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Journal of Intellectual Property Law & Practice - current issue
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Updated: 29 min 31 sec ago
To make a business decision, a company may conduct a patent search to make sure that it will not infringe patents or that the technology under development will be patentable. Because a patent search may relate to technology development, a company must be aware of wilful infringement caused by acquiring a patent search report.
Wilful infringement occurs when ‘the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.’ If wilful infringement is established, courts may award treble damages to the patentee. By producing a patent search report, a company may be proved to learn an objectively high risk of patent infringement. Therefore it is necessary to analyse the risk of acquiring a patent search report and to figure out how to prepare a riskless report.
This article discusses five types of patent search report and identifies how each type may lead to wilful infringement. Further, drawing from the case law, this article provides five points which help prepare a riskless report: (i) retaining a competent counsel; (ii) being honest to your opinion counsel; (iii) framing reasonable claim construction; (iv) providing a comprehensive analysis rather than conclusory statements; (v) focusing on prosecution history estoppels.
This article is an investigation into the proposition that choreographers are not actively safeguarding their rights under copyright law. Unlike other authors such as composers, playwrights and screenwriters, choreographers are not as strongly represented by professional bodies: choreographers do not enjoy powerful trade union-type representation that actively serves to protect their interests.
In this regard, US choreographers enjoy not only stronger representation from Equity, but they can also benefit from the effective negotiations conducted on their behalf by the Stage Directors and Choreographers Society (SDC) established in 1959. The idea that choreographers will be forced to acquire a more sophisticated approach towards copyright ownership due to the burgeoning dissemination of dance works is also investigated. UK choreographers must therefore contemplate the long-term prospects of their creative endeavours and adopt measures to prevent others from wresting their rights to control the staging, performance, dissemination and adaptation of their works.
The choreographer must contend not only with a more vibrant marketplace for his or her works, but also with the greater opportunity for derogatory treatment and copyright infringement. UK choreographers should therefore secure more powerful representation so that they can attain parity with the status enjoyed by other authors in the performing arts.
This article reviews a 2014 decision of the New Zealand Court of Appeal in Karum v Fisher & Paykel Finance, where in considering a claim for non-literal infringement of software copyright the court adopted the reasoning of UK and US authorities. As with decisions in the UK and USA, no protectable expression was found, despite homage being paid to the applicability of non-literal infringement in software copyright cases.
Assuming the latter concept has validity, ‘it is necessary essentially to retrace and map each of the designer's steps—in opposite order in which they were taken in the program's creation’ (Computer Associates v Altai 982 F 2d 693, 707 (2d Cir 1992)). In this article, software engineering is employed to reveal the abstractions above program code by closely examining the design steps in software development models and in particular the Waterfall model. The objective is to ascertain if there are any areas left where protectable expression may reside within the hierarchy of abstractions which have not so far been excluded by courts. In this analysis software development work products (which may constitute ‘preparatory design material’) are comprehensively identified as a possible alternative basis for bringing claims of copyright infringement where similarities exist only at higher levels of abstraction.
UK, EU and New Zealand cases reveal very clearly the influence of US law in this field of copyright whether or not it has received specific acknowledgment. Through the Software Directive and the Court of Justice of the European Union (CJEU) the continental copyright tradition (Football Dataco Ltd v Yahoo Ltd, C-604/10, EU:C:2012:115, Opinion of A-G Mengozzi, paras 36–37) has now infiltrated traditional UK copyright concepts. However, this article argues that not only are the majority of the US tests still ‘irrelevant and exotic’ (H Laddie et al, The Modern Law of Copyright and Designs (2nd edn, Butterworths, 1995) para 20.58), but the application of the doctrine of non-literal infringement to software copyright (thought to be a ‘syllogism’ by the 2nd Circuit in Computer Associates v Altai) is a logical fallacy.
For national trade mark offices in the European Union (EU) and for the Office for Harmonisation in the Internal Market (OHIM), graphical representation was the insurmountable obstacle to the registration of non-traditional trade marks, such as sound, scent and taste marks, since the Sieckmann case. The removal of the graphical representation requirement for registration, as advocated by Dr Ralf Sieckmann, recommended by the Max Planck Institute and proposed for amendment of Directive 2008/95, and Council Regulation 207/2009, will open the door for the initial registration of non-traditional trade marks in the EU.
