It seems the world of IP has officially got back into the swing of things after the winter break, with new cases of 2020 starting to emerge that The IPKat is all too keen to keep you up-to-date with!  But, before we do that...

The IPKat is looking for IP enthusiasts to fill InternKat positions! InternKats are responsible for round up posts, Never Too Late posts, Around the IP Blogs posts, updating the events calendar, and providing monthly reports regarding statistics and analytics concerning The IPKat blog. InternKats are also invited to write independent posts on average once a month. The position will last 6 months and there are no geographical restrictions. However you will need to have your employer's permission to be a part of The IPKat team. (This InternKat hopes the next group of InternKats will enjoy the position as much as she has!) You can find further details on how to apply here.

Monday 13 January 2020 marked the first day of the CRISPR Board of Appeal hearing at the European Patent Office on the issue of priority, and GuestKat Rose Hughes provided excellent coverage in a collection of posts spanning the 4-day hearing. Before the day kicked off, Rose considered another controversial aspect of EPO case law, namely selection inventions. This preceded a full background to the CRISPR appeal case, set out in 'The Broad Institute's CRISPR patent appeal hearing: Day 1, Setting the Stage'. Day 2 and 3 of the hearing brought premature reports that the the Board of Appeal would be referring questions on priority to the Enlarged Board of Appeal (EBA), with Day 4 ultimately bringing the conclusion that Broad Institute's appeal would be dismissed, due to their patent being found to lack priority.

SpecialKat Chijioke Okorie examined the decision of the Constitutional Court of South Africa in Ascendis Animal Health (Pty) Limited v Merck Sharp Dohme Corporation and 2 Others [2019] ZACC 41, which ruled on the issue of whether a defendant who has unsuccessfully challenged the validity of a patent in revocation proceedings may be permitted to raise the issue of patent validity as a defence in infringement proceedings.

GuestKat Léon Dijkman looked at two important patent developments: from Germany, the proposed amendments to the German Patent Act; and from the Netherlands, new decisions in the Philips v ASUS/Wiko FRAND litigation in the Hague.

GuestKat Thomas Key looked into the decision of the Ninth Circuit of Appeals in Great Minds v Office Depot, regarding the interpretation of permitted, non-commercial activity under the Attribution Non Commercial 4.0 (CC BY-NC 4.0) licence.

GuestKat Peter Ling examined the decision of the CJEU in IT Development SAS v Free Mobile SAS (Case C-666/18), where the Court addressed the question of whether the Enforcement Directive (Directive 2004/48) and the Software Directive (Directive 2009/24) are applicable to cases in which the infringement of IP rights also constitute a breach of contract between the parties. The facts centred around the alleged modification of software in breach of a licensing agreement.

Readers who follow all things trade marks will be aware that every 6 months, The IPKat hosts a round-up of the most recent trade mark decisions as prepared by Darren Meale (former GuestKat) at Simmons & Simmons: Retromark. The IPKat is glad to say Retromark will be returning for its third year with another afternoon of trade mark law and practice on Tuesday 24 March 2020! The event will take place at Simmons' London office in Moorgate from 2pm to 7:30pm, and you can find further information here.

SpecialKat Chijioke Okorie reviewed '3D Printing and Intellectual Property' by Lucas S. Osborn. The book, which explains the technical aspects of 3D printing in plain language before going on to address how various aspects of IP laws (copyright, trade marks, patents and design law) confront the issues raised by 3D printing technology. 

The IPKat sent its congratulations to the two newly-minted QCs with appropriately silky IP skills: Andrew Norris (Hogarth Chambers) and James Segan (Blackstone Chambers)!

