Right author, wrong credentials: oh dear, what can he do?

The only healthy exercise the
IPKat gets is lifting heavy books

A dear friend of the IPKat has asked him a question to which he has no quick answer and which he thought it would be fun to share with hie readers. It runs like this:

"I was commissioned to write a book on physical fitness for a well-known international publisher, on terms that I was the author and would be acknowledged as such. I wrote the text, submitted it and corrected the proofs, which were of a very professional standard. The book was duly published earlier this year in a number of countries. While my text was the same in each country, the cover and the various small print details on the page with the copyright notice varied from country to country.

On holiday in one of the countries where the book was published, I dropped in to a large and well-stocked bookshop to see if my masterpiece was on the shelf. It was, and very handsome it looked too. My name was proudly recorded on the cover as being the author -- but something had gone wrong. Instead of being described as a fitness and health consultant, I was misdescribed as being a professor at a famous academic institution in a city the other side of the country from where I live, and as possessing a number of degrees which I don't have. It turns out that, when cutting-and-pasting my details into the publisher's template for books of this nature in the same series, my own credentials were inadvertently not copied over and I was dignified quite unjustifiably and rather embarrassingly with the position of the author of the previous book in the same series. This error has only occurred on the cover for this country -- which I did not get to see in advance or check.

Is there anything I can do? I've been told that there is a moral right to be named as the author of my book, but I have been named. I'm not a lawyer but, having read through the contract, it doesn't mention the author's credentials and qualifications at all. Is there anything I can do? If so, what?".

If you have any ideas and suggestions, please email the IPKat and let him know. Merpel says, I don't have any degrees myself, but getting this publisher to promote my writings might be the best way to acquire some!

Patents as Incentives and Trade Marks as Adverts: Two Upcoming Events

Nestled within the IPKat’s forthcoming events pages are two little nuggets of IP delight brought to you by UCL’s Institute of Brand and Innovation Law. One is directed at the trade mark junkies among you, and the other is for those that like their IP a little more patent shaped (whatever shape that may be). Starting with the latter:

To pique your patent interest, UCL is hosting a special all star debate on 6 April 2011 featuring two Nobel laureates and a selection of the great and good from industry and academia. There’s even a judge on the panel that some of you may recognise… The title of the session is “Do Patents Incentivise or Inhibit Innovation? A Scientific and Legal Panel Discussion”. Participants include: Sir Sydney Brenner (2002 Nobel Laureate for Physiology or Medicine); Professor Sir John E. Sulston (2002 Nobel Laureate for Physiology or Medicine, Chair of Institute for Science, Ethics & Innovation, University of Manchester); Professor Salvador Moncada (Director, Wolfson Institute for Biomedical Research, UCL); The Rt Hon Lord Justice Jacob; and Patrick Vallance (Senior Vice President, Medicines Discovery and Development, GlaxoSmithKline). Joshua Rozenberg, journalist and Presenter of the BBC’s Law in Action, will be in the Chair. You can book here.

For the more trade mark inclined, comes the enticingly entitled “Trade Marks: The Future of the Advertising Function”. The date for your diary is 23 March 2011. An international panel of speakers has been assembled, which consists of Jerome Gilson (Attorney, Brinks Hofer Gilson & Lione, USA), Dr Ilanah Simon Fhima (co-Director of UCL’s Institute of Brand and Innovation Law), and Professor Annette Kur (Max Planck Institute of Intellectual Property). The Chair will be taken by The Hon Mr Justice Arnold. The panel will consider what is meant by the advertising function, its history and the extent to which it should be protected in the context of European and US developments. The panel will take a critical look at recent cases which have acknowledged the advertising function, including L’Oreal v Bellure, Intel, Google France and L’Oreal v eBay, and will consider how much protection really is being afforded to the advertising function in Europe. To book a place follow this link.

Further details can be found, along with details of a whole host of other events, on the IPKat’s forthcoming events pages: here.

Wednesday whimsies

Following yesterday's post, "Anti-scam: a call for cooperation" (here), the IPKat is delighted to report that  the MARQUES Class 46 initiative is gaining momentum.  Anti-scam guidance from 14 websites is now available from Class 46 here.  Says the IPKat, let's get this information promulgated as quickly as possible, to save the small, the poor and the innocent from wasting their precious cash on unproductive and/or fraudulent demands.  Merpel's not so pleased.  There are around 200 countries floating around, and most of them don't seem to have any anti-scam sites at all.  Also, the supply of contact details and easily searchable data is very, very patchy: there's a vast amount still to be done.  STOP PRESS: since updating the Class 46 guide, information concerning another useful site -- Mark-Echt's Spookfacturen -  which will be added to the guide when it's next updated.

