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IIPL EXAM > General Notes > Flashcards

General Notes Flashcards

1
Q

Wha can a country do if not satisfied with another country’s IP protection?

A

WTO dispute mechanism to settle the dispute (TRIPS Agreement)

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2
Q

What is IP related issue with cigarette advertising in Australia?

A
  • they can’t put their brands on the packages. They have to use plain packages.
  • Trademark issue: It does not comply with trademark protection. Company cannot use trademark as it was registered.
  • Highlights the different issues that can arise from IP
  • GTI and BAT went to court in Australia. They lost. Regulation is confirmed and will remain in order to protect Public Health.
  • WTO dispute mechanism to solve problem of trademark protection. Case is pending.
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3
Q

Apple v Samsung

A
  • Dispute started years ago. In 2010, Apple started suing different companies (HTC, Nokia, Samsung) for copyright infringements.
  • What is a declaration of non-infringement? An indication of no infringement that forces the other company to come and show whether or not there is an infringement. Samsung won as the UK court found that there was no infringement. The round shape was not infringing because Samsung phones are not ‘as cool’ as iPhones.
  • There was a ban of sales in Germany of Galaxy products.
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4
Q

Hollywood v Silicon Valley

A
  • Safe harbour procedure
  • Hollywood claims YouTube should be liable and not benefit from safe harbour
  • More political as politicians are deciding
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5
Q

IP Principles

A
  • For the country, for the progress of science and useful arts.
  • Protection is only for a specific limited time.
  • IP chooses specific intangible assets to protect and gives an exclusivity
  • There is always a balance. On one hand private creators are protected but this is balanced with public interest to have public access to the technology and copyright.
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6
Q

What is a copyright?

A
  • It protects literary and artistic work, which has to be individual enough to warrant protection.
  • This was not so easy. Centuries ago, photography was not deemed as a being capable of granted copyright protection. Changed with French judgment
  • Contemporary art and copyright. Copyrights works benefit from tax benefits.
  • Software is usually protected by copyright
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7
Q

What is a Trademark?

A

It protects signs which are capable of distinguishing the goods or services of one company (from those of other companies)
Different Types of Trademark
- Combined trademark: ROLEX (word and visual)
- Burberry shape trademark, colour, music, Lion of MGM
- Issue of smell trademark: perfume industry could be granted high protection. EU has still rejected this but UK has accepted for tennis balls which have the smell of grass. Also darts with smell of beer.
- A trademark only protects specific good and products. E.g. Apple trademark will be protected on only computer devices

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8
Q

What is a Patent?

A

It protects inventions e.g. Velcro of creative solutions discovering natural processes
- Surgery processes can be protected. The screen touch is seen as a product patent

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9
Q

What is a Design?

A
  • Protects innovative shapes e.g. Burberry, 3d shape of iPhone and iPad.
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10
Q

IP similar rights

A
  • Airbnb data can be protected as database right.
  • Trade secrets are intangible. Employee’s know how can be protected as trade secrets. Coca Cola recipe is protected as a trade secret
  • The image of someone can be protected and can be used to claim royalties. E.g Topshop did not have the image rights of Rihanna even though they had the copyrights of the photographer.
  1. Summary
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11
Q

Territoriality

A

(Art 6 Paris Convention for trademark registration, Art 2.2 Berne Convention for literary and artistic works): Each country decides how to protect IP. The use of the principle of territoriality has become global.
Countries recognized the need for international protection and so treaties were adopted for intellectual property

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12
Q

Two essential pillars of IP Protection

A

Paris Convention for the protection of Industrial Property (1883)
Bern Convention for the protection of Literary and Artistic Works (1886)

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13
Q

WIPO

A

Mission is to promote IP protection worldwide.
How?
A. IP services e.g. PCT (Patent Cooperation Treaty: system for protection patents worldwide through single application which can be extended to different countries)

Patentscope to find already existing inventions.
What are the conditions to get a patent?
1. Novelty
2. Has to be useful and be able of reproduction (industrial applicability)

Madrid system: For trademarks
You could register a trademark in one country and do an international extension in countries where you want your trademark protected.

Romarin: Same principle as patentscope but for trademarks
Duration of protection of a trademark is 10 years with the possibility of indefinite renewal.

Combination of all the IP rights guarantees the best protection

B. Dispute resolution
- Mostly done for domain name dispute resolution
Arbitration and mediation Centre. Experts solve disputes

C. Norm Setting: making new treaties
Latest treaty: Marrakech Treaty for access of literary work to blind users.

  • 1967 WIPO Convention has as its objective, the basic promotion of IP (Art 3).
  • Cluster B of the 2007 documents considers less developed countries and includes international organisations and NGOs (Art 15). Art 17 considers flexibilities for less developed countries to have access to information. How can this flexibility be achieved? For example drugs and medicine (flexibility for public health)
  • Art 22 refers to the millennium declaration
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14
Q

WTO

A

Idea is to promote free trade among the member states
WTO came from the GATT
Annex 1c: IP Rights (TRIPS Agreement)

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15
Q

Coming Challenges

A
  1. Law facing the network (internet)
    - Global Use v Local regulation: How to build strong system despite global use
    - New digital Assets: Personal data and digital files which may become digital assets. E.g. Music library, which combines personal data with digital data
  2. New Legal Approaches
    New approaches of protection:
    - Code is law. (See copyright 2.0) Technology now defines what is law and not the books. Software defines law.
    - Law is Code (software): YouTube robot identifies copyright infringements and copyright exceptions. c/f final lecture
    - Commons approach v Proprietary Approach: Proprietary seeks to protect individual copyright. Commons seeks to share collectively among the community.
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16
Q

How are the Paris (Industrial property), Bern (Literary and Artistic Works) and TRIPS linked?

A
  • Paris is non-structured and provides minimal standard of rights.
  • Same for the Bern Convention. It provides general standard of protection.
  • TRIPS is well detailed and structured. It has detailed enforcement measures which are key for IP protection (Part III)
  • TRIPS includes the Paris and Bern Conventions (Art 9)
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17
Q

National Treatment (TRIPs Art 3)

A

This implies that nationals and foreigners will be treated equally.
Protect nationals the same way you protect foreigners.
It is not to be confused which reciprocity (Art 14ter- Droit de suite Berne Convention)

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18
Q

Most Favourable Nation (MFN) Principle (TRIPs Art 4)

A

Article 4 of the TRIPs agreement states that if a country is part of TRIPs, any further privileges (due to multilateral treaties) would be available to other nationals as well.

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19
Q

Territoriality

A

IP right only has effect in the country where it is protected. Beyond this, anyone can use IP rights without authorization.

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20
Q

Well-known trademark

A
  • These are protected even though not registered because they are well known. (Paris Convention)
  • They are an exception to territoriality
  • WKT are not defined in the Paris Convention. Rely on the WIPO principles
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21
Q

Exhaustion

A
  • Exception to exclusive right of right holders
  • Concerns the right of first commercialisation
    Question: Can a right holder prohibit Mr B from selling at a higher price in another country?
  1. Notion: Always relates to the original product
  2. National or International Exhaustion
    Question 1: Right is exhausted. Can’t prevent 3rd parties to resell further
  3. National Exhaustion
    Right is exhausted in respect to one country. Mr B can buy product in country B where it is exhausted and sell it.
  4. International Exhaustion
    - It is exhausted nationally and abroad: everywhere.
    - You can buy in country B and resell anywhere in the world.
  5. Not regulated under international
    - Each country may regulate
  6. Regional exhaustion
    - The EU has its own exhaustion regime for trademarks, copyright
    - Under EU Law, regional exhaustion exists. Mr B can only resell in respect to the EU
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22
Q

Advantages of National Exhaustion

A
  • Better control: Can prevent further distribution in other countries
  • Stimulates innovation, research and development because these right holders may be protected
  • In Kodak, was it national or international?
  • For patents (exclusively), it may be legitimate to have national exhaustion because of high research and development phase. It is only protected for 20 years.
  • If we choose international exhaustion, only the importers would benefit and not the end consumer.
  • Also discussed in Kistgar
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23
Q

Arguments for International Exhaustion

A
  • Free movement of goods (free market)
  • National exhaustion infringes fundamental right of ownership of property. You should have the right to do what you want with your property.
    Consumer shall not provide subsidies for
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24
Q

Case about exhaustion:

A

Silhouette case: trademark example
Lasedisken: copyright example

Breach of freedom of expression: Why was this relevant? Also in Kirstaeng

Davidoff - Tesco case

  • Was it regional?
  • Lawyers pleaded implied consent of Davidoff
  • ECJ found no implied consent by the fact that Davidoff sold to Singaporean companies
  • He could therefore prevent Tesco’s actions

Hoechst
Compulsory License allows 3rd parties to claim patent license. This is granted by the state and not the right holder. The CJEU explained that compulsory license is very specific to the territory.

Specific Exhaustion Regimes

  • Depends on the functional characteristics of the good
  • You would need to look at the specificities and decide on the most important ones

Commercial Scale

  • MacBook example: many different IP rights involved
  • Question: Can you resell 30 macbooks from the US here in Switzerland?
  • Answer: No, because regional exhaustion exists in Switzerland
  • Copyright as predominant element: International regime
  1. In reality, right holders try to prevent parallel imports through contractual agreements. They may prohibit active sale but not passive sale.
  2. Reselling products with different characteristics in another country.
    For example perfume with specifications in French is sold in Germany. Right holders decided to have different characteristics but this does not affect the distinctiveness of the trademark.
  3. Defective or Expired product
    It depends on the specific circumstances
  4. Modification by the importer e.g. changing the trademark packaging.
    It depends on the extent of the function of the package.

Translation of usage instructions

  • Copyright element.
  • Instructions are not enough to be copyrightable.
Publicity
Trademark
-	Coop using Ralph Lauren image.  
-	It depends on the extent of publicity
-	Don’t give illusion of exclusive network. 
-	See the chart on Chamillo
  • Finishing Lecture 2 on exceptions to protection
    Private International Law
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25
Q

Exceptions to Protection: Key topic

A
  • Balance between interests of the creator and public interests to access the information for research (fair usage). All the IP systems find this balance
  • There is right granted for a certain period of time for the different rights.
  • There are also exception during this period that allows the public to use these rights
  • The right holders can’t prohibit the use
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26
Q

How the exceptions are regulated?

A

Copyrights

  • Within the Berne convention: Three step test
  • See article 9 Berne Convention, para 1. (Right holders are granted an exclusive right)
  • Art 9 Para 2: some uses shall be deemed fair without the prohibition of the right holders. Three step test:
    1. Limited to special cases (specific use)
    1. Shall not conflict with normal exploitation of the work
    1. Shall not unreasonably prejudice legitimate interest of the author
  • Other exceptions:
  • Art 10(1): Use for quotation, droit de citation (has to be fair: proportionality principle)
  • Art 10(2): Exception for educational purpose (teaching. But with fair practice)
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27
Q
  • Limited exhaustive list of exceptions which are regulated:
A
  • Private use (family and friends); e.g. cds for car, apartment.
  • Parody: criticising pre-existing work.
  • Quotation
  • Work in public domain: any work outside (sculpture, statue), accessible from the street can be reproduced.
28
Q

Christo case:

A
  • contemporary art couple that used to wrap monuments with white sheets.
  • An ad companies took pictures of it and sold postcards of it.
  • Christo sued for copyright infringement
  • Does the work in the public domain have to the permanent or can it be permanent?
  • Christo won because the work shall be permanent not only temporary
  • Work of the public domain: Not anymore protected because it’s outside the copyright protection.
29
Q

Tintin case:

A
  • Library wanted to do exhibition and use specific drawing highlighting it’s importance in Switzerland. Moulinsart sued, the library claimed quotation right. Didn’t want to litigate but they could have made quotation exemption
    For artistic works, quotation may be more difficult. It has to be proportionate. Easier for scientific work.
30
Q
  • There are 4 main factors:
A
    1. Assess the purpose and character of the use. Look at a possible transformative use of the new work. Is there a transformation? Assess if it’s a commercial (more stringent) or non commercial use
    1. Assess the nature of the copyrighted work. Is it core-copyrighted work? (Contemporary art v historical books)
    1. The amount and substance of the original work. How much does the new work use the copyrighted work? 10%?
    1. Effect of the use upon the right holder’s potential market. Effect on sales etc.
31
Q