Never Too Late 248 [Week ending 12 Jan] IPKat Book of the Year Awards 2019 winners announced! | Never Too Late: if you missed The IPKat last week | Sale of second-hand goods not genuine use of Aiwa trade mark | AIPPI UK Event Report: Roundup of 2019's Patent Cases | Trademark infringement and Google PLA ads - Lessons from "Ortlieb"? | Sheeran v Chokri Part 2: Admission of similar fact evidence | New Year, Same Creative Authorship Requirement in US Copyright | Reader discount for IPKat book award titles! | Around the IP Blogs | TuneIn to the sound of communication to the public (Part 2) | TuneIn to the sound of communication to the public (Part 1) | Book Review: A Practitioner's Guide to European Patent Law by Paul England | [Guest Post] Remember the case of Ai Weiwei v Volkswagen? | Book Review: Positive Freedom and the Law | Book Review: Law of Remedies - A European Perspective | Trade mark functions, repairs and collective marks: Dutch Supreme Court to refer questions to CJEU

The Christmas and New Year holidays have passed. Do you still miss the cozy and happy season? Coming back to the office, you may find yourself busy planning your workload for the coming months. If you missed the IPKat posts last week, it is now time to catch up! Enjoy the following summaries.

Katfriend Joost Duijim kindly provided an event report, summing up the AIPPI UK’s Event: Roundup of 2019 Patent Cases, which took place in London on 18th December 2019.

Hayleigh Bosher reported on the most recent hearing in the Sheeran v. Chokri case, where Chokri claimed that Sheeran’s hit ‘Shape of You’ infringed his work ‘Oh my!’. The hearing took place in the High Court England and Wales before Mr Justice Nugee on 9th December 2019.

Hayleigh reported in two parts on the judgment of the High Court in TuneIn. The case was described by the court as “a test case” about infringement of copyright in sound recordings accessed via an online platform that connects users to radio stations around the world. In the first post, Hayleigh discussed the decision of Mr Justice Birss on infringement. In the second post, Hayleigh discussed the terms of injunctive relief and the scope of the inquiry as to damages and costs.

Thomas Key looked into two registration refusals by the US Copyright Office Review Board. Both of them concerned the attempted registration of layouts used in digital platforms. Both were refused due to lack of creative authorship, thus serving as reminders of the modicum, yet still material, requirement of “some creative authorship”.

In this guest contribution Hanne Kirk (and her team at Gorrissen Federspiel, Denmark) discussed the decision of the District Court of Glostrup in the Ai Weiwei v Volkswagen case, where a photo incorporating an artwork of Ai Weiwei was used in Volkswagen’s marketing campaign. This Danish court ruled in favour of Ai Weiwei.

Katfriend Markus Rouvinen shared his thoughts on the possible legal status of product listing ads (PLA’s) in light of the German Federal Court's decision in the Ortlieb case.

Hayleigh Bosher looked into the England and Wales High Court’s judgment in Aiwa Co. Ltd v Aiwa Corp. There, Mr Justice Mann held that, considering the facts of the case, the sale of second-hand goods was not a genuine use of the Aiwa trade mark.

Léon Dijkman examined the first IP ruling of the new decade by the Dutch Supreme Court in European Pallet Association EV v PHZ BV, which raises interesting questions regarding the interface between exhaustion, repairs and collective marks. The court additionally stated its intention to refer these questions to the CJEU after the parties to the dispute expressed their views on their wording.

The IPKat Book of the Year Awards 2019 were announced last week. A full list of nominations and winners can be found here.

Great for the readers! Following the announcement of the nominations and winners of the 2019 IPKat Book of the Year awards, Oxford University Press has kindly offered to provide IPKat readers with a discount on their titles that were included among the nominations and winners of the awards. More information can be found here.

Thomas Key reviewed Kim Treuger Bar-Am’s book ‘Positive Freedom and the Law’. Under Kantian philosophy and Jewish thought, this book seeks to explore the alternative concept of freedom as a duty of respect toward the autonomy of others. The author posits the notion that modern communication has transformed readers and users into subsequent authors, calling for a re-examination of copyright law through the lens of freedom as a duty of respect.

Peter Ling reviewed the book ‘A Practitioner’s Guide to European Patent Law’, edited by Paul England (with the assistance of Sara Burghart, Judith Krens and François Pochart). In only 350-odd pages, and in a manner that can be easily digested by practitioners, Paul provides, in his own words, at least a “tentative” answer to the various aspects of the question: What is genuinely European in European Patent Law?

Nedim Malovic reviewed the book 'Law of Remedies - A European Perspective' (edited by Franz Hofmann and Franziska Kurz). This book analyses different mechanisms of enforcement, the debate on private versus public enforcement, as well as the perspective of criminal law. 

Never Too Late 247 [Week ending 5 Jan] EU General Court assesses whether ‘cinkciarz’ is descriptive for banking and exchanging money services (spoiler alert: no, its not) | The first Spotify Awards and the role played by streaming services in access to digital content | Meghan Markle and Prince Harry seek to register “Sussex Royal” as a UK trade mark | How much trademark protection does a full name enjoy? | A Kat’s 2019 Copyright Awards | Until When Can Patent Claims Be Limited in Civil Proceedings? Swiss Federal Patent Court Relaxes Strict Practice | It’s nearly New Year’s Eve: Why “Tipsy” is such an undesirable mark | English High Court dismisses Babybel appeal on the 3D red wax-coating UK trade mark | [Guest Post] Everybody was kung fu fighting: Trade mark vs image rights - who will be the last one standing? | A Question of Priorities: 2019 Boards of Appeal Year in Review | The Year of the Pepper: 2019 Enlarged Board of Appeal Year in Review | Never Too Late: if you missed The IPKat last week | Tuesday Thingies | Paris Court of Appeal confirms that Koons’s ‘Naked’ sculpture infringes copyright in ‘Enfants’ photograph, rejecting freedom of the arts and parody defences

Never Too Late 246 [Week ending 22 Dec] Book Review: The Parody Exception in Copyright Law | Monday Miscellany | Hague Court of Appeal stays enforcement of patent injunction | Maradona successfully sues Dolce&Gabbana over unauthorised use of its name on a jersey | BREAKING: CJEU rules that the provision of ebooks is an act of communication to the public (so there is NO digital exhaustion under the InfoSoc Directive) | BREAKING: Court of Appeal frames Article 3(a) test as one of “claim requirement”, but still upholds Truvada SPC invalidity | Book Review: International Copyright | Never Too Late: if you missed the IPKat | Around the IP Blogs | Is “fake” a four-letter word; ask the rhinoceros | EU General Court considers sign referring to cannabis contrary to public policy | EPO refuses “AI inventor” applications in short order - AI Inventor team intend to appeal

Never Too Late 245 [Week ending 15 Dec] Proving the existence of confidentiality agreements and the celestial teapot - T 2037/18 | [Guest Post] Federal Court in Australia Grants Injunction Restraining Unlawful Use of Scotch Whisky | Supreme People’s Court of China releases white paper on Chinese courts and the Internet judiciary | Never Too Late: if you missed the IPKat last week | General Election 2019 - possible copyright infringement actually | The UK Government sheds light on the status of crypto assets and enforceability of smart contracts (Part I) | IPKat Book of the Year Awards 2019: Nominate your favourite IP Book of the Year! | WIPO Public Consultation on AI and IP | CJEU rules on genuine use of collective trade marks

The IPKat wishes you a nice new year ahead! At the same time, if you missed the IPKat posts during the festive season, it is now the time to catch up.

Eleonora Rosati wrote on the decision of the CJEU in the Tom Kabinet case (C-263/18). The CJEU ruled that there is NO such thing as 'digital exhaustion' of the right of distribution under Article 4 of the InfoSoc Directive. More specifically, the provision of e-books falls within the scope of the right of communication to the public, in respect of which there is no possibility of exhaustion.

Image rights

Eleonora also reported and commented on the decision of the Milan Court of First Instance in a dispute between Maradona, the famous former football player, and Dolce & Gabbana, the fashion house. The case concerned the unauthorised use of the name of Maradona on a jersey by D&G. The court found in favour of Maradona, awarding damages amounting to EUR 70,000.

Annsley Merelle Ward reported on the decision of the England and Wales Court of Appeal in Teva v Gilead. In the decision, the court dismissed Gilead's appeal and agreed with Mr Justice Arnold's decision in September 2018, which found that Gilead's SPC protecting its combination HIV anti-retroviral drug, Truvada, was invalid.

