Isaac and Eddie on this week’s #SandtonDiscussion

Fellow blogger Isaac Rutenberg posted on two developments in Kenya last week (see here and here) and has kindly agreed to lead a discussion on these and other recent developments that have caught his attention in Kenya and surrounds for this week’s #SandtonDiscussion at 9am CAT today. He will be joined by Eddie Hurter of Unisa who will explain Unisa’s decision to offer and all expenses paid trip to attend a WIPO workshop on domain name resolution in Geneva in November in an essay writing competition.

Learn more about these developments at 9am by joining us on twitter using the #SandtonDisccussion.

Some action from last week:

@caro_ncube @afroip how does that work in ZA? In US, we have tons of Washington this and Lincoln that #sandtondiscussion

— goldenrail (@Ivoryblossum) June 29, 2015

@afroip #sandtondiscussion does the name ‘Mandela Auto Spares Ltd” raise anyone else’s eyebrows?

— Caroline B Ncube (@caro_ncube) June 29, 2015

#sandtondiscussion led by @LQamata focusing on ugandan trade mark law: mandela auto spares oppose the registration of nairobi java house.

— Brother Nic (@nicrosslee) June 29, 2015

Heavy weight given to JAVA being dominant element of mark without much consideration to overall appearance of the mark #sandtondiscussion

— Ian Learmonth (@IanLearmonthZA) June 29, 2015

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  • Letter from AmeriKat: No Supreme Court rescue for Google in Oracle dispute and Microsoft/Kyocera settlement

    The AmeriKat giving tribute to Old Glory

    Although she has spent the bulk of her life in the UK, the AmeriKat is undeniably American.  Her meows have a distinctive American twang, she is generally positive and she refuses to apologize if someone steps on her tail. But over 15 years later, on the eve of the Fourth of the July, Her Majesty’s Government finally gave the AmeriKat permission to indefinitely stay in the UK.  The poetry of the timing was not lost on the AmeriKat as she celebrated her right to remain in the UK, but also her right to return to the US.  Although yesterday’s celebrations did not see her watching as delicious aromas of charred vegetables and meat wafted over red, white and blue adorned revelers, the AmeriKat was still thinking about her Founding Fathers and the role intellectual property played with the introduction of the Copyright and Patent Clause in the US Constitution in 1787 and the first US patent being issued to Samuel Hopkins on 31 July 1790 .  Almost 230 years later, the US courts are still hard at work in striking the right balance for IP protection and the encouragement of innovation, but not always without criticism.

    You say “potato”, I say “potash”:
    the first US Patent

    Last Monday, the US Supreme Court denied Google’s writ of certiorari to re-examine the 2014 decision of the Court of Appeals for the Federal Circuit (CAFC) in favor of Oracle which held that application programming interfaces (APIs) in Java were subject to copyright protection.  APIs are protocols that allow third-party software to communicate with an application.  The CAFC’s decision overturned that of Judge Alsup’s in 2012 who had held that APIs were not protected by copyright law (see previous AmeriKat post here).  In referencing the merger doctrine (an exception to the idea-expression dichotomy whereby the courts “will not protect a copyrighted work from infringement if the idea underlying the copyrighted work can be expressed in only one way, lest there be a monopoly on the underlying idea”), Judge Alsup declared that:

    “So long as the specific code used to implement a method is different, anyone is free under the Copyright Act to write his or her own code to carry out exactly the same function or specification of any methods used in the Java API. It does not matter that the declaration or method header lines are identical. Under the rules of Java, they must be identical to declare a method specifying the same functionality — even when the implementation is different. When there is only one way to express an idea or function, then everyone is free to do so and no one can monopolize that expression. And, while the Android method and class names could have been different from the names of their counterparts in Java and still have worked, copyright protection never extends to names or short phrases as a matter of law.”

    No ordinary Joe in
    the eyes of the CAFC

    The CAFC overturned this decision last May holding that the merger doctrine did not apply as the evidence showed that Oracle had “unlimited options as to the selection and arrangement of the 7000 lines Google copied” (see Elmeownora’s piece here).  Google, in utilizing Oracle’s APIs as part of the Android mobile operating system it developed, infringed Oracle’s copyright in the Java software.  In their petition, Google urged the Supreme Court to limit the the circumstances in which software makers are able to wield copyright law to restrict the use of basic software commands (an argument not out of kilter in the SEP/FRAND patent landscape). This argument would have been critical to the industry as APIs are widely used across the telecoms sector.  A 2014 Forbes article discussed the increasing strategic importance of APIs in the sector (see article here).

