The V8 ute has been vacuumed and washed, and I'm now a has been too.
Time to go for a cruise with Benny, Gene and Darrell.
If they can stand my singing along that is.
It's such a nice day I think I will cruise with the windows down so that everyone else can hear me sing; and with the windows down it is easier for me to hear the young chicks applauding as I pass by.
The colour looks really great when the sun's out...
This sentiment has been translated to a new state law - the New Mexico Chile Advertising Act - that aims to protect New Mexico green chile and its heritage by preventing cheaper foreign peppers from countries such as Peru, China and Mexico being labelled as New Mexico-grown. Geographic indications, as protected under Article 22 of TRIPS, have been a source of contention for many food and beverage producers. In the UK we have seen issues of geographic indications arising in a line of extended passing off actions starting with the first "Champagne case" in 1961 and in Europe with Budweiser/Budějovický Budvar case. The same headaches faced in Europe are also faced by producers on the other side of the pond. Like champagne, which describes the grape but most importantly the region where the vines are grown and thus the geographical indication of the goods in question, the New Mexican chile pepper faces similar issues. There is no such thing as a "New Mexican" or "Hatch" chile pepper but instead the sign denotes the region where the peppers are grown. Just as the Champagne region's environment produces unique qualities in the growing and production of champagne, New Mexico's high altitude, long hot seasons, sunlight and cold desert nights produce the unique flavor that denotes the New Mexican chile pepper (picture, right - Hatch green chile).
Stephanie Walker of the Chile Pepper Institute told NPR that:
"As with other crops in other parts of the country - we all know about the Vidalia onion, we know about other crops that really have their brand identity in place. New Mexico has that, but it's never been protected the way other crops and other parts of the country has."
The US does not have such a robust quasi suis generis system for geographic origins/indications (of which was a matter of contention for the US in 2005 - see here). The protection instead takes the form of registered trade marks, collective marks or certification marks (compliant with TRIPS? a discussion for another time). The US's system uses the same procedural and administrative structures for geographical indications as it does for trade marks. Section 1054 of the Lanham Act provides that geographic names or signs which would otherwise be considered geographically descriptive, and thus unregisterable without showing acquired distinctiveness, can be registered as certification marks. Certification marks differ from trade marks because the owner of the certification mark does not use it - they only allow others who meet the certification standards to use it. Further, certification marks do not denote a source of commercial undertaking- they only identify that the nature and quality of the goods have met certain standards.
There are three types of certification marks: (1) regional or other origin; (2) methods, process or other characteristics of the goods/services; or (3) the work was performed by a member of a union or organization. For example, US Registration No. 571,798 for ROQUEFORT is used to denote that the cheese has been manufactured from sheep's milk and cured in the caves of Roquefort - thus fulfilling (1)and (2) of the categories of certification categories. Trade mark protection is also available under the normal rules - if NEW MEXICO CHILE has acquired a secondary meaning other than primarily denoting a geographic region then the sign is registrable. For example, if consumers see the mark NEW MEXICO CHILE and identify that the product was grown by the chile producers in New Mexico (and even specifically those in or around Hatch, NM) then the sign will have acquired a secondary meaning. Likewise, a collective trade mark could be registered on behalf of an association or "collective" such as the New Mexican Chile Association whose members in turn use it to identify their goods from non-members. US law has also protected geographic indications through common law trade mark law without need for a registration ( the "Cognac" case - Institut National Des Appellations v Brown-Forman Corp (TTAB 1998)).
Umesh Rajbhandari and I have documented the design of an Identity and Access Management (IAM) system that we successfully built for a large Australian corporation. We call our unique architectural approach "LIMA" (Lightweight/Low-cost/Loosely-coupled Identity Management Architecture).
The document describing LIMA is here.
Readers will no doubt be familiar with 'Take Five', a jazz piece written by Paul Desmond and performed by The Dave Brubeck Quartet on their 1959 album Time Out. It has been included in a number of movie and television soundtracks, and even today, some 52 years later, is still played on the radio. Upon his death in 1977, Desmond left the royalty rights to the American Red Cross.
Readers will no doubt be less familiar with classical music in Pakistan. The Pakistani movie industry all but died and the fate of classical music went into rapid decline. Until now. The Sachal Studios Orchestra in Lahore is making a comeback. Their first jazz album Sachal Jazz was released recently and the group's interpretation of 'Take Five' has received considerable attention. Indeed Dave Brubeck, original performer of 'Take Five', described The Sachal Studios Orchestra interpretation as 'the most interesting recording of it he has ever heard'.
