of Protection Each right requires registration; form of provisional protection is available for Plant Breeders’ Rights. Extent of Rights Partial mutual exclusivity; plant varieties and essentially biological methods of producing plants are covered only under Plant Breeders’ Rights; microbiological processes for the production of a plant or the products of such processes may be both patentable and protected under Plant Breeders’ Rights; limited overlap between Plant Breeders’ rights and trademark law regarding the naming of a registered plant variety; bioprospecting permits are required for inventions or new plant varieties based on indigenous biological resources or traditional knowledge.

503

Comparison Tables IP Regimes

Overlap

Patents/Plant Breeders’ Rights (cont.)

Duration of Rights Patents are registered for 20 years; Plant Breeders’ Rights are registered for: 25 years (vines and trees) or 20 years (all others). Enforcement Both rights provide for damages and delivery up; only the Patent Act provides relief in the form of an interdict; Plant Breeders’ Rights provides for statutory damages. Major Unresolved Issues The interrelationship between names of registered plant varieties and trademark protection.

Patents/Copyright

Overlapping Subject-Matter Protected Computer programs; software implemented inventions. Manner of Protection Patents require registration; copyright requires creation of an original work in a fixed form for protection, no registration required. Extent of Rights Partially complementary, especially with respect to computer code. Duration of Rights Patents are protected for 20 years; copyright is protected for the life of the author plus 50 years. Major Unresolved Issues Validity of patent protection for software-implemented inventions; more generally the extent of copyright protection if there is overlap between copyright protection and patent protection for computer software.

Patents/Data Exclusivity

Overlapping Subject-Matter Protected South Africa has not yet passed legislation to implement Article 39.3 of the TRIPS Agreement, there is therefore no data exclusivity in South Africa; however, under the Medicines and Related Substances Control Act, s 34, information submitted in support of an application for regulatory approval of a pharmaceutical product is protected by a secrecy provision. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues Implementation of legislation implementing Article 39.3 of the TRIPS Agreement.

504

Turkey

Turkey Uğur Aktekin, Mehmet Gün & Partners

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off)

Overlapping Subject-Matter Protected No laws regulating passing off in Turkey; unregistered trademarks are protected under unfair competition provisions of the Turkish Code of Commerce; the overlapping subject-matter with registered trademarks are discussed under the relevant topics. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for patents; maintaining secrecy of valuable information is required for trade secrets. Extent of Rights Patents and trade secrets are mutually exclusive because disclosure under patent laws excludes protection as a trade secret; trade secret protection is available for valuable information that is not protected and/or protectable as a patent. Duration of Rights Patents with examination are protected for a statutory period of 20 years; patents without examination are protected for a statutory period of seven years; unlimited protection of trade secrets, provided that secrecy is maintained. Enforcement Injunctive and monetary relief are available for both rights. Major Unresolved Issues The right of access to, examination of, and evidence by relevant parties in conflicts due to confidentiality concerns.

Patents/Design Rights

Overlapping Subject-Matter Protected Patents protect a product to the extent that it is manufactured by using the invention subject to patent protection; industrial designs protect an ornamental feature of a product that form a unitary character and can be perceived by human senses. Manner of Protection Each right requires registration.

505

Comparison Tables IP Regimes

Overlap

Patents/Design Rights (cont.)

Extent of Rights The two sets of rights are cumulative and complementary; patents protect unauthorized exploitation of the protected invention while designs protect against unauthorized copying of the product or ornamental features. Duration of Rights 20 years from application date for patents with examination and seven years from application date for patents without examination; industrial designs are protected for an initial fixed term of five years with possibility of four five-year renewal periods. Enforcement Injunctive and monetary relief available for both rights; no double recovery for damages. Major Unresolved Issues NA

Copyright/Design Rights

Overlapping Subject-Matter Protected A copyrighted work, usually a work of fine art, which may be used as a product, a part or an ornamental feature thereof. Manner of Protection Registration is a prerequisite for design protection; copyright protection subsists in an original work in a fixed form, no registration required. Extent of Rights The two sets of rights may cumulatively exist such that a work protected under copyright may also be registered as a design if it meets the criteria for registration. Duration of Rights Copyright subsists for 70 years after the death of the creator; designs are protected for an initial fixed term of five years with the possibility of four five-year renewal periods. Enforcement Injunctive and monetary relief are available for both rights; statutory damages are available for copyright infringement. Major Unresolved Issues Under what circumstances are designs protected as copyrighted works?; in particular, whether a design requires aesthetic value to be protected as a copyrighted work.

Trademark/ Copyright

Overlapping Subject-Matter Protected The names of copyrighted works, as long as they are not ordinary; graphical works, such as a logo. Manner of Protection Registration for trademarks; creation of the work in a fixed form for copyrights, without a registration requirement. Extent of Rights The two sets of rights provide cumulative protection; trademarks protect against infringing use of signs that indicate the source of origin of goods; copyright protects the work from unauthorized copying. Duration of Rights Trademarks are protected for a period of ten years plus an unlimited number of ten-year renewal periods; copyright subsists for plus 70 years after the death of the creator.

506

Turkey IP Regimes

Overlap

Trademark/Copyright

Enforcement Injunctive and monetary relief are available for both rights; statutory damages are available for copyright infringement. Major Unresolved Issues The extent of protection of names of copyrighted works against subsequent unauthorized third party trademark registration; the time limitation for challenging a registered trademark copied from a copyrighted work.

Trademarks/Designs

Overlapping Subject-Matter Protected Product shapes or ornamental features of two- and three-dimensional products. Manner of Protection Each right requires registration as a prerequisite for protection. Extent of Rights Trademarks protect distinctive product shapes and ornamental features that serve a source-identification function; design law protects product shapes and ornamental features subject to design registration. Duration of Rights Trademarks are protected for a period of ten years plus an unlimited number of ten-year renewal periods; designs are protected for an initial fixed term of five years with the possibility of four renewal periods of five years each. Enforcement Injunctive and monetary relief are available for both rights. Major Unresolved Issues The extent to which product shapes eligible for design registration should be registrable as a trademarks; the extent to which a unique product shape can be registered as a trademark for the goods comprising the product.

Trademarks/ Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection Each right requires registration as a prerequisite for protection; no difference made in the Decree Law of Geographical Signs between appellation of origin and geographical indications and both can be registered as geographical signs. Extent of Rights Both rights protect the source function of a geographical name. Duration of Rights Trademarks are protected for a period of ten years plus an unlimited number of ten-year renewal periods; geographical signs are protected for an unlimited period upon registration. Enforcement Injunctive and monetary relief are available for infringements for both. Major Unresolved Issues To what extent can trademark registration of a sign, similar to a geographical sign, be challenged based on appellation of origin.

Database Right/Copyright

Overlapping Subject-Matter Protected A compilation of data that qualifies as a work due to being original. Manner of Protection Creation of the work in a fixed form for copyright, no registration requirement.

507

Comparison Tables IP Regimes

Overlap

Database Right/Copyright (cont.)

Extent of Rights Both rights protect against unauthorized reproduction, distribution, communication, and dissemination; copyright also protects against unauthorized adaptation and performance. Duration of Rights Databases or substantial portion of their content are protected for 15 years as from the date it is made available to the public; copyright subsists 70 years after the death of the creator. Enforcement Both rights provide for monetary and injunctive relief, copyright provides for statutory damages. Major Unresolved Issues Determining what is a substantial portion of the content of a database.

Copyright/Moral Rights

Overlapping Subject-Matter Protected Original scientific and literary, musical, artistic, or cinematographic works. Manner of Protection Each right subsists in an original work in a fixed form, no registration required. Extent of Rights Complementary, since they protect different aspects of the same original work; copyright protects against unauthorized reproduction, while moral rights protect the author’s right of making available to the public, use of author’s name, and prohibition against making any changes to the work. Duration of Rights Both rights subsist for 70 years after the death of the creator. Enforcement Both rights provide for monetary and injunctive relief, copyright provides for statutory damages. Major Unresolved Issues Right of waiver and transfer of moral rights.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected Overlap where there is a potential restraint of trade involving the enforcement of an intellectual property right; especially relating to the relationship between pharmaceutical patent owners and the generic companies. Manner of Protection N/A Extent of Rights Finding a violation of competition law will not affect the validity of the relevant intellectual property right. Duration of Rights NA Enforcement At the end of an investigation by the Competition Authority, either abrogation of the anticompetitive contractual provisions; temporary injunctive measures; fines on company and/or the employee involved. Major Unresolved Issues When to exercise competition law scrutiny, since general principle is that the exercise of an intellectual property right does not constitute competition law violation, subject to exceptional cases; uncertainty regarding vexatious intellectual property litigation and whether the Competition Authority has the competence and jurisdiction to scrutinize such claims.

508

Turkey IP Regimes

Overlap

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected Complete overlap; patents and works protected by copyright are also protected under unfair competition provisions of the Turkish Code of Commerce, provided that there is a likelihood of confusion by the public due to use of such rights. Manner of Protection For unfair competition, the likelihood of confusion is sufficient and there is no registration requirement; patents require registration while copyright requires creation of the work in a fixed form, no registration requirement. Extent of Rights The two sets of rights provide cumulative protection; unfair competition protects unauthorized use that causes a likelihood of confusion; patents protect unauthorized exploitation of the protected invention and copyright protects the original work from unauthorized copying. Duration of Rights Patents with examination are protected for a statutory period of 20 years; patents without examination are protected for a statutory period of seven years; copyright subsists for 70 years after the death of the creator; unfair competition is protected without any time limitation. Enforcement Injunctive and monetary relief is available for all of the rights; statutory damages are available for infringement of copyright. Major Unresolved Issues NA

Unfair Competition/ Trademarks

Overlapping Subject-Matter Protected Complete overlap due to the cumulative protection principle, trademarks (registered and unregistered) are protected under unfair competition provisions of the Turkish Code of Commerce. Manner of Protection For unfair competition, the existence of the likelihood of confusion by the public is sufficient; registration is required for trademarks. Extent of Rights The two sets of rights may cumulatively exist; unfair competition prevents unauthorized use that cause likelihood of confusion; trademarks protect against infringing use of signs that indicate the source of origin of goods. Duration of Rights Trademarks are protected for a period of ten years plus an unlimited number of ten-year renewal periods; unfair competition has no limitation of time. Enforcement Injunctive and monetary relief are available for both rights. Major Unresolved Issues To what extent can use of a registered trademark create unfair competition against a senior registered trademark; the extent of protection of signs under unfair competition rules that are not registrable as a trademark.

509

Comparison Tables IP Regimes

Overlap

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The name, likeness, or voice of a person. Manner of Protection Registration is required for a trademark; publicity (privacy) of a person is protected under the relevant provisions of the Civil Code regarding personality rights. Extent of Rights Trademarks protect the source-identification function of the name, likeness, or voice; right of privacy protects the person from an invasion of his privacy by the unauthorized use of his name, likeness or voice. Duration of Rights Trademarks are protected for a period of ten years plus an unlimited number of ten-year renewal periods; right of privacy is arguably valid only for the life of a person. Enforcement Both rights provide for monetary and injunctive relief; basis for relief for breach of privacy relies explicitly on tort law principles. Major Unresolved Issues Can the legal successors of a person demand compensation for moral damages?

