Anti-scam: a call for cooperation

Defenceless users of IP registration
systems benefit from better information

The MARQUES Class 46 weblog carries today a short post here, announcing the barest of beginnings of a list of websites that provide warnings and useful information for trade mark owners who wish to avoid being duped into making unnecessary and sometimes quite fraudulent payments for what they are misled to believing to be official services or valuable directory listings.

At present the list (which you can access here) is distressingly short. Information is provided from the World Intellectual Property Organization (WIPO), the Office for Harmonisation in the Internal Market (OHIM), the European Patent Office (EPO) -- apparently via a page which can only be accessed by those in possession of a user name a and password -- and a small number of national or regional offices.

Information and advice on these websites is sometimes excellent, but too often falls well short of what this Kat regards as acceptable. Most have few links to other sites that provide further or similar information about scams, unwarranted demands and unsolicited offers; some lack contact details. Some are difficult to use and all could be improved simply by borrowing the best features of each others' sites.

The IPKat says, here is an easy way to help small, medium-sized, big and outsized IP owners, which need hardly cost anyone a penny:

(i)  every rights-granting office should provide an email address and phone number so that anyone who thinks he or she is being conned can either check up to see if the demand comes from  known source or at least alert the office in question;

(ii) each office should host a web page with as much useful information as it can muster, which can easily be found by a non-professional searcher who uses site-search terms like "scam";

(iii) the offices should have a LinkedIn group or other shared resource which enables them to communicate with one another, either when letting each other know of latest scams and payment demands or, as can happen, when conferring as to the legitimacy of a particular practice or the bona fides of a business that practises it.

Meanwhile, please let Class 46 know of any other national or other warning sites which it can add to its little list. That way, we can all work together to improve the position of the most vulnerable and unsuspecting of our rights-owners.

More Monday Miscellany

Sam Cameron explains the basics
of brand extension to the Prime Minister

Further to Mary Ellen Field's post today ("The system's fine, but where's the money?", here), and in the context of the UK government's familiarity with and understanding of intellectual property issues, Mary Ellen adds in a comment beneath her piece "... We should not forget that the PM sleeps with a branding expert. Sam Cameron was creative director at that classic British Brand long before he was an MP. She has totally revitalised a tired brand and taken it international".  All credit to Sam Cameron, but Merpel has only this to add: while it's commendable that the PM sleeps with a branding expect, she's more concerned about who he spends his waking hours with: however pleasurable branding expertise may be, Merpel doubts that it is sexually transmitted.

This coming Wednesday, 2 March, at the coffee-friendly hour of 11am, the IPKat's excellent and scholarly friend Tanya Aplin (Kings College London) is speaking at Brunel University.  Her oration will be on the topic of  “the continuing dilemma of database protection”. Attendance at this event is free and more information concerning it can be found here.



WIPO (the World Intellectual Property Organization) has now made available some pages to stir the spirits of those who intend to celebrate World IP Day on 26 April 2011 -- and indeed all week, if need be.  The IP Outreach portal is here; this year's theme ("Designing the future") is featured here and a roll-call of posters and fun-and-games from previous years is here.

From Stephan Weber (Legal Counsel, EMEA - IHS Global Limited) comes this plaintive missive: "I have today received another (rather official-looking) scam letter alerting me that one of our trade marks is about to expire and offering assistance. This letter is from the European Trademark Organisation S.A.. I would be happy to forward you a copy of the letter if that is helpful. Do you know of any database where such scams are recorded or would you maybe be interested in setting up such a database?" The MARQUES Class 46 weblog is now doing just this, asking people for details of databases at national level that complement WIPO's own database here.  If you have details of such databases, please let Class 46 know (several useful links have already been received and will be published shortly). All information collated will be shared!

The IPKat himself received a grand little letter from the Domain Renewal Group this morning, kindly reminding him that his domain names are coming up for renewal and kindly offering to do the job for him, for a consideration.  A brief visit to his friendly search engine reveals that a lot of people have mistakenly assumed that Domain Renewal Group had some official sanction or role, and were somewhat unpleased to find themselves parting with money which, all things considered, they'd rather spend on other things.