    There has been an outcry from many commentators that the Supreme Court’s ultimate denial, and the filing by the Department of Justice, was based on the CAFC’s fundamental misunderstanding of the difference between APIs and software and will allow Oracle and others to “have an unprecedented and dangerous power over the future of innovation” (see the EFF’s amicus brief which was signed on behalf of 77 computer scientists).  The case will now return back to federal court in San Francisco where the court will decide whether Google’s use of the software was “fair use”.

    Microsoft has dropped its patent infringement suit against Kyocera which claimed that three of Kyocera’s Android smartphones infringed seven of its patents.  The parties have now entered into a agreement which expands upon a previous licencing arrangement with Kyocera which “enables the companies to use a broader range of each other’s technologies in their respective products through a patent cross licence” (see Microsoft press release here).  Kyocera follows Barnes and Noble, Foxconn, Invetec and Samsung in the line of companies that have recently settled with Microsoft.

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    $$ A similar argument applies to the proportion of edges that can potentially receive interference from a base station. (USP02042274)

    $$ Similar principles apply for multi-piston pumps, where the transition between stalled and running will be easier to assess for pumps with three or more equi-spaced pistons. / 同様の原理が、マルチピストンポンプにも適用され、マルチピストンの場合は、3つ以上の等間隔のピストンを有するポンプについて、停止と駆動の移行をもっと簡単に決定できる。(USP6132010)

    $$ A similar rule applies to nouns followed by verbs but does not extend to verbs followed by nouns. / 同様の規則が動詞が続く名詞に適用されるが、名詞が続く動詞には拡張されない。(USP6353827)

    $$ In the following example of such a method the MS.DOS operating system will again be used by way of illustration; however, similar techniques can be applied to other operating system environments. (USP5675725)

    $$ A similar description would apply with the interchange of "N" and "P" labels. / ”N”と”P”とを入れ換えれば同様な説明が適用できる。(USP5429953)

    $$ A similar requirement applies to the receiver as will be discussed. (USP6081650)

    $$ Similar comments apply as to those made in relation to FIGS. 19 and 20. / 同様の説明は、図19及び図20に関して為した説明にも当て嵌まる。 (USP6339664)


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  • NIPER sold patent to commercial Pharma company for less than Rs 20 lakh – Daily Mail

    Daily Mail
    NIPER sold patent to commercial Pharma company for less than Rs 20 lakh
    Daily Mail
    “The patent, acquired by spending public money, was not commercialised or improved knowingly to benefit private pharma companies. The modus operandi is simple. Share the research in the name of consultancy and let the company pocket crores.”.
    NIPER sold patent to company for peanutsIndia Today

    all 2 news articles »

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  • Le rouge et le noir: when colour hits the IP headlines

    When does a red rose look too much like a red rose?  Not everybody spotted this item in the Scottish press last week, but this Kat is surprised that he did not receive the link from one of his many Scottish readers. It’s a piece published in heraldscotland with the title “UK Labour tries to block trademark for Scottish Labour Party”. This article, in relevant part, reads as follows:  

    Labour councillor Dennis Goldie applied last year to secure the name Scottish Labour Party in the hope it would be used by a new stand-alone organisation. Goldie … wanted to gift the trademark to the leader of Scottish Labour in the event of a general election drubbing [in which the previously dominant party was left with just a single seat]. He admitted the £500 application to the UK Intellectual Property Office (IPO), which was paid for by a local Labour club, would be a “surprise” to HQ, but said it was “done to be helpful”. However the UK Labour Party has now raised an objection with the IPO. …

    Goldie … applied to register the trademark after realising Scottish Labour had never safeguarded its own name. Covering electronic and printed material, clothing, badges, fundraising, and political activity, the trademark was intended to protect the name being hijacked by opponents. But Goldie was clear he also wanted to obtain the name to make it easier for Scottish Labour to break from UK Labour and become fully autonomous. “In the country at large, there probably is a view that the Scottish Labour Party should be independent of the national Labour Party,” he told the Sunday Herald at the time. …

    A Labour spokesman said: “The Scottish Labour Party is at its best when we work together with friends and colleagues across the whole of the UK Labour Party. The old trade union slogan applies to our country as much as to our party – unity is strength.”