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected Inventions; petty patents are referred to as ‘utility models’ and the terms ‘patents with examination’ or ‘patents without examination’ are used instead of the term ‘utility patent’ under Turkish law. Manner of Protection Each right requires registration. Extent of Rights Mutually exclusive; both protect unauthorized exploitation of the same protected invention. Duration of Rights Patents with examination are protected for a statutory period of 20 years and patents without examination are protected for a statutory period of seven years; utility models are protected for a statutory period of ten years from the date of application. Enforcement Injunctive and monetary relief are available for both rights. Major Unresolved Issues NA

Domain Names/Trademarks

Overlapping Subject-Matter Protected Names that are registered both as a domain name and trademark. Manner of Protection Trademarks are protected by registration; country code domain names are registered on the registry maintained by Middle East Technical University (METU) and protected under unfair competition provisions. Extent of Rights Trademarks must satisfy certain registerability criteria; domain name registration is based solely on a ‘first-come, first-served’ basis, however, domain names require submission of a copy of a valid trademark registration or application, or an extract from the commercial register, showing that the domain name applied for forms the core part of the commercial title.

510

Turkey IP Regimes

Overlap

Domain Names/Trademarks

Duration of Rights Trademarks are protected for a period of ten years plus an unlimited number of ten-year renewal periods; domain names are registered for an initial period and subject to an unlimited number of periodic renewal periods. Enforcement Injunctive and monetary relief are available for infringement of both rights; cancellation of infringing domain name. Major Unresolved Issues Whether prohibition of third party access to the internet should be for the domain name in its entirety, or only the relevant link with the infringing content, in the event of trademark infringement by the content of that domain name.

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected Patents protect the invention of a product or process, while a breeder’s rights protect certain defined types of new plant varieties. Manner of Protection Each right requires registration. Extent of Rights Partial mutual exclusivity; plant-related discoveries that are not covered by a breeder’s right registration may still be protected by a patent as an invention. Duration of Rights Both are registered for a fixed period of time; patents with examination are protected for 20 years and patents without examination are protected for seven years; plant variety is protected for 25 years. Enforcement Both rights provide for monetary and injunctive relief. Major Unresolved Issues NA (Plant variety protection is rather new.)

Patents/Copyright

Overlapping Subject-Matter Protected No overlap; there is explicit statutory provision that prohibits patent protection for software. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement NA Major Unresolved Issues NA

511

Comparison Tables IP Regimes

Overlap

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions, especially in the pharmaceutical area, with respect to the data obtained from clinical trials. Manner of Protection Registration is required as a prerequisite for patent protection; data is protected by administrative confidentiality. Extent of Rights The two sets of rights are partially complementary. Duration of Rights Patents are protected for a fixed statutory period; exclusive data is protected for a period of six years after filing with the authorities. Enforcement Injunctive and monetary relief are available for patents; improperly disclosed data is protected by administrative enforcement as well as unfair competition laws based on trade secret arguments. Major Unresolved Issues Whether combination products, which include more than one active compound, enjoy data exclusivity independent from each individual active compound.

512

United Arab Emirates

United Arab Emirates Sara Holder, Rouse & Co. International

IP Regimes

Overlap

Registered Trademarks/ (Unregistered Trademarks/ Passing Off )

Overlapping Subject-Matter Protected Two- or three-dimensional marks, product get-up and labels; famous marks, even if not registered, protected as acts of unfair competition. Manner of Protection Registration for trademarks; proof of goodwill and reputation for unregistered marks, no registration required; general prohibitions in the law regarding false or misleading statements and indicators in trade that might apply to the use of an unregistered trademark. Extent of Rights Partial overlap; unfair competition provides for protection of signs more broadly, particularly when not registered. Duration of Rights Ten years, renewable for additional ten-year periods; no time limitation for unregistered rights. Enforcement Administrative, civil, and criminal for registered trademarks; civil enforcement for unfair competition; while evidence of confusion not required for either, it is likely to assist in establishing a claim. Major Unresolved Issues Minimal damages awarded; limited understanding of the function of an unregistered trademark and the rights and reputation that may be built up in such a mark; limited specialist expertise in courts.

Patents/Trade Secrets

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for patents; positive steps must be taken to maintain secrecy of confidential information/trade secrets; no sui generis trade secret law, so reliance on various other laws. Extent of Rights Disclosure under patent application requirements would preclude trade secret protection; any third party having acquired knowledge on his own/through legal means may use or convey such knowledge. Duration of Rights 20 years from application for patents; trade secrets are of unlimited duration, provided secrecy maintained and/or until information is in the public domain. Enforcement Civil and criminal remedies for patent infringement; precautionary seizure orders, in theory, available; trade secrets are protected under various laws, remedy will depend on the offence. Major Unresolved Issues Unified approach to trade secrets; lack of clear preliminary injunctive relief.

513

Comparison Tables IP Regimes

Overlap

Patents/Design Rights

Overlapping Subject-Matter Protected Patents cover functional inventions; registered design covers ornamental features. Manner of Protection Registration. Extent of Rights The two sets of rights may overlap regarding the same article but protecting different aspects (functional versus ornamentation). Duration of Rights Ten years from filing for designs and 20 years for patents. Enforcement Preliminary conservatory measures, in theory, available; criminal and civil remedies. Major Unresolved Issues Examination backlogs; effectiveness of enforcement of design and patent rights largely untested.

Copyright/Design Rights

Overlapping Subject-Matter Protected A literary or artistic work used to create the apparent elements of an industrial article. Manner of Protection No registration is required for copyright; registration is prerequisite for design protection. Extent of Rights Copyright gives the exclusive right to reproduce the work; rights in designs includes the right to use a design in industrial production and importation of products. Duration of Rights 25 years from creation for industrially applied copyright works; ten years from filing for designs. Enforcement In theory, injunctive, civil, and criminal enforcement are available for both rights but may be difficult to obtain in practice. Major Unresolved Issues Not enough precedents in practice.

Trademark/Copyright

Overlapping Subject-Matter Protected For trademarks, any sign capable of distinguishing the products or services from others; original/creative works of a literary, artistic or scientific domains are protectable by copyright. Manner of Protection Registration for trademarks is advisable, but unregistered rights can arise in limited circumstances; copyright registrable but not mandatory. Extent of Rights Owner of a registered trademark may prevent others from using a same or similar mark; copyright protects the expression of ideas. Duration of Rights Ten years, renewable for additional ten-year periods, no time limitation for unregistered rights; copyright subsists for the lifetime of the author plus 50 years.

514

United Arab Emirates IP Regimes

Overlap

Trademark/Copyright

Enforcement Fines, imprisonment, damages, and closure of premises of a repeat offender; preliminary measures are available to conserve evidence. Major Unresolved Issues GCC Trademark law was issued in 2006 but has yet to be ratified by all GCC member states.

Trademarks/Designs

Overlapping Subject-Matter Protected Non-functional and distinctive three-dimensional articles. Manner of Protection Three-dimensional trademarks may be protected as well-known marks regardless of registration; registration is a prerequisite for protection of design rights. Extent of Rights Trademarks may protect the overall appearance of the three-dimensional shape as long as it can fulfil function of a trademark; design protection is against unauthorized copying of the design for similar or dissimilar goods or industries, provided that it is novel. Duration of Rights For trademarks, ten years, renewable for additional ten-year periods; no time limitation for unregistered rights; a period of ten years for designs. Enforcement Injunctive, civil, and criminal enforcement are available for both rights in theory. Major Unresolved Issues Level of understanding of enforcement authorities.

Trademarks/Appellations of Origin

Overlapping Subject-Matter Protected Geographical names. Manner of Protection UAE is not a party to the Lisbon Convention; the Trademark Law prohibits the registration of geographical names in general; general prohibitions in the Commercial Transactions Law and the Consumer Protection Law against false and misleading statements in trade that would apply to the use of geographical terms. Extent of Rights Geographical names may not be registered; no provision for registration of appellations of origin. Duration of Rights NA Enforcement Any concerned person may oppose a trademark application featuring a geographic name or make a complaint to the relevant authority regarding the misleading or false use of a geographical term. Major Unresolved Issues Specific protection of appellations of origin is lacking.

515

Comparison Tables IP Regimes

Overlap

Database Right/Copyright

Overlapping Subject-Matter Protected Database compilations. Manner of Protection Copyright protection for databases expressly provided under the Copyright Law; registration available but not mandatory. Extent of Rights The Copyright Law covers both rights; no separate right for databases. Duration of Rights Life of the author plus 50 years; 50 years for anonymous works. Enforcement Civil and criminal remedies; conservatory measures and orders available to preserve evidence. Major Unresolved Issues Lack of clear preliminary injunctive relief; registration likely to be required to achieve enforcement.

Copyright/Moral Rights

Overlapping Subject-Matter Protected All works protected under the Copyright Law. Manner of Protection Creation of an original work in a fixed form, no registration is required. Extent of Rights Copyright law protects the authors of works; moral rights protect the author’s right of paternity, attribution, right to decide first publication of work, right to withdraw work from circulation; moral rights are not assignable. Duration of Rights Copyright is valid for the life of the author plus 50 years; general view is that moral rights are perpetual. Enforcement Precautionary measures, administrative sanctions, civil redress, and criminal penalties. Major Unresolved Issues Clarity on waiver of rights.

Competition Law/Intellectual Property Rights

Overlapping Subject-Matter Protected No specific provisions in laws dealing with anticompetitive use of intellectual property rights. Manner of Protection NA Extent of Rights Provisions in general laws relating to anticompetitive practices might be applicable; compulsory licensing available under the Patent Law to ensure inventions are worked. Duration of Rights NA Enforcement NA Major Unresolved Issues Clarity on misuse of intellectual property rights in an anticompetitive manner.

516

United Arab Emirates IP Regimes

Overlap

Unfair Competition/Patents and Copyright

Overlapping Subject-Matter Protected No specific overlap; the Commercial Transactions law deals generally with unfair competition acts between traders. Manner of Protection NA Extent of Rights NA Duration of Rights NA Enforcement In case of unfair competition, civil remedies are available; criminal remedies only available for trade name violations. Major Unresolved Issues NA

Unfair Competition/Trademarks

Overlapping Subject-Matter Protected The Commercial Transactions Law and the Law on Prevention of Fraud and Deception in Commercial Dealings cover situations relating to unfair competition that may extend to the misuse of trademarks, especially unregistered marks. Manner of Protection NA Extent of Rights The Trademarks Law, the Commercial Transactions Law, and the Prevention of Fraud and Deception in Commercial Dealings might also be relevant, depending upon the circumstances. Duration of Rights NA Enforcement If unfair competition is found, monetary and, in rare instances, injunctive relief, are available. Unresolved Issues The scope of the Commercial Transactions Law and the Law on Prevention of Fraud and Deception to the infringement of trademarks, especially unregistered trademarks.

