Your AI overlords demand to be recognized...

Oh, inventorship and AI. As much as Crispr has been preoccupying the IP agendas of IP conferences the last couple of years, inventorship and AI looks to be taking its place. The IPKat has also been a fan of the topic (see Kat posts here). For the AmeriKat's part, she thinks that, for the time-being, AI inventorship is (for the most part) a non-event, but not everyone agrees.  Indeed some issue warnings about not recognizing the role of AI in inventorship.

"Last week the European Patent Office stated that an inventor must be a ‘natural person’. This provides the basis for the EPO’s decision in December to reject two patent applications which had named the artificially intelligent system Dabus as the sole inventor. The patent applications were made by Dr Thaler’s team at Surrey University and described a flashing beacon light and plastic food container.

Dr Thaler’s failed ‘AI inventor’ applications have raised an important question - can AI be inventive? However, in this article, I shall not dwell on the specific merits of Dr Thaler’s applications but instead focus on Google DeepMind’s artificially intelligent system AlphaGo.

In 2016, AlphaGo was capable of reading and understanding the prior art of the game Go, finding novel and inventive solutions to defeat its opponent Lee Sedol (the world champion) 4 games to 5 and effectively communicating that solution to Aja Haung, the DeepMind team member who placed stones on AlphaGo’s behalf. However, the technology behind AlphaGo is not limited to board games, it also extends to sectors with patentable subject matter such as telecommunications and pharmaceuticals.

This article argues that AI can be inventive, that AI differs from other platform technologies and for the sake of transparency, AI inventorship should be recognised.

AlphaGo

In 1997, Garry Kasparov became the first chess world champion to lose a match to a computer which had been programmed by expert chess players. In 2016, Lee Sedol became the first Go world champion to lose to a computer that had taught itself - AlphaGo.

Prior to Sedol’s defeat it was thought that humans would retain the upper hand in Go because in any one position there are 200 possible moves, whilst in chess there are 20. To put this into perspective the number of possible configurations of a Go board is greater than the number of atoms in the universe. In fact, even if you took all the computers in the world and ran them for a million years, this would still not be enough computing power to calculate all the possible variations. Therefore, AlphaGo cannot simply compute every possible move, it must rely on something else – intuition.

In the second game AlphaGo made Move 37 and gave us a glimpse of a future shaped by computer intuition and inventiveness. However, Move 37 appeared at first to be a mistake because no competent human player would have made it. In fact, AlphaGo knew that there was only a 1 in 10,000 chance a human would have made Move 37, yet despite this, it ignored the games received wisdom or prior art and made an inventive move.

Post-match analysis concluded that Move 37 was the pivot on which the game had turned in AlphaGo’s favour. Lee Sedol later described it as a “really creative and beautiful” move. The lessons that AlphaGo has taught and continues to teach human Go players amounts to an improvement in the game’s prior art and if Move 37 were patentable, it would be an inventive step.

How AI differs from other platform technologies e.g. mouse models

Aja Haung was the DeepMind team member who placed stones on the Go board for AlphaGo in its victory over Lee Sedol. However, it is unreasonable to suggest that Haung was the creative mind behind Move 37 because at no point did he exercise choice. Move 37 would have occurred irrespective of whether it was Haung or this author placing the stones.

Mouse models on the other hand still require scientists to exercise choice either when selecting the antigenic challenge or in determining which antibody therapeutics may be suitable for use in humans. The scientist in making these choices must rely on their experience and intelligence, which is why the scientist rather than the mouse is the named inventor. A useful antibody therapeutic would not exist irrespective of whether a scientist skilled in the art or this author were conducting the experiment.

I have used AlphaGo as an example because the human operator is an automaton but mouse models do pose an interesting problem; namely making a choice based on a menu of limited options does not appear particularly inventive. Is there a difference between a mouse model and an artificially intelligent system that still requires the human operator to exercise choice?