    The Labour arty’s election manifesto position on recognition of the importance of intellectual property is summarised here. The red rose, as a badge of political affiliation, is much older than the Labour Party, though, being the symbol of the House of Lancaster in the Wars of the Roses.


    The defendant’s taxi
    When does a black cab look too much like a black cab? We won’t know the answer to this question until November, but in the meantime thanks to a hot-off-the-press decision of Richard Spearman QC (sitting as a deputy Judge of the Chancery Division, England and Wales) in The London Taxi Corporation Ltd v Frazer-Nash Research Ltd & Ecotive Ltd [2015] EWHC 1840 (Ch), we do know that the trial Judge will be making his or her mind up in this passing-off action without the assistance of a survey of the views of 1,000 members of the taxi-hailing public.

    The claimant’s taxi
    The claimant (London Taxi Company, LTC) carried out a pilot survey asking 98 Londoners “Do you think there is a connection between the company that makes this vehicle [above, right] and the company that makes this vehicle [left]?”. LTC then sought the Court’s permission to roll this out to a full 1,000 person survey. The deputy Judge, applying the Court of Appeal’s guidance inInterflora 1, Interflora 2 and Zeebox, concluded that the survey failed both the “real value” test and the cost-benefit test. He said that this was a case involving ordinary services with which a Chancery Judge would be familiar, that the survey question breached the Whitford Guidelines [summarised by Lewison LJ in Interflora I] and that the photographs shown to respondents did not show the differences between the vehicles sufficiently or fairly.

    This Kat can’t help noticing that the photo of the LTC taxi appears to have been taken at night-time and that the photo of the alleged infringer looks as though it was taken towards nightfall, neither of which is the very best time for enabling consumers to highlight differences between the vehicles. Merpel disagrees: she is more likely to want to keep her fur dry by catching a black cab at night and when it’s raining — conditions in which all cats cabs are said to look alike …

    Le Rouge et Le Noir here

    Thanks go to Chris Torrero for the first item, and to an anonymous benefactor for the second. Both receive katpats for their services.
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  • Arnold J rules on the Beatles, a documentary on their first US concert ever … and US fair use

    Here Comes the Sun
    also for the defendants in this case?
    Can the unauthorised use of copyright-protected works amounting to nearly 42′ in a 95′ film be considered fair use under §107 of the US Copyright Act?

    This, together with other issues, is what Arnold J had been asked to determine in Sony/ATV Music Publishing LLC & Another v WPMC Ltd & Another [2015] EWHC 1853 (Ch) (1 July 2015), an intriguing case decided earlier this week, having to do with the Beatles and a documentary concerning their first US concert ever. This was held at the Washington DC Coliseum in 1964, and is considered the beginning of the Beatlemania in the US. On that occasion the group performed 12 songs, including the lovely All my loving. The 35′ concert was videotaped for subsequent exhibition at cinemas and theatres across the US.

    The documentary is “a skilfully-edited synthesis of three main types of material: the [c]oncert [v]ideo; other archive films and still photographs; and newly-filmed interviews with a number of interviewees.” Its narrative is summarised at paras 17 and 18 of the judgment. As highlighted by Arnold J, “[i]t is important to appreciate that the [d]ocumentary incorporates almost the whole of the [o]ncert [v]ideo” [para 19].


    In 2009 one of the defendants (Iambic) acquired a copy of the master tape of the concert video with the intention of making a documentary of the concert entitled The Beatles: The Lost Concert. Subsequently the rights to the tape were transferred to the first defendant (WPMC).

    Between late 2009 and October 2010 Iambic negotiated with the claimants (collectively SATV, holders of the rights to the relevant Beatles songs) for a licence to reproduce and otherwise exploit the works as part of the soundtrack to the documentary. No synchronisation licence was executed as a result of these negotiations.

    In 2012 SATV discovered that the documentary was being promoted by a means of a website and a trailer. 