In the lovely city of Turin (or Torino, if you love the beautiful name by which Italians call it) there's a fascinating conference coming up on 11 March under the title "Copyright or the right to copy?" (details are available in full on Art & Artifice, here).  One of the speakers is HHH (Hogarth head honcho) Alastair Wilson QC, who will be tackling "Reproduction of Works of Art in the UK".  Says Alastair:

"The essentials of copyright protection have not changed hugely over the past two hundred years – but the nature of art has. 

Copyright law still has the fundamental requirements that for a work to be a copyright work it must be “original”, and to be infringed a “substantial part” of it must have been copied. 

Real problems now arise in the case of conceptual art and artworks closely based on pre-existing works: questions arise as to whether some such things are copyright works at all, and even if they are, what constitutes an infringement". 

If you want to know more, you'd better check your flight times -- unless of course you live in Torino.

Finally, from the Kat's friend, trade mark and branding expert Bob Boad, comes a couple of links (here and here) to a recent news item concerning Alibaba, China's largest e-commerce group which, he observes "is popular with Western traders as a source of cheap Chinese manufactures but it is also notorious as a conduit for counterfeits and other scams".  What's interesting here is that there are actually people at the top who are being identified and expected to bear responsibility -- though not, it seems, liability, for the fraudulent activities of the company they run.  A small step in the right direction is not much to cheer at, except when you consider that it's a lot better than a large step in the wrong direction.

Monday miscellany

"Pass the Katsup"

The IPKat is delighted to discover how many people will be sharing the TIPLO dinner with him this coming Wednesday -- though he thinks there may still be room for a few more. Young and aspiring IP-ers are reminded that there's a special price just for them -- there's also the added attraction of Lord Justice Jacob in the chair. Full details here.

Perhaps of more immediate interest to the Big League is Managing Intellectual Property magazine's first ever International Patent Forum, coming up in London on 5 and 6 April.  This event, when the IPKat wrote about the programme here, generated an unprecedented volume of readers' comments for anything he has ever written about conferences.  While it might stretch the pockets of students, trainees and the newly-qualified, the range of topics covered and the credentials of the speakers on display will appeal to the discerning conference connoisseur.  Check out the programme and register here and you will be entitled to enjoy the 20% IPKat readers' registration discount.

If you like
the look, you'll
love the feel!

Look and feel.  The IPKat's friend Caroline Ncube, of Cape Town University, South Africa, is currently doing some research into the law that governs the potential which the tort of passing off has to offer for protecting the look and feel of a website.  So far she has only unearthed Lifestyle Management Ltd. v Frater [2010] EWHC 3258 (TCC) (10 December 2010, noted by the IPKat here).  She asks: "Would you know of any case law or scholarly publications on this point? Any pointers would be greatly appreciated".   Please post your suggestions as comments below, says the IPKat, so we can all enjoy them.

World Trademark Review's latest Global Trademark Benchmarking Survey  is now open and awaits your response.  As WTR's Adam Smith explains:

"We have conducted this survey two years previously and it has always collected insightful results. The first year it revealed how the trade mark industry was coping with the economic downturn, while last year the results showed how many in-house counsel still find it hard to foster cross-company understanding for trade marks. The uniqueness of the survey is that it looks at both sides of the profession: for example, how in-house counsel believe fee structures are changing, and how much of a shift away from hourly rates external counsel are willing to admit to. 

On behalf of each survey participant, WTR will make a donation to a charity chosen by the participant – either the Susan G Komen Breast Cancer Foundation or WaterAid. The results of the survey, together with full analysis based on interviews with trademark industry insiders, will be published in Issue 31 of WTR magazine, the issue we’ll take with us to INTA in May".

To complete the in-house survey, click here. To complete the private practice survey, click here.
Article:

Before charity fatigue kicks in, let's not forget the IPKat's friend and JIPLP contributor Bratin Roy.  Despite being of apparently sane mind, Bratin is running the London Marathon on 17 April.  Since he will no doubt be shedding many pounds, he would like you to do likewise, donating some cash for two charities that are close to his heart.  To find out more, and indeed to sponsor Bratin's worthy causes, click here.

The system's fine, but where's the money?