The IPKat thinks that, so long as appropriate permissions have been obtained and the necessary attributions made, adaptations such as this one can only be a good thing for the creative process.
Merpel wonders what interpretation the Sachal Studios Orchestra might put on some Lady Gaga tunes ...
How about you? Your family??
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Bring your ID, you must return your old gas masks.
If you are picking up for someone else, you MUST have their teudat zehut.
Further info or to order home delivery + delivery charge,
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Pikud Ha'Oref, Do'ar Yisrael
Well I sat down to cut down my pieces after I used the quilt as you go method, my ruler was not placed correctly, or I didn't check, or my mind was elsewhere but I cut the cover half an inch too short.
Oh well can't dwell too long on things you can't control so I cut it all down to size and will complete it this coming weekend.
I have a few trips away over the next few weeks and I need to get it done, so my oPad is protected. When it is done I am going to having a slot for my diary and calendar o vey important tools I need for work.
Stay tuned.. Photos to come later on when I take them...
There are two things you might want to know about XKCD:
- Often you can let your mouse loiter over the cartoon to see the rollover-hover-alt-title text; it's a way of delivering the punchline after you've read the base material
- At times, XKCD's references are so arcane that there is room for help and interpretation, which leaves a niche for ExplainXKCD.com.
Randall Munroe is often quite funny, but at times the webcomic focuses on relationships, physics, or infographics that serve to explain complex topics. For instance, this chart presents the characters and plotlines of several popular stories on a time axis. (It helps to know that Primer is a recursive time-travel movie, major geek points for that.)
Last October, Randall Munroe's fiancée was diagnosed with stage III breast cancer and his work has occasionally referred to their experience. Yesterday's XKCD's infographic is a compelling depiction of the process of cancer, brutal in its frank exposition of odds and outcomes.
It's not funny. It is brilliant. You can find it here (it deserves to be seen in its own setting)
Q: When shopping online for a new
|Sooty didn't mind endorsing the|
product, but he did object to being
paid in cigarettes ...
"On 6 July two Bills were tabled in Australia’s House of Representatives: the Tobacco Plain Packaging Bill and the Trade Marks Amendment Bill. Coincidentally on the same day the UCL Law Faculty circulated a paper, “Implications of WTO law for plain packaging of tobacco products” (by Tania Voon and Andrew Mitchell) to those who hoped to attend the aborted event “'Tobacco or trademarks: Australia's plain packaging of cigarette products and the WTO”.
Closer to home ['home' is a relative term, but in this context it's Britain], the Department of Health is to launch a consultation by the end of this year on plain packaging, while the European Commission (DG Sanco), having already consulted on this subject last year, is due to publish its response early in 2012. The consultation is understood to have generated a substantial number of submissions covering IP. All this suggests the topic may be worth re-visiting for IPKat readers.
Whatever one’s view of tobacco products, these developments are of keen interest to those involved in brands and trade marks, raising questions on the lengths to which countries may go to regulate legal products but more particularly on the extent to which they can disrupt long-established, legitimate and immensely valuable trade marks.
The paper by Tania Voon and Andrew Mitchell addresses both the international trade and IP aspects of plain packaging, arguing that the proposal is consistent with TRIPS, the Technical Barriers to Trade (TBT) Agreement and GATT 1994, calling any challenge by tobacco companies under such agreements “a desperate last gasp” (having said that, Australia has notified its draft Bill to the WTO under the TBT agreement and a number of states have raised concerns over both the legality and the proportionality of the measure).
Leaving aside the trade arguments – which Voon and Mitchell dismiss and which are now the subject of a legal challenge by Philip Morris International (on the basis of Australia’s Bilateral Investment Treaty with Hong Kong) – it is the IP aspects which will be of particular interest and relevance to brand owners and IP practitioners. The Voon Mitchell paper sets out some of the IP areas where debate is likely to rage and it is worth looking in particular at two key ones:(1) Would plain packaging deny the registration of trade marks or invalidate existing trade marks contrary to international agreements? This is addressed by TRIPS (Article 2 and 15.4) and the Paris Convention (Article 6 quinquies). Voon and Mitchell argue that these provisions are not relevant as trade mark rights are negative rights, in that they prevent others from doing something (this reflects TRIPS Article 16). Plain packaging proposals would prevent use, not deny registration or invalidate rights. Neither TRIPS nor the Paris Convention provides a right to trade mark owners to use their rights. Where a Member State requires proof of use in order to validate a trade mark (like the UK), a trade mark owner can prevent invalidation by demonstrating a valid obstacle to use, which a plain packaging regulation would be.