The difference is that the immune system of a mouse is static, in that it does not get better over time at identifying antibody therapeutics for use in humans. Artificially intelligent systems on the other hand are dynamic in that over time they do get better at their given task. For example, DeepMind went onto develop AlphaGo Zero in 2017, which with no prior knowledge of the game Go and only the basic rules as an input had at three days surpassed the abilities of AlphaGo Lee, the version discussed above. It had achieved this entirely from self-play, without human intervention or historical data. In just a few weeks AlphaGo Zero had accumulated thousands of years of human knowledge but it had also discovered new knowledge. It developed unconventional strategies and creative new moves that echoed and surpassed Move 37. Mouse models will always require an intelligent human scientist but artificially intelligent systems will over time make their human operators increasingly redundant. How will we know when humans have become redundant in the inventive process if an AI cannot be named as an inventor?

Furthermore, Google recently announced that its Sycamore quantum processor had performed a specific task in 200 seconds that would have taken the world’s best supercomputer 10,000 years to complete. One of the major applications of quantum computing is in artificial intelligence and if successfully applied will make AlphaGo Zero appear prehistoric in comparison.

The dual purpose of patents - ownership and transparency

In return for the grant of a twenty-year monopoly society demands transparency from the owners of patents. But in denying the existence of ‘AI inventors’ society risks losing this transparency because it encourages human inventors to either down play the extent of AI assistance in a patent application or alternatively to rely on trade secrets. In either scenario transparency is lost but does this matter?

The creative outputs of both Aja Haung and AlphaGo are owned by Google but that ownership should not make it irrelevant which of the two’s creativity was responsible for defeating Lee Sedol. Without the legal fiction of AI inventorship we are headed for a society in which Aja Haung became the Go world champion in 2016. "

The IPO in Wales - the new epicentre for IP lobbying after Brexit?

The AmeriKat has been having a blissful few weeks away from the UK and the Brexit nightmare.  Her head has instead been filled with palm trees, ocean waves and beautiful Pacific blue skies.  That was until she looked at her email yesterday with news from the UK Intellectual Property Office alerting her to new guidance entitled "Intellectual Property and the Transition Period".

Tomorrow is Brexit Day.  What does that mean for IP lawyers?  It means that after tomorrow we will be in what is called the "the transition period".  The period starts as of 1 February 2020 and will end on 31 December 2020.  The UK will remain in both the EU customs union and the single market, and, for IP, business will continue as normal, e.g., the UK will remain part of the EU trade mark, registered and unregistered Community design systems.

As the Guidance states:

"There will be no disruption to IPO services or changes to the UK IP system during this transition period. The IPO will convert almost 1.4 million EU trade marks and 700,000 EU designs to comparable UK rights at the end of the transition period. These will come into effect on 1 January 2021. 

The arrangements in the IP section of the Withdrawal Agreement take effect at the end of the transition period. These arrangements provide legal certainty and protect the interests of rightsholders and users of the IP framework. 

The Withdrawal Agreement ensures continued protection of existing EU-level IP rights in the UK after the end of the transition period. 

This will ensure existing UK IP rights can be managed appropriately in line with existing domestic arrangements."

The AmeriKat peering into 2020 and what this year's patent cases will hold...

While the AmeriKat was coughing herself across the Atlantic home for Christmas, other IP lawyers were making their ways across London's twinkle light illuminated pavements to AIPPI's annual Patent Round-Up held at Hogan Lovells' London office.  The AmeriKat turned to friend Joost Duijm (Hogan Lovells) to sum up proceedings for IPKat readers.

Over to Joost: 

An election is not what the AmeriKat ordered...

Next Thursday is Thanksgiving.  It is one of the AmeriKat's favorite holidays:  no gifts, no pressure, just food and friends.  Although she seldom gets to go home to celebrate it, she makes a point of marking the day.  Last year she was eating burgers with her make-shift family in London while making them take it in turns to say what they were thankful - something that is generally excruciating for non-Americans while devouring french fries and milkshakes.

As a nation, and despite the ravages of the Brexit saga, there is a lot to be thankful for in the UK.  Top of that list is the NHS.  Before the arrival of Obamacare, making choices of whether to pay the rent or pay for life saving medicine was a daily reality for many Americans.  Despite improvements, those battles still continue in the US.  But thanks to the NHS, that impossible question - so far - is not one most in the UK have had to answer.   Free and open access to healthcare is crucial for the prosperity of a nation.  But such services come at a cost.  The NHS functions because the tax payers and the Government pay for it - the people, the equipment, the drugs all cost money. 

Earlier this year the US Congressional hearings into drug prices in the US hit the headlines.  It was only a matter of time before the debate reached the UK.  Now more than ever, the upcoming UK election is politicizing the NHS, patents and the price of drugs.   Drug prices and the patent system, rather than choices by the UK Government on NHS funding, seem to be in the firing line.  In September, the UK Labour Party leader, Jeremy Corbyn, stated:

“We will tell the drugs companies that if they want public research funding, then they will have to make their drugs affordable for all.”

In then launching their Medicines for Many document, the Labour Party pledges to break up the monopolies.  In the document, shots are fired at the pharmaceutical industry and the Labour Party's take on the patent system in a call-out box entitled "Patents and their impact on drug prices" (page 9) which reads:

"This granting of market exclusivity is the largest public subsidy to the pharmaceutical industry.  It means that companies are often paid many times above the costs of production and should  be incentivised to undertake further innovation. For example, rather than the NHS paying  for medicines near the cost of production, as would be the case in a competitive market, the  granting of a monopoly allows the industry to keep prices artificially high for the duration of the monopoly. In reality patents provide excessive financial rewards to patent holders – a recent WHO report found that for new cancer medicines using the highest R&D cost estimates it took an average of five years for companies to completely recoup risk-adjusted R&D outlays, and the high prices set by companies present significant patient access barriers.

Furthermore, pharmaceutical companies frequently seek to extend patent terms beyond the minimum 20 years, a practice known as ‘evergreening’.  They have also aggressively lobbied for TRIPS-plus provisions in bilateral and regional trade agreements as a means of strengthening monopolies beyond what is required in the TRIPS agreement."

Amongst numerous proposals, the Labour Party proposes to:

1. Resurrect compulsory licensing provisions or issue crown use licences when the "NHS isn't being offered an affordable price for medicine" (see page 21)
2. Issue stricter conditions on government funding of R&D contracts, i.e. by mandating "open licensing" or patent pools (see page 26) 
3. Retool the incentivization model via delinkage (see page 27)
4. Create  "democratically owned pharmaceutical companies"(see page 33)
5. Enact legislation to "fully open up pharmaceutical lobbying to scrutiny" (see page 33).  

On the other side of the political spectrum, a report by the NHS Confederation (which represents most hospital trusts in England) entitled "The NHS and future free trade agreements" states that the NHS and patients will be faced with billions more to pay for drugs.  This would be the price of a post-Brexit trade deal between Boris Johnson and Donald Trump.  The NHS Confederation's report states on page 9 that:

"The USA objectives seek provisions on protection of intellectual property rights that reflect current USA legal standards, which are generally more favourable to rights holders than EU standards.  Longer patents, extended data exclusivity rights and stringent enforcement measures against perceived infringements would favour companies who develop and market branded medicines.  This could delay patient access to cheaper generic medicines, with knock-on impacts (supply and cost pressures) for health and social care services. 

The WTO TRIPS (trade-related aspects of IPR) agreement allowing (in certain circumstances) generic versions of medicines still under patent can be obstructed by clauses in FTAs restricting the use of TRIPS flexibilities to emergencies only, affecting patient/health system access to cheaper generic medicines. "

So what happens next? Cue next Wednesday's UCL IBIL Innovation debate where experts  - who understand the patent system, innovator and generic business models, drug pricing, cost of drug discovery and public health systems - will explore these very issues.  The IBIL event's blurb explains: 

"How do we devise a suitable incentive scheme for the development of new pharmaceuticals and innovative health treatments? Traditionally, this has been the role of the patent system, but increasingly, claims are made that this focusses R&D efforts in the direction of greatest profits, rather than towards those areas of greatest public need. Patents – it is said – encourage the antithesis of open, collaborative research and render many new drugs unaffordable despite rising patient need.