Much loved by innovative SMEs:
the Loan Arranger

In a thoughtful and much-commented piece hosted by the IPKat on Friday ("Pioneers, Pirates and Parvenus – IP v Innovation", here), Gwilym Roberts -- who attended one of the Hargreaves Review meetings last week -- made some valuable observations about the "problem" of the IP system being not so much the system itself but the failure of funding to back innovative projects. To this, Mary Ellen Field adds some highly pertinent comments of her own:

"It is very sad that there was little input from SMEs at the meeting last week, but not at all surprising. SMEs are trying to keep their heads above water when the banks won't lend and they are often fighting off attacks on their IP from counterfeiters and larger well funded companies with clever aggressive lawyers. They are in my opinion effectively excluded from the Hargreaves report by virtue of the makeup of the panel and the language used. It might also be because they think IP Law in the UK is fine and that they don't have the time nor the money to navel-gaze

I tried very hard to be allowed to attend that session this week and I believe I had a lot to offer. I am not a lawyer or an academic but I have been successfully managing, protecting and exploiting my clients' IP from a commercial perspective for thirty years, working with lawyers throughout the world. I wrote to my MP, to the IPO and to Prof Hargreaves himself but had no luck despite my MP writing to Baroness Wilcox on my behalf [The IPKat would love to see more involvement from MPs in general -- the All Party Parliamentary IP Group seems to have gone to ground again -- and from the IP Minister Baroness Wilcox]. I have finally managed to get a slot on Monday afternoon [today!] at the IP Review Surgery Event

The fact is that SMEs are not usually populated by lawyers and academics, the wording in the review document suggests that unless you are a lawyer or an academic, your opinions count for nothing. Professor Hargreaves states that the submissions must be "evidential", this word alone would put any hard working SME off. Perhaps as an academic Professor Hargreaves does not want case studies from SMEs who may well be able to shed great light on this issue. Perhaps SMEs are intimidated by the language of the Review document. Surely if the government or the panel wanted to know the problems facing innovators, they would have put an innovator on the panel. At least he or she would have spoken the same language as the SMEs, also I don't think there are any women on the panel

There are three major problems facing innovative individuals and SMEs in the UK and IP framework is not one of them.

1. The lack of people willing to invest in startups. Our banks won't consider lending to you and the turnover you need to attract Private Equity investors grows each year. Added to this is the fact that investors in this country usually require 100% security over the innovator's IP, and too often the founder finds himself removed from his creation if things don't move as fast as the investors require. As the banks have done away with the concept of bank managers who took it upon themselves to understand their client's business, there is no one to talk to at our banks who knows what you are talking about. If you doubt me, trying explaining the concept of a royalty stream to your local Barclays business branch [The IPKat entirely endorses this. He has been hearing it from small innovative businesses since the 1980s].

2. The catastrophic consequences of financial failure in the UK. Our laws relating to financial failure are so draconian that a failure when young can prevent you ever being able to raise funds in the future and even if you manage to start up again and be successful, whenever you are mentioned in the media no matter how successful you are even decades later you will be referred to as "Bill Smith the former bankrupt" In the United States failure is regarded as a part of the learning curve unless you have intentionally defrauded people. That is seen as capitalism in action [Strange how, at the bottom level, banks are so reluctant to take even the smallest of risks, while they seem to throw caution to the winds when it comes to buying subprime mortgage portfolios and investing in financial paper of which they have manifestly little understanding]

3. Predatory behaviour by larger British firms, particularly retailers with very scary lawyers. The costs to an SME to take on a large company that the SME believes has infringed his IP rights are simply out of the question for most SMEs. It is possible of course to arrange IP litigation insurance but that requires an opinion from counsel before the insurance company will commit. The cost of this can be prohibitive to a small company or individual. Even if you can force the big company to back down enforcement can become a full time job [If evidence is needed here, Hargreaves can speak to ACID, which can provide some real examples]

Perhaps it is because I am Australian but I get extremely annoyed when the British do whatever the Americans tell them to do. It drives me nuts. Who cares what Google wants? They don't care about innovation in the UK, they just want it made easier for them to make money here. This UK has never been short of innovators and it isn't now, it's just extremely bad at supporting its innovators, forcing many to move abroad or giving up their innovations for next to nothing because it's not polite to fight back. I have several innovative British SMEs as clients, they export throughout the world they use the Internet as an integral part of their businesses. Sadly most of them could not raise funds here and have raised them abroad from foreign investors who take a long term view".