Trademarks/Publicity (Privacy)

Overlapping Subject-Matter Protected The right to privacy is a constitutional right; the Penal Code also protects privacy; under the Copyright Law, a person who makes an image of another may not save, publish, or make copies of it without the permission of the person in the picture; names, images, and sounds (if considered part of the trademark) can be registered as trademarks. Manner of Protection Registration is required for a trademark; no explicit requirement regarding how protection of privacy arises under the Constitution or Penal Code. Extent of Rights Trademark protects any distinctive sign capable of distinguishing the products or services from others; the right of privacy protects the person from unauthorized publication or disclosure of personal information and images without consent.

517

Comparison Tables IP Regimes

Overlap

Trademarks/Publicity (Privacy) (cont.)

Duration of Rights For trademarks, ten years, renewable for additional ten-year periods; no time limitation for unregistered rights; right of privacy is arguably valid for the life of a person. Enforcement Imprisonment, fines, and damages. Major Unresolved Issues The application of laws applied to privacy to the sharing of information over the internet.

Patents/Utility Models (Petty Patents)

Overlapping Subject-Matter Protected Inventions. Manner of Protection Registration is required for both. Extent of Rights A utility certificate may be issued for a new invention capable of industrial application but lacking in innovation and/or inventive step. Duration of Rights Utility models protected for ten years from the date of filing; patents of invention are protected for 20 years. Enforcement Preliminary conservatory measures, criminal and civil. Major Unresolved Issues Substantive examination backlog; effectiveness of enforcement still largely untested.

Domain Names/Trademarks

Overlapping Subject-Matter Protected Trademarks serve as an indicator of the source of goods or services, whilst a domain name is the alphanumeric representation of an IP (internet protocol) address. Manner of Protection Trademarks are protected by registration; domain names are registered on the registry maintained by Etisalat and UAEnic. Extent of Rights Trademarks must satisfy certain registrability criteria; a domain name registration is based on ‘first-come, first-served’. Duration of Rights Both rights are registered for an initial period and subject to an unlimited number of renewal periods. Enforcement Conservatory measures, civil, administrative, and criminal remedies are available for infringement of a trademark; cancellation or transfer of the domain name to the complainant are the available remedies for a successful challenge of a domain name; the domain is not subject to ICANN UDRP. Major Unresolved Issues Manner of resolution of domain issues.

518

United Arab Emirates IP Regimes

Overlap

Patents/Plant Breeders’ Rights

Overlapping Subject-Matter Protected None; the Patent Law specifically excludes protection for plant varieties. Manner of Protection Plants are now protected under the Plant Varieties Law 2009; patents are protected under the Patent Law. Extent of Rights The Patent Law specifically excludes patenting of plant varieties; a sui generis Plant Varieties Law came into force in 2010; although the UAE is not a UPOV member, the law has been drafted to achieve compliance. Duration of Rights 20 years (crops) and 25 years (vines and trees). Enforcement Criminal and civil remedies available. Major Unresolved Issues Plant Varieties Law is untested.

Patents/Copyright

Overlapping Subject-Matter Protected Works that may qualify for protection under copyright law may also attract patent protection if requirements of patentability are met. Manner of Protection Patents require registration. Copyright requires fixation in a fixed form for protection, registration available but not mandatory. Extent of Rights May protect different aspects eg architectural design versus functionality of a building that may attract patent protection; computer-implemented inventions may be protected by patents. Duration of Rights Patents are protected for 20 years from filing; copyright is protected for 50 years plus the life of the author, but if the work is industrially applied, it is protected for 25 years. Enforcement Injunctive, criminal, and civil remedies in theory. Major Unresolved Issues Copyright difficult to enforce without registration; injunctive relief difficult to obtain.

Patents/Data Exclusivity

Overlapping Subject-Matter Protected Inventions, especially in the pharma-chemical area, with respect to the data obtained from clinical trials. Manner of Protection Registration is required as a prerequisite for patent protection; data is protected under the Patent Law by Patent Office employee confidentiality. Extent of Rights The two sets of rights are partially complementary. Duration of Rights Patents are protected for 20 years from filing; duration of exclusive rights in data remains until information is in public domain. Enforcement Injunctive, civil, and criminal remedies under the Patent Law. Administrative committee can be formed in certain circumstances. Major Unresolved Issues Untested area.

519

This page intentionally left blank

INDEX Note Chapters 1–17 are referenced to paragraph number and the Comparison Tables are referenced to page number. abuse of dominance 17.28–17.34, 17.77 acquired distinctiveness (secondary meaning) copyright/trademarks 7.71–7.73, 7.88, 7.92 trademarks and geographical indications 13.09, 13.22, 13.27 Administrative Challenge Panels 14.22 advertising false 16.03, 16.07, 16.50–16.52, 16.57 misleading 16.03, 16.28–16.29, 16.34 see also comparative advertising under unfair competition/trademarks aesthetics copyrights/trademarks 7.10 design/copyright 8.05–8.06 functionality 12.27–12.29 patents/design protection 2.35, 2.55–2.57, 2.66–2.69, 2.73, 2.121, 2.123–2.126 Africa 2.33 appearance of product 7.34, 8.05 Appellations of Origin (AOs) 13.14 see also trademarks/Appellations of Origin Aristotle xxx, xxxiii artistic craftsmanship 7.93, 8.17, 8.62–8.63, 8.66, 8.88–8.89 artistic expression 15.45 artistic works 7.33, 7.43, 8.09, 8.87 Arundel, A. 3.06–3.07 ‘as such’ limitation 1.23 assigned works 7.67–7.68 assignment of copyright 2.26, 7.80 associative value 15.04–15.23, 15.36–15.41, 15.52 attorney’s fees 1.79–1.80 attribution right 10.05, 10.35, 10.47 Australia 387–94 Advisory Council of Intellectual Property 5.19 competition law/intellectual property rights 391 copyright/design rights 388 database right/copyright 390 design/copyright 8.03, 8.07, 8.42–8.43, 8.82–8.83, 8.85–8.86, 8.88, 8.90 domain names/trademarks 393 moral rights 10.06, 10.48, 10.65, 390 patents/copyright 393–4 patents/data exclusivity 394 patents/design protection 2.14, 2.39, 2.84, 2.106, 388 patents/plant breeders’ rights protection 393 patents/trade secrets 387 patents/utility model (petty patents) 5.16–5.21, 5.29, 5.33, 5.35, 5.40, 392 registered trademarks/unregistered trademarks/ passing off 387 trademarks and Geographical Indications 13.13 trademarks/Appellations of Origin 389–90

trademarks/copyright 388–9 trademarks/designs 389 trademarks/publicity (privacy) 392 unfair competition/patents and copyright 391 unfair competition/trademarks 391–2 utility patents/copyright 1.25, 1.71 Austria 6.44, 6.45, 6.48, 17.58 average consumer: designs, trademarks and trade dress 12.85–12.86 bad faith unfair competition 16.13, 16.16 see also domain names and trade marks bare refusal to licence 17.60 bargaining power: moral rights/economic rights 10.30 Belgium 2.33, 5.40, 8.25 Berger, L. 13.11 best mode and trade secrecy 3.79–3.81 Black List 16.26, 16.32, 16.34 blurring 11.44, 16.53 boat hulls quasi-copyright protection 8.77–8.80 Bodenhausen, G. 8.39 brand names 7.34, 7.52 Brandeis, L. 15.06 Brazil 3.72, 395–402 competition law/IPR 398–9 copyright/design rights 396 copyright/moral rights 398 database right/copyright 398 domain names/trade marks 400–1 patents/copyright 401 patents/data exclusivity 402 patents/design protection 396 patents/plant breeders’ rights protection 401 patents/trade secrets 395 patents/utility model (petty patents) 400 registered/unregistered trademarks/passing off 395 trade marks/designs 397 trade marks/geographical indications 397–8 trade marks/publicity (privacy) 400 trademarks/copyright 396–7 unfair competition/patents and copyright 399 unfair competition/trademarks 399 breach of confidence 3.22–3.26, 3.72–3.77 business models 1.21–1.26 Canada 403–10 competition law/IPR 407 copyright/industrial design rights 404 copyright/moral rights 406 database right/copyright 406 domain names/trademarks 409 patents/copyright 410

521

Index Canada (cont.) patents/data exclusivity 410 patents/industrial design rights 404 patents/plant breeders’ rights 409 patents/trade secrets 3.06, 403 patents/utility model (petty patents) 408 registered/unregistered trademarks (passing off) 403 trademarks and Geographical Indications 13.11 trademarks/Appellations of Origin 405–6 trademarks/copyright 404–5 trademarks/industrial design rights 405 trademarks/publicity (privacy) 408 unfair competition/patents and copyright 407 unfair competition/trademarks 407–8 utility patents/copyright 1.25 see also moral rights/economic rights cease-and-desist orders 1.84 certainty: competition laws and IPR 17.21 character marks 7.45 China 411–18 competition law/IPR 414 copyright/design rights 412 copyright/moral rights 414 database right/copyright 413–14 domain names/trademarks 416 patents/copyright 417 patents/data exclusivity 418 patents/design protection 411–12 patents/plant breeders’ rights 417 patents/trade secrets 411 patents/utility model (petty patents) 5.15, 416 registered/unregistered trademarks (passing off) 411 trademarks/Appellations of Origin 413 trademarks/copyright 412 trademarks/designs 413 trademarks/publicity (privacy) 415–16 unfair competition/patents and copyright 415 unfair competition/trademarks 415 utility patents/copyright 1.25 classical trinity 11.14, 11.23, 11.31 clean room method 1.62 Clinton Administration 14.22–14.24 Cohen, F. xxix Colombet, C. 10.61 communication right 10.60 comparative advertising see unfair competition/ trademarks competition laws/IPR 17.01–17.86 Australia 391 Brazil 398–9 Canada 407 China 414 copyright 17.17, 17.20, 17.24–17.27, 17.57 design rights 17.26 European Union 17.05, 17.74, 17.79, 17.85 abuse of dominance 17.28–17.30, 17.34 duty to licence 17.49–17.61 existence/exercise doctrine 17.35–17.42 internal balancing 17.25–17.26 limiting technical development 17.47–17.48 new product test 17.43–17.46

France 422–3 (F)RAND defence case law 17.30, 17.80–17.83 Germany 17.81–17.83, 431 India 439 internal balancing 17.22–17.27 Israel 446–7 Japan 455 Korea 462 Mexico 470 Netherlands 17.81–17.83, 477–8 patents 17.16, 17.18, 17.24, 17.27, 17.57, 17.69–17.79 Russia 485–6 Singapore 494 South Africa 502–3 trademark statutes 17.04 Turkey 508 unilateral refusals to licence 17.28–17.68 abuse of dominance and refusals to deal 17.28–17.34 European Union 17.49–17.61 existence/exercise doctrine 17.35–17.42 new product test 17.43–17.46 technical development limiting 17.47–17.48 United States 17.62–17.68 United Arab Emirates 516 United States 17.05, 17.74, 17.85 internal balancing 17.24,17.26–17.27 unilateral refusals to licence 17.28–17.30,17.57 compulsory licences 4.23, 8.42, 17.78 computer programs 1.27–1.36 confidentiality 3.41–3.44, 3.65 agreements 3.08, 3.53 contractual obligation (tacit agreement) 3.68 see also patents/trade secrets; trade secrets contributory infringement and utility patents and copyrights 1.68 control over one’s future earnings 10.28 copyright artistic 8.87 assignment 2.26, 7.80 competition laws 17.17, 17.20, 17.24–17.27, 17.57 interminable 2.22 patents/design protection 2.07, 2.11, 2.13, 2.31, 2.49, 2.73 see also database right/copyright; design/copyright; patents/copyright; trademarks/copyright; unfair competition/patents and copyright; utility patents/copyrights copyright/design rights Australia 388 Brazil 396 Canada 404 China 412 France 420 Germany 428 India 436 Israel 444 Japan 452 Korea 460 Mexico 467 Netherlands 475 Russia 483