Two Live Crew case

A
  • Rob Orbison was guitarist of pretty woman and two live crew took a bit from the song.
  • Court of appeal decided it was unfair because of the commercial use. They made a huge purpose
    1. SC accepted that it was parodic use and was very flexible. While the CA decided it was a commercial use and unfair, SC said that the mere fact that there is a commercial use does not lead to the presumption that it is unfair. (p. 164)
    1. It was a core-copyrighted work. But parodic use allows for taking over the art of the work
  • It’s an overall assessment. They don’t all need to be fulfilled. It’s a question of balancing
    1. No more was taken than necessary. It was proportionate
    1. It would not affect the same market.
      P. 160, Court mentions US constitution. Fair use is necessary to fulfil copyrights very purpose and progress the growth of science and useful art.
32
Q

Barbie Case:

A
  • Forsyth took Barbie pictures in specific posititions.
  • Forsyth won due to fair use. It was parodic use and should be allowed
  • Google books case: Google digitised massive books. They didn’t ask for permission.
  • It was fair transformative use of the books. It was a new meaning to using books for data mining. Useful for the community.
33
Q

LMFAO and Rick Ross: Was LMFAO’s use fair or not?

A
  • (Hustling and Shuffling)
    1. It’s commercial use. But is it unfair? Not automatically. Is it transformative? Is there any other element that you may mention? There is a new significance, new meaning. Hustling becomes shuffling. LMFAO mentions parodic use.
    1. Nature of the work. Core copyrighted work
      1. Portion of the work used: The phrase is a very memorable feature in Ross’song: Everyday I’m hustling’ Huge amount so disproportionate use.
34
Q

Parodic use

A

Trademarks

  • Parodic use of trademark.
  • Not regulated but court can decide it should be fair use thanks to freedom of speech or freedom of art
  • Nadia Plesner took over LV bags and made painting with poor child
  • It was a parodic use of the trademark

Patents

  • Experimental use and scientific search. Companies and universities can use them to prepare for new inventions
  • TRIPS agreement mentions exceptions
35
Q

Case Study 1

A

Facts:
- PhoneCorp is a Japanese manufacturer of mobile phones which are sold worldwide under the name «CoolPhones» (for which an international trademark has been registered).

  • Counterfeited «Coolphones» telephones are offered for sale on the website associated with the domain name www.coolphones.com (which was registered with an Australian registrar by a Panamean company, the server of which is located in South Africa). The website www.coolphones.com targets exclusively customers in North America
  • Mr. Business, resident in Switzerland buys original «CoolPhones» in North America and resells them in EU in its own shops, irrespective of the exclusive distribution network of PhoneCorp.
    Questions:
    Where can PhoneCorp sue for trademark infringement?
    1. Start with Panama, as the domicile of the defendant
    2. North America: place of harmful event (US/Canada)
    • In SA, there is no close connection and there is no tangible element. The servers are insufficient to create jurisdiction
    • In Austrialia, there is also no close connection to the case to create jurisdiction

Which law shall apply?
ALI Principles: s.301
If sued in Panama, Panamanian law will apply for the trademark registered in Panama but US and Canadian law as well for damages
For the place of harmful event, the jurisdiction is limited to that country
For the phones sold in the US, US law will apply.

How to proceed with recognition/enforcement of a foreign judgment?
The countries recognise foreign judgments

What can PhoneCorp do against Mr Business?
What would be the issue of exhaustion?
For trademark EU law has the regime of regional exhaustion. It’s exhausted in the EU but not abroad. Phonecorp can control only the EU territory. Phonecorp may claim against Mr B for infringing the commercial rights of phonecorp.
*In Switzerland there is an international exhaustion regime. No one can object exhaustion.

36
Q

±

A

A. Jurisdiction
1. Defendant’s domicile
Basic complete jurisdiction. It might decide on jurisdictions everywhere.

  1. Choice of Court: When the parties agree on a specific court. This is due to the freedom of contract. Problems may arise in mass market contracts (with consumers) where there is no room for negotiations. Is the choice of court now valid in this context? No, because consumers are protected and the domicile of the consumer should be the place of jurisdiction.
    Facebook v Internet User
    Frederic posted content and Facebook removed it due to nudity and morality. Question: Are the terms of use of Facebook applicable or not?
    Clause 15: States the choice of court as California.
    Court said because he is a consumer, he has the choice to sue in his own country and the terms of use don’t apply
  2. Place of harmful event
    What is the place of harmful event? It should have connecting factors or connection to the country to claim place of harmful event.
    Pebble Beach v Caddy
    Minimum contact test:
    Is there sufficient contact to the US, California?
    American lawyers arguments:
    It’s a .com
    It’s a famous trademark
    There are many Americans going to the B&B in the UK

Courts:
It’s a uk.com- more targeted to the uk
The fact that American go there does not mean it targets US consumers
The courts wants to see connecting factors: language, currency, .com.
This was not the case here.
See WIPO recommendations for trademarks online (p.83). See Art 3 for targeting activity for a website.

Wintersteiger v Products 4U: See slide 9
Google ad words: They used the word Wintersteiger in the ad word system to increase their visibility
W brought action for them to stop.
Do Austrian courts have jurisdiction for the Austrian trademark infringement of Wintersteiger (Austria) against Products 4 U (Germany)?
ECJ held that the place where the harmful event occurred was the place of damage and alternatively the place of establishment of the advertiser.
±

37
Q

Factors to assess the place of harmful event

A
  • Art. 5.3 LC: « the place of the event giving rise to the damage » (act); or « the place where the damage occurred » (result)
  • Art. 204 (1) ALI: Substantial or preparatory activities in a specific State
  • Art. 204 (2) ALI: Activities directed to a specific State
  • Art. 2 WIPO joint recommendations on trademarks on the Internet: commercial effect in a State
  • Art. 207 ALI (factors which do not create jurisdiction): « Jurisdiction to adjudicate a transnational dispute under these Principles is insufficient when exercised solely on the basis of any one of the following grounds: (1) the presence in that State of tangible property belonging to the defendant, except when the dispute is directly related to that property »
38
Q
  1. Country of Registration
A

Gat v Luk: see slide.

39
Q
  1. Distinction between jurisdiction and applicable law
A

Not to be confused. They are different.
LucasFilm v Ainsworth
Lucas film sued Ainsworth in the US for making the helmet.
UK courts decided that the helmets are not protected under the UK copyright act. But they ruled for US infringement under the US law.

40
Q

Principles of Applicable Law

A
  1. The law where protection is sought or IP right is registered
  2. If there is a choice of law or close connection
  3. Mandatory law, i.e. against ordre public.

Example of Ordre Public
Asphalt jungle case
French made the movie colourised. The cour de cassation had to decide what the applicable law was. Houston had transferred his moral rights to the company. Lassange said there are no more copyrights as they had transferred their rights. The courts decided that moral rights may be never transferred and that it can still be objected

41
Q

Recognition and enforcement of foreign judgments

A

Féraud v Viewfinder: Did the French courts assess fair use? No, so US courts rejected their assessment.

42
Q

Why is enforcement critical for IP rights?

A
  • Without enforcement is the IP regulation (treaties, national statutes) almost useless
  • No natural protection because of intangible nature of IPR (e.g. gold in lockbox v. music song)
43
Q

I. Building Respect for IP

A
  • High awareness of relevance in the last decade of enforcement: the teacher said that all the treaties and regulations are effortless without enforcement or effective measures.
  • Organizations involved in IP enforcement:

• International and Inter‐Governmental (WTO, WCO, WHO)
WCO: world custom authorities: based in Paris. They have a list of counterfeiting goods , they look at these list make seizures of the goods for example.
WHO: World health organisation: they provide to countries these lists to indicate which are the drugs that can be considered as counterfeiting.
• Regional and national (Universal Postal Union, Interpol (Eu police organisation)
• Corporate associations/entities (IFPI, Stop‐piracy) : international federation of phonogram industry : important in the music industry, they work to enforce their right. The seizure of bank account is very popular for IFPI. First, they seize and then they go on proceedings.
• WIPO on‐going work on enforcement issues : comity dedicated to enforcement, they do specific meetings to discuss about it. (what will be the next steps, what are the recommendations). Last year it was about alternative dispute resolutions.
• Building Respect for IP http://www.wipo.int/enforcement/en/

44
Q

IP enforcement regulation

A

At national level
• National law
• EU‐law (Directive 2004/48 and Regulation 1383) : “enforcement directive” that providing all the measures that can be taken.
Regulation 1383: For custom authorities.

At international level
• TRIPS Agreement (Art. 41 ss): art.7 et 41: general principles. All the agreements are dealing with provisions of protection but with no question of enforcement but now, it a novelty, it has detailed provisions for enforcement and it is very specific for international agreement and therefore it has also been seen as controversial because it provides strong measures that all member states need to implement.
Art.7: objectives of the trips agreements. The trips shall contribute to the promotion of technical innovation. And balance of rights and obligations IP right is always a balance of interest. Balance of Private interest and right of the public to access the information.

Art.41: starts with enforcement measures.
This first provisions just ask the member states to provide enforcement measures recall that they should avoid the creations of barriers, the measures shall not be too strong, not too high because at the specific step, they can be barriers to the legitimate trade. Always of balance of rights.

Question of a student: Whether the countries really respect art.41? For example, with public health: member states do not comply with 41 and even art.7 the general balance of rights, because there is a too strong enforcement sometimes, if there is not access to generics for countries with no capacity to develop their generics the member states by enforcing too strong their rights, do not comply with these balance of rights.

Art.42: specific measures, or even 44: injunction, 45: damages, right of information: art.47: under those provisions the claimant may ask very detailed & expensive information to the infringer.
• Anti‐Counterfeiting Trade Agreement (ACTA) : was controversial agreement among EU, Canadian, Australian members : because provide very high standards of enforcement measures, high IP protection and they did not even disclose the negotiation so there was a lack of transparency. So the consumers have claimed that it was controversial treaty. So much controversial that the EU commission did not accept to sign. Has been signs by some EU members but wasn’t signed by the EU union.

• Transatlantic Trade and Investment Partnership (TTIP): still on going. We don’t know where it will end now with trump and Brexit maybe trump will remote this negotiation and not sign the treaty so we will see.

45
Q
  1. Classical counterfeiting cases:
A

When an infringer copies one to one pre-existing products ex: the watches, copy the Rolex watches and sold in different market. This infringer tries to copy these products in order to make the product look the same. Counterfeiting goods have many impact, it does impact the society, for example negative impact for customers: for example, milk, shampoos (dangerous for their health), for the government because of the lack of taxes, employment and for the RH because he may lose profits, sales reputations. But There are also voices who say that it may also have positive impact: many users that download digital fills, they also go to concerts, buy music and increase the celebrity of some artists. Also for trademark products; in luxury industry if there are many counterfeiting goods the original one, increases its reputation and its exclusive character, the original one will be the right one and only for a short period of time (because after we know that it will be copied, so the luxury industry might benefit from that.

46
Q

Complex infringement cases

A

The idea is not to copy pre-existing products but to get inspired or to incorporate pre-existing products within complex products,
ex: MacBook, iPhone all these devices incorporate many patents, software and IP rights. Some of them are usually free of infringement but some may be considered as infringing and this is not to be treated equally with piracy because it is really complex.

47
Q

Creative uses: not equally to counterfeiting goods.

A

When alleged infringer want to do a creation and get inspired from pre-existing work and even without willing to infringe, in appropriation art: some artists do art and creations based on pre-existing work and this is more creative infringement and this shall not be treated equally as counterfeiting good.

48
Q

Types of measures

A
  1. Civil measures (seizure, injunctions, damages)
  2. Administrative measures (border measures):
  3. Criminal measures
49
Q

Civil measures

A

Seizure orders: the custom authorities may seize at the border and civil authority may order seizure of goods.

This is when a claimant wants to assess the chances of success or to be able to provide evidence. He might claim the authority to pronounce seizure and then the authorities come into the premises of the infringer and seize the goods and to bring them to the proceeding or even the claimant. Very strong instrument because If we are a claimant and we don’t know yet if it is useful to go to proceeding because we don’t know if it is a real infringement, ex for complex infringement cases, we may seize the good to have access to the good and after having assess our chances of success, we have the good in our premises and we can provide as evidence in proceedings.

• « The judicial authorities shall have the authority (so they might have the power, duty of authorities to the balance of interest) to order prompt and effective provisional measures […] to preserve relevant evidence in regard to the alleged infringement » (TRIPS 50.1 b) (« Anton Piller orders(UK) », « saisie‐contrefaçon (FR) »):aims the claimant to come with a huissier the justice into the premises of the defendant, knock at the doors without hearing the defendant and say you are forced to open the door, we will do seizure of goods for evidence. In France in IP litigations very often there are alleged infringer that surprisingly see people at their door to seize the goods. Strong instrument.