The counter arguments are that trade mark rights are a bundle of rights (not just a negative right to exclude others) and that registration and use are inherently linked. In addition, the right of the trade mark owner to exclude others from using the mark implies that the use of the mark is reserved to its owner. The right to a trade mark that cannot be used is not a right in any legal sense. In countries where an application for registration depends on existing use or an intention to use, registration would be effectively impossible. Further, in such countries that require evidence of use, there is a positive obligation to use. It is also worth noting that the Paris Convention and TRIPS provide protection against invalidation and plain packaging amounts to an invalidation.
(2) Would plain packaging represent an unjustifiable encumbrance on a trade mark and therefore contrary to TRIPS (Article 20 requires that “The use of a trademark in the course of trade shall not be unjustifiably encumbered by special requirements….”)? Voon and Mitchell acknowledge that plain packaging is a special requirement that may be considered an encumbrance but claim this is justifiable on health grounds. Article 20 should be read in conjunction with Article 7 (protection and enforcement of IPRs being conducive to social and economic welfare), Article 8 (Members may adopt measures necessary to protect public health) and the Doha Declaration which re-affirmed Members’ rights to protect public health. Further, were a Member State to claim that Australia was in violation of Article 20, it would be down to that Member State to prove it.
The IPKat thinks this is a very useful summary of the lines of argument which we are most likely to be hearing when the debate in Europe takes place. Merpel wonders whether the legal arguments will indeed be weighed and balanced or whether, this being the real world, the result will be based on the fact that people who oppose smoking lobby harder to wipe it out than people who support it fight to preserve it.Controversy is likely to focus on whether plain packaging is justifiable. It is likely to be argued that an encumbrance can only be justified if it is necessary to protect public health. There is no convincing evidence that plain packaging will lead to a reduction in smoking, there are other less restrictive measures available and countries have reduced smoking without recourse to plain packaging. All this suggests that plain packaging is open to challenge whether the measure is justifiable, necessary and proportionate.There must be some relief in UK and European government circles that it is Australia experimenting with such regulation. There seems plenty to argue that plain packaging would amount to a denial of registration, effective invalidation and an unjustifiable encumbrance on trade marks. Bearing in mind the value of the trade marks at stake, we can expect these arguments to be made formally and forcefully".
Youth opportunity of the week. The IPKat is getting quite a few requests these days from young enthusiasts in search of that elusive first rung on the ladder of life in the IP field. This week's eager youngster is Simon Graham, who writes:
"I am a highly motivated postgraduate looking for an internship with a patent firm or in-house patent team ideally in the UK, Europe or America. Having gained the Master in the Management of Intellectual Property and the certificate in Intellectual Property Law from Queen Mary [for the benefit of first-time readers, the Kat explains that Queen Mary is the college, not the ship or even the pub], I am part qualified and currently studying for the UK Patent Practice (P2) exam.
My technical background is in life sciences and computing gained in the pharmaceutical industry with some experience of working in an IP environment.
Please contact email@example.com if you can help."Well, readers -- if you are interested, you know what you can do!
this eloquent piece on "10 essential points from Newzbin2". Graham's very discreet about which law firm he works for, but it has four wings and plenty of feathers. The jiplp weblog features a Current Intelligence piece by Kingsley Egbuonu and Chukwuyere Izuogu on the only case known to this Kat in which an injunction to restrain a patent infringement had repercussions for the conduct of a general election. PatLit's latest PCC Page investigates the often essential inconvenience of finding the right expert witness here.
|Want to impress your friends?|
Judicial fancy dress available
- The Queen has been pleased to approve the appointment of Robert Henry Thoroton Hildyard, Esq., Q.C., to be a Justice of the High Court with effect from 3 October 2011 on the elevation of Mr. Justice Lewison to the Court of Appeal.
- The Queen has been pleased to approve the appointment of Rabinder Singh, Esq., Q.C., to be a Justice of the High Court with effect from 3 October 2011 on the elevation of Mr. Justice Kitchin to the Court of Appeal.