Scents, with their intimate access to the amygdala, are capable of conditioning consumers to remember a certain brand and to influence their moods. In the preparatory discussions leading up to the final drafts, sound files were mentioned as proper ways to disclose sound marks to competitors. Technology has reached a threshold whereby scents can be digitally encoded, thus travel the Internet, be stored, downloaded and decoded by the emittance of scents via affordable scent printers connected to smart phones.
This and other technologies will be assessed in light of the remaining Sieckmann representability requirements: ‘clear and precise, self-contained, easily accessible, intelligible, durable and objective.’ Because scent marks can, just like sound marks, be represented with technology using digital files, the Internet and a play gadget, the ‘emancipation’ of scents into the group of sensorial trade marks that are registrable in the EU seems inevitable.
Using data collected by the author's firm as consultants in the recent ‘Blurred Lines’ case, in which the family of Marvin Gaye, Jr accused Pharrell Williams, Robin Thicke and Clifford Harris, Jr of infringing musical elements of Gaye's ‘Got to Give It Up’, this article addresses the relatively neglected issue of the apportionment of value that is directly attributable to an intellectual property asset.
Such apportionment is particularly complex in the case of recorded music, which may include multiple copyright holders and requires two steps described in the article. The first is determining what portion of the copyright to a work is relevant to charges of infringement; the second is determining the multiple factors that contribute to the financial success of that work.
The author argues that in this case, in which the supposedly infringed musical elements are covered by only half of one of the two relevant copyrights and in which much of the song's value is demonstrably attributable to non-copyright factors, considerably less than a quarter of the value of the ‘Blurred Lines’ could rightfully be attributed to the contested elements protected by Gaye's copyright.
The concept of ‘human embryo’ refers to the organisms that have inherent capacity of developing into a human being. The mere fact that an organism initiates a development process is not enough to consider it as such. In any case, it is for the national courts to determine whether or not, in the light of knowledge which is sufficiently tried and tested by international medical science, the specific organisms which are the subject of the applications for registration have the inherent capacity to develop into a human being.
The Canadian Federal Court of Appeal recently endorsed the relevance of non-infringing alternatives in assessing patent damages.
Whether a negative licence is to be considered as granting a positive right to use the patented invention in the future or as merely waiving claims for past infringement depends on the parties' intentions in the individual case.
The US Court of Appeals for the Federal Circuit provides guidance on practice before the US Patent Trial and Appeal Board in inter partes review proceedings (IPR) with respect to claim construction and motions to amend. Specifically, the Federal Circuit confirmed (i) that the Board had the discretion to apply the ‘broadest reasonable interpretation’ claim construction standard to IPRs, and (ii) that the Board had discretion to require a patentee to show that its proposed substitute claims are patentable over all prior art of record, even if certain prior art did not form the basis for institution of the proceedings with respect to the corresponding challenged claim.
Upholding the decisions of the Office for Harmonisation in the Internal Market (OHIM), the General Court held that two famous chequerboard patterns designed by Louis Vuitton were unsuitable for registration as Community trade marks (CTMs) for lack of distinctiveness; Louis Vuitton provided insufficient evidence that the claimed marks had acquired distinctiveness through use in a substantial part of the EU.
The Court of Justice of the European Union (CJEU) ruled that a copyright holder's distribution right may be infringed even by merely advertising copyright-protected works for sale over a website.
A single judge of the Federal Court of Australia has declined to grant an order that would have required an Australian Internet service provider (ISP) to disclose the identities of some of its account holders to the owner of the copyright in the film Dallas Buyers Club, on the basis that the rights holder intended to make impermissible demands of money from those account holders.
The Intellectual Property Enterprise Court (IPEC) delivered its judgment in an action concerning—among other things—joint authorship and ownership of copyright in the album version of a song, ‘Touch Sensitive’, by the band The Fall.