522

Index Singapore 491 South Africa 502 Turkey 506 United Arab Emirates 514 copyright/moral rights Australia 390 Brazil 398 Canada 406 China 414 France 422 Germany 430 India 438–9 Israel 446 Japan 454 Korea 462 Mexico 469–70 Netherlands 477 Russia 485 Singapore 493–4 South Africa 500 Turkey 508 United Arab Emirates 516 copyright/trademarks xxxii, 7.01–7.95 areas of overlap 7.31–7.38 ownership, duration and registration of copyright 7.13–7.17 ownership, duration and registration of trademark 7.27–7.30 purpose and subject matter of copyright protection 7.06–7.08 purpose and subject matter of trademark protection 7.18–7.23 scope of copyright protection 7.09–7.12 scope of trademark protection 7.24–7.26 United Kingdom/European Union 7.91–7.94 cumulative or parallel protection: device marks (logos) 7.43–7.53 interface issues 7.39–7.63 origin, nature, and scope 7.06, 7.08, 7.10, 7.13–7.17, 7.21–7.22,7.25, 7.27–7.30 scent 7.63 three-dimensional products 7.54–7.62 words, names, titles, and slogans 7.40–7.42 United States 7.07–7.10, 7.13–7.22, 7.27–7.30, 7.33, 7.64–7.90, 7.91.7.94 Betty Boop decision 7.86–7.90 Dastar and focus on copyright and ‘public domain’ 7.81–7.85 Gilliam and focus on trademark interests 7.75–7.80 three-dimensional objects 7.70–7.73 works made for hire and termination 7.65–7.69 corruption 13.28 Coudert, F. 10.53 counterfeiting 11.69 creativity 7.08, 7.11 criminal enforcement 1.88, 1.90 cumulative protection design/copyright 8.07, 8.15, 8.29, 8.32–8.33, 8.38, 8.81 cyberjesters 14.16

cybersquatting 14.12–14.17, 14.37–14.38, 14.59, 14.62–14.66, 14.70, 14.97 damages 1.74–1.79 actual 1.76, 1.80 double 3.25 statutory 1.74, 1.76 treble 3.25 data exclusivity/patents for medicinal products in European Union 6.01–6.61 abbreviated new drug application (ANDA) 6.36 abridged procedures 6.13, 6.18–6.19, 6.25, 6.46–6.48, 6.60 alendronate 6.05–6.06 bridging data 6.17 clinical trials 6.04–6.05, 61.4, 6.20, 6.34 clopidogrel 6.20, 6.39–6.43, 6.60 data exclusivity 6.10–6.26 dual strategy (filing and nullity) 6.38, 6.51, 6.60 8+2+1 rules 6.19 escitalopram 6.20, 6.51–6.60 extensions 6.22–6.23 first-to-market 6.38, 6.60 follow-on biologics 6.27 full/complete application/dossier 6.13 galanthamine 6.44–6.50, 6.60 generic products 6.09, 6.15–6.16, 6.19, 6.25, 6.33, 6.35–6.38, 6.54–6.56, 6.60 Germany 6.41–6.43 global marketing authorization 6.21–6.24, 6.57–6.58 hybrid abridged procedure 6.13, 6.17, 6.24 marketing authorization 6.10–6.25, 6.30, 6.41–6.42, 6.44–6.46, 6.52–6.58 Orange Book 6.36 ordinary procedure 6.13 overlapping protection 6.33–6.38 patents 6.27 preclinical trials 6.14 specialité 6.14, 6.25 supplementary protection certificates (SPCs) 6.02, 6.28–6.33, 6.40, 6.44, 6.49, 6.52–6.53, 6.59–6.60 United States 6.02, 6.08–6.09, 6.26, 6.29, 6.34, 6.36–6.37 variations 6.22–6.23 database right 1.20 database right/copyright xxxiii Australia 390 Brazil 398 Canada 406 China 413–14 France 422 Germany 430 India 438 Israel 446 Japan 454 Korea 461–2 Mexico 469 Netherlands 477 Russia 485

523

Index database right/copyright (cont.) Singapore 493 South Africa 499 Turkey 507–8 United Arab Emirates 516 see also database right/copyright and sui generis protection database right/copyright and sui generis protection 9.01–9.75 conflicting models 9.03–9.15 European Union 9.04, 9.12–9.14, 9.52–9.53 European Union Database Directive 9.16–9.38 application of sui generis right 9.36–9.38 copyright protection 9.19–9.21 litigation concerning sui generis right 9.27–9.32 reevaluation of sui generis right 9.33–9.35 scope 9.17 selection or arrangement of material 9.19 sui generis protection 9.18, 9.22–9.25 originality 9.10–9.11 selection and arrangement 9.03, 9.05, 9.13–9.14 sui generis protection: Database Treaty 9.72–9.74 sui generis protection 9.04, 9.06, 9.13–9.14 ‘sweat of the brow’ or ‘industrious collection’ doctrine 9.06, 9.08, 9.10, 9.12 TRIPS agreement and WIPO Copyright Treaty 9.69–9.71 United States 9.08–9.10, 9.15, 9.21, 9.25, 9.39–9.68, 9.72–9.74 Computer Fraud and Abuse Act 9.65–9.68 copyright protection 9.39–9.51 created facts 9.50–9.51 electronic databases 9.45–9.49 misappropriation doctrine 9.57–9.59 selection and arrangement of facts 9.42 sui generis 9.52–9.53, 9.59 ‘sweat of the brow’ 9.39–9.40, 9.64 trespass to chattels 9.60–9.64 deception 11.23, 11.26, 11.33, 17.76 see also unfair competition/trademarks Denmark 6.52, 8.31, 9.12, 9.26, 9.28 Department for Environment, Food and Rural Affairs 13.03 derivation 3.24 derivative works doctrine 10.69 Desbois, H. 10.38 design competition laws 17.26 freedom 2.77, 2.79 marks see logos see also patents/design protection; trademarks/designs design/copyright 8.01–8.95 Berne Convention 8.09–8.34, 8.38–8.39, 8.57 industrial art 8.15–8.17 literary and artistic works 8.09 non-unity of art 8.20 novelty 8.13 originality 8.13 pure art 8.11–8.15 unity of art doctrine 8.15, 8.20–8.22 works of applied art 8.10–8.13 works of artistic craftsmanship 8.17

definition of design 8.02–8.08 European Union harmonized position 8.54–8.57 full cumulative protection 8.46–8.49, 8.55–8.56 non-cumulative protection 8.55 Paris Convention 8.35–8.40 partial cumulative protection 8.50–8.53, 8.55–8.56 sui generis design law 8.82–8.94 TRIPS Agreement 8.40–8.43 United Kingdom and partial cumulative protection 8.58–8.66 United States and non-cumulative protection 8.67–8.81 unity of art doctrine 8.47–8.49 designs, trademarks and trade dress 12.01–12.92 European Union 12.39–12.91 contrary to public policy or accepted principles of morality (limitation on rights) 12.69–12.73 cost/fees for registration 12.54–12.55 distinctive features 12.39–12.47, 12.48, 12.51 duration and registration 12.48–12.53 enforcement 12.83–12.91 exclusions based on technical function or result (limitation on rights) 12.60–12.68 global appreciation test 12.85 grace period 12.45 individual character 12.43,12.45 multiplicity-of-forms theory 12.63–12.64 non-distinctive and descriptive designs excluded from trademark protection 12.74–12.79 novelty 12.45 ownership 12.56–12.59 sensitivity and tolerance 12.72–12.73 shape of goods 12.75–12.82 United States 12.04–12.38 acquired distinctiveness 12.10–12.11, 12.19 aesthetic functionality 12.27–12.29 assignments recommended 12.22 definition of design patents 12.04 definition of trade dress 12.05–12.08 design patent scope and protection 12.30–12.33,12.36 design patents functionality 12.25 design patents ownership 12.20 duration and registration 12.17–12.19 elements of design patents 12.09 elements of trade dress 12.10 enforcement 12.30–12.38 grace period 12.18 inherently distinctive 12.10–12.12 limitations on rights 12.25 marking 12.23–12.24 non-trivial advance test 12.32 novelty 12.18, 12.32, 12.36 ordinary observer test 12.31–12.32 ownership 12.20–12.24 trade dress functionality 12.26 trade dress not capable of being inherently distinctive 12.13–12.16 trade dress ownership 12.21

524

Index trade dress scope and protection 12.34–12.35,12.37 detriment, proof of 11.56 device marks (logos) 7.21, 7.43–7.53 dictated by function test 2.113 Dietz, A. 10.40–10.42 dilution 11.43–11.50, 16.53–16.55, 16.57–16.58 disclosure 3.72–3.77 in breach of confidence 3.72–3.77 and confidentiality 3.45–3.51 moral rights/economic rights 10.28, 10.59, 10.61 distinctive sounds 7.22 distinctiveness 12.10–12.12 copyright/trademarks 7.58–7.59, 7.62 design rights, trademarks, and trade dress 12.10–12.11, 12.19, 12.39–12.48, 12.51 lack of 13.09 trademark rights and unfair competition 16.46, 16.53 see also acquired distinctiveness ‘divulgation’ 10.59, 10.61 domain names/trademarks 14.01–14.02 Anti–Cybersquatting Consumer Protection Act (ACPA) (United States) 14.67–14.70, 14.85–14.90, 14.93, 14.95–14.97, 14.110–14.112 disputes 14.49, 14.54–14.61 Australia 393 bad faith 14.12, 14.56, 14.93, 14.101, 14.111 Anti–Cybersquatting Consumer Protection Act for conflict resolution 14.68, 14.87 conflicts 14.62 Uniform Dispute Resolution Policy for conflict resolution 14.71, 14.84,14.87 World Intellectual Property Organization process 14.28–14.29 Brazil 400–1 Canada 409 China 416 concept of domain names 14.06–14.08 concept of trademarks 14.09 country code top level domains (ccTLDs) 14.08, 14.33, 14.34, 14.92 cybersquatting 14.12–14.17, 14.37–14.38, 14.59, 14.62–14.66, 14.70, 14.97 damages 14.69, 14.86, 14.89 distinctiveness, loss of 14.101 domain names system (DNS) 14.32, 14.36, 14.41, 14.48 enforcement strategy 14.97 European Union 14.36 filing fee 14.82 forfeiture/cancellation/transfer of domain names 14.69–14.70, 14.80, 14.91 France 424–5 generic top level domains (gTLDs) 14.07, 14.50, 14.71, 14.97 ICANN 14.31, 14.33,14.42–14.48 international proposals 14.22, 14.24 World Intellectual Property Organization process 14.25–14.26

Germany 433 identical or confusingly similar 14.69, 14.73 India 441 injunctive relief 14.69 International Ad Hoc Committee (IHAC) 14.22 Internet Corporation for the Assigned Names and Numbers (ICANN) 14.31–14.48 see also below Uniform Dispute Resolution Policy Israel 448–9 Japan 457 Korea 464 likelihood of confusion 14.16, 14.56, 14.99–14.101 Mexico 472 monetary rewards 14.69 National Telecommunications and Information Administration (NTIA) Green Paper 14.23 Netherlands 479–80 Network Solutions Inc (NSI) and dispute resolution 14.18–14.21 registration of key brands 14.97 reverse domain name hijacking 14.21, 14.79 root zone 14.33–14.34 Russia 487–8 Singapore 496 South Africa 501 trademark registrations 14.97 trafficking 14.57, 14.68, 14.101 Turkey 510–11 typosquatting 14.65–14.66 Uniform Domain Name Dispute Resolution (UDRP)(ICANN) 14.37, 14.49–14.53, 14.61, 14.67, 14.71–14.88, 14.91–14.97, 14.111–14.112 application of traditional trademark principles 14.98, 14.101–14.102,14.104, 14.107 new generic top level domains 14.47 United Arab Emirates 518 United States 14.36, 14.52 see also Anti–Cyber squatting Consumer Protection Act WHOIS Protocol 14.38–14.41 World Intellectual Property Organization: ‘Management of internet Names and Addresses 14.24–14.30, 14.37, 14.72 double patenting 2.21, 2.25 dualism see moral rights/economic rights duplication 2.21 duty to deal 17.31–17.32 dynamic efficiency (innovation) 17.09–17.10 Eastern Europe and utility patents/copyright 1.85 economic rights see moral rights/economic rights economic value 15.19, 15.36, 15.56 enablement requirement 1.52–1.53 engravings 8.62 entertainment properties 7.21 equitable estoppel 17.57 essential facilities doctrine 17.31–17.32 Ethiopia 13.28

525

Index European Commission database right/copyright and sui generis protection 9.12–9.13, 9.16, 9.34 Explanatory Memorandum (1990) 6.29–6.30 patents/data exclusivity for medicinal products 6.35 patents/utility models 5.22, 5.25 European Medicines Agency (EMA) 6.42 European Patent Office (EPO) 1.17, 2.57 Enlarged Board 4.46–4.50 patents/design protection 2.66, 2.68, 2.70 patents/trade secrets 3.68–3.69, 3.71–3.72, 3.76 patents/utility models 5.25, 5.31 plant IPR 4.51 European Public Assessment Report (EPAR) 6.41–6.42 European Union database right/copyright and sui generis protection 9.34 design/copyright 8.54–8.57, 8.84–8.85, 8.93 domain names/trademarks 14.36 ‘famous’ marks, trademarks, and passing off 11.06, 11.33, 11.49–11.50 moral rights 10.06, 10.44, 10.47 patents/design protection 2.15–2.16, 2.24, 2.26, 2.35, 2.38–2.44, 2.46 aesthetics 2.55, 2.57 broad/narrow scope 2.97 form and function 2.76 functional designs 2.99–2.101 functionality at point of novelty 2.72 idea/expression 2.84, 2.88 multiplicity of forms 2.106–2.107 must-fit 2.132 technology/functionality 2.62 visibilty 2.131 words/pictures 2.94, 2.96 patents/trade secrets 3.06–3.07, 3.22, 3.25, 3.37, 3.79 prior to patenting 3.58, 3.61–3.62 patents/utility models 5.22–5.26 utility patents/copyright 1.17–1.20, 1.31, 1.34, 1.56, 1.65, 1.87 see also competition laws/IPR; copyright/trademarks; database right/copyright and sui generis protection; designs, trademarks and trade dress; geographical indications and trademarks; plant IPR; unfair competition/trademarks Evans, G.E. 13.28 evergreening patents 7.58 exclusion orders 1.84 exclusivity 17.15–17.17 see also patents/data exclusivity existence/exercise doctrine 17.35–17.42 exploitation right 10.28 expression of ideas 7.09, 9.07, 9.13 eye appeal 2.55, 2.124, 8.66 see also ornamentality facts 7.09, 9.04 fair dealing 2.07 fair use competition law/IPR 17.26, 17.57

publicity rights, trademark rights and property rights 15.44–15.45, 15.50 trademarks/unfair competition 16.52 utility patents/copyright 1.63–1.67 false advertising 16.03, 16.07, 16.50–16.52, 16.57 false designation of origin 7.76, 7.83–7.84 ‘famous’ marks/trademarks and passing off 11.01–11.73 blurring 11.44 classical trinity 11.14, 11.23, 11.31 counterfeiting 11.69 deception 11.23, 11.26, 11.33 detriment, proof of 11.56 ‘get up’ 11.14 goodwill 11.39 likelihood of confusion 11.47, 11.57 likely to suffer damage 11.14 misappropriation 11.29, 11.32 misrepresentation 11.14, 11.32 ‘parasitism’ or ‘free riding’ 11.61–11.62, 11.67 passing off 11.07–11.33 drinks cases 11.10–11.23 goodwill 11.09–11.10, 11.14,11.19–11.21 unfair competition 11.24–11.30 reputation 11.14, 11.19, 11.43, 11.45 shape aspect of marks 11.36–11.37 tarnishment 11.44 trademark law 11.34–11.69 dilution 11.43–11.50 ease of registration 11.35–11.37 infringement and likelihood of confusion 11.40–11.42 relative grounds for refusal 11.38–11.39 special rights 11.34 unfair competition 11.51–11.62 unfair competition or unfair advantage 11.62 Fast Moving Consumer Goods (FMCGs) 7.55 filtering 1.35 first to file system 3.36 first to invent principle 3.33 First in Time, First in Right (FITFIR) principle 13.11, 13.15–13.16 fit for purpose 2.123 flexibility: competition laws and IPR 17.21 follow-on user: database right/copyright and sui generis protection 9.36–9.37 four-part test: duty to licence 17.49–17.54 France 419–26 Berne Convention 8.13–8.14, 8.19, 8.21, 8.23, 8.26, 8.29 competition laws/IPR 422–3 copyright/design rights 420 copyright/moral rights 422 copyright/trademarks 7.63 database right/copyright 422 design/copyright 8.46, 8.50–8.51, 8.55–8.56 domain-names/trademarks 424–5 moral rights 10.04, 10.06, 10.47 patents/copyright 425 patents/data exclusivity 426

526

Index patents/design protection 2.32, 2.34, 2.101, 2.131, 419–20 patents/trade secrets 419 patents/utility model (petty patents) 5.40, 424 plant breeders’ rights 425 registered/unregistered trademarks (passing off) 419 trademarks/Appellations of Origin 421 trademarks/copyright 420–1 trademarks/designs 421 trademarks/publicity 424 unfair competition/patents and copyright 423 unfair competition/trademarks 423 utility patents/copyright 1.90 see also moral rights/economic rights FRAND terms (fair, reasonable and non-discriminatory) 17.30, 17.80–17.83 free in law and equity 3.71 ‘free riding’ or ‘parasitism’ 7.35–7.36, 11.61–11.62, 11.67 free trade agreements xxxi freedom of contract principle 17.32 freedom of expression 10.37 function and form: patents/design protection 2.74–2.81 functional designs 2.35 functionality 16.18–16.20 design/copyright 8.06 patents/design protection 2.121, 2.124–2.127, 2.129 at point of novelty 2.71–2.73 generic use see geographical indications geographical indications and trademarks 13.01–13.29 acquired distinctiveness (secondary meaning) 13.22, 13.27 Appellations of Origin (AOs) 13.14 Brazil 397–8 coexistence 13.12–13.14, 13.18 European Union 13.03, 13.07–13.09, 13.12–13.14, 13.17–13.18 exclusivity 13.11, 13.15 First in Time, First in Right (FITFIR) principle 13.11, 13.15–13.16 generic use European Union 13.19–13.21, 13.23–13.26 United States 13.21–13.23 India 438 preponderance of evidence standard 13.22 primary significance test 13.22 priority 13.11, 13.15 Protected Designation of Origin (PDO) 13.03, 13.17–13.18 Protected Geographical Indication (PGI) 13.03, 13.17–13.18 reputation 13.25 subject matter exclusion rule 13.09 sui generis 13.03, 13.06–13.07, 13.12, 13.14, 13.17, 13.23, 13.26–13.28 territoriality 13.16 threshold or tipping point 13.25

United States 13.05, 13.08–13.09, 13.11, 13.13, 13.15–13.16 see also trademarks/Appellations of Origin Germany 427–34 competition laws/IPR 17.81–17.83, 431 copyright/design rights 428 copyright/moral rights 430 database right/copyright and sui generis protection 9.28, 430 design/copyright 8.18–8.19, 8.50, 8.52, 8.55–8.56 domain names/trademark 433 moral rights 10.04, 10.06 patents/copyright 433–4 patents/data exclusivity 434 patents/design protection 2.38–2.40, 2.107, 428 patents/plant breeders’ rights 433 patents/trade secrets 427 patents/utility models (petty patents) 5.06–5.11, 5.14–5.16, 5.18, 5.27, 5.34–5.38, 5.40, 5.42, 432 plant IPR 4.07 registered/unregistered trademarks (passing off) 427 trademarks/Appellations of Origin 429–30 trademarks/copyright 428–9 trademarks/designs 429 trademarks/publicity (privacy) 432 unfair competition/patents and copyright 431 unfair competition/trademarks 431–2 utility patents/copyright 1.85, 1.90 see also moral rights/economic rights; unfair competition/trademarks ‘get up’ 11.14 global appreciation test 12.85 good faith, duty of 3.14 goodwill 7.18, 7.29, 11.09–11.10, 11.14, 11.19–11.21, 11.39 grace period 12.18, 12.45 grandfathering rule 13.14 graphic work 8.60, 8.70 Greece 9.16 Greengrass, B. 4.12 group mark—collective or certification marks 13.03, 13.05 honour, prejudice to 10.03, 10.47 Hussinger, K. 3.58 Iceland 9.34 idea/expression dichotomy 1.35, 2.74–2.88 identical or confusingly similar domain names/ trademarks 14.69, 14.73 imitations see unfair competition implied contractual obligation of confidence 3.14 inalienability 10.33 India 435–42 competition laws/IPR 439 copyright/design rights 436 database right/copyright 438 domain names/trademarks 441