Like any well-mannered feline, the Kat welcomes the new appointments, who appear well qualified for the bench, and wishes them the best of luck. He is however a little anxious since, to his great embarrassment, he hasn't heard of either of the new judges before and has a trifling suspicion that they're not main-line IP-ers. This leaves him wondering whether the vacancies in the Patents Court will be left empty, or filled by 'outsiders' (as has been done before, sometimes with notable success). Or maybe we'll be cutting down on those expensive High Court types and stocking up on cheap-and-cheerful Patents County Court judges instead, now that Judge Birss has made that court so popular. Does any reader know?
from the excellent DogHouse Diaries.
LG sued Sony for infringement of three Blu-Ray patents. In these proceedings LG applied for summary judgment in relation to Sony's defence that LG's patents were invalid in light of an item of alleged prior art. The earliest priority date for any of those patents was March 2003.
Sony's defence was based on invalidity, basing its position on a document on DVD specifications for read-only discs which was available to the public in 1997. According to LG, this 1997 document was not prior art that was capable of undermining its patents' novelty. The information in it was held by a standards body, the DVD Format/Logo Licensing Corporation, for the limited purpose of developing DVDs and related products. This document was only accessible by people who paid the required fee and signed a non-disclosure agreement. Accordingly it was not made available to the public.
Mr Justice Arnold refused the application for summary judgment. Among other reasons for doing so, he concluded that, even though he would accept LG's evidential submissions in support of confidentiality and the restriction of the use of the information in the 1997 document, a not-unrealistic possibility remained that Sony would be able to establish that all interested persons, who might want to manufacture under the standard, had an opportunity to gain knowledge of the contents of that document and to use that information for their own purposes.
Notes the IPKat: if a standard truly is a standard, everyone who wants to make any product that is governed by the standard has to make it in accordance with that standard -- or it wouldn't be standard. What's more, since we allow the setting of standards and don't stigmatise them automatically as being anticompetitive clubs where information concerning the standard is pooled between club members so that no-one else can make products that conform to the standard, it would be not just anti-competitive but positively churlish to refuse to provide details of a standard to anyone who asks. Now, what sort of people ask for details of standards? Obviously, anyone who is interested in making DVDs.
This case raises another important question: is information which is available in the public domain to be treated as confidential for the purposes of patent law by virtue of the fact that it's labelled "confidential"? The answer must be "no": though the information may not be available to the public free, what the public does have is a known source for the information which will be available to all on similar, justifiable terms as of right. In these circumstances, the purpose of the obligation of confidence is clearly only to ensure that a standards body is able to recover its own charges. That is quite different from an obligation of confidence designed to restrict the supply of information per se.
This case is not yet available on BAILII. Merpel keeps hearing dire rumours of cases which have recently been posted on BAILII and then have suddenly disappeared again, apparently for "copyright reasons". She fervently hopes that copyright is not about to come into conflict with the public's interest in gaining access to the law, including decided cases with precedental value by which that public is bound. If any readers have experienced this phenomenon, will they please let Merpel know.
Sting Ray here
Sugar Ray here
Catt Ray here
Researchers from Oxford University studied the eye sockets and brain capacity of 55 human skulls from 12 different populations across the world and found that the further human populations live from the equator, the bigger their brains.
It’s not because they are smarter, however, but because they need bigger vision areas in the brain to cope with the low light levels at high latitudes, the scientists said in a report of their findings in the journal Biology Letters.
“As you move away from the equator, there’s less and less light available, so humans have had to evolve bigger and bigger eyes,” said Eiluned Pearce from Oxford’s School of Anthropology, who led the study. “Their brains also need to be bigger to deal with the extra visual input.
“Having bigger brains doesn’t mean that higher latitude humans are smarter, it just means they need bigger brains to be able to see well where they live.”
The skulls used in the study dated back to the 1800s and included samples from indigenous populations of England, Australia, Canary Islands, China, France, India, Kenya, Micronesia, Scandinavia, Somalia, Uganda and the United States.
The researchers plotted the volume of the eye sockets and brain cavities against the latitude of the central point of each individual’s country of origin and found that the size of both the brain and the eyes could be directly linked to the latitude of the country.
Oxford’s Robin Dunbar, who also worked on the study, said the results showed the speed at which humans had evolved to cope with the challenges of new habitats.
“Humans have only lived at high latitudes in Europe and Asia for a few tens of thousands of years, yet they seem to have adapted their visual systems surprisingly rapidly to the cloudy skies, dull weather and long winters,” he said.
The researchers said that from measuring the brain cavity, the study suggested the biggest brains belonged to populations who lived in Scandinavia, and the smallest belonged to Micronesians.