    Among other things, SATV brought proceedings in both the UK (where the documentary had been made, and pursuant to the Supreme Court decision in Lucasfilm) and the US (this being the defendants’ principal target market).

    The defendants did not dispute that, lacking a licence, they had committed acts that infringe UK copyright (with no defences being available).

    What Arnold J had to determine was:

    (1) Whether (under English law) a collateral contract to grant a synchronisation licence was concluded during the negotiations; 

    (2) Whether (under English law), if no collateral contract was concluded, the claimants were estopped from denying that they had granted a synchronisation licence; 

    (3) Whether the exploitation of the documentary in the US would be an infringement of the US copyrights in the works, or whether instead the fair use defence would apply [the point under US law is currently being considered also in parallel proceedings in the US].  

    Mr Justice Arnold
    The judgment

    Arnold J concluded in the negative in relation to all three issues.

    In relation to the first point, the judge held that no contract could be considered as subsisting between the claimants and defendants. 

    As regards the proprietary estoppel point, Arnold J derived from Motivate Publishing that such defence is not available in a case like the one at hand, ie a ‘subject to contract’ case.

    Fair use under US law

    In determining whether the use made of the songs could be considered fair use under §107 of the US Copyright Act, the judge started his analysis by recalling the relevant factors, these being:

    (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

    (2) the nature of the copyrighted work;

    (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

    (4) the effect of the use upon the potential market for or value of the copyrighted work.”
    Besides the US Supreme Court decision in Campbell, Arnold J also recalled Pierre Laval’s influential article entitled Toward a Fair Use Standard, in which he held that “the answer to the question of justification turns primarily on whether, and to what extent, the challenged use is transformative. The use must be productive and must employ the quoted matter in a different manner or for a different purpose from the original.

    As a preliminary point Arnold J also addressed criticisms of the fair use doctrine as “indeterminate and unpredictable“. The judge recalled that “[o]ver the last decade, however, work by scholars such as Pamela Samuelson, Barton Beebe and Matthew Sag has demonstrated that what at first blush may appear to be an amorphous mass of individual decisions can be analysed and categorised in the same way as other areas of common law (negligence, for example).” [para 100]

    Then Arnold J turned to individual consideration of the four fair use factors, as considered in Campbell.

    Not this time
    With particular regard to the first three factors, he rejected the claimants’ argument that to succeed in a fair use defence, the defendant must show that no more has been taken of the copyright work than is necessary for the transformative purpose. 

    According to the judge, “what the defendant must show is that the amount taken is reasonable, and not excessive. If no more is taken than is necessary, then that will be reasonable. The defendant does not have to show that he has taken the minimum necessary, however.” [para 107] 

    The judge also accepted WPMC’s contention that “it can be fair use to copy the whole of the copyright work where this is justified by the transformative purpose, particularly but not exclusively if the copy is not a high quality one (e.g. where an image is reduced in size).” [para 108]

    In considering whether the use made of the copyright works [isn’t it just so refreshing to read about fair use without seeing references to ‘copyrighted’ works?] could amount to fair use, the judge held that:

    Factor (1) – The documentary amounted to a commercial use of the works, and was partly transformative.

    Factor (2) – The copyright works are fully expressive works falling within the core of copyright protection.

    Factor (3) – The documentary reproduced the entirety of each of the copyright works. According to the judge in this case “the amount copied is clearly excessive. If the [d]ocumentary had merely used a number of excerpts from the [c]oncert [v]ideo, and hence of the [c]opyright [w]orks, then that might well have been reasonable having regard to the transformative purpose. As it is, however, the Documentary goes well beyond that …[W]hat WPMC are presenting amounts to a package of the [c]oncert [v]ideo with additional material. Furthermore, there is substantial additional use of the [c]opyright [w]orks as part of the soundtrack. Not only does the usage exceed what is necessary to illustrate the nature and effect of the Beatles’ performances of the [c]opyright [w]orks, it exceeds what is reasonable for that purpose” [para 116]

    Factor (4) – Here the defendants failed to establish that the documentary would not damage the market for, or potential value of, the copyright works if permitted as fair use. On the contrary, Arnold J considered “likely that this would damage the market for, or potential value of, the [c]opyright [w]orks. [para 118] 

    Hence Arnold J concluded that inclusion of the copyright works in the documentary did not amount to fair use. 

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