The IPKat applauds not just the message but the manner of its delivery.  Members of the Hargreaves Review, please take note!

Growltiger's IP Dinner

Reminder: next week's TIPLO (The Intellectual Property Lawyers Organisation) dinner on Wednesday 2 March (click here and scroll) has now attracted a pleasantly ample number of diners.  However, IPKat team member Jeremy wants to remind readers that TIPLO has kindly agreed to offer a special discount to bona fide students, trainees and recently-qualified IP professionals who are not TIPLO members and could not be expected to fork out £135 for its delicious delights. The idea is that the next generation of leaders and activists within the UK's IP community should be encouraged to step forward and rub shoulders with those whom, in years to come, they will surely replace.  For these eager young souls, registration is available at a just-above-break-even point of £60, which is pretty good.  For registration details, and anything else you need to know, click the TIPLO site here [nb the discount details aren't given on the online booking form] or email Renate Siebrasse here.  Merpel adds, young IP professionals should all be joining IPSoc ("The Society for Junior IP Practitioners") too. The IPSoc site is here and you can email the membership secretary here.

Part of the evening's entertainment consists of a speech delivered by this particular Kat under the title "Growltiger's Last Stand: the World according to Kats". This talk will focus on the part played by bloggers and other social networkers within the fabric of modern IP law and practice. In light of this, it seems appropriate to reproduce, with due credit given and all relevant licences granted, and with acknowledgment to Old Possum (click here for the original), the following words from the pen of IP enthusiast and solicitor Tom Broadhurst:

Growltiger was a Bravo IPKat, who roamed the blogosphere :
In fact he was the roughest Kat that ever travelled here.
From INTA through to WIPO he pursued his IP aims,
Rejoicing in his title of the ‘The Terror of all confusing Domain Names’.

The Woe to the student, that neglected his homepage;
Woe to the pampered IP Lawyer, that faced Growltiger’s rage;
Woe to the bristly official, that lurked in cyberspace,
Woe to any correspondent whose pdf’s Growltiger faced.

Now on a peaceful spring night, all IPKats seemed at play ,
The tender moon was shining bright, the TIPLO dinner ended the day.
All in the balmy moonlight Growltiger yowled out-
And thus the Bravo IPKat showed his full IP clout.

Yet the ruthless IP hoards of diners pressed forward, in stubborn rank on rank ;
But Growltiger to no one’s surprise avoided walking the plank.
He who a hundred infringers had driven to that drop,
At the end of his speech the jolly applause took long to stop.

Thank you, Tom.

Pioneers, Pirates and Parvenus – IP v Innovation

Pioneer -- but was he first
a pirate or a parvenu?

The IPKat's friend Gwilym Roberts (Kilburn & Strode) attended a Hargreaves meeting earlier this week which, though smartly chaired by Johanna Gibson, was sadly lacking in input from its target SME audience. Participants were exhorted to get their submissions in by the end-of-month deadline and Gwilym was inspired to do so.  This was what he writes:

Pioneers, Pirates and Parvenus – IP v Innovation

Value comes from resources and there are two kinds of resource: physical and intellectual. Mere access to physical resources – raw materials, say – can provide value, and only when location or extraction of a physical resource becomes competitive does innovation cease being marginal. For intellectual resources, however, innovation is the sole creator of value. As the UK only has intellectual resources, therefore, innovation is everything.

With this in mind, and in its never-ending quest to find a British iPod, the UK government has commissioned another report, this one led by Prof Hargreaves, which seems to ask the slightly wrong question “How can IP promote innovation and growth?” The problem of stimulating innovation is of course fundamentally unrelated to the nature of the legal system protecting it, and if this is the goal then the nation must be tasked with creating the necessary culture of creativity, risk taking and adventure. IP is useful but peripheral – innovation leads IP; not the other way around. What is useful is ensuring that the framework IP provides (and I’m focusing on patents) is properly thought through.

