Thursday, November 30, 2006

Data Confidentiality and Privacy [the Hello! Case - UK]

A victory for OK! magazine in its case against Hello! would effectively create a new intellectual property right in confidential information, lawyers for Hello! have told the House of Lords in a case regarding the wedding photographs of Michael Douglas and Catherine Zeta-Jones.

Douglas and Zeta-Jones had sold the exclusive rights to publish approved pictures of their wedding in 2000 to OK!, but Hello! published unauthorised photos, which are the subject of the appeal to the House of Lords.

Hello! has already paid out thousands of pounds to the couple for distress caused by the publication of the photos, which Hello! is no longer appealing. This case has been brought by OK!, which argues that it had rights in Douglas and Zeta-Jones's confidential information.

James Price QC, the lawyer representing Hello!, argued that while wedding photographs can be private, they have never been viewed as being confidential and therefore cannot constitute a trade secret. Hello! may have breached the couple's privacy, but no duty was owed to OK!

OK!'s lawyers argued that the pictures were confidential, and that Hello!, knowing of the deal between the couple and OK!, owed a duty of confidence to the couple and, via the deal, to OK!

"The key issue to be decided is whether a third party, such as OK!, can have enforceable rights in someone else's information," said Gillian Black, a lecturer in commercial law at Edinburgh University who attended the hearings and provided an account of the arguments to OUT-LAW.

"If they can, then the trade in celebrity gossip and 'exclusives' will benefit from an identifiable legal basis – and the value of such information can be expected to rise accordingly," said Black.

OK!'s lawyer Richard Millett QC said that he was not attempting to establish a right of property in photographs of the wedding, but media lawyers have said that if the ruling went OK!'s way then it would effectively create a new law protecting the image of a person.

The case has been running for six years. In 2003 it was found that Hello! had caused OK! commercial damage and was ordered to pay £1 million in damages. Hello! successfully challenged that ruling and was awarded £2 million damages, at which point OK! sought and was granted permission to appeal to the House of Lords, the highest court in England.

Legal observers believe it could be March 2007 before a verdict is given, in a case which could fundamentally alter English confidentiality and privacy law.

Monday, November 27, 2006

Vaunted Legal Scholar switches sides in Patent Case [US]

One of the nation's top legal scholars on intellectual property has switched sides in a U.S. Supreme Court case that could decide how patents are granted.

Mark Lemley, a Stanford University professor and of counsel at Keker & Van Nest in San Francisco, initially asked the high court to hear KSR International Co. v. Teleflex Inc. But then, in October, Lemley filed a brief asking the Court to take no action in the case, which is scheduled for oral argument on Tuesday.

Lemley has already landed on the winning side of two high court patent fights this year. He filed an amicus brief supporting eBay Inc., which won its closely watched battle against MercExchange LLC in May. The next month he represented the defendant in LabCorp. v. Metabolite, persuading the Court to punt the case -- after it had already granted certiorari -- because of a procedural issue. His move in the current case could be a big boost to Teleflex, whose patent on an electronic gas pedal KSR is seeking to invalidate.

It's extremely rare, say Court observers, for a practitioner to change positions in a high court case. Roy Englert, a name partner at Robbins, Russell, Englert, Orserk & Untereiner in Washington, D.C., who has argued 16 cases before the Supreme Court, says the only time he can recall it happening was in 1989, when the U.S. solicitor general's office withdrew its support in a case it initially urged the Court to hear.

That's what happened with Lemley. In June he and 23 other law professors urged the Supreme Court to hear KSR's appeal. Then, in October, he and four different law professors signed on to an amicus brief siding with Teleflex. What happened? Lemley says that after he filed his June certiorari petition, the U.S. Court of Appeals for the Federal Circuit issued three decisions that made him change his mind. "If the Federal Circuit had issued those decisions two years ago, I would not have supported KSR's petition for cert," he says. He also notes that two new law review articles -- written by two of the professors who joined him on the Teleflex brief -- made him realize that the status quo doesn't need fixing.

