The IPKat's top IP posts for 2011: Countdown, Part 2
If you missed Part 1 and are wondering what it's all about, just click here.
5. The Unified Patent Court and Unitary Patent Court system
Two years ago, Mr. Justice Arnold referred a mere ten questions to the Court of Justice of the European Union (CJEU) for a preliminary reference in the epic trade mark war between L'Oréal SA and eBay (questions here). L'Oréal had argued that eBay had not done enough to prevent the sale of counterfeit goods such as perfumes and cosmetics and should be liable for counterfeit and parallel goods sold on its website. In the decision-tastic month of July, the CJEU answered Arnold J’s questions -- questions which related to the obligations of a company operating in the online marketplace, like eBay, may be subject to in order to prevent infringement by users of its services. The CJEU ruled that EU trade mark rules are triggered when it is clear that offers for sale and ads relating to trade mark goods located in third states are targeted at consumers in the EU. Whether and how an offer or ad is targeted at EU consumers is a matter for the national courts.
The CJEU also ruled that if operators of an internet marketplace, like eBay, enable customers to display on its website infringing signs corresponding to trade marks, operators are not “using” the trade marks for the purposes of trade mark infringement under Article 5(1)(a) of the Directive 89/104 and Article 9(1)(a) of Regulation No 40/94. However, when operators provide assistance to users in optimizing or promoting such users' online offers for sale which use infringing marks then operators are playing an “active role”. The Court ruled that operators who play such an "active role" or who are aware of facts or circumstances that point to online offers for sale being unlawful and do not act promptly to remove it (a sort of “red flag test”) cannot benefit from the exemption of under Article 14(1) of Directive 2000/31 (the E-Commerce Directive).
All-in-all, the CJEU’s decision appeared to be bad news for eBay. However, the IPKat noted at the time that it did not think that the case would result in an avalanche of litigation against eBay. The mere risk of litigation itself and the costly exercises of avoiding “active role” type services that trigger liability where counterfeit users are concerned, while not alienating its non-infringing users who use such services, may be the true cost of the decision (the age-old internet liability dance of "not knowing about infringement without being wilfully blind to the infringement, see one of the US's top stories in the Viacom and YouTube case here). The Court’s ruling has yet to be applied by Mr Justice Arnold.
The internet is the most participatory form of speech ever created. We saw the impact of social media and the internet most keenly in 2011 with political uprisings in the Middle East spurred by the sharing of information through social media sites such as Twitter. One cannot watch a political news show without a pundit going to Twitter to see what the masses are saying about Senator X or Government Proposal Y. As IP lawyers and owners know, however, as meritorious as the rapid sharing of information is, it also has a potential downside – copyright infringement.
Following the English riots in August, Mr Andy Mabbett made an official complaint to the BBC, alleging that in its coverage of the riots in Tottenham the BBC had used photographs that had been uploaded by authors/owners to Twitter accounts without permission or attribution. According to Mr Mabbett’s blog, the first response from the BBC explained that they were permitted to do so because Twitter was a social network platform and content uploaded on the site was “not subject to the same copyright laws because it is already in the public domain.” After publicizing this statement on his blog, the BBC then released a statement saying that the previous response was “wrong” and did “not represent BBC policy”. However, they did say that where there was a strong public interest and time constraints, “we may use a photo before we’ve cleared it”.
The BBC’s press release seemed to introduce a new quasi-public interest defence for copyright law and avoided mentioning s.30(2) Copyright Patents and Designs Act (CDPA). The AmeriKat believes there is a certain amount of sympathy to be had for the BBC’s position in instances where the reporting of breaking news events does not permit time for the required permission/attribution undertakings. Nevertheless, the position under UK law is clear. The story again highlighted the relatively new difficulty encountered by owners and users of intellectual property on social media platforms, but reinforced the centuries-old legal difficulty that lies in the intersection between copyright law and freedom of speech.
The Kat’s most-read story of 2011 was courtesy of the IPKat’s friend Jelena Jankovic regarding “naughty business” EKOSAN. Until 1 January 2011 when a new Law of Trade Marks came into force, Bosnia had no provision regarding trade mark applications made in bad faith. This meant that numerous bad faith applications for trade marks of well-known brands were made by third parties. such as local counterfeiters. These applications were tolerated because the Bosnian PTO “did not recognize bad faith as one of the grounds for cancellation” and “prosecutors refused to pursue bad faith cases claiming there was no criminal intent and the civil courts were reluctant in issuing decisions in unfair competition claims.” The most galling example was that of Banja Luka textile product importer EKOSAN who has registered almost 200 trade marks belonging to famous apparel companies. EKOSAN also requested customers monitoring in order to prohibit import attempts by companies of goods under the market, including the actual owners of the marks. Although the new Bosnian law permitted cancellation of trade marks on the relative ground of bad faith, the article stated that, without actual use of the mark in Bosnia by brand owners and given the sympathy afforded to local companies by the PTO, it would still be difficult for brand owners to prove bad faith.
Besides the top stories of 2011 the AmeriKat’s investigative "prowl-ess" had a little peek as to the most frequently-identified sources of visits to the IPKat's website which were:
As we begin 2012 the AmeriKat, on behalf of the IPKat team, would like to thank all of the 325,000 readers and subscribers from over 200 countries for their ongoing readership, criticism, commentary, argument and support. None of us would be here without the sometimes frustrating, but always intriguing world of IP, but us Kats would not be here at all if it was not for you – the readers. We look forward to serving you and the IP community in 2012 and the years to come. Happy New Year!
5. The Unified Patent Court and Unitary Patent Court system
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| Without a "Unified Patent Court" logo yet, the AmeriKat is left depicting the story with EU flag |
In the dark days and nights of December, when the AmeriKat found herself stuck in bed with tonsillitis, the only joy to be had was that the affliction permitted her to report on the rapidly progressing developments on the unitary patent system and unified patent court. The proposal of a unified system of enforcing patents throughout all of the European states had been kicking around for decades. But, following the Court of Justice’s March Opinion (1/09), which gave guidance as to the compatibility of proposals, they started to gain momentum. With only a few months before the end of Polish Presidency, the legislative momentum by European ministers in Brussels began in earnest. However, despite the years that the European patent community had been pleading for a unified system in order to provide a streamlined, user-friendly and cost-effective system for patentees and users alike, all was not well. The proposals had been rushed through and industry concerns and unanimous resolutions from European judges regarding the proposals had been wholly ignored by European legislators to the detriment of the proposed system which would (and will) end up being more expensive, more unwieldy, and less user-friendly than the current system. With the German and UK discord over the location of the Central Division of the proposed court, many were and are still hopeful that the resulting delay in finalizing the proposals (Draft Agreement and Proposed Regulation) would enable European Member States' national legislatures time to address the concerns of the patent community before the European Parliament’s February plenary session. Without a final determination on the proposals or agreement on the location of the Central Division (between Paris, London, Munich and now Italy it seems), the saga has not ended and is set to be one of 2012’s top stories, and if all is agreed next year, one of the top stories of the decade.
Are EU ministers driving us towards a pan-European patent disaster? (published on 5 December 2011) (here and recent update and recap of all stories here)
4. Christian Louboutin v Yves Saint Laurent
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| Louboutin's red sole (left), Yves Saint Laurent's shoe(right), the AmeriKat's shoe rack (sadly, nowhere) |
The AmeriKat has not met anyone who does not love to debate the story at number 4 –apparently IP lawyers love high-fashion footwear. In April, Christian Louboutin – famous for his signature and US trade marked red- lacquered soled high end women’s footwear – sued one of its high-end competitors, Yves Saint Laurent for trade mark infringement. YSL sold a completely red shoe as part of its Tribute, Tribtoo, Palais and Woodstock models which, being an all-red shoe, also included a red sole. In an entertaining decision from District Judge Marrero, the judge denied Louboutin’s request for an injunction preventing YSL’s sale of the shoe. The judge held that a single colour such as the “colour red” without limitation was too broad and inconsistent with the trade mark registration system established by the Lanham Act. Judge Marrero’s decision caused an uproar in the fashion and trade mark practitioner communities, inciting an expected appeal from Louboutin as well as amicus briefs from INTA (amicus brief here) and Tiffany (amicus brief here). The briefs argued that the judge’s blanket rule that use of a single color on any “fashion item” was not protectable was not supported by previous caselaw and would create a dangerous precedent for the fashion industry even in cases where a single colour has acquired secondary meaning, such as is argued in respect of Louboutin’s red soles. Each party’s respective commercial interests demand that they continue fighting – YSL will not limit their future collections by agreeing to never using monochrome red shoes, nor will Louboutin wish to leave the litigation with a critical court decision in respect of their trade mark registration hanging over their heads. Unless there is a creative “leave our trade mark alone and both sides quietly walk away” type settlement, the battle of the soles is set to be one of the top stories of 2012. In December, YSL responded to Louboutin’s appeal and oral argument in the case is excitedly scheduled a day before Burns' Night on 24 January.
Lououtin sees red with Yves Saint Laurent (published 10 April 2011) (here)
3. L’Oreal v eBay
All-in-all, the CJEU’s decision appeared to be bad news for eBay. However, the IPKat noted at the time that it did not think that the case would result in an avalanche of litigation against eBay. The mere risk of litigation itself and the costly exercises of avoiding “active role” type services that trigger liability where counterfeit users are concerned, while not alienating its non-infringing users who use such services, may be the true cost of the decision (the age-old internet liability dance of "not knowing about infringement without being wilfully blind to the infringement, see one of the US's top stories in the Viacom and YouTube case here). The Court’s ruling has yet to be applied by Mr Justice Arnold.
2. The BBC and the public interest defence to copyright infringement
The BBC’s press release seemed to introduce a new quasi-public interest defence for copyright law and avoided mentioning s.30(2) Copyright Patents and Designs Act (CDPA). The AmeriKat believes there is a certain amount of sympathy to be had for the BBC’s position in instances where the reporting of breaking news events does not permit time for the required permission/attribution undertakings. Nevertheless, the position under UK law is clear. The story again highlighted the relatively new difficulty encountered by owners and users of intellectual property on social media platforms, but reinforced the centuries-old legal difficulty that lies in the intersection between copyright law and freedom of speech.
Hey dude, that’s my photo! Social media, copyright and ‘public interest’ (published 25 August 2011) (here)
1. The bad-faith bandit from Banja Luka
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| Banja Luka |
It was perhaps not the most ground-breaking news story of 2011 but it is a story which resonates with all trade mark owners and, although not unique, highlights the daily uphill battle brand-owners can face when protecting and enforcing their trade marks on a territory-by-territory basis.
The bad-faith bandit from Banja Luka (published 31 January 2011) (here)
Top Readers of 2011
1. The European Patent Office
2. UK’s Intellectual Office
3. The Office for Harmonisation in the Internal Market (OHIM)
And where did our readers come from? It will be of no surprise that readers from the United Kingdom were in first place at 210,000 unique viewers with us Americans following behind in second-place with 80,000 viewers. The leader board ended up looking like this:
1. United Kingdom
2. United States
3. Germany
4. Netherlands
5. India
6. Australia
7. Canada
8. Turkey
9. France
10. Belgium
The AmeriKat has to note there were also some surprising hits from the Solomon Islands, Saint Pierre and Iquelon and Vanautu.
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| The Solomon Islands - location of the next IPKat retreat? |