At one end of the IP spectrum sparkle the pioneers. These iPod-creating, dual cyclone-reaping entrepreneurs have ideas so world-beating that there is often a clear patent playing field, and a reasonable monopoly is enough to merit the research and investment underpinning their success. The patent system is well designed to provide this, and given the funding to support development and the relatively modest proportion spent on protection, the system has rewarded their creative/ risk-seeking adventurous handsomely and fairly.

At the other end lurk the pirates. The IP system is again very effective, as long as technology can keep up, at stopping plain, sometimes criminal copying. Here again it seems fit for purpose.

Which leaves us in the middle with the legitimate latecomer competitor, the provider of an alternative approach, the parvenu. Unlike the pioneer, they are not moving into uncharted and unclaimed territory, but a region cluttered with patent thickets and landmines. Yet unlike the pirate, they are just trying to carve out a fair slice of the action. An advantage is certainly that the market is established and the rewards are quantifiable – the risk has shifted from a commercial to a legal one. The problem that the latecomer has, therefore, is of uncertainty. If they knew they couldn’t do something, they’d move on, but what they face is a game of percentages, endless waiting and painful legal costs while they establish a rough idea of FTO.

So at the highest level IP v innovation can be boiled down quite neatly. First, innovation leads, and this is a cultural issue beyond Hargreaves’ remit. For those who’ve “got” innovation – the pioneers - it’s then about funds, to develop to market, and to get the good advice, often with little third party IP in the way. For the parvenu it’s about timely clarity and a good understanding of where they can safely compete. And for the pirate – hopefully – it’s about time they gave up.

Wishful thinking, or cruel deception?

The government can help therefore. The system at either end is fine – it’s clear how we can get patents, and it’s relatively easy to stop straight rip-offs. The problem is in the middle. We need an accessible and educated market for raising money to fund innovation – simple and early exposure to potential investors and respected metrics for evaluating the value of intellectual assets can provide the platform for exploitation of a great idea. We also need a faster way of resolving uncertainty about potential infringement, whether through limiting the remedies or improving mechanisms such as declarations of non-infringement. With these in place we’ll be able to exploit our intellectual resources more readily, and with less fear that they’ll turn out to be someone else’s.

Ideally this will lead to upwards mobility in our strange IP class system: pirate becomes parvenu; parvenu becomes pioneer. As for where the pioneer goes, well they’ll do fine whatever the framework, and if the outcome of Hargreaves is a few more of them then it will have been an unmitigated success.

The IPKat hopes to hear from those pioneers, pirates and parvenus who read this weblog: has Gwilym got it right?

Summary judgment Delta blow...

Adopting the maxim that things are more fun in pairs, the Court of Appeal yesterday handed down not one, but two judgments in the Virgin Atlantic aircraft seating cases: Virgin Atlantic Airways v Delta Air Lines [2011] EWCA Civ 162; and Virgin Atlantic Airways v Premium Aircraft Interiors [2011] EWCA Civ 163. The former deals with an appeal against summary judgment, and the latter with an application to vary the order made on 12th January 2010 following the handing down of the Court of Appeal's judgment ([2009] EWCA Civ 1062, noted by the IPKat here) in which it found that Premium had infringed Virgin's European Patent.

Sadly, twice the fun also means twice the time spent reading, and lots of other things have gotten in the way of this today. Therefore this Kat has chosen to save the second case for later. Focusing, therefore, on the Delta decision:

Contour (sometimes also called ‘Premium’) is a company that makes “ship-sets” of aircraft seats (i.e. not only the seats, but the plinths and all other fittings for a particular type of aircraft of the customer airline) in the UK. Delta is one of its customers. In October 2009, by a decision of the Court of Appeal (noted by the IPKat here), Virgin succeeded in its infringement action against Contour under the patent. The Patent as it then stood was held valid and infringed in the UK by Contour. Subsequently, however, in September 2010, the patent was amended in opposition proceedings before the European Patent Office. As the Court explains: “Prior to that decision Virgin had sued Delta claiming that it was a joint-infringer with Contour. The action had stalled pending determination of the Contour litigation and the EPO proceedings. When the Patent was amended, Delta applied for summary judgment”. On 30 November 2010, Arnold J held ([2010] EWHC 3094 (Pat) - noted by the IPKat here) that Virgin had no real prospect of successfully establishing that Delta infringed or would infringe Virgin’s European Patent (EP(UK) 1,495,908), and accordingly granted Delta's action for summary judgment and dismissed Virgin's action for infringement. Virgin did not take this sitting down (so to speak) and so appealed. As already noted, the Court of Appeal handed down its judgment yesterday.