Toronto Sun,"It’s dim up North, so people need bigger brains", accessed July 28, 2011
Belfast Telegraph, "People in north 'have bigger eyes'", accessed July 28, 2011
Reuters, "It's dim up North, so people need bigger brains", accessed July 28, 2011
First a little bit of personal history. Before IP became my 24/7 preoccupation, during the days that Franz Beckenbauer, Johan Cruyff, and Watergate competed for headlines (aka the 1970s), this Kat chased another intellectual muse and pursued a doctoral program in education. A Ph.D. and assorted publications accompanied that quest, but what was most lasting is my interest in the way that educational courses and programs are structured. As Mrs Kat frequently observes, the "educator" in me has still occupies a prominent part of my professional psyche.
All of this was brought to bear in reading Jeremy's blog post and the ensuing comments of last Friday--"IP Transactions: A Possible IP Course" here. No better person to fashion such a course than the IPKat's friend, Mark Anderson, and we wish him the best of luck in this endeavour. And yet, I came away from the exchange with a certain feeling of unease. In a word, is it ultimately most productive to try and teach transactional principles to IP types, or rather to teach the rudiments of IP to transactional types? [Let's make a forced choice here, replying that both are equally desirable will not do.]
This Kat has done both. First there was a multi-year attempt to fashion a course on IP transactions for law students. He struggled with the course curriculum ("how much to emphasize the distinctive versus the holistic aspects of IP licenses, assignments and the like?"; "how much to don the cap of the would-be professor and how much to wear the cap of the dispenser of practical wisdom"; "how much to lecture and how much to actively engage the students"). Frustration dogged him throughout.
So this Kat jumped at the invitation to fashion a course for Economics students, with the charge from the dean of the faculty to impart in these students a working knowledge of IP principles. That seemed clear enough, but then he starting thinking--"how exactly is he going to know what IP principles are most relevant for Economic students?" For sure, he had the privilege of sitting at the feet of the iconic Richard Posner in trying to learn "law and economics", but the immediate task was quite different. What was of interest was not applying economic principles to the law, but applying legal principles and, in particular, IP principles, in order to promote better learning of Economics. The challenge was daunting and the results were mixed, say 7.5 out 10.
So this Kat moved further even afield, headlong into the world of MBA education. For five years now, his curricular work-in-progress has sought to provide a grounding in IP within the broader educational goals of managerial education. The result is a 20/80 split, providing enough IP to allow meaningful conversation, and then weaving IP issues into the context of the managerial and case study literature, garnished with the occasional guest lecturer from various segments of industry. For whatever reason, the balance between lectures and student engagement has been easier to manage, the integration between IP and business a more seamless enterprise, the overall experience much more satisfying pedagogically speaking.
The cynic might say that the reason for this rests in the nature of MBA education, the point often being made that it is a mile long and six inches deep. The whiff of alleged dilettantism is palpable. Such a claim misses the point. If asked whether to prefer transaction principles for IP types, or IP principles for transactional types, I prefer the latter. But maybe my experience is idiosyncratic. It will be interesting, therefore, to see how this proposed curricular initiative to blend IP and transactional law will work out.
|The labels on the box never troubled the IPKat,|
but the contents sometimes caused surprise ...
In Case C‑400/09 pharma giant Merck made trade mark-protected medicinal products which Orifarm imported in parallel on to the Danish market by the Orifarm group. Orifarm and another company, Handelsselskabet, held the authorisations to market and sell those medicinal products, while Orifarm Supply and Ompakningsselskabet, which carried out the repackaging, held authorisations to do so. All decisions concerning the purchase, repackaging and sale of these products, including decisions relating to the design of the new packagings and their labelling, were taken by Orifarm or Handelsselskabet. Ompakningsselskabet and Orifarm Supply bought and repackaged the medicinal products, assuming liability for compliance with the requirements for repackagers laid down by the Danish Medicinal Products Agency. The packaging of the products indicated that they had been repackaged by Orifarm or Handelsselskabet, as the case may be.
‘(1) The Court of Justice is requested to clarify whether [Bristol-Myers Squibb and Others and MPA Pharma --earlier ECJ decisions] are to be interpreted as meaning that a parallel importer which is the holder of the marketing authorisation for, and possesses information on, a medicinal product imported in parallel, and which issues instructions to a separate undertaking for the purchase and repackaging of a medicinal product, for the detailed design of the product’s packaging and for arrangements in relation to the product, infringes the rights of the trade mark proprietor by indicating itself – and not the separate undertaking which holds the repackaging authorisation, has imported the product and has carried out the physical repackaging, including (re)affixing of the trade mark proprietor’s trade mark – as the repackager on the outer packaging of the medicinal product imported in parallel.