Injunctions: stop or seize pending infringements
• Measure to stop the injury before it happened and deter: the idea is to prevent from further infringement.
• Injunctions (look to the future) vs damages (the past): injunctions want to prevent further injunction. While damages look into the past, want to compensate the prejudice suffered in the past.
• Chronological perspective
• Ex parte injunctions (1st step): this means that there is an order without hearing the defender The defendant has no idea. The infringer does not know that his bank account will be seized etc.
• Preliminary injunctions (2nd step): stop the infringer but in the second step after having heard the infringer. Have to provide his evidence that he is not infringing.
• Permanent injunctions: permanent order not to infringe in the future. Because the 2 first ones are preliminary.
Theses injunctions are very strong, prevent alleged infringers to continue their activities therefore there are tools:

50
Q

• How to protect the alleged infringers?

continue

A

• Provision of security by the applicant (TRIPS 50.3): he may deposit money in the bank account of the authority, to show his good faith in the proceedings.
• pay Damages to the alleged infringer if the preliminary injunction is deemed to be unjustified
preliminary injunction (TRIPS 50.7): at the end of the proceedings. If we defend a claimant we may be aware not to it in a bad faith way, or unjustified way, we shall be careful to be in good faith.

(1) Ex parte injunctions => the countries provide high standards of evidence. We really need to prove that we are in our good right. Therefore, we need to prove:

• precautionary measure ordered without hearing the defendant

  • Conditions
  • particular urgency (delay is likely to cause irreparable harm: for example, if the witness is about to die, or we can show to the judge there is a risk that the evidence will be destroyed (banking account, documents) or that the infringer will disappear. cause irreparable harm) or a risk of evidence being destroyed (TRIPS 50.2): ex. Destroy his bank account, documents for example. So we want to go quickly for example.

(2) Preliminary injunction => status quo
• Preserves the status quo of a situation at an early stage (urgency) until a more considered decision on the merits is possible

ex: factory producing shoes then the shoes go out in a boat out of the country and then this boat goes to a distributor third party countries and distributes to in consumers so whether if we are here and we know that next week the shoes will be shipped we have to do a preliminary injunction or ex party so that we can to stop at this stage the sipping therefore dependant in the situation we need to make a tailor made enforcement measure.

• Conditions
• « Plaintiff must establish that
[1] he is likely to succeed on the merits, i.e. that the claimant has a good right to do so and there is likely an infringement.
[2] that he is likely to suffer irreparable harm in the absence of preliminary relief: so if we don’t stop the shoes shipping, if we are in the same country, then the boat will go away and it will be difficult to claim the injunction to the distributor, so we need to show that we will have irreparable harm otherwise the shoes will be put in the market.
[3] that the balance of equities tips in his favour, and
[4] that an injunction is in the public interest » (Winter v. Natural Res. Def. Council, Inc. 555 U.S. 7 (2008))

(3) Permanent injunction => no other remedies: ask the infringer to stop in the future permanently the right.
For when other remedies inadequate to compensate
• Conditions
« Plaintiff must demonstrate: (1) that it has suffered an irreparable injury;
(2) that remedies available at law are inadequate to compensate for that injury and
(3) that the public interest would not be disserved by a permanent injunction » (eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)): the patent troll usually when he ask for injunction the judge will say you don’t use anyhow your patent so instead of injunction there will be damages that may compensate your prejudice instead of having an injunction.

c. Damages
• Pecuniary remedy that aims to compensate the prejudice suffered
• Compensatory purpose, sometimes deterrent and punitive: for ex in USA. But most of the jurisdictions have compensatory purpose, we put the claimant in the same situation that he would have without the infringement.
• Ordinary rules of tort law unless statute provides otherwise

• Conditions (≠ automatically awarded)
• 45.1 TRIPS; 13.1 Directive 2004/48:
(1) Subjective condition (fault); intention or negligence.
(2) Objective condition (infringement., causation, damage):it is really the infringement that caused the damage. It is really hard to prove.
• Burden of proof

(1) Lost profits
• Sales the claimant would have made « but for » the infringement: without the infringer the claimant would have been able to do x amount of sales.
• Often calculated on the infringer’s profits, with respect of the causation (four factors test): between the damage and the infringement
(1) demand for the infringed product,
(2) absence of non‐infringing substitutes, : other products that the consumer would have bought.
(3) capacity of the right holder to exploit the demand: he should prove that he would have made these sales
(4) amount of the profit it would have made (Panduit Corp v. Stahlin Bros Fibre Works Inc, 575 F2d 1152)

(2) Depreciation of the IP Right
• Amount by which the relevant IP right has been depreciated by the infringement: ex reputation. But this is difficult because of causation.
• Infringement must cause a diminution in the capital value (e.g. « Bigfoot », Big O Tire Dealers Corp. v. Goodyear Tire & Rubber Co., 408 F.Supp 1219, 189 USPQ 17):a claimant used the sell tires 13 in the US and then b o tires the infringer copied the product, patent of the tires of the claimant and sold this tires in 50 states. The court decided that there was a depreciation of rights, of reputation only with respect to the 13 states where he was used to sell his tires not in the 50 states.

(3) Unfair profits: claim the profits sales made by the defendant.
III. Types of measures
• Jurisdictions allow usually to claim the profits sales made by the defendant
• Knowledge of infringement often required (intention so more than negligence)
• Only the portion of the infringer’s profits attributable to the invention (causation) (e.g. OLG Frankfurt GRUR‐RR 2003, 274)
Adidas has been copied by a Chinese infringer: Adidas has claimed for the infringer profit so the whole price made by the infringer. So how would you assess the infringer profit? usually we award the profit sales made by the defendant with the deduction of his fixed and net costs. If we do that, what is the percentage? The German court decided 20% of the sales.

(4) Reasonable royalty
to grant to the claimant the amount of money he would have made through contractual agreement with the infringer.
• Jurisdictions allow usually to claim a reasonable royalty from the defendant
• « But for » principle not applicable
• Calculating the reasonable royalty:
‐ Willing buyer/willing seller test : assume that you put the infringer and the claimant in a room and close the door and let them negotiate on an amount of money, or come to an agreement for example. Theoretical amount of money as royalty.
‐ 5‐20% of the infringer’s sales. 5 is more in patent right 20 = highest one for copyright industry, books, music etc.
‐ See 15 Factors of Georgia‐Pacific v. US Plywood Corp, 446
F2d 295

(5) Statutory/increased damages
• Some jurisdictions give the court a discretion for fixed or increased damages (to assess the damage and to grant damages)
• usually Compensatory, here it is also for deterrent (= dissuasif) and punitive purposes.
• Statutory damages : having within the regulation an amount of money we can claim per infringement.
e.g. US Copyright Act § 504(c) $750 ‐ 30’000 per infringed work, min. $200 if no fault and max. 150’000 if bad faith
let assume an infringer does many infringed work we have to multiply 150’000 per the number of infringed work (see Walt Disney Co. v. Powell, 897 F.2d 565): to sanction and punish the infringer.
In the Disney case the toy has been copied by an infringer and he made 3 pieces, fortunately the court said that it was only one infringed work so didn’t multiply by 3. But then he multiplied the number of manufactured work.
The claimant has not to prove a prejudice, but can ask an amount of money and the court has to power to assess.
• Increased damages: e.g.
• US Patent Act §284 « […] the court may increase the damages up to three times the amount. »: the idea is to sanction and punish the infringer.
• US Lanham Act §1117(a) «[…] In a case involving the use of a counterfeit mark […] three times such profits or damages [or]
statutory damages »
• Discretion of Court, see the « 9 Read factors » (Read Corp. v. Portec Inc., 970 F.2d 816)

  1. Border measures
    • What (Art. 51‐60 TRIPS)
    • procedures that lead to suspension of release by customs author.
    • Mandatory for trademark & copyright (Art. 51)
    • Optional for other IPR and goods in transit (Art. 51)
    • Conditions
    • evidence of prima facie infringement
    • detailed description of the goods required
    • procedure: notice of suspension and 20 days to initiate proceeding on merits
  • Questions
  • How to deal with goods in transit? (e.g. transit through EU of generic drugs from India to Brazil)
  • Why discriminate between IP rights?

• Classical counterfeiting cases:
Of we assist Rolex and we want to advice: here the watches are still in production, we might claim for injunction.it would be certainly provided. If we look at the conditions of injunctions:
Ex parte: high standard:
The claimant will need to prove with high standards that his rights will be infringed.

If Rolex claim preliminary injunction he would also need to prove that he will succeed on the merits and also that he is likely to suffer an irreparable harm damage. Probably If the Rolex watches goes on shipping and go on the market. We mention the reputation, so Rolex may suffer reputation risk so he may also have access to permanent and preliminary injunction.

What about damages for Rolex?

Lost profit? is the sales that Rolex would have made without infringement. If the watch is sold for 100$ in a country and the original is sold for 1000$. No lost profit for counterfeiting goods because the consumer would not buy these counterfeiting watches. Usually we can forget lost profits.

Depreciation of the right? is there any depreciation of Rolex goods? There is no depreciation because it increases the sales of luxury goods, but Rolex would claim that his reputation may be depreciated. It is difficult. This point is arguable.

Unfair profit? Yes.

Complex infringement case? If we take the conditions: see slide 13
As a claimant if I want to ask injunction I may prove that I can likely succeed on the merit,
here am I likely to do so? Case of smart DATA: claimed in Switzerland that apple in the iPhone was infringing his patent. Is smart data likely to succeed on the merit? Here we need to prove to the judge that our patent is really and effectively infringed! It is difficult because sometimes it inspiration or is a little part of the invention. Assuming that the judge admits that and stop iPhone at the border because it is infringing one software among all the software. what is the risk of our client? He might be responsible if the injunction is unjustified for all the iPhone not sold. Smart data need to prove that he would suffer an irreparable harm. Does he really suffer through the fact that apple is incorporating JUST a part of its software in his iPhone? The answer is usually no.

permanent injunction: the remedies available are inadequate to compensate: the judge will ask apple to stop using the software only if he think that there are no other remedies available to compensate. smart data is a small company producing software it is a small the judge would say that compensation shall be enough for compensating the claimant.

  1. Criminal sanctions
    What criminalization limited to TM counterfeiting (imitation) and copyright piracy (copy) (TRIPS 61)
    Conditions
    a. Wilfulness
    b. Commercial scale
    Sanctions
    c. imprisonment and/or monetary fines sufficient to provide a deterrent effect. “In appropriate cases”: seizure, forfeiture, destruction of the infringing goods and of material (TRIPS 61)
    Questions
    Why criminalizing (Advantages/Disadvantages)? Why discriminate between IP rights?
    What is the meaning of « on a commercial scale »?
51
Q

TRIPS and Public Health

A

UNCTAD

  • Part of the UN
  • The mandate is to promote development and to use intellectual property for societal development
  • Most work happens at the regional and national level
  • By helping developing countries, they make the TRIPS agreement is implemented in a way that is beneficial to them and their development.

UNCTAD IP Program
One area of work: local pharmaceutical production
This has a double objective:
– Improve access to medicines in developing countries
– Promote industrial development

Technical cooperation with governments
– IP laws & policies
– Coherence among domestic policies: IP, investment, science & technology, drug regulation, etc.
– Advisory work
– Training courses

What is the relationship between the TRIPS and Public Health?
See articles 27 and 28 TRIPS
Before the TRIPS agreement, countries could exclude entire categories from patent protection

Doha Declaration
Concerns about the high prices of medicines an the need to strike a balance led to the Doha Declaration which underlines what the objectives of the TRIPS agreement should be.
- TRIPS creates only minimal rules for protection. There are no specific definitions of the terms
- Each WTO member has the right to define meanings through legislation and through the courts. They have to determine have to strike that balance.
- There should be a broader societal benefit. Art 7. It is not just about rewarding the investors.

Flexibilities related to pharmaceutical productions
Association for Molecular Pathology: SC says it’s not sufficient to patent isolated DNA. There has to be a human technical intervention. As soon as it is modified and not in its natural state, then you can get it patented. Leaving it in its natural environment is not classified as invention.

Novartis AG
SC confirmed what patent office said: they would be no patent on the drug in India

Bioavailability: speed at which the human body absorbs the drug
Indian patent acts define inventions and Novartis did not meet this definition. Modification is not considered invention unless you can prove it has better therapeutic efficacy. Physical efficacy (bioavailability) is not enough and does not say anything about the healing properties.
Novartis has to show increased therapeutic effect and they have no such proof.

Bolar Exception: Enables generic companies to submit for generic approval during the term of protection
Approved by the WTO

Compulsory Licensing
Under certain condition, the government can say the price is too expensive. They can only be used in a domestic category. LDCs might not have the capacity to make drugs and might find no one to use this license.

52
Q

What is a domain Name?

A

A domain name is a unique alias (number) or «address» that is associated to a website. Domain Names are constituted of an identifier (word/expression) and an extension (such as gTLD: «.com» or a ccTLD: «.ch»)

53
Q

Is a domain name an intellectual property right?

A

Pros:

  • An exclusive property: no one can take it away from you
  • Often conflicts with other IP rights

Cons:

  • No exclusive rights are granted
  • No enforcement of rights
54
Q

The UDRP (Uniform Domain Name Dispute Resolution Policy)

A
  • Adopted by ICANN in 1999

- The UDPR arose as a result of concerns over cyber-squatting.

55
Q

How can the UDRP be enforced against the domain name holder?

A

As there is no contractual relationship between ICANN and the domain name holder.
- ICANN can request that the registrar enforces that by a domain name holder signing a contract, it accepts the UDRP procedures through this chain of contracts.

56
Q

Why are there so little decisions about cancellations of the domain name?

A

In the case of cancellations, anyone can buy the name again.

57
Q

The UDRP Procedure

A
  • The Complaint is filed by the Complainant
  • The Respondent is given 20 days to respond to the Complaint
  • An independent panel is appointed (1- or 3-member Panels)
  • The Panel issues a decision (based on written evidence (i.e., Complaint, Response), no in-person hearings)
  • The Registrar implements the Panel’s decision at the end of 10 calendar days, unless the decision is challenged before state courts
    *The respondent and complainant can still go to court (para 4(k))
    The competent court is either the seat of the complainant of respondent, or where the server is based.
58
Q

UDRP: Three Substantive Elements

A
  1. The domain name must be identical or confusingly similar to a trademark of the Complainant (Policy, s. 4.(a)(i)); and
  2. The owner of the domain name must have no rights or legitimate interests in such domain name (Policy, s. 4.(a)(ii)); and
  3. The domain name must have been registered and used in bad faith (Policy, s. 4.(a)(iii))
59
Q

IP and the Internet

A

Introduction (digital environment)
Many Players
On one hand there are end users and on the other internet service providers that can either be content providers, file sharing providers, hosting providers (cloud solutions for storing data) and conduit providers that provide access for end users
It is important to determine if they play either an active or passive role.
There are also IP owners displaying IP protected content online.

Many Legal Fields
Diversity of legal fields:
Copyrights dictates what content may be displayed and shared. It is sometimes called the hard law for regulations and treaties. There is also soft law, which is non-binding but used for legal directions.
Trademark, unfair completion and design are also relevant.
The Internet is not a revolution for law. The legal fields apply neutrally. The laws are regulated with the neutrality of technology

Consistency
How do we ensure consistency between all the legal fields? This is a big challenge
How do we apply these fields to a digital environment?

Trademark and Internet
A trademark has as its object of protection, signs capable of distinguishing the goods or services of one company from the signs of another company.

What is the exclusive right granted to the IP owner: This allows trademark owner to allow or permit the trademark in its distinctive function

How can the owner prohibit this?
Where there is a risk of confusion. Using the same trademark for similar goods.

Unauthorised Use of trademark in a fan page

  • Young user suing Ferrari trademark for a fan page that ended up getting a out of users.
  • Ferrari got in touch to run the site together
  • Was there an infringement in using it for a fan page?
  • There was no commercial use and no likelihood of confusion between Ferrari and the fan.
  • Was there any other IP right infringed?
  • If there was a copyright it would have been unlawful
  • Contractual relationship between Ferrari and the end users: Ferrari with the help of Facebook cut the boy’s ties to the fan page and took over.

Google Adwords

  • Allows third parties to enter some keywords that make them come up on the top page
  • Marks and Spencer entered INTERFLORA a protected trademark, in the adwords.
  • Interflora sued M&S for using the trademark with google adwords.
  • Was this a trademark infringement? (C/f Lecture 3)
  • Is there any risk of confusion
  • Is there a likelihood of confusion based on the reasonable end user? Depends on the size of the market and other factors.
  • There is likelihood of confusion and so a trademark infringement.

Copyright and Internet

  • Protects any kind of work and the protection extends to expression and not to ideas.
  • French case: idea of wrapping things that are outside is not a copyright. It’s just the idea of wrapping things.
  • Exclusive rights
    Patrimonial rights: right of reproduction, WIPO Copyright Treaty provides various patrimonial rights: right to copy (downloads), right to distribution (printing and distributing). Broadcasting (shown on TV and simultaneously displayed on another channel. This needs to be distinguished fro the right of communication to the public: Art 8)

Moral rights: Paternity right, the right to be named as the owner
Integrity right to not have work destroyed and modified

Exception and Limitations: Reference
3-step test of the Bern convention
Fair use in Common law countries and private use in Civil Law countries

  1. Linking/Hyperlinking
    Linking provides a link that redirects to the third party website. The targeted website still stores and controls the content of the work. The linking website just displays the information.
  2. Framing/ Embedding
    The targeted website still stores and controls the content. With framing the end users may not be aware to be directed to the third party website. With embedding, you are not aware you are redirected to a third party website.
    Framing enables user to see the content on the framing website without going to the third party website.
60
Q
  • Why is it a copyright infringement?
A
  • Exhaustion only relates to the original copy.
  • Answer according to the copyrights that we have seen.
  • The users are using the right of reproduction, which the right holder has not made available.
  • Due to the exception of private use, the user can use this content for his private use.
  • The user circumvents the Digital Rights Management (DRM- technical measures)
  • The DRM are protected under international treaties and users may not circumvent this except for private use
  • The software providing for the circumvention of the DRM is not for private use as it is available to everyone on the internet
  • 2013 French case: software has been deemed liable for infringement but not the individual private users.
61
Q

Limitation of liability of service providers: Safe harbour

A
  • Service providers may not be liable if they respect safe harbour
  • For copyrights it refers to the US copyright act (US DMCA) which provides exemptions if certain procedures are followed.
  • If service providers respect the notice and takedown, there shall not be an infringement.
  • E.g. Users can indicate to YouTube to take down unlawful content and they won’t be liable if they take it down.
  • What is the scope of mere technical and passive activity
  • What is a passive activity? The music industry is fighting against YouTube, saying they don’t have a passive activity. They make active recommendations to users to listen to. This is not a mere passive activity. YouTube shall not benefit from the safe harbour and they shall be liable.
  • Application of the notice and takedown procedure
  • In many Cases, there is just one url taken down but the infringers upload again in another url.
  • The industry claims that YouTube should remove any other similar content and not just the url.
  • Content ID YouTube Robot finds if there is an infringement and takes down automatically the content.
  • Dancing baby: Prince’s song was playing in the background and the robot took it down. The mum claimed fair use; the song was in the background. It was secondary content
  • Do the robots need to assess the fair use and exceptions
  • It was decided that the robot may assess the fair use but they have to be well trained to assess this
62
Q

Blocking injunctions

A
  • E.g. Swisscom shall block content if the right holder makes a claim. This is used by the music and film industry. They go to the Internet provider to block the access of the website.
  • On one hand, there is the freedom of Internet use, and the service providers have safe harbour. The right holders also have to right to enforce effectively their rights.
  • There are debates on how to enforce these 3 competing claims. Once Swisscom blocks, they can block both unlawful and lawful content.
  • Online providers have a relationship with further users. There is a chain of players all connected to each other. If the first license is stopped what happens to sub licenses?
  • The courts recognise independent rights of sublicenses even though initial right might be terminated.
63
Q

ADR Mechanisms

A
  • There are ADRs very popular and service providers develop their own mechanism. Ebay for example connects users together to address issues. It’s extrajudicial.
  • There is RLL: Europe building a body for online sales
64
Q

Trade Secrets

A
  • Besides IP rights, there are similar rights protected and are very important
  • Unfair competition, data bases
  • Trade secrets are info kept secret by companies and have commercial value. They are not enforced s IP rights as such but company can enforce these rights
  • Coca Cola case: The trademark is based on the secret of the recipe. It has been secret since 1883. It values around 40 b franc
  • Company can improve value through trade secret
  • How is it regulated?
  • Paris convention: Art 10 bis: unfair competition.
  • TRIPS agreement Art 39: protects trade secrets as such. Para 2 describes what a trade secret is.
  • Formula one case: Car companies copy from each other and spy on each other to find the best way to win a game. Maclaren has been found to infringe trade secrets of Ferrari. They convinced Ferrari employee to give them info.
  • The commercial value of a secret is based on the secret. It loses its value when the secret is made known.
  • NFL had a case before the regulation body. One team discovered the other was copying the signs they were making. It was not a trade secret if the info could be discovered by someone just watching the game
  • To conclude, its supplementary to IP, it’s usually intangible and difficult to protect: knowhow of the employees could a trade secret, its difficult to identify.
  • How do they protect? Non-disclosure agreements with third parties, employees, third parties.
  • Whistle blowers. There are big concerns of journalists and freedom of speech. For public interest, it might be lawful to disclose.
  • Assange and Wikileaks, Luxembourg leaks, Swiss leaks, Panama papers. They disclose information and may be liable for trade secrets. Directive says there’s no liability if it’s to disclose illegal activity. Journalists wan to extend this to all activity.
65
Q

Case Study

A
  • In lecture 4, we had phone corp selling under coolphones. Go back to case study for facts

JURISDICTION: Where can coolphones, the Jaoanese company sue?

  • Where is the defendant’s domicile? This is the general basic jurisdiction where the court can assess the damages worldwide. Panama
  • Can be choice of court.
  • WIPO Recommendations for protection of marks on the internent: Art 3 for determining targeting activity. North America. Also ALI
  • Where the damage occurred. Limited jurisdiction (America)
  • Is there a jurisdiction in SA? The server is located there. Is there any connecting factor? Is it enough to have activity directed to that state? There’s no clear answer. Probably no jurisdiction, because to have connecting factors. Preparatory acts maybe.

APPLICABLE LAW

  • Panama: general jurisdiction to claim damages in the US and worldwide. Which law will apply? Law where the rights are registered. In Panama, if you ask for damages in the US, there will apply US law for protection. For damages in Panama, it would be Panamanian law.
  • What would the Japanese do with the Panamanian judgment? How do they enforce it? Go the US and ask court to recognise the judgment
  • MR Biziness is buying the original phones in the USA and bringing them back to sell in the EU
  • What can we do? Is it possible for him to do this? We can block and stop him from doing this. What jurisdiction do we turn to? Either we go to defendant’s domicile (in Switzerland) or the place where the harmful event occurred (Europe)
66
Q

Case 2: International Dispute.

A
  • Where can Apple sue?
  • What are the criteria to find the targeting activity?
  • Currency and language is not sufficient to determine targeting activity.
  • What is the applicable law if Apple is suing in Patria one?
  • Understand the principles for the exam.
  • Where the IP right is registered if it is a registered right
  • If it is an unprotected right (copyright), it is where the protection is sough
  • Can be another law if it is a place with a closer connection (exception)
  • What enforcement measures will you claim if you go to Patria?
  • Cancel the trademark if they registered it.
  • Damages:
  • A. Unfair profits made by the defendant. How can we assess this? Can they claim all the profits?
    1. See if there’s an infringement. Is there confusion? No confusion, no infringement, no damages.
    1. What are the damages due to this infringement?
  • Is it 100% profit? Only the portion attributable to the infringement: only the use of ePod name, not advertising, design etc.
  • B. Royalty rates: that ePod would have paid for using the trademark
  • Lost profits: Apple has to show that without the infringement, they would have made themselves more profit
  • Damage (if US law is applied): Statutory damages. Court may take real damage and multiply by 3.
  • Depreciation of IP right: value of the iPod trademark is depreciated
  • Coca Cola case: Giant puppies. Royale de luxe claimed plagiarism.

For exam:

  • Understand the core principles
  • Give example cases
  • It can be theoretical question or case study.
  • Can ask to use a case to explain a principle.

IIPL EXAM (12 decks)

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