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. "