While some advocate patent pools to ensure access to essential medicines or proffer prizes as a partial solution, others propose a Health Impact Fund. The topic looks likely to be a live issue in the forthcoming election. In September, UK Labour Party leader, Jeremy Corbyn asserted “We will tell the drugs companies that if they want public research funding, then they will have to make their drugs affordable for all.” Launching its ‘Medicines for the Many' policy document, the party pledges to ‘break patents’ by dusting off compulsory licensing provisions and making the very latest drugs available on the NHS via a public-owned generics company. Meanwhile, a recent report by the NHS Confederation suggests that the real price of Boris Johnson’s much touted post-Brexit trade deal with the USA is £billions on nation’s drugs bill. 

In its annual Innovation Lecture, UCL's Institute of Brand and Innovation Law has brought together a distinguished panel to identify the problems of the current patent-based system and to investigate whether open innovation is the potential solution. Join us to share your views and help us to shape the debate!"

The UCL IBIL debate will be chaired by Mr Justice Birss, with speakers including Dr Galit Gonen-Cohen (Head of Intellectual Property Law at Novartis, former VP and General Counsel, Europe, Teva), Professor Matthew Todd (Professor of Drug Discovery at UCL School of Pharmacy) and
Professor Adrian Towse (Visiting Professor at the London School of Economics and Director Emeritus of the Office of Health Economics of Oxford University).   Kick off is at 6PM in the freshly refurbished UCL Faculty of Laws. 

It is going to be an incredible event.  To register to attend, click here. 

State of Patent Law Panel at the JMLS 63rd IP Conference

The GeordieKat gets a scratch from IPEC as the small claims track comes to town

We are in full election campaigning mode here in the UK.  At the start of campaigning last week the main political parties's messaging was consistent on one thing - a renewed focus on the North (read pretty much anything further north than Luton).  So it was fitting (but completely unrelated) that this afternoon the announcement  that IPEC claims can now be issued and heard across England and Wales - not just London - landed into the AmeriKat's inbox.

According to the announcement:

"From last month, claims in the small claims track (SCT) of the IPEC can be issued and heard across England and Wales in the Business and Property Courts (B&PCs) in Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle, as well as in the Central London County Court in London.

Background
The IPEC is a specialist list in the High Court and one of the courts in the Intellectual Property List in the B&PCs. It provides a streamlined and cheaper way of resolving lower value and less complex intellectual property claims for businesses and individuals. Its small claims track hears the most straightforward intellectual property cases, where less than £10,000 is claimed. Its focus is mainly on claims relating to copyright, designs, passing off and trademarks. The hearings in the small claims track are short and informal, the parties are frequently unrepresented and the loser seldom has to pay the winner’s costs.

While its procedure is based on the usual small claims track rules, IPEC small claims disputes concern not only damages but also non-pecuniary remedies, such as a final injunction or a declaration of non-infringement (though applications for an interim injunction cannot be heard in the IPEC small claims track).


The Guide to the IPEC Small Claims Track is currently being updated to reflect these changes."

Thank you to Mr Justice Birss and the Chancellor of the High Court Judicial Office for alerting the Kat to this welcomed development in improving access to cost efficient IP dispute resolution to the rest of England & Wales.

A view from the Mary Quant exhibition at the V&A

On Monday evening, the Victoria & Albert Museum saw over two-thousand attendees pour through its marble and tiled halls for AIPPI's Cultural Evening.  IP lawyers from across the world enjoyed access to the V&A's incredible temporary and permanent exhibitions including the epitome of London fashion for modern women - Mary Quant - and one of the AmeriKat's favorite fashion photographers - Tim Walker.  With the courtyard lit up in the London logo colors and live music playing in the grand lobby and echoing through the Cast Court, the cultural evening was immersed in IP.  Hans Eriksson (Westerberg & Partners) reports on sessions from the next day, Day 2, where debate on Brexit, fashion and customs enforcement continued.

Over to Hans:

"Following Monday’s cultural evening at the Victoria and Albert Museum, spent hobnobbing with the IP glitterati while celebrating all things British (cask ale, football, marmite etc.), it was a sobering wake-up call that the first panel the following morning was on the timely issue of Brexit & IP: an update.

Moderating the panel of government, industry and private practice participants was Daniel Lim, Kirkland Ellis. Himself a Malaysian-born Aussie working in the UK for a US firm, the moderator exemplified the global scope of the panel and the international interest in the Brexit issue. Daniel gave the early morning capacity crowd a quick update on the Brexit state of play, distinguishing between political uncertainty (playing out just a stones’ throw away from the conference center on the steps of the Supreme Court) and legal uncertainty, which was the topic for the morning’s discussion before handing it over to the panellists.

Adam Williams, Director of International Policy at the UK IPO, reiterated that the UK IPO will make certain that the UK remains a world class IP environment after Brexit, no matter the manner of the adieu. He described the organization’s outreach to UK companies and especially SME’s, its publication of technical notices and laser-like focus on mitigating the effects of a no deal scenario. He completed a spirited run-through of the different IP rights and how they may be affected by Brexit, the current state of the Unified Patent Court, exhaustion and enforcement in record time. A crowd question from what was apparently no less than a member of the House of Lords reminded us of the political charge of the Brexit debate (and enabled this foreigner to check off meeting a Lord from his London Visit To-Do List).

The next speaker was Ewan Nettleton, Senior Patent Counsel at Novartis. Ewan described the regulatory challenges and opportunities facing the pharma industry post-Brexit, focusing in particular on the SPC regime, paediatric rewards and regulatory exclusivities. He set out the small but potentially important differences in the regimes as currently understood through a football metaphor, using a picture of the brave Swedish national team (but curiously not this one) and discussed what these differences portend for the industry. The takeaway being that more works need to be done insuring the smooth functioning of the pharma market.

Aurélia Marie, Cabinet Beau de Loménie, followed with a practical view of steps to be taken in the world of soft IP following Brexit, focusing on the comparability of the new UK rights to the EU rights, renewals, recordals and deadlines. In order to prepare for Brexit in whatever form it comes, Aurélia emphasized the importance of working holistically with right holders to review portfolios and commercial agreements in order to protect, manage and maintain rights. Particular care should be given to pending trade mark or design actions before the EUIPO.

The panellists, joined by industry members Bin Sun, Chief Legal Officer at Xiaomi, and Joost Van Ooijen, Director of Intellectual Property at AkzoNobel, proceeded to discuss the broader implications of Brexit for various industries. Striking a cautiously optimistic tone, the panellists agreed on the importance for rights holders to prepare for Brexit now.

The theme of the second panel of the day dovetailed nicely with the Brexit discussion. Seize the Day – customs & border control was moderated by Manon Rieger-Jansen, Bird & Bird, who set the stage by describing the ubiquitousness of counterfeits in 2019 and the global scope of the problem.

Matthew C Wagner, General Counsel PDC Brands, gave the US view. Matthew discussed the different ways US right holders can interact with the US Customs and Border Patrol in order to help the CPB detect, deter and disrupt counterfeiting. He emphasized how rights holders were not yet utilizing important tools like the CPB’s e-Recordation program for trade marks and copyrights enough. On a human level, getting to know your local CPB office and officers and educate them on counterfeits in your field also streamlines the process and enables rights holders to act quickly and forcefully against infringers. On the strategic level, the practice of defensive trademark registrations was also discussed.

The second speaker was Wolf Meier-Ewert, Counsellor IP Division at the WTO. Wolf talked about the WTO’s view of enforcement, based on the TRIPS Agreement. He discussed the current and past work of the TRIPS Council, including a description of pending consultations as well as other current measures being taken at the supranational level.