527

Index India (cont.) moral rights 10.06, 10.65, 438–9 patents/copyright 442 patents/data exclusivity 442 patents/design protection 436 patents/plant breeders’ rights 441 patents/trade secrets 435 patents/utility model (petty patents) 440 registered/unregistered trademarks (passing off) 435 trademarks/copyright 437 trademarks/designs 437 trademarks/geographical indications 438 trademarks/publicity (privacy) 440 unfair competition/patents and copyright 439 unfair competition/trademarks 440 individual character 12.43, 12.45 industrial application requirement 2.30, 2.52, 2.84, 5.11 industrial art 8.15–8.17 industrial designs 8.35 industrial property protection 16.13–16.14 informed user 2.88, 12.43–12.44, 12.86 injunctions 1.73 integrity right 10.05, 10.14, 10.16, 10.47, 10.49, 10.69 Intellectual Property Office 13.03 intent to use 7.30 interference action 3.34 International Office of the Berne Union 8.18, 8.22, 8.25 International Trade Commission 1.84 internet 10.66–10.67 see also domain names/ trademarks Internet Network Information Center (InterNIC) 14.05 Internet Protocol (IP) address 14.06, 14.33–14.34 invalidity attack 3.34 inventions 2.30, 2.39, 2.52–2.54, 2.84 inventive step/non-obviousness 5.05, 5.11, 5.34 inventiveness/inventive activity 5.24, 5.35–5.40 Ireland 9.16 Israel 2.104, 443–50 competition laws/IPR 446–7 copyright/design rights 444 copyright/moral rights 446 database right/copyright 446 domain names/trademarks 448–9 patents/copyright 449 patents/data exclusivity 450 patents/design protection 444 patents/plant breeders’ rights 449 patents/trade secrets 443 patents/utility model (petty patents) 448 registered/unregistered trademarks (passing off) 443 trademarks/Appellations of Origin 445–6 trademarks/copyright 444–5 trademarks/designs 445 trademarks/publicity (privacy) 448 unfair competition/patents and copyright 447 unfair competition/trademarks 447

Italy design/copyright 8.22, 8.26, 8.31, 8.55 patents/utility models 5.42 Japan 451–8 competition laws/IPR 455 copyright/design rights 452 copyright/moral rights 454 database right/copyright 454 design/copyright 8.82, 8.85 domain names/trademarks 457 patents/copyright 458 patents/data exclusivity 458 patents/design protection 452 patents/plant breeders’ rights 457 patents/trade secrets 451 patents/utility models (petty patents) 5.11, 5.15, 456–7 registered/unregistered trademarks (passing off) 451 trademarks/Appellations of Origin 453–4 trademarks/copyright 452–3 trademarks/designs 453 trademarks/publicity (privacy) 456 unfair competition/patents and copyright 455 unfair competition/trademarks 455–6 utility patents/copyright 1.25 know how licence 3.79–3.80 Korah, V. 17.41 Korea 5.15, 8.82, 8.85, 459–65 competition laws/IPR 462 copyright/design rights 460 copyright/moral rights 462 database right/copyright and sui generis protection 9.35, 461–2 domain names/trademarks 464 patents/copyright 465 patents/data exclusivity 465 patents/design protection 460 patents/plant breeders’ rights 464–5 patents/trade secrets 459 petty patents/utility patents 464 registered/unregistered trademarks (passing off) 459 trademarks/Appellations of Origin 461 trademarks/copyright 460–1 trademarks/designs 461 trademarks/publicity (privacy) 463–4 unfair competition/patents and copyright 462–3 unfair competition/trademarks 463 labels 7.34, 7.44, 7.52, 7.69 lead time 3.08 legal deposit libraries 1.51 Lehman, B. 9.72, 9.74 licences 2.26 bare refusal 17.60 compulsory 4.23, 8.42, 17.78 Liedes, J. 9.72 likelihood of confusion 15.60–15.64 designs, trademarks, and trade dress 12.37

528

Index domain names 14.16, 14.56, 14.99–14.101 ‘famous marks’/trademarks 11.40–11.42, 11.47, 11.57 unfair competition 16.12–16.13, 16.27–16.32, 16.34–16.36, 16.39–16.40, 16.46, 16.52 likely to suffer damage 11.14 literary and artistic works 7.33, 7.43, 8.09, 8.87 Locarno International Classification for Industrial Designs 8.02, 12.55 logos (design marks) 7.21, 7.43, 7.64, 7.69, 7.89 Luxembourg 9.16 making available right 10.66–10.67 market power 17.16–17.17 marketing slogan 7.34 marking 12.23–12.24 merger doctrine 1.35 Mexico 466–73 competition laws/IPR 470 copyright/design rights 467 copyright/moral rights 469–70 database right/copyright and sui generis protection 9.35, 469 domain names/trademarks 472 patents/copyright 473 patents/data exclusivity 473 patents/design protection 467 patents/plant breeders’ rights 472 patents/trade secrets 466 patents/utility model (petty patents) 471–2 registered/unregistered trademarks (passing off) 466 trademarks/Appellations of Origin 468–9 trademarks/copyright 467–8 trademarks/designs 468 trademarks/publicity (privacy) 471 unfair competition/patents and copyright 470 unfair competition/trademarks 471 utility patents/copyright 1.43, 1.85 misappropriation doctrine 9.57–9.59, 11.29, 11.32, 15.24 misleading advertising 16.03, 16.28–16.29, 16.34 misrepresentation 11.14, 11.32 mistake: unfair competition 16.40 monism see moral rights/economic rights monopoly 2.22, 2.48 moral rights/economic rights 10.01–10.72 attribution 10.05 Canada 10.02, 10.29, 10.43, 10.53, 10.70 see also common law perspective common law perspective 10.07–10.21 integrity 10.14, 10.16 reputation, prejudice to 10.14 right to control use of the work 10.14 definition of moral rights 10.02–10.06 honour or reputation, damage to 10.03 integrity 10.05 international arena: realism 10.44–10.49 attribution 10.47 honour or reputation, prejudice to 10.47 integrity right 10.47, 10.49

monism (Germany) and dualism (France) 10.22–10.43, 10.63–10.64 attribution right 10.35 bargaining power 10.30 disclosure 10.28 exploitation right 10.28 free control over one’s future earnings 10.28 freedom of expression 10.37 ‘ghostwriting’ 10.35 inalienability 10.33 perpetual protection 10.33, 10.36–10.37 reproduction rights 10.22 revocation of work or withdrawal from public circulation 10.28 waivers 10.28–10.30, 10.32 derivative works doctrine 10.69 integrity right 10.69 making available right 10.66–10.67 unified author’s right 10.63–10.72 World Intellectual Property Organization (WIPO) Internet treaties 10.50–10.62, 10.66 communication right 10.60 disclosure or ‘divulgation’ 10.59, 10.61 representation right 10.58 see also copyright/moral rights morality 12.69–12.73 multiplicity of forms approach 2.34, 2.116, 12.63–12.64 National Economic Council 9.73 Netherlands 6.54, 6.56–6.59, 474–81 competition laws/IPR 17.81–17.83, 477–8 copyright/design rights 475 copyright/moral rights 477 copyright/trademarks 7.63 database right/copyright and sui generis protection 9.28–9.29, 9.38, 477 domain names/trademarks 479–80 patents/copyright 480 patents/data exclusivity 481 patents/design protection 475 patents/plant breeders’ rights 480 patents/trade secrets 474 patents/utility model (petty patents) 479 registered/unregistered trademarks (passing off) 474 trademarks/Appellations of Origin 476 trademarks/copyright 475–6 trademarks/designs 476 trademarks/publicity (privacy) 479 unfair competition/patents and copyright 478 unfair competition/trademarks 478 new idea 2.85 new or ornamental design 2.39 new product test 17.43–17.46 New Zealand 8.07 newsworthiness and commercial speech 15.33–15.35 Nicholson Report 2.60 non-exhaustive list of non-inventions 2.30 non-functionality 2.64 non-trivial advance test 12.32 Norway 8.23, 9.12

529

Index novelty 1.61, 2.31–2.32, 8.13, 8.42–8.43 aesthetics at point of 2.66–2.69 designs, trademarks and trade dress 12.18, 12.32, 13.36, 12.45 functionality at point of 2.71–2.73 over prior art 2.28 patents/design protection 2.48, 2.63, 2.76 patents/trade secrets 3.36, 3.62–3.64 patents/utility models 5.05, 5.11, 5.34 statement of 2.17, 2.89, 2.93 subject-matter at point of 2.64–2.65 Obama, B. 6.26 Office for Harmonization in the Internal Market (OHIM) 2.42, 2.119, 2.124, 12.52–12.53 omnibus claims 2.92 ordinary observer test 2.88, 12.31–12.32 originality 1.61, 7.08–7.09, 8.13, 8.42–8.43 databases 9.10–9.11 design/copyright 8.49, 8.52–8.53, 8.90, 8.92–8.93 ornamentality 2.35, 2.56, 2.59, 2.62, 2.82, 2.122–2.123 packaging 7.34, 7.52, 7.64, 7.69 paracopyright laws 1.59, 1.88 parody: unfair competition 16.54, 16.58 partially cumulative: design/copyright 8.69 passing off trademark rights and unfair competition 16.52, 16.56 see also ‘famous’ marks protection; registered/ unregistered trademarks (passing off) past-secret-use defence 3.39 patent ambush 17.18, 17.79 patent cliff 6.27 patent hold-up 17.69–17.79 patent term erosion 6.33 patents competition/IPR 17.16, 17.18, 17.24, 17.27, 17.57, 17.69–17.79 design/copyright 8.82 double 2.21, 2.25 evergreening 7.58 specialist patent agents 3.19 see also data exclusivity/patents; unfair competition/ patents and copyright; utility patents/copyrights patents/copyright Australia 393–4 Brazil 401 Canada 410 China 417 France 425 Germany 433–4 India 442 Israel 449 Japan 458 Korea 465 Mexico 473 Netherlands 480 Russia 488 Singapore 497 South Africa 504

Turkey 511 United Arab Emirates 519 patents/data exclusivity Australia 394 Brazil 402 Canada 410 China 418 France 426 Germany 434 India 442 Israel 450 Japan 458 Korea 465 Mexico 473 Netherlands 481 Russia 489 Singapore 497 South Africa 504 Turkey 512 United Arab Emirates 519 patents/design protection xxxii, 2.01–2.140 aesthetic creations and patents 2.57 aesthetics and design 2.55–2.56 aesthetics at point of novelty 2.66–2.69 Australia 388 Brazil 396 Canada 404 China 411–12 construction, method or principle of 2.133–2.135 cross-citation 2.43–2.47 cross-priority 2.36–2.42 design law—exclusion of patentable inventions 2.32–2.35 designer’s intention 2.117–2.118 designs as prior art 2.43 European Union 2.38–2.44, 2.46 ‘forced election’/pre-emption 2.07, 2.12–2.21 France 419–20 function and form—designs 2.74–2.79 function and form—patents 2.80–2.81 functional designs exclusion 2.98–2.103 functionality at point of novelty 2.71–2.73 Germany 428 idea/expression 2.83–2.88 India 436 inventions, technology and patents 2.52–2.54 Israel 444 Japan 452 Korea 460 Mexico 467 mismatched defences 2.07, 2.26 ‘multiplicity of forms’ sub-test 2.104–2.115 ‘must-fit’ 2.132 nature of the product 2.125–2.127 Netherlands 475 patent law—exclusion of registrable designs 2.30–2.31 patents as prior art 2.44 post expiry right of use 2.07, 2.22–2.25 prior rights 2.46–2.47 Russia 482–3 Singapore 491