(2) The Court of Justice is requested to clarify whether it is of significance in answering Question 1 that an assumption might be made that, where the marketing authorisation holder indicates itself as the repackager instead of the undertaking which physically carried out the repackaging to order, there is no risk that the consumer/end user might be misled into assuming that the trade mark proprietor is responsible for the repackaging.
(3) The Court of Justice is requested to clarify whether it is of significance in answering Question 1 that an assumption might be made that the risk of misleading the consumer/end user into assuming that the trade mark proprietor is responsible for the repackaging is excluded if the undertaking which physically carried out the repackaging is indicated as being the repackager.
(4) The Court of Justice is requested to clarify whether it is only the risk that the consumer/end user might be misled into assuming that the trade mark proprietor is responsible for the repackaging which is of significance in answering Question 1, or whether other considerations regarding the trade mark proprietor are also relevant, for example
(a) that the entity which undertakes the importation and physical repackaging and (re)affixes the trade mark proprietor’s trade mark on the product’s outer packaging potentially on its own account infringes the trade mark proprietor’s trade mark by so doing, and
(b) that it may be due to factors for which the entity that physically carried out the repackaging is responsible that the repackaging affects the original condition of the product or that the presentation of the repackaging is of such a kind that it must be assumed to harm the trade mark proprietor’s reputation (see, inter alia, … Bristol-Myers Squibb and Others …).
(5) The Court of Justice is requested to clarify whether it is of significance in answering Question 1 that the holder of the marketing authorisation, which has indicated itself as being the repackager, at the time of the notification of the trade mark proprietor prior to the intended sale of the parallel imported medicinal product once repackaged, belongs to the same group as the actual repackager (sister company).’In Case C‑207/10 much the same thing happened, but the same court referred slightly different questions:
‘(1) Are Article 7(2) of [Directive 89/104] and the associated case-law, in particular the judgments of the Court of Justice in … Hoffmann-La Roche … and … Pfizer … and … Bristol-Myers Squibb and Others … to be interpreted as meaning that a trade mark proprietor may rely on these provisions in order to prevent a parallel importer’s marketing company, which is the holder of a marketing authorisation for a medicinal product in a Member State, from selling that product with an indication that the product is repackaged by the marketing company, although the marketing company has the physical repackaging carried out by another company, the repackaging company, to which the marketing company gives instructions for the purchasing and repackaging of the product, for the detailed design of the product’s packaging and for other arrangements in relation to the product, and which holds the repackaging authorisation and reaffixes the trade mark on the new package in the course of repackaging?
(2) Is it of significance in answering Question 1 that an assumption might be made that the consumer or end-user is not misled with regard to the origin of the product and will not be led to believe that the trade mark proprietor is responsible for the repackaging through the indication by the parallel importer of the manufacturer’s name on the packaging along with the indication as described of the undertaking responsible for the repackaging?
(3) Is it only the risk that the consumer or end-user might be misled into assuming that the trade mark proprietor is responsible for the repackaging which is of significance in answering Question 1, or are other considerations regarding the trade mark proprietor also relevant, for example
(a) that the entity which in fact undertakes the purchasing and repackaging and reaffixes the trade mark proprietor’s trade mark on the product’s packaging thereby potentially infringes independently the trade mark proprietor’s trade mark rights, and that that may be due to factors for which the entity that physically carried out the repackaging is responsible,
(b) that the repackaging affects the original condition of the product, or
(c) that the presentation of the repackaged product is of such a kind that it may be assumed to harm the trade mark or its proprietor’s reputation?
(4) If, in answering Question 3, the Court finds that it is also relevant to take account of the fact that the repackaging company potentially infringes independently the trade mark rights of the trade mark proprietor, the Court is asked to indicate whether it is of significance to this answer that the marketing company and repackaging company of the parallel importer are jointly and severally liable under national law for the infringement of the trade mark proprietor’s trade mark rights.
(5) Is it of significance in answering Question 1 that the parallel importer which holds the marketing authorisation and has indicated itself as being responsible for repackaging, at the time of the notification of the trade mark proprietor prior to the intended sale of the repackaged medicinal product, belongs to the same group as the company which undertook the repackaging (sister company)?