Summarising the decision below, Lord Justice Jacob (delivering a judgment with which Smith and Patten LJJ agreed) noted that Arnold J had been faced with three main issues:

a) Do Contour’s acts within the UK fall within the scope of the amended Patent, and more specifically does the Patent claim cover a ship-set before it is installed on the aircraft?

b) Can the manufacture and sale in the UK of a complete kit of parts to assemble a device which falls within a patent claim infringe?

c) Can the manufacture in, and export from, the UK of an incomplete kit of parts for assembling abroad a device which falls within a patent claim infringe?

The judge had answered these questions as follows:

(1) Contour did not infringe because the main patent claim (claim 1) required a seating system comprising a plurality of seat units assembled and arranged on an aircraft. The system was only assembled abroad.

(2) As a matter of law it was arguable that manufacture in the UK of a complete kit of parts for assembling a patented device could infringe a patent.

(3) But as a matter of law it was not arguable that the manufacture in the UK of an incomplete kit of parts subsequently exported could infringe. [Of course if the incomplete kit was used in the UK to assemble the whole patented article, there might be contributory infringement pursuant to s.60(2))]

Delta did not challenge the second finding, so the Court of Appeal was faced with two live issues – (a) and (c).

On construction, the Court considered (at [24-26]) that the phrase “system for an aircraft” should be approached with a very strong predilection for understanding it as meaning suitable for. Moreover, the “skilled man reading the claim in context would expect it to mean suitable for. He would ask himself what the patentee intended by the words used. They are not the words anyone would naturally use to claim an aircraft fitted with a system.” Accordingly, “system for an aircraft” would not be read, as the judge at first instance had, as “system on an aircraft”, but rather as “system suitable for an aircraft” and would cover a ship-set capable of being installed on one.

Mr Justice Arnold had rejected this construction pointing, among other reasons, to a concern that it would not “provide reasonable certainty for third parties”, contrary to the requirements of the Protocol on the Interpretation of Article 69 EPC. The Court of Appeal considered that this was not so:

[34] “the skilled reader would expect the language to be confined to a realistic complete system for an aircraft. There is no unreasonable uncertainty for third parties. They know what they can and cannot do.”

The Court of Appeal also went to some lengths to distance itself from the judge’s comments concerning the wider matters that the skilled reader would know about and take into account when addressing the claims. These included the fact that:

(i) It is possible to frame claims in a variety of different ways. In particular, claims may be directed, subject to constraints on unity of invention, both to the whole of an inventive product and to its key components separately.

(ii) It is possible to infringe a patent both directly … and indirectly …[T]he latter type of infringement involves the supply or offer to supply of “any of the means, relating to an essential element of the invention” i.e. less than the whole of a claimed product.

(iii) Patents are territorial in nature…. [Therefore] a UK patent prevents persons other than those “entitled to work the invention” … from doing things in the UK. …[A] patentee can [also] in principle obtain, and may well have in fact obtained, parallel patent protection in other countries. [Although] …the skilled person [is not presumed to]… actually carry out a search to locate any corresponding foreign patents, even though a well-advised person would do so and nowadays would be able to locate most such patents quickly and easily using electronic databases.”

Commenting on these points, Jacob LJ stated (at [36]) that while it “did not form any part of the Judge’s reasoning when he came to claim construction. I would not want to be taken as endorsing this paragraph.”

In conclusion, whereas the judge had granted a declaration of non-infringement, Jacob LJ considered that, given his “conclusion on the construction of the claim, …the declaration should be discharged”, and the matter should proceed to full trial. So we'll be seeing this dispute again in the near future.

(As for the title: I know.)