Turning from the supranational to the local, Jordi Güell, Güell IP, shared some customs enforcement tips and tricks from a Spanish private practice perspective. Jordi emphasized the need for lawyers to be responsive when a customs matters arises for a client, as well as proactive in the creation of product dossiers and other information to customs authorities in order to help them help you. He described the challenge of clients’ budget and time constraints in battling counterfeits and need for local representation in the jurisdictions where counterfeits pop up like daisies.

The best dressed panel of the day was unquestionably the IP in fashion: iconic products, influencers, greenwashing and design lifecycles lunch panel. Moderated by Karen Abraham, Head of IP at Shearn Delemore & Co, the panel discussed the challenges facing the legal function in an international environment with global supply chains.

James Sweeting, Head of Legal at Superdry Plc, pointed out the importance of integrating the legal function as early as possible in product development and to liaise with creatives in order to enable legal to not be viewed as always saying “no” but rather “yes, if…” He also emphasized the necessity of an all-encompassing IP approach in the fashion industry and exemplified it by the nano technology (not the Mork & Mindy one, but arguably equally futuristic) being used in the company’s Indian manufacturing plant.

Rory O’Hare, Senior Counsel at New Balance even mentioned blockchain technology being used by New Balance to trace and verify the authenticity of some severely limited edition sneakers (face it, you don’t understand young people anymore).

To the express delight of the assembled flock of IP lawyers (or is it a “conspiracy” of IP lawyers, as per Sir Robin Jacob’s keynote speech?), Catrin Turner, Head of Global IP at Dr Martens, emphasized the importance of external legal counsel input early on in the planning stages of product development, in order to follow the often tight deadlines imposed by the fashion market. She also mentioned the necessity of strategic thinking in choosing which IP rights to protect, timing issues, disclosure and registration and even trying to understand the driving force behind competitors or counterfeiters in order to proactively block such challenges with a firm steel capped boot."

View from one of the Congress's conference rooms overlooking Westminster Abbey

Having benefited from a beautiful opening weekend, it was only fitting that the rain came on Monday to give AIPPI Congress attendees a taste of "real life" in London.  During the afternoon, as rain speckled against the windows of the Queen Elizabeth II Conference, attendees spilled into top floor conference rooms to learn about the latest in trade secret protection. 

Readers will have not missed that last week London hosted the AIPPI Congress in the politically charged climes of Westminster.  The AmeriKat was frantically pouncing from one event to another, all while moving house.  Thus the IPKat was unusually quiet during this Congress.  But now that the dust (literal and mental) has somewhat settled, she brings reports from a team of guest AIPPI reporters.  The first of which comes from Sarah Blair (formerly of Bristows, but now off to Bermuda where she will continue practising IP - good luck Sarah!).

Over to Sarah for the first session from Day 1:

"Four distinguished panellists were welcomed by a packed room of attendees for the first panel session of AIPPI London 2019 to discuss the role of copyright in the protection and exploitation of art and architecture.

Works of visual art in the public domain

The session kicked off with a discussion of article 14 of the new (and controversial) copyright DSM Directive (2019/790) in relation to works of visual art in the public domain. Article 14 provides that:

“Member states shall provide that, when the term of protection of a work of visual art has expired, any material resulting from an act of reproduction of that work is not subject to copyright or related rights, unless the material resulting from that act of reproduction is original in the sense that it is the author’s own intellectual creation”.

For example, when the copyright in a painting has expired, copyright will not subsist in a photograph of that work unless that photograph itself satisfies the originality criteria.

Eleonora Rosati (academic and an Of Counsel at Bird & Bird, UK) commented that this article was a surprise to the copyright and museum industry, having not been included in the initial proposal for the directive back in 2016. Museums who provide a ‘©’ symbol with digital reproductions of works in their exhibitions will need to reconsider this practice. However, Eleonora rightly pointed out that this is not a new right per se – but arguably only clarifies existing law: to have copyright (or related right) protection in a work, it must be original. Eleonora recalled the CJEU decision in Painer (C-145/10) which discusses originality in photographs being the creative choices of the photographer as to e.g. framing, lighting, angle, atmosphere and post production changes. Dale Nelson (Donaldson + Callif LLP, US), who was moderating the panel, noted that the US generally accepts that photographs are subject to copyright protection.