(6) Is it of significance in answering Question 1 that the repackaging company is indicated as the manufacturer in the package leaflet?’What with all these questions, some readers might have been expecting a lengthy set of answers -- but not this Kat. He knew they'd be short and sweet:
"Article 7(2) of First Council Directive 89/104 ... must be interpreted as not allowing the proprietor of a trade mark relating to a pharmaceutical product which is the subject of parallel imports to oppose the further marketing of that product in repackaged form on the sole ground that the new packaging indicates as the repackager not the undertaking which, on instructions, actually repackaged the product and holds an authorisation to do so, but the undertaking which holds the marketing authorisation for the product, on whose instructions the repackaging was carried out, and which assumes liability for the repackaging".In other words, never mind the technicalities as to whose name appears on the packaging -- look at the reality. The trade mark owner's interest in preserving the integrity of its trade marks is unaffected and the consumer is not threatened or misled, End of story.
Mrs. Shira Smiles - In the footsteps of Aaron HaKohen
Mrs. Shoshie Nissenbaum- The Quest of the Nine Days
Sunday, Rosh Chodesh Av, July 31 at 8:30 p.m. at the Carlbach Shul, Nachal
This Evening is dedicated to the Refuah Shelima of Jane Herscovici (Chava bas Faiga)
All proceeds go to Tzedakah.
Background and NewzBin 1
Usenet is a "worldwide distributed internet discussion system". In NewsBin 1 (Twentieth Century Fox Film Corporation and others v Newzbin Ltd  EWHC 608 (Ch)) Fox, together with other film makers and distributors, sued NewzBin, "a British Usenet indexing website notable for its introduction of new technologies and search techniques that aid users by facilitating access to content on Usenet" (per Wikipedia), for copyright infringement. According to the claimants, NewzBin was focused on piracy in that it located and categorised unlawful copies of films and then (i) displayed the titles of these copies in its indices, (ii) provided a facility for its users to search for particular unlawful copies, (iii) displayed their search results and (iv) provided a simple one-click mechanism for users to acquire the unlawful copies of their choice.
The defendant company, which owned and ran NewzBin, said its website was simply a search engine like Google -- but that it was directed to Usenet rather than to the worldwide web. It also said it was "content agnostic", being designed to index the entire content of Usenet. Where possible, it provided hyperlinks so that any supply of unlawful material was an act occurring exclusively between the hyperlink user and the relevant Usenet server operators -- but that it played no part in any such activity.
Following a review of both the technology and the relevant law, Mr Justice Kitchin concluded on the evidence that NewzBin clearly knew that its facility was used mainly by its members for the unauthorised downloading of infringing copies of the claimants' films. He then turned to Fox's action, which was based on the following:
(i) authorising acts of infringement by NewzBin's members;As to "authorisation", Kitchin J reviewed and analysed the law relating to that word as it affected copyright infringement, with particular regard to the narrow, literal interpretation placed upon it by the House of Lords in C.B.S. Songs Ltd and others v Amstrad Consumer Electronics Plc  1 A.C. 1013, when the sale of tape-to-tape recording machines was not regarded as "authorising" infringement of the music copied by them since the company that made and sold the machines had not acted as though it had an entitlement to permit infringing acts by those machines' users. At paragraph 90 he summarised the position:
(ii) procuring, encouraging and entering into a common design with its members to infringe;
(iii) communicating the claimants' copyright works to the public, namely the defendant's members;
(iv) categorisation of NewzBin as a service provider with actual knowledge of other persons using its service to infringe copyright, in respect of which the claimants seek an injunction under section 97A of the Copyright, Designs and Patents Act 1988.
"... "authorise" means the grant or purported grant of the right to do the act complained of. It does not extend to mere enablement, assistance or even encouragement. The grant or purported grant to do the relevant act may be express or implied from all the relevant circumstances. In a case which involves an allegation of authorisation by supply, these circumstances may include the nature of the relationship between the alleged authoriser and the primary infringer, whether the equipment or other material supplied constitutes the means used to infringe, whether it is inevitable it will be used to infringe, the degree of control which the supplier retains and whether he has taken any steps to prevent infringement. These are matters to be taken into account and may or may not be determinative depending upon all the other circumstances".Applying this to the facts, he held NewzBin liable:
" ... I am entirely satisfied that a reasonable member would deduce from the defendant's activities that it purports to possess the authority to grant any required permission to copy any film that a member may choose from the Movies category on Newzbin and that the defendant has sanctioned, approved and countenanced the copying of the claimants' films ...".As for "procuring, encouraging and entering into a common design" to infringe, the judge drew again on C.B.S. v Amstrad and the stiff test which had to be satisfied if liability were to be found:
"... mere (or even knowing) assistance or facilitation of the primary infringement is not enough. The joint tortfeasor must have so involved himself in the tort as to make it his own. This will be the case if he has induced, incited or persuaded the primary infringer to engage in the infringing act or if there is a common design or concerted action or agreement on a common action to secure the doing of the infringing act" (para.108).Even so, there was ample evidence from which to conclude that NewzBin had so involved itself.