Léon Dijkman reported on the decision of the Court of Appeal of the Hague in HE Licences v VG Colours. The court stayed the enforcement of a patent decision under appeal where an injunction was granted. This decision is of interest in that it is exceptionally rare for Dutch courts to stay enforcement of decisions.

The EPO generally likes applicants to abide by the Articles and Rules of the EPC. Therefore, it is not surprising that the Receiving Section of the EPO refused the recent European patent applications designating an AI inventor for contravening the relevant EPO provisions. Rose Hughes examined this refusal, which followed a mere 16 minutes of deliberation at an EPO hearing in Munich.

Antonella Gentile reported on the judgment of the CJEU in C-143/19 P. The court ruled that there is 'genuine use' of a collective mark where the mark is used in accordance with its essential function, which is to distinguish the goods or services of members of the association from others which have another origin, in order to create or preserve an outlet for goods or services.

Nedim Malovic reported on a decision of the General Court earlier this month, which confirmed that a sign comprising and depicting cannabis and weed leaves is contrary to public policy. This decision confirms the general principle that signs are not registrable if they might be perceived as encouraging the purchase of illegal goods or trivialising their consumption.

Hayleigh Bosher reviewed the latest edition of 'International Copyright: Principles, Laws and Practice' by Paul Goldstein and P. Bernt Hugenholtz. This is a comprehensive guide to the internal rules, practices and principles of copyright around the world.

She also reviewed Sabine Jacques' book, 'The Parody Exception in Copyright Law'. This is the first book in English to provide an in-depth study of the parody exception, comparing five jurisdictions to understand the meaning and scope of the defence and finding a fair balance for rights and parodists by also considering moral rights and contract law.

Our IP instinct is to condemn "fakes", "deceptions", "knockoffs"and more as going over to the Dark Side - however, is this always true? Neil Wilkof discussed the recent scientific research which tries to imitate the rhinoceros horns. It is hoped that these forgeries will be able to cause the market for rhinoceros horns to be flooded with the fake product, thereby lowering their market priced reducing the incentive for poachers to hunt the rhinoceros.

Never Too Late 245 [Week ending 15 Dec] Proving the existence of confidentiality agreements and the celestial teapot - T 2037/18 | [Guest Post] Federal Court in Australia Grants Injunction Restraining Unlawful Use of Scotch Whisky | Supreme People's Court of China releases white paper on Chinese courts and the Internet judiciary | Never Too Late: if you missed The IPKat last week | General Election 2019 - possible copyright infringement, actually | The UK Government sheds light on the status of crypto assets and enforceability of smart contracts (Part I) | IPKat Book of the Year Awards 2019: Nominate your favourite IP Book of the year! | WIPO Public Consultation on AI and IP | CJEU rules on genuine use of collective trade marks

Never Too Late 244 [Week ending 8 Dec] Paris Court Grants Anti-Anti-Suit Injunction in IPCom v. Lenovo | Monday Miscellany | AG Bobek suggests broadening possibility to submit new arguments and evidence before General Court in trade mark opposition proceedings | Never Too Late: if you missed The IPKat last week | The implementation in France of the EU Directive relating to trade marks | Are too different whales conceptually identical? Fourth Board of Appeal finds likelihood of confusion despite some visual dissimilarities between marks | AG Campos advises CJEU to rule that Amazon might be potentially liable for trade mark infringement | Mandatory mediation in Greece: Odysseus reaches Ithaca | CJEU rules that "Aceto" and "Balsamico" are not individually protectable components of PGI "Aceto Balsamico di Modena" | In memoriam: D. C. Fontana, the creator of Mr. Spock from Star Trek | IP and the controversial "Hate Speech Bill" in Nigeria | TCL v Ericcson overturned on appeal in US; will go to jury trial | [Guest post] Conference report - More Than Just a Game came to Milan | [Guest Post] When you own an artwork, you don't own the copyright: Danish artist wins injunction against watchmakers planning to cut up painting