Christian Zimmerman (chief operating officer, DACS, UK) noted that Article 14 may impact on UK law given that Article 14 specifically refers to the “author’s own intellectual creation” in contrast to the UK’s “skill, labour and judgment” test for originality. However, this might be of limited impact given that the UK courts have already begun incorporating the EU’s test in recent decisions, for example in the Red Bus case.

Christian reflected on the museum industry, which to date often rely on its terms and conditions of entry to prevent visitors from taking photographs of its exhibited works. However, following legal changes in 2014, an override clause meant that such a term could no longer be imposed. Museums are ever developing new media opportunities, some museums even curating ‘Instagram exhibitions’ and working with influencers for increased publicity. They may well still try to prevent recirculation of their photographs by way of watermarking their images or restricting the ‘right-click’ to copy the image.

Freedom of panorama

Next up for discussion was the exception for the ‘right of panorama’ found in Article 5(3)(h) of the InfoSoc Directive. This is a non-mandatory exception for the “use of works, such as architecture or sculpture, made to be located permanently in public places”.

Thomas Koch (Judge, German Federal Supreme Court) referred to the German Bundesgerichtshof’s (‘BGH’) decision in “AIDA Kissmouth” [decision in German only] (IPKat reported here). In that case, the upload of a photograph of a cruise liner which was externally decorated with copyright-protected artworks was exempt from infringement for falling within the panorama exception which had been implemented into German law. The trickier aspects of this decision concerned whether the cruise liner could properly be considered to be located permanently in public places given that it traversed the world and would occasionally be in private and public locations. The BGH decided that the work needn’t be stationary and that it is sufficient for the work to be accessible (in this case, seen and photographed) from a public place even if the protected work was situated in a private location.

Eleonora pointed out that, of those that have chosen to implement this exception, there are significant variances between the different Member States’ national transposition of it. For example, in France the exception doesn’t extend to commercial use (so the AIDA Kissmouth decision would have been decided differently there, having been photographed and used by an operator of excursions and cruises in Egypt). In the UK, it is significantly restricted by having been literally transposed and being restricted to only buildings, sculptures, models for buildings and works of artistic craftsmanship. Christian expanded on the UK position, pointing out that, for example, taking a photograph of Banksy street art would not be covered by the exception as it does not extend to graphic works. Without a personal fair use exception, individuals in the UK would be infringing Banksy’s copyright. The public also fall prey to infringement when they photograph works publicly displaced on a temporary basis – for example, sculptures displayed on the plinths in Trafalgar Square on a 5 year basis. Interpreted strictly, these aren’t “permanent” displays. The panellists agreed that clarification and harmonisation from the CJEU would be helpful in this area.

Destruction of works

Last up was a discussion was another, recent, decision of the BGH in relation to authors’ moral rights and the destruction of their work. Thomas explained that the case concerned an artist’s installation of an artwork (called “HHole (for Mannheim) 2006”) across multiple levels of an art gallery. Many years later, the art gallery sought to (and did) remove the installation. The artist claimed that such destruction infringed her moral rights in the work and constituted derogatory treatment under section 14 of the German Copyright Act (here). It was held that, in weighing up the respective interests of the parties, the interests of the building’s owner – in regaining space for its exhibitions - prevailed. When conducting this exercise, important factors include whether there is only one copy of the work, the level of design in the work and whether it serves a special use.

Eleonora commented that moral rights in the UK are weak. Christian considered two other means to preserve artists’ works: 1) public pressure; and, 2) the use of contractual obligations for refurbishment and preservation. For example, when substantial renovations of the Tottenham Court Road underground station in London threatened the removal of Eduardo Paolozzi’s iconic mosaic designs installed there in 1986, there was a public outcry. As a result, TfL (Transport for London) underwent a significant restoration and conservation project and consequently retained 95% of the mosaics. "