"46 While the mere provision of physical facilities, usually involving, besides the hotel, companies specialising in the sale or hire of television sets, does not constitute, as such, a communication within the meaning of Directive 2001/29, the installation of such facilities may nevertheless make public access to broadcast works technically possible. Therefore, if, by means of television sets thus installed, the hotel distributes the signal to customers staying in its rooms, then communication to the public takes place, irrespective of the technique used to transmit the signal".On this basis, since NewzBin's premium members indeed downloaded the claimants' films from a place and at a time individually chosen by them, and since its members considere NewzBin to be making the films available to them, liability was established. An enquiry into damages, including additional damages for flagrant infringement was ordered. Injunctive relief would however be less dramatic:
"In my judgment the scope of any injunction under section 97A(2) should extend no further than that to which I have already concluded the claimants are entitled, namely an injunction to restrain the defendant from infringing the claimants' copyrights in relation to their repertoire of films" (para. 135).NewsBin 2
Following a two-day hearing late last month, the Motion Picture Association succeeded in an action which it brought against a major internet service provider, BT to invoke Section 97A of the Copyright, Designs and Patents Act 1988 so as to require BT to take direct action to block the website NewzBin2 (which, since June 2010, was in effect the resurrected version of NewzBin, using the same code and database as its predecessor but this time being hosted offshore from the Seychelles). A fairly joyous joint media release from what seems like a representative selection of the top faces in the rights-owners' camp, reports as follows:
"Arnold J. ... ruled that the Motion Picture Association (MPA), supported by the creative industries, has won an order requiring BT to block access to the pirate website Newzbin2. The site makes unlawful copies of films and television programmes, alongside other content from games, publishers and music available without permission in direct violation of a previous court order against it.
Around 700,000 members use the Newzbin service generating the operators in excess of £1 million per year. This verdict will prevent the site from using BT’s internet service to make money through copyright infringement.
In his ruling, [Mr, unless there's another media statement on the way, announcing his elevation to the Supreme Court] Justice Arnold stated:
“In my judgment [not yet circulated at the tine this blogpost was posted] it follows that BT has actual knowledge of other persons using its service to infringe copyright: it knows that the users and operators of Newbin2 infringe copyright on a large scale, and in particular infringe the copyrights of the Studios in large numbers of their films and television programmes, it knows that the users of Newzbin2 include BT subscribers, and it knows those users use its service to receive infringing copies of copyright works made available to them by Newzbin2.”This significant judgment reflects a clear recognition that, under the existing law, Courts can issue orders to prevent illegal activity online. It rejects BT arguments that they have no responsibility to act against copyright theft and states that the order is proportionate.
This comprehensive and unequivocal judgment sets a clear legal precedent which will enable content creators and distributors to secure greater cooperation from ISPs to address content theft on the internet and in particular to deal with websites that are focused on wholesale copyright theft".On proportionality of the remedy, a PDF attached to the media release adds this quote from Arnold J:
"…I am satisfied that the order sought by the Studios is a proportionate one. It is necessary and appropriate to protect the Article 1 First Protocol rights of the Studios and other copyright owners. Those interests clearly outweigh the Article 10 [presumably freedom of expression under the European Convention on Human Rights] rights of the users of Newzbin2, and even more clearly outweigh the Article 10 rights of the operators of Newzbin2. They also outweigh BT’s own Article 10 rights to the extent that they are engaged. The order is a narrow and targeted one, and it contains safeguards in the event of any change of circumstances. The cost of implementation to BT would be modest and proportionate.” [draft Judgment para 200]".
"“The Studios have made it clear that this is a test case: if they are successful in obtaining an order against BT, then they intend to seek similar orders against all the other significant ISPs in the UK. The other ISPs were invited to intervene in the present application if they so wished, but have not done so [was this a strategic decision, wonders Merpel, to keep their powder dry and decide how to respond without being weighed down by the baggage of being parties in these proceedings?]".