530

Index South Africa 502 ‘stretch’ 2.07, 2.10–2.11 subject-matter at point of novelty 2.64–2.65 subjective tests-designer’s intention, user’s impression 2.116 technology/functionality exclusion and utility 2.62–2.63 Turkey 505–6 undermining or circumvention 2.08, 2.27–2.29 United Arab Emirates 514 United States 2.37, 2.45, 2.47 user’s conception of designer’s intention 2.119–2.124 utility as qualification for design protection 2.58–2.61 visibility 2.128–2.131 words/pictures 2.89–2.96 patents/plant breeders’ rights xxxii Australia 393 Brazil 401 Canada 409 China 417 France 425 Germany 433 India 441 Israel 449 Japan 457 Korea 464–5 Mexico 472 Netherlands 480 Russia 488 Singapore 496 South Africa 503–4 Turkey 511 United Arab Emirates 519 see also plant intellectual property interfaces patents/trade secrets 3.01–3.82 Australia 387 benefits of secrecy 3.10–3.21 Brazil 395 Canada 403 China 411 confidentiality, effect of independent generation of same information on 3.31–3.40 confidentiality, effect of reverse engineering on 3.41–3.44 confidentiality, effect of wrongful use or disclosure on 3.45–3.51 confidentiality and risk of disclosure by confider itself 3.28–3.30 disclosure in breach of confidence 3.72–3.77 France 419 Germany 427 India 435 Israel 443 Japan 451 Korea 459 limits of secrecy 3.22–3.26 Mexico 466 Netherlands 474 policy considerations 3.52–3.57 risks of secrecy 3.27

Russia 482 secret use and patenting 3.60–3.61 self-disclosure 3.62–3.71 Singapore 490 South Africa 501 Turkey 505 United Arab Emirates 513 patents/utility models (petty patents) 5.01–5.44 Australia 5.16–5.21, 5.29, 5.33, 5.35, 5.40, 5.42, 392 Brazil 400 Canada 408 China 416 countries and protection duration 5.04–5.05 division/branching 5.31–5.34 European proposal 5.22–5.26 examination 5.27–5.30 France 424 Germany 5.06–5.11, 5.14–5.15, 5.18, 5.42, 432 examination 5.27 level of inventiveness 5.34–5.38, 5.40 India 440 inventiveness, level of 5.35–5.40 Israel 448 Japan 456–7 Korea 464 Mexico 471–2 Netherlands 479 pendency 5.31, 5.34 registration 5.27–5.29 Russia 487 Singapore 495 South Africa 503 Turkey 510 United Arab Emirates 518 worldwide models 5.11–5.15 per se rule 17.34 perpetual protection: moral rights/economic rights 10.33, 10.36–10.37 Pharmaceutical Research and Manufacturers of America (PhRMA) 6.04 pictorial, graphic, and sculptural works 8.60, 8.62, 8.64, 8.66, 8.70 plant intellectual property interfaces 4.01–4.62 breeder’s exemption 4.40 Community Plant Variety Office 4.39 compulsory cross-licensing mechanism 4.55–4.58 compulsory licensing provision 4.23, 4.35 disclosed varieties 4.20 do nothing 4.04 dual protection ban 4.39, 4.44, 4.49 election requirements 4.04 eligibility provisions 4.04 Essentially Derived Variety (EDV) provisions 4.20, 4.24, 4.40 European Union 4.07, 4.09, 4.14, 4.37–4.60 plant breeder’s rights 4.38–4.41 utility patents 4.42–4.60 exclusivity provisions 4.04 first sale doctrine 4.35 germplasm 4.21

531

Index plant intellectual property interfaces (cont.) hybrid/different variety 4.21 International Convention for the Protection of New Varieties of Plants (UPOV) 4.02–4.03, 4.06–4.13, 4.15, 4.17 limitations and exceptions 4.21 Patented Seed Fund 4.35 policing doctrines 4.04 safe harbour provision 4.21 saved seed exemption 4.22, 4.35–4.36, 4.40 scope of protection 4.19–4.20 seed-saving 4.59–4.60 subject matter exclusions 4.51–4.54 subject matter limitations 4.04 TRIPS 4.06, 4.14–4.15 United States 4.02, 4.04, 4.07, 4.11, 4.16, 4.58–4.59 Plant Variety Protection Act 4.17–4.25 Utility Patent Statute 4.26–4.36 utility patents 4.37, 4.41, 4.54 Portugal 2.33, 9.16 preponderance of evidence standard 13.22 prestige 16.46 primary significance test 13.22 prior art designs, trademarks and trade dress 12.33 patents/design protection 2.71–2.72 patents/utility models 5.11, 5.17, 5.28 prior use: patents/trade secrets 3.38 privacy 15.05–15.15, 15.33, 15.42, 15.56 domain names and trademarks 14.38–14.39 see also trademarks/publicity (privacy) product appearance 7.34, 8.05 property rights see publicity rights, trade mark rights and property rights Protected Designation of Origin (PDO) 13.03, 13.17–13.18 Protected Geographical Indication (PGI) 13.03, 13.17–13.18 protection of incentives to invest 17.58–17.59 public notice indicators 12.24 publicity rights, trade mark rights, and property rights 15.01–15.68 associative value 15.23, 15.52 associative value and limitations of appurtenant right 15.36–15.41 economic value 15.19, 15.36, 15.56 fair use 15.44–15.45, 15.50 First Amendment, newsworthiness and commercial speech 15.33–15.35 likelihood of confusion 15.60–15.64 merchandising the persona 15.42–15.57 privacy right 15.05–15.15, 15.33, 15.42, 15.56 protection of associative value of persona 15.04–15.22 taxonony, categorization and analogy 15.23–15.32 transformative use 15.45, 15.47, 14.49 United Kingdom 15.26–15.29, 15.35 see also trademarks/publicity (privacy) pure art 8.11–8.15

Quittner, J. 14.03, 14.13 re-utilization: database right/copyright and sui generis protection 9.22 reciprocity: database right/copyright and sui generis protection 9.53 refusals to deal 17.28–17.34 registered design right 8.65, 8.82–8.83, 8.91 registered/unregistered trademarks (passing off) 12.57 Australia 387 Brazil 395 Canada 403 China 411 Germany 427 India 435 Israel 443 Japan 451 Korea 459 Mexico 466 Netherlands 474 Russia 482 Singapore 490 South Africa 498 Turkey 505 United Arab Emirates 513 reproduction rights 10.22, 10.58 reputation 11.14, 11.19, 11.43, 11.45 copyright/trademarks 7.89 domain names and trademarks 14.16 geographical indications 13.25 prejudice to 10.03, 10.14, 10.47 trademarks and Geographical Indications 13.03 unfair competition 16.46, 16.53 reverse engineering 1.64–1.65, 3.41–3.44 reverse infringement test 3.63 revocation of work or withdrawal from public circulation 10.28 Ricketson, S. 10.57 rule of reason 17.34 Russia 5.15, 482–9 competition laws/IPR 485–6 copyright/industrial design rights 483 copyright/moral rights 485 database right/copyright 485 domain names/trademarks 487–8 moral rights 10.05 patents/copyright 488 patents/data exclusivity 489 patents/industrial design rights 482–3 patents/plant breeders’ rights 488 patents/trade secrets 482 patents/utility model (petty patents) 487 registered/unregistered trademarks (passing off) 482 trademarks/Appellations of Origin 484 trademarks/copyright 483–4 trademarks/designs 484 trademarks/publicity (privacy) 487 unfair competition/patents and copyright 486 unfair competition/trademarks 486

532

Index safe harbour provision 4.21, 17.79 sale bar 3.35 sculptures 8.62, 8.64, 8.66, 8.70 secondary liability 1.71 secondary meaning see acquired distinctiveness secrecy 3.08 selection and arrangement of facts 9.42 selection and arrangement of material 9.03, 9.05, 9.13–9.14, 9.19 self-disclosure: trade secrecy 3.62–3.71 sensitivity and tolerance 12.72–12.73 separability criterion design/copyright 8.71–8.76 service marks 7.21 shape aspect of marks 11.36–11.37 shape of goods 12.75–12.82 Singapore 490–7 competition laws/IPR 494 copyright/design rights 491 copyright/moral rights 493–4 database right/copyright 493 domain names/trademarks 496 patents/copyright 497 patents/data exclusivity 497 patents/design protection 491 patents/plant breeders’ rights 496 patents/trade secrets 490 patents/utility model (petty patents) 495 registered/unregistered trademarks (passing off) 490 trademarks/Appellations of Origin 492–3 trademarks/copyright 492 trademarks/industrial designs 492 trademarks/publicity (privacy) 495 unfair competition/patents and copyright 494 unfair competition/trademarks 495 source-identification function 7.23 South Africa 498–504 competition laws/IPR 502–3 copyright/design rights 502 copyright/moral rights 500 database right/copyright 499 domain names/trademarks 501 patents/copyright 504 patents/data exclusivity 504 patents/plant breeders’ rights 503–4 patents/registered design rights 502 patents/trade secrets 501 patents/utility model (petty patents) 503 registered/unregistered trademarks (passing off) 498 trademarks/Appellations of Origin 499 trademarks/copyright 498 trademarks/designs 498–9 trademarks/publicity (privacy) 500 unfair competition/patents and copyright 503 unfair competition/trademarks 500 Spain 2.33, 2.107, 9.38 spare parts and repairs 8.93 specialist patent agents 3.19 specially commissioned works 7.66 springboard doctrine 3.44, 3.49 state of the art 3.63–3.64, 3.72, 16.14

state support/state interference 13.28 static efficiency (price competition in innovative goods) 17.09–17.10 Straus, J. 4.58 strict liability 1.60 Strömholm, S. 10.24 subject matter exclusion rule 13.09 subject matter at point of novelty 2.64–2.65 substantial similarity 7.10–7.11, 7.32 sui generis design/copyright 8.05, 8.07, 8.34, 8.51, 8.64, 8.77, 8.79, 8.82–8.94 patents/data exclusivity for medicinal products 6.29 patents/design protection 2.11 plant IPR 4.14–4.15 see also databases; geographical indications and trademarks ‘sweat of the brow’ or ‘industrious collection’ doctrine 9.06, 9.08, 9.10, 9.12, 9.39–9.40, 9.64 Sweden 6.52, 6.55, 6.58, 9.12 Switzerland 8.19–8.20 tarnishment 11.44 domain names and trademarks 14.16 unfair competition 16.53.16.55 technical character 2.35 technical development limiting 17.47–17.48 technical and non-technical features 2.57 technical solution 7.60, 16.14–16.15 technicality 2.64 technological advancement xxx technological change and moral rights 10.66 technological innovation 2.101–2.102 technology, functionality exclusion and utility 2.62–2.63 technology and patents/design protection 2.52–2.54, 2.73 terminal disclaimer 2.25 territoriality 13.16 textile designs 8.42 Thailand 1.85 three-dimensional articles and copyright/ trademarks 7.93 three-dimensional designs 8.60, 8.61, 8.64, 8.87–8.89 three-dimensional marks and unfair competition 16.14–16.16 three-dimensional objects 7.70–7.73, 8.17, 8.70 three-dimensional products 7.54–7.62 threshold or tipping point 13.25 trade dress copyright/trademarks 7.21, 7.35, 7.37, 7.64, 7.71, 7.78–7.79, 7.82 plant IPR 4.30 unfair competition 16.13, 16.16–16.20, 16.46, 16.56 see also designs, trademarks and trade dress trade secrets utility patents/copyright 1.26, 1.50 see also patents/trade secrets