The KSR case initially attracted the attention of reform-minded patent professors like Lemley, who believed that the Federal Circuit had been too loose with an important standard -- that patents should not cover obvious inventions. At the district court, KSR had argued that Teleflex's patent should be invalidated because it covered an obvious invention. Neither gas pedals nor electronic sensors are new technology, KSR argued. There was nothing innovative in combining the two. The court agreed, but the decision was reversed on appeal. The Federal Circuit ruled that because no one had suggested combining these two technologies in any written prior art, the invention was not obvious.

In their petition, Lemley and company argued that by relying so heavily on written prior art, the Federal Circuit had lowered the patent bar too far. Sometimes an invention is so obvious that no one ever even bothers to write about it, they said.

But in the October amicus brief, Lemley urged the Court not to mess with the Federal Circuit's current standard. "I still think there are obvious patents that slip through, but I think the Federal Circuit's test is the best we've got right now," Lemley now says.

That test is an attempt to overcome the big problem with the obviousness standard. That is, just about everything seems obvious in retrospect (that's why they call football fans Monday morning quarterbacks). When an invention -- like Teleflex's gas pedal -- combines two other inventions, this "hindsight effect" is particularly acute. In its test, the Federal Circuit looks at the prior art to see if there was ever any suggestion made to combine the inventions. If there wasn't, the patent stands. KSR and its supporters criticize the test as being too rigid, because it relies too heavily on written evidence.

Lemley changed his mind about this after reading a paper written by University of Richmond School of Law professor Christopher Cotropia, who found that the court does consider sources besides written prior art. Cotropia, who was a student of Lemley's at the University of Texas School of Law and cowrote the Teleflex brief, analyzed three years' worth of Federal Circuit decisions involving obviousness. (The Notre Dame Law Review plans on publishing his article in early 2007.) Lemley also looked at research done by Gregory Mandel, a professor at Albany Law School in New York. Mandel had 247 law student volunteers pose as jurors, and he split them into two groups. One group was told about an invention, and then learned the history of its discovery. This group was much more likely to see an invention as obvious. (It's like being told Bruce Willis's character is a ghost before sitting down to watch "The Sixth Sense.") The other group learned the invention's history first, and was less likely to see the invention as obvious.

In his paper Mandel asserts that "the hindsight problem pervades patent law to an extent not previously recognized." According to Mandel, the Federal Circuit's test is not too strict. In fact, Mandel says that almost no test may be too strict to get rid of hindsight bias. Mandel's study appears in the November issue of the Yale Journal of Law and Technology.

Both Mandel and Cotropia started their research prior to the KSR case. "I only heard of this case when the amicus brief from the law professors was filed last year," Cotropia says, noting that the Federal Circuit opinion in KSR was unpublished. But the results of their research have grown in importance since the Supreme Court took the case. The research has convinced Lemley that "there is a serious hindsight bias problem," he says. "But the Federal Circuit has actually done a decent job of distinguishing cases in which people come up with a plausible story for obviousness from those in which they don't."

Other patent law luminaries remain on KSR's side. Robert Merges, director of the Berkeley Center for Law & Technology, was one of the 24 academics who signed the cert petition, and he wrote an October amicus brief in favor of KSR. Merges is aware of the new research. He says that Mandel's experiment was a "very controlled laboratory experiment. As [Mandel] would tell you, it is always a leap of faith to go from a study to a proposal." Merges remains convinced of the need to tighten the Federal Circuit's obviousness standard. "Most everybody in the software industry thinks that the standards for patents have become so low that anyone could just about patent anything," he says.

Big high-tech companies such as Intel Corp., Cisco Systems Inc. and Microsoft Corp. have filed briefs in support of KSR. But Teleflex has an equally impressive list of amici: General Electric Co., 3M, The Procter & Gamble Co. and half a dozen other corporations.

Lemley's support, however, appears to have tipped the scale a bit in Teleflex's favor. Only 14 of the 24 law professors who supported KSR's cert petition signed on to Merges's brief. This is good news to Teleflex's counsel, Supreme Court veteran Thomas Goldstein: "In a highly specialized area of law, justices will care whether the leading experts in the field are on one side or the other," says the Akin Gump Strauss Hauer & Feld partner. "You would certainly much rather have him on your side than against you."