The art of the blog.  The IPKat's not much of a linguist, as is widely known, but with the aid of a well-known search engine's translation facilities he thinks there's plenty food for thought at the Markenserviceblog, directed by Prehm & Klare (Rechtsanwälte) and boasting an archive that goes all the way back to December 2006. "Automatic reversion clauses in copyright assignments: do they work?", by IP transactional sage Mark Anderson, is on offer from the jiplp weblog here.  The latest PCC Page on PatLit gives a flavour of what it's actually like to be doing the legwork around the lovely buildings in London's Park Crescent in an attempt to launch your cut-price IP litigation before the Patents County Court for England and Wales. And on the subject of patents, there's some valuable advice on how to refer to a patent in a court order or in pleadings.


The blog of the art.  Check out Art & Artifice, the art-and-law blog which is not quite two months old and is already maturing into a nice little source for legal and current information about that sweet space in which art meets law.  Latest post is news of Maria Mercedes Frabboni's "Who owns the orphans?" project -- and a tasty reception too!

On 12 May, as the darling buds dance o'er London's leafy boughs, IPKat team member Jeremy will be chairing "When Intellectual Property Meets Competition Law: Protecting Rights Without Protectionism".  This one-day CLT conference programme promises to do its best to make competition law (i) intelligible and (ii) non-intimidating to our IP brethren.  The programme brochure is here.  See you there?

From darling buds to budding athletes. The London Marathon fundraising season is in full  bloom, and the IPKat's good friend Anna Carboni -- solicitor, scholar, Appointed Person, JIPLP editorial board person and generally lovely person -- is making her once-every-ten-years sortie into the world of self-mortification known as athletics. Together with her husband Marius she is raising money for Hospice in the Weald,  Anna and Marius's fundraising page is here.  Please give!

"They shall not pass": Maltese make a fake-trader cross

Cunningly disguised, the Maltese Customs officers could approach importers
of infringing goods without arousing any suspicions ...

Who needs the Court of Justice of the European Union to ponder over the question whether you can seize infringing goods in transit, when you've got the Maltese courts to rely on?  The IPKat has learned how, last Thursday, the Maltese courts handed down a decision in a cross-border seizure case (regarding trade marked pharmaceuticals) against the defendant.  What were the facts?  It seems that the defendant was transporting the goods between India and Libya, and therefore between non-EU member states. The defendant argued that goods were not destined for local market and did not therefore infringe any trade mark right in Malta.  After all, if there is going to be an infringement, there has to be some use in the course of commerce in that country, and it is well known that external transit does not amount to use in the course of trade.  In other words, the defendant raised all arguments as per Montex and a whole fleet of other ECJ and UK case law (as cited and applied by Mr Justice Kitchin in Nokia).

However, in a judgment delivered a week or two after the AG’s opinion on Nokia was issued, the Maltese judge stated that the interpretation of whether the goods are infringing or not could be assessed by examining the Cross Borders Measures legislation, and need not be examined in the light of the Trade Marks Act (and Regulation). He said that the Cross Borders Measures legislation was a stand-alone piece of legislation, which did not require an interpretation of trade mark infringement in order to be operative.

Thank you, Jeanine Rizzo (Associate, Fenech & Fenech Advocates), for this fascinating news.  Jeanine has offered some tasty chunks of translated judgment which the Kats excitedly await.

How to make a Maltese Cross here, here, here, here
How to make a Venetian Blind here
How to make a Swiss Roll here

Never mind the Oscars: it's IP fame and fortune 2011

Forget the ephemera of Hollywood and the tintinnabulations of tinseltown -- the IPKat can reveal to his readers the identities of the five good souls who have gained admission to the Intellectual Property Hall of Fame. As a member of the Hall of Fame Academy, which picks each year's honorees, this IPKat team member is delighted to say that he sometimes gets at least one, if not two, right ...

The 2011 newbies are as follows (in alphabetical order, and on the basis that Tian Lipu goes under 'L' and not 'T'):

Robert A. Armitage

Robert Armitage, senior VP and general counsel for Eli Lilly, has been described as "the intellectual soul and chief architect driving the five-year effort to reform US patent law". Beginning with his efforts as President of the American Intellectual Property Law Association (AIPLA) to initiate the reform of US patent law and continuing with his many appearances before Congress and other policy-making bodies to offer his insightful commentary on the best practices to include in any patent reform bill, Armitage’s tireless efforts are said to have brought the United States closer to achieving this elusive goal than any other living US lawyer.

Lynne Beresford

Commissioner of Trademarks for the United States Patent and Trademark Office, Lynne has.  chaired every meeting of the World Intellectual Property Organizations’ Standing Committee on Trademarks, Industrial Designs, and Geographical Indications from its inception in 1997 until late 2001.  Dedicated to the mission of improving the U.S. Trademark Office's ability to serve its customers, she has succeeded by improving the professionalism of its staff and the standard and quality of services offered.

Donald Chisum

Donald S. Chisum is the eponymous author of the treatise Chisum on Patents, a comprehensive multi-volume treatise covering all aspects of US patent law which was first published in 1978.  Chisum continues to update the treatise on a daily basis.  Positions held include professor of law at the University of Washington from 1969 to 1996 and professor of law at Santa Clara University (California) from 1997 to 2006.

Tian Lipu

Since he became Commissioner of the Chinese Patent Office he has lifted it into one of the top ranking patent offices. As the new Commissioner he was faced with a small and inexperienced group of examiners facing a growing flood of applications. He has grown rapidly the body of examiners, putting them through rigorous training. He has also sought, and received, a lot of technical assistance from outside, especially Europe. Today the Chinese Patent Office (SIPO) is coping with a greater number of applications than the USPTO receives and is a serious player alongside the other major IP offices.

Randall Rader

As a long-time member of the Federal Circuit Court of Appeals, Judge Rader has demonstrated a keen knowledge of intellectual property law and has firmly upheld the value of patents in his decisions. As Chief Judge of the Federal Circuit, he is expected to continue to make a significant impact on US intellectual property law. He's also pretty entertaining when he speaks at the Fordham IP Conference. 

Congratulations to you all.

LG obtains border seizure against Sony PS3

As the Guardian reports, Korean consumer electronic giant LG has obtained a preliminary injunction from the district court of the Hague, barring import of Sony's PS3 game console into the European Union "for at least ten days" (this seems to indicate an ex parte injunction, but the news article is sketchy). Since Sony is importing upwards of 100,000 consoles per week (according to the Guardian), the economic impact of this order is significant. Sony says its stock held in Europe will last for three weeks.

LG based its claim on patents (allegedly) covering the Blu-ray playback facility of the PS3, but the news article does not give any further details.

As the Spiegel notes, the case may well settle, because in December 2010, Sony filed a patent infringement complaint with the US International Trade Commission against LG, claiming that LG infringed on several Sony patents on mobile phone technology, asking to bar import into the US of LG mobile phones (source). LG already countersued Sony before the International Trade Commission, requesting an import ban of "high margin televisions and game consoles" - presumably containing Blu-ray players and therefore most probably based on the US patents corresponding to the patents the Dutch decision was based on.

Looks like the Hague district court is a lot faster than the International Trade Commission - and given what's at stake for both parties (should a court finally decide that the customs seizure was unjustified, LG is liable for damages), this decision certainly puts new urgency into settlement talks.

EDIT at Tue, 9.30 pm CET: as an anonymous commenter notes, the Guardian story makes little sense. The Guardian story is best explained - and this is really just educated speculation - like this (see my comment below):

LG applied for EU wide customs measure under Council Regulation (EC) No 1383/2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights ("CR (EC) No 1383/2003").

The Guardian states that "Rotterdam and Schiphol are the main import points for PS3s for both the UK and continental Europe".

So Dutch customs seized a shipment of PS3s. LG then initiated proceedings against Sony within the 10 day delay set forth in art. 13(1) CR (EC) No 1383/2003. While the proceedings continue, the customs measure remains in place. That would explain the slightly weird statement that the PS3s "have to be confiscated as they are imported into the UK and the rest of Europe for at least 10 days". That is true, but not as a consequence of the Dutch court's decision (there probably is none yet), but rather the EU border measures.

To permanently seize the goods, LG needs to show that they infringe a patent valid in the Netherlands, see art. 2(1)(c)(i) CR (EC) No 1383/2003.

If shipments arrive thru a UK port, then indeed infringement of a UK patent needs to be shown.

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.