533

Index trademarks competition laws 17.04 design/copyright 8.82 patents/design protection 2.07, 2.49 perpetual 2.22 see also copyright/trademarks; designs, trademarks and trade dress; domain names; ‘famous’ marks; geographical indications; publicity rights; registered/unregistered trademarks; unfair competition/ trademarks; trademarks/Appellations of Origin Australia 389–90 Canada 405–6 China 413 France 421 Germany 429–30 Israel 445–6 Japan 453–4 Korea 461 Mexico 468–9 Netherlands 476 Russia 484 Singapore 492–3 South Africa 499 Turkey 507 United Arab Emirates 515 trademarks/copyright Australia 388–9 Brazil 396–7 Canada 404–5 China 412 France 420–1 Germany 428–9 India 437 Israel 444–5 Japan 452–3 Korea 460–1 Mexico 467–8 Netherlands 475–6 Russia 483–4 Singapore 492 South Africa 498 Turkey 506–7 United Arab Emirates 514–15 trademarks/designs Australia 389 Brazil 397 Canada 405 China 413 France 421 Germany 429 India 437 Israel 445 Japan 453 Korea 461 Mexico 468 Netherlands 476 Russia 484 Singapore 492 South Africa 498–9

Turkey 507 United Arab Emirates 515 trademarks/publicity (privacy) Australia 392 Brazil 400 Canada 408 China 415–16 France 424 Germany 432 India 440 Israel 448 Japan 456 Korea 463–4 Mexico 471 Netherlands 479 Russia 487 Singapore 495 South Africa 500 Turkey 510 United Arab Emirates 517–18 trespass to chattels 9.60–9.64 truthful marking and trading standards 13.03 Tunisia 8.21 Turkey 505–12 competition laws/IPR 508 copyright/design rights 506 copyright/moral rights 508 database right/copyright and sui generis protection 9.34, 507–8 domain names/trademarks 510–11 patents/copyright 511 patents/data exclusivity 512 patents/design protection 505–6 patents/plant breeders’ rights 511 patents/trade secrets 505 patents/utility models (petty patents) 510 registered/unregistered trademarks (passing off) 505 trademarks/Appellations of Origin 507 trademarks/copyright 506–7 trademarks/designs 507 trademarks/publicity (privacy) 510 unfair competition/patents and copyright 509 unfair competition/trademarks 509 two-dimensional designs 8.87–8.89 two-dimensional objects 8.70 tying 17.18 Ukraine 5.15 unfair competition ‘famous’ marks, trademarks, and passing off 11.24–11.30, 11.51–11.62 publicity rights, trademark rights, and property rights 15.24 trademarks and Geographical Indications 13.03 unfair competition/patents and copyright Australia 391 Brazil 399 Canada 407 China 415 France 423 Germany 431

534

Index India 439 Israel 447 Japan 455 Korea 462–3 Mexico 470 Netherlands 478 Russia 486 Singapore 494 South Africa 503 Turkey 509 United Arab Emirates 517 unfair competition/trademarks 16.01–16.59 Australia 391–2 bad faith 16.13, 16.16 Black List 16.26, 16.32, 16.34 blurring 16.53 Brazil 399 Canada 407–8 China 415 comparative advertising 16.03, 16.27–16.29, 16.41–16.55 European Union and Germany 16.41–16.47 United States 16.48–16.55 deception by confusing similarity 16.23–16.40, 16.56 European Union and Germany 16.24–16.36 United States 16.37–16.40 dilution 16.53–16.55, 16.57–16.58 European Union and Germany 16.02, 16.56 false advertising 16.03, 16.07, 16.50–16.52, 16.57 France 423 functionality doctrine 16.18–16.20 Germany 431–2 imitations 16.10–16.22, 16.30–16.34, 16.46 European Union and Germany 16.10–16.16 United States 16.17–16.22 India 440 industrial property protection 16.13–16.14 Israel 447 Japan 455–6 Korea 463 legal background 16.05–16.09 European Union and Germany 16.05–16.06 United States 16.07–16.09 likelihood of confusion 16.12–16.13, 16.27–16.32, 16.34–16.36, 16.39–16.40, 16.46, 16.52 Mexico 471 misleading advertising 16.03, 16.28–16.29, 16.34 Netherlands 478 Russia 486 Singapore 495 South Africa 500 trade dress 16.13, 16.16–16.20, 16.46, 16.56 truthful advertising see comparative advertising Turkey 509 United Arab Emirates 517 United States 16.02, 16.57 unified author’s right 10.63–10.72 United Arab Emirates 513–19 competition laws/IPR 516 copyright/design rights 514

copyright/moral rights 516 database right/copyright 516 domain names/trademarks 518 patents/copyright 519 patents/data exclusivity 519 patents/design protection 514 patents/plant breeders’ rights 519 patents/trade secrets 513 patents/utility model (petty patents) 518 registered/unregistered trademarks (passing off) 513 trademarks/Appellations of Origin 515 trademarks/copyright 514–15 trademarks/designs 515 trademarks/publicity (privacy) 517–18 unfair competition/patents and copyright 517 unfair competition/trademarks 517 United Kingdom competition laws and IPR 17.03 database right/copyright and sui generis protection 9.12, 9.30, 9.33, 9.60 design/copyright 8.04, 8.07, 8.85 Berne Convention 8.13, 8.17,8.19–8.20, 8.23,8.26–8.27 national/regional interface 8.51, 8.55, 8.57,8.58–8.66 TRIPS Agreement 8.42–8.43 designs, trademarks and trade dress 12.67 ‘famous’ marks, trademarks, and passing off 11.06–11.07, 11.10, 11.30, 11.33–11.35, 11.38, 11.45, 11.47–11.48 Intellectual Property (UKIP) Office 11.52 moral rights 10.06, 10.45, 10.48 Patent Office 2.54–2.55 patents/data exclusivity for medicinal products 6.44–6.45 patents/design protection 2.11, 2.13, 2.16, 2.23, 2.31 dictated by function 2.113 form and function 2.76 functional designs 2.99–2.101 idea/expression 2.83 method or principle of construction 2.133 multiplicity of forms 2.106–2.107, 2.111 must-fit 2.132 subjective tests 2.116 systemic cross-links 2.38,2.42 technology/functionality 2.62–2.63 utility 2.58–2.59 visibilty 2.130 words/pictures 2.92 patents/trade secrets preference for trade secrecy over patents 3.06, 3.08,3.11, 3.18–3.19,3.25–3.26, 3.38–3.39,3.41 prior to patenting 3.60, 3.62–3.64, 3.68–3.69, 3.73–3.74, 3.77 publicity rights, trade mark rights, and property rights 15.06, 15.26–15.29, 15.35 trademarks and Geographical Indications 13.03 utility patents/copyright 1.45, 1.51, 1.59, 1.65, 1.71, 1.85 see also copyright/trademarks

535

Index United States Copyright Office 1.15, 1.50, 8.69 Department of Commerce 14.23–14.24, 14.32 design/copyright 8.07, 8.44, 8.67–8.81, 8.84–8.85 Federal Trade Commission (FTC) 16.49–16.50 Food and Drug Administration (FDA) 6.36 geographical indications and trademarks 13.05, 13.08–13.09, 13.11, 13.13, 13.15–13.16 moral rights 10.05, 10.62, 10.62, 10.69–10.71 patents/design protection 2.11, 2.13, 2.21, 2.25–2.27, 2.35, 2.37 aesthetics 2.56, 2.58 aesthetics at point of novelty 2.69 broad/narrow scope 2.97 form and function 2.74 functional designs 2.103 functionality at point of novelty 2.71 idea/expression 2.88 multiplicity of forms 2.108,2.115 nature of the product 2.127 systemic cross-links 2.39 technology v aesthetics 2.53,2.56 technology/functionality 2.62–2.63 utility 2.59 visibility 2.130–2.131 words/pictures 2.92, 2.95 patents/trade secrets 3.79, 3.81 confidentiality and risk of disclosure by confider itself 3.30 independent generation of same information on confidentiality 3.33–3.40 policy considerations 3.52–3.57 prevalence of preference for trade secrecy 3.06,3.16–3.19, 3.22, 3.25 prior to patenting 3.58,3.60–3.62, 3.75–3.77 reverse engineering and confidentiality 3.43 wrongful use or disclosure and confidentiality 3.49, 3.51 utility patents/copyright 1.04–1.16 conceptual interplays between patent and copyright 1.23, 1.30, 1.34–1.35 government enforcement 1.86–1.88 litigation forums 1.81–1.84 ownership of rights 1.44,1.46, 1.49 remedies 1.72–1.74 required disclosures 1.50 scope of rights 1.55, 1.57,1.60, 1.63–1.67 secondary liability 1.68–1.69 timing of protection 1.40–1.42

see also competition laws; copyright/trademarks; database right/copyright; designs, trademarks and trade dress; domain names/trademarks; publicity rights; unfair competition/ trademarks unity of art doctrine 8.15, 8.20–8.22, 8.47–8.49 unregistered design right 8.65–8.66, 8.92–8.93 unregistered trademark 12.57 utility design/copyright 8.35, 8.67 patents/design protection 2.52, 2.69, 2.82 patents/design protection anti-overlap provisions 2.35 forced election/pre-emption 2.11 post-expiry right of use 2.25 qualification for design protection 2.58–2.61 systemic cross-links 2.39,2.42, 2.45 technology/functionality exclusion 2.62–2.63 see also patents/utility models utility patents/copyrights 1.01–1.91 business models 1.21–1.26 computer programs 1.27–1.36 European Union and other countries 1.17–1.20 government enforcement 1.86–1.90 litigation forums 1.81–1.85 ownership of rights 1.44–1.49 remedies 1.72–1.80 required disclosures 1.50–1.54 scope of rights 1.55–1.67 secondary liability 1.68–1.71 timing of protection 1.40–1.43 United States 1.04–1.16 vicarious liability 1.69 Vinje, T.C. 17.42 Warren, S. 15.06 Werkers, E. 10.53 word marks 7.21 words, names, titles, and slogans 7.40–7.42 words/pictures: patents/design protection 2.89–2.96 works of applied art 8.10–8.13 works made for hire 1.47–1.49, 7.14, 7.65–7.69, 7.80 World Intellectual Property Organisation (WIPO) 5.05, 5.15 World Trade Organisation (WTO) member states 4.15 wrongful use and confidentiality 3.45–3.51 Zuccarini, J. 14.14

536