KSR's lawyer James Dabney, a partner at Fried, Frank, Harris, Shriver & Jacobson, says that the change doesn't weaken his client's position at all: "The solicitor general of the United States and the Patent and Trademark Office have filed a brief that strongly disagrees with Mr. Lemley's newly expressed views," he wrote in an e-mail.

Lemley says he has no stake in the game: "I don't really care who wins. My concern is that the Supreme Court not go overboard and throw out the test entirely in favor of a new test. I want them to be aware of these new studies, and that's one of the roles of the amicus brief."

Monday, November 20, 2006

Universal Music Sues MySpace for Copyright Infringement

The Universal Music Group, the world’s largest music company, filed a copyright infringement lawsuit yesterday against MySpace, the popular social networking Web site, for allowing users to upload and download songs and music videos.

The suit, which also names MySpace’s corporate parent, the News Corporation, comes as the recording industry contends with how to exploit its copyrighted material online. The issue has taken on more importance as services built around user-generated content become popular and generate advertising revenue.

The lawsuit, filed in federal court in Los Angeles, is seen as part of a strategy by Universal to test provisions of a federal law that provides a “safe harbor” to Internet companies that follow certain procedures to filter out copyrighted works. The law requires sites to remove such content after being notified by the copyright holder.

If Universal can win in court, it is likely to gain leverage in negotiating licensing terms with user-driven services — just at the moment that those services are attracting deep-pocketed partners.

Earlier this year, Universal’s chief executive, Doug Morris, publicly identified the YouTube video-sharing site and MySpace as copyright infringers. Universal successfully negotiated to take a stake in YouTube shortly before it was sold to Google for $1.65 billion, according to executives briefed on the deal who spoke on condition of anonymity. But licensing talks with MySpace recently reached an impasse.

MySpace said in a statement yesterday that it complied with the requirements of federal law. The company said it had kept Universal, a unit of Vivendi, “closely apprised of our industry-leading efforts to protect creators’ rights, and it’s unfortunate they decided to file this unnecessary and meritless litigation.”

“We provide users with tools to share their own work — we do not induce, encourage, or condone copyright violation in any way,” MySpace said.

Last month, Universal filed similar copyright claims against two Internet companies that allow video sharing, Grouper Networks and Bolt. But in this instance, the music company is taking on a Web site that has become a cultural phenomenon, drawing tens of millions of users — and one that some see as a powerful tool for performers to get exposure for their music and build networks of fans.

One of the Universal’s own labels, Interscope Records, has a deal to distribute music by artists who are signed to a label run by MySpace. Interscope released a CD from a MySpace act, the Hollywood rap-rock artist Mickey Avalon, earlier this month.

Universal’s lawsuit comes despite an announcement last month by MySpace that it had adopted technology to identify copyrighted material in order to enable compensation for the owners.

MySpace said separately yesterday that it planned to deploy a new tool that would let copyright owners flag videos posted by users without permission; it said it would remove any videos that received such a marking.

In court papers, Universal noted that unauthorized copies of music and video from one of its biggest acts, U2, were easily available on the site, as is material from an unreleased album by the rap star Jay-Z.

In a statement yesterday, Universal said its music and videos “play a key role in building the communities that have created hundreds of millions of dollars of value for the owners of MySpace. Our goal is not to inhibit the creation of these communities, but to ensure that our rights and those of our artists are recognized.”

Anthony Berman, a San Francisco lawyer specializing in entertainment and Internet issues, said that while the procedures for an Internet company to receive a “safe harbor” under the law were unambiguous, there might be room for legal debate about exactly which sorts of services could seek it.

Mr. Berman said Universal’s case was intended more to press MySpace into a lucrative licensing deal rather than into a real court fight. “It’s a way to get MySpace to the table,” he said. “It’s less about piracy. It’s a lot about control.”

Sunday, November 19, 2006

Guidance on UK resale royalty rights collection

The UK Patent Office posted this advice on its website earlier this week on the collection of artists' resale royalty rights: "How is the right managed?

Resale right is managed by collecting societies; individual artists are not able to request payments directly. This means that the seller is required to pay all royalties to a collecting society who will then distribute them to the artist.

Which collecting society?

Under the Regulations an artist may mandate which collecting society collects resale royalties on his or her behalf. It is the artist’s choice as to which collecting society they use. Currently we are aware of two collecting societies operating in this area; the Design and Artists Copyright Society (DACS) and the Artists’ Collecting Society (ACS). However, there may be other collecting societies active in this area.

If an artist has not mandated any particular society then the collecting society which manages both copyright, in general, for all artists and artist’s resale right will be deemed to be mandated. Currently DACS is the only society which meets this criterion. Therefore any artist who has not mandated another society will be deemed to have mandated DACS to collect on their behalf. ACS was established solely for the collection of resale right and can only collect on behalf of artists who mandate them to do so.

Whom should I pay?

If you have completed a sale on which a royalty is to be paid, then this royalty should be paid to the collecting society which requests payment and has a mandate from the artist to collect on their behalf. If no society has such a mandate, the payment should be made to DACS who will be deemed to have been mandated in this case.

DACS will request payment of royalties on all sales of works either by artists who have mandated them to do so or by artists who have not mandated any society. DACS will not request payment on behalf of an artist whom they are aware has mandated another society. ACS will only request payment on behalf of an artist who has mandated them to do so.

Status of this guidance

This guidance provides information about the collection of resale royalties and has no legal force. This guidance should not be read as endorsing any particular collecting society, neither should the absence of a mention of any particular society be taken as indication that that society does not comply with the regulations in any way". The site then refers readers to the websites of DACS and the ACS for further information.

Monday, November 06, 2006

Geographical Indication for Pashminas [India]

Kashmir Wraps Up Geographical Indication for Pashminas
The area of geographical indications is one of the most contentious issues in IP rights protection. In India, the issue is further complicated by the abundance of cultural symbols and products. Previous attempts to protect the geographical indications Basmati, Neem and Darjeeling have emphasized the importance of protecting such names.


The term 'geographical indication' refers to a word or phrase that identifies a product as originating from a particular place, where a particular quality, reputation or other characteristic of the product is attributable to its geographical origin. Geographical indications need not always be geographical names (eg, the name of a town, region or country), but may also consist of symbols.

Kashmir Pashmina

In its efforts to protect the name 'Kashmir pashmina', the craft development commissioner for handicraft, the Ministry of Textiles, the government of India and the Directorate of Handicraft under the government of Jammu and Kashmir filed an application for 'Kashmir pashmina' to be registered under the Geographical Indications of Goods (Registration & Protection) Act 1999 (for further details please see "Registration of Geographical Indications"). The controller general of patents, designs and trademarks has now awarded the product protection under the act.

Kashmir goats, or Himalayan mountain goats, are a breed of domestic goat. Pashm is the Persian word for wool, and a pashmina is pashm in its woven form - the highest quality of cashmere. In Kashmir, kashmir goats are often referred to as the pashmina goat. Pashm has special characteristics due to its long, fine fibres, which can be as thin as 12 microns. Thinness is a unique and distinguishing feature of the Kashmir pashmina. A pashmina is light, soft and warm and feels luxurious. Natural colours of the pashmina include white, grey, red, brown and black.

The fabric has a historic bond with the region and its culture and traditions. The weave of the fabric is so individual that the pattern instructions are in the form of a poem recited by the head of the family; the weavers follow the instructions and the pattern is unknown to them until it is finished.

Wider Implications

The registration of Kashmir pashmina as a geographical indication is increasingly important in the current IP climate as India is arguing, along with other developing countries, for the expansion of Article 23 of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). Under the TRIPs Agreement, 'geographical indications' are defined as "place names used to identify the origin and quality, reputation or other characteristics of products". Article 22 provides standard protection to the majority of geographical indications, whereas Article 23 awards a higher level of protection to wines and spirits.


The registration of Kashmir pashmina as a geographical indication is a welcome gesture as national protection is an essential criterion for the award of global protection. The Indian government has become more cautious in protecting geographical indications in the light of a recent decision of the US Trademark Trial and Appeal Board, which upheld the Tea Board of India's claim for the indication, mark and logo for Darjeeling tea. It is the government's duty to take positive steps to protect geographical indications, as the interests of communities, rather than just individuals, are at stake.

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