While we are used to interpret EU directives in the sense that they define minimum requirements the national laws have to fulfil, an exception to this rule may be found in the ECJ case (Cassina ./. Peek & Cloppenburg ), which was initiated by the BGH in the case I ZR 247/03, known as “Le-Corbusier-Möbel II”.
The defendant, a well-known brand of fashion shops in Germany, had legally bought armchairs designed by Le Corbusier in Italy. At that time, the Italian Copyright excluded furniture from protection. The armchairs have been used in Germany in a lounge in front of the changing room and as a decoration in the window of the shop.
One of the questions conferred to the ECJ was whether or not this use was a “distribution to the public” in the sense of Article 4(1) of Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society.
The ECJ answered in the negative by pointing out that since the directive is intended to implement at Community level the Community’s obligations under the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty, the wording of the directive needs to be interpreted in the light thereof. Those Treaties link the concept of distribution exclusively to that of transfer of ownership.
The BGH argues that the german § 17 UrhG implementing the right to distribution to the public of Article 4(1) of Directive 2001/29/EC into german law has to be interpreted in conformity with the directive. This is not very surprising. More surprising is how this conformal interpretation is achieved. The BGH argues that the purpose of the directive is not only to ensure a minimum protection but rather to harmonize the application of copyright in the information society so as to prevent a refragmentation of the internal market due to significant differences in protection (cf. e.g. recital 6 of the directive). As a consequence, the interpretation has to respect this purpose.
The latter object, however, may only be achieved if the directive also defines a maximum protection conferred in the member states.
The interesting point for me is that the same argument can not only be applied to the right to distribution to the public but generally to any right conferred by the directive 2001/29/EC. It would be interesting to systematically check the consequences of this reasoning onto the national application of copyright law rather than waiting for the pertinent decisions of the BGH.
Tuesday, 30 August 2011
Friday, 19 August 2011
New York, New York - a helluva town
The trade secrets case being interesting enough, it is even more interesting to see how a New York judge lost his professinal aloofness when it came to the subway. This is what the judge had to say:
To the parties in this case, subway brakes are known as “Brake Friction Cylinder Tread Break Units” (“BFC TBU”). For the rest of us, BFC TBU are “that loud squeaking, sparking braking system that so reliably stops the New York City Transit subway system.” ... Twenty-four hours a day and 365 days a year, the City’s subway cars safely stop at 468 passenger stations—and, as any straphanger knows, many times in between—depositing riders of all classes and descriptions at homes, workplaces, ballparks, and every other destination imaginable. See generally MacWade v. Kelly, 460 F.3d 260, 264 (2d Cir. 2006) (“The New York City subway system … is an icon of the City’s culture and history, an engine of its colossal economy, a subterranean repository of its art and music, and, most often, the place where millions of diverse New Yorkers and visitors stand elbow to elbow as they traverse the metropolis.”). The subway is an indelible feature of the City’s culture. Its legend and lore fascinate locals and visitors alike. See, e.g., Carrie Melago, It’s the Rail Thing: Subway Ride Record is Official, N.Y. Daily News, Aug. 8, 2007, at 24 (reporting that six alumni of Regis High School set a new world record for stopping at all 468 stations on a single fare: 24 hours, 54 minutes, and 3 seconds). A point of personal pride for many New Yorkers, the City’s subterranean transit has appeared in song, on stage and screen. See, e.g., Leonard Bernstein, et al., “New York, New York,” from On the Town (“New York, New York—a helluva town, / The Bronx is up but the Battery’s down, / And the people ride in a hole in the ground; / New York, New York—It’s a helluva town[!]”), as quoted in The Oxford Dictionary of Humorous Quotations 329 (Ned Sherrin, ed., 1995) (attributed to Betty Comden and Adolph Green, lyricists). The subway’s rhythm and sound have also rumbled into the canon of American literature. See, e.g., Tom Wolfe, The Bonfire of the Vanities 36 (Farrar Straus Giroux 1998) (1987) (“On the subway, the D train, heading for the Bronx, Kramer stood in the aisle holding on to a stainless-steel pole while the car bucked and lurched and screamed.”). Moving forward, our next stop is the trade secret dispute concerning the distinctive brakes used by the New York City subway system.
I wonder if the cultural importance of "that loud squeaking, sparking braking system" is of any advantage for the right owner.
Attorneys do not lie - at least not systematically
The decision discussed in my previous post has provoked a sharp reaction from the German association of attorneys at law (Deutscher Anwaltverein).
Says its president:"it is surprising that the talk is about 'systematic manipulation' whilst the 'empiric findings of the judges' are derived from specific statements of attorneys". One might wonder if finding systematic deviations from a number specific probes is not what empiricism is all about... Still, I feel that the word "systematic" has some kind of an "organized crime"-flavor whcih is maybe ideed somewhat inappropriate.
However, the rumor goes that the criminal case against the attorneys has been dropped.
Says its president:"it is surprising that the talk is about 'systematic manipulation' whilst the 'empiric findings of the judges' are derived from specific statements of attorneys". One might wonder if finding systematic deviations from a number specific probes is not what empiricism is all about... Still, I feel that the word "systematic" has some kind of an "organized crime"-flavor whcih is maybe ideed somewhat inappropriate.
However, the rumor goes that the criminal case against the attorneys has been dropped.
Tuesday, 2 August 2011
Thou shalt not lie! - The truth about the amout in dispute
Despite of the uncontestable reputation of us german patent attorneys as advocates of honesty and truthfulness, the Düsseldorf Upper District Court (OLG Düsseldorf) appears to have some doubts in this regard.
Mr. Kühnen, the chief judge of the court’s chamber specialized in IP is not the only german judge who is currently concerned about this, in particular when it comes to money.
The first thing the judges decide on in a trial in Germany is the amount in dispute, i.e. the economical value of the right under dispute. This is an important issue because not only the amount of litigation costs refunded by the underlying party but also the court fees depend on this value. In former times, the attorney’s fees to be paid by the client used to be calculated from the amount in dispute as well. This means that not only the court but also the attorneys had a financial interest in not to chose an inappropriately small value for this. Since direct information on the economical importance of the litigation is not available for the judges in most cases, they have to rely on the estimates and information obtained from the parties.
The Düsseldorf OLG and the Xth senate (responsible for patents) in the Federal Supreme Court (BGH) have both identified a recent tendency that the law firms charge their clients on an hourly basis (which is permissible if the result is higher than the one calculated on the basis of the amount in dispute). The consequence is that the parties (and their attorneys) might not have an interest in providing a reasonable estimate anymore but rather to reduce the risk of litigation by providing unreasonably low estimates for the amount in dispute.
One might think that the courts would helplessly come to terms with their fate and simply take over the flimsy numbers provided by the parties. Not so the OLG Düsseldorf!
The Düsseldorf OLG has addressed this problem in two decisions: OLG Düsseldorf, April 15. April 2010 — I-2 W 10/10 “Du sollst nicht Lügen” (you shall not lie) and OLG Düsseldorf, May 10. April 2011 — I-2 W 10/10 “Du sollst nicht Lügen II” (you shall not lie II - not yet available online, published in Mitt. 7-8/2011, 383).
In the first decision, the prevailing plaintiff had originally given an estimate of EUR 200.000 for the amount in dispute and has asked to correct this value to 30.000.000 EUR after the decision was made (in a procedure for fixing and distributing the legal costs which takes place after the decision on the main issue).
The underlying defendant did not find this very sporty and argued that his confidence in the plaintiff’s original estimate should be protected and that the plaintiff should not be rewarded for obvious lies. After all, this is just as if you were entitled to double the stakes in a poker game after not only having seen the cards of your buddy but even after the croupier has decided who has won!
Finally the amount in dispute for this case was fixed by the court to EUR 2.050.000 based on the evidence provided by the plaintiff.
The Düsseldorf OLG argued that the confidence in a lie may not be protected to the detriment of the state treasury and that the true amount in dispute is to be fixed according to the true, factual circumstances.
In the second decision, the tone is even sharper: If the parties do not suitably contribute to an adequate assessment of the value under dispute, the court may estimate a value which is sufficiently high to reliably motivate the parties to fulfil their duty to contribute in a request to correct the value under dispute. To use the picture of the poker game, the croupier is entitled to raise the stakes to a really painful amount if he is bored by the players toying with pennies only.
This is not all: if the party refuses cooperation to an adequate setting of the value under dispute, this will generally lead to the suspicion of an attempted financial fraud to the detriment of the state treasury, which may result in a criminal liability.
As an aside: an attorney who has made himself liable to prosecution will inevitably lose his accreditation. In sincerely think that this will change the way of thinking on the amount in disputeSo better keep up with the truth!
Mr. Kühnen, the chief judge of the court’s chamber specialized in IP is not the only german judge who is currently concerned about this, in particular when it comes to money.
The first thing the judges decide on in a trial in Germany is the amount in dispute, i.e. the economical value of the right under dispute. This is an important issue because not only the amount of litigation costs refunded by the underlying party but also the court fees depend on this value. In former times, the attorney’s fees to be paid by the client used to be calculated from the amount in dispute as well. This means that not only the court but also the attorneys had a financial interest in not to chose an inappropriately small value for this. Since direct information on the economical importance of the litigation is not available for the judges in most cases, they have to rely on the estimates and information obtained from the parties.
The Düsseldorf OLG and the Xth senate (responsible for patents) in the Federal Supreme Court (BGH) have both identified a recent tendency that the law firms charge their clients on an hourly basis (which is permissible if the result is higher than the one calculated on the basis of the amount in dispute). The consequence is that the parties (and their attorneys) might not have an interest in providing a reasonable estimate anymore but rather to reduce the risk of litigation by providing unreasonably low estimates for the amount in dispute.
One might think that the courts would helplessly come to terms with their fate and simply take over the flimsy numbers provided by the parties. Not so the OLG Düsseldorf!
The Düsseldorf OLG has addressed this problem in two decisions: OLG Düsseldorf, April 15. April 2010 — I-2 W 10/10 “Du sollst nicht Lügen” (you shall not lie) and OLG Düsseldorf, May 10. April 2011 — I-2 W 10/10 “Du sollst nicht Lügen II” (you shall not lie II - not yet available online, published in Mitt. 7-8/2011, 383).
In the first decision, the prevailing plaintiff had originally given an estimate of EUR 200.000 for the amount in dispute and has asked to correct this value to 30.000.000 EUR after the decision was made (in a procedure for fixing and distributing the legal costs which takes place after the decision on the main issue).
The underlying defendant did not find this very sporty and argued that his confidence in the plaintiff’s original estimate should be protected and that the plaintiff should not be rewarded for obvious lies. After all, this is just as if you were entitled to double the stakes in a poker game after not only having seen the cards of your buddy but even after the croupier has decided who has won!
Finally the amount in dispute for this case was fixed by the court to EUR 2.050.000 based on the evidence provided by the plaintiff.
The Düsseldorf OLG argued that the confidence in a lie may not be protected to the detriment of the state treasury and that the true amount in dispute is to be fixed according to the true, factual circumstances.
In the second decision, the tone is even sharper: If the parties do not suitably contribute to an adequate assessment of the value under dispute, the court may estimate a value which is sufficiently high to reliably motivate the parties to fulfil their duty to contribute in a request to correct the value under dispute. To use the picture of the poker game, the croupier is entitled to raise the stakes to a really painful amount if he is bored by the players toying with pennies only.
This is not all: if the party refuses cooperation to an adequate setting of the value under dispute, this will generally lead to the suspicion of an attempted financial fraud to the detriment of the state treasury, which may result in a criminal liability.
As an aside: an attorney who has made himself liable to prosecution will inevitably lose his accreditation. In sincerely think that this will change the way of thinking on the amount in disputeSo better keep up with the truth!
Monday, 25 July 2011
Family Affairs - BGH X ZR 77/10 "Treppenlift"
Family Affairs - BGH X ZR 77/10 "Treppenlift"
Hitherto, the german judicial system had the reputation that it's first instance has the character of being closer to alternative dispute resolution (ADR) than to a real trial. Indeed, the possibilities to file furhter arguments, requests or evidence have been fairly generous as compared to e.g. those of our friends in good old England.
Indeed, the efforts made in the first instance to convice the judge have sometimes been fairly poor because the parties felt that it would be sufficient to get their stuff together when things are getting serious in the 2nd instance.
In an attempt to tighten up the procedure, the general procedural rules (ZPO-Zivilprozessordnung) has been amended as of 2002 and similar amendments have been introduced in §83 and §117 of the patent act (PatG) as of October 2009 for the nullity procedure. In a nutshell, arguments, requests and evidence is considered late if it could have been filed earlier.
Still, some of my colleagues are not yet very used to this and the case-law, in particular in patent matters, is not yet very detailed.
The decision “Treppenlift” BGH X ZR 77/10 is, as far as I know, one of the first decisions where the supreme court (BGH) has overruled the decision of the 2nd instance upper district court which considered a defence argument as being late-filed.
The case at issue had 2 defendants, one of which was a natural person A and the second was a a corporate body B, the manager C of which was married to A. A argued in the 2nd instance that the original inventor of the patent in suit was actually her husband C and that the invention was unlawfully usurpated by the plaintiff.
However, the right to raise the unlawful usurpation as a counterclaim is limited to the injured party C, who was, himself, not party of the infringement procedure and who had transferred the right to enforce the rei-vindication claim to A only after the completion of the 1st instance.
The upper district court found that, given the close relation between C and the defendants, this defence argument could have been filed earlier. After all, C had been personally attending to the procedure, although not as a party but only in his function as a representative of a party.
The BGH found that this reasoning was incorrect because there was no duty to C to transfer his rights at a given time and that A and B could not have argued with the unlawful usurpation prior to this transfer. As a consequence, the late-filing was due to the late completion of this transfer of rights rather than to any negligence of the parties.
In wonder if the denfence that late-filed material had been in the possession of a close relative will work for other cases as well.
Hitherto, the german judicial system had the reputation that it's first instance has the character of being closer to alternative dispute resolution (ADR) than to a real trial. Indeed, the possibilities to file furhter arguments, requests or evidence have been fairly generous as compared to e.g. those of our friends in good old England.
Indeed, the efforts made in the first instance to convice the judge have sometimes been fairly poor because the parties felt that it would be sufficient to get their stuff together when things are getting serious in the 2nd instance.
In an attempt to tighten up the procedure, the general procedural rules (ZPO-Zivilprozessordnung) has been amended as of 2002 and similar amendments have been introduced in §83 and §117 of the patent act (PatG) as of October 2009 for the nullity procedure. In a nutshell, arguments, requests and evidence is considered late if it could have been filed earlier.
Still, some of my colleagues are not yet very used to this and the case-law, in particular in patent matters, is not yet very detailed.
The decision “Treppenlift” BGH X ZR 77/10 is, as far as I know, one of the first decisions where the supreme court (BGH) has overruled the decision of the 2nd instance upper district court which considered a defence argument as being late-filed.
The case at issue had 2 defendants, one of which was a natural person A and the second was a a corporate body B, the manager C of which was married to A. A argued in the 2nd instance that the original inventor of the patent in suit was actually her husband C and that the invention was unlawfully usurpated by the plaintiff.
However, the right to raise the unlawful usurpation as a counterclaim is limited to the injured party C, who was, himself, not party of the infringement procedure and who had transferred the right to enforce the rei-vindication claim to A only after the completion of the 1st instance.
The upper district court found that, given the close relation between C and the defendants, this defence argument could have been filed earlier. After all, C had been personally attending to the procedure, although not as a party but only in his function as a representative of a party.
The BGH found that this reasoning was incorrect because there was no duty to C to transfer his rights at a given time and that A and B could not have argued with the unlawful usurpation prior to this transfer. As a consequence, the late-filing was due to the late completion of this transfer of rights rather than to any negligence of the parties.
In wonder if the denfence that late-filed material had been in the possession of a close relative will work for other cases as well.
Wednesday, 13 July 2011
Essentiallity Test Revisited - Deleting Features From the Claims before the EPO
K's law discusses the decision T 747/10 today, where the EPO technical board of appeal applies the "essentiallity test" in the Gidelines for examination as develpoed in T 0331/87 is applied and makes an attempt to put it into a more precise form.
This test says that the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:
The argument is a little more hidden in the decision T 747/10, but it appears that distinguishing between cases where more than one alternative is mentioned and cases where only one alternative is mentioned is equivalent to answering the question whether or not the broader claim is supported by the specification and is limited to the scope within which the invention makes a technical contribution to the prior art.
So why did the BoA not refer to Art. 84 EPC?
For the ”Houdaille decision T 0331/87, the case is clear: This was an opposition procedure and the BoA was simply not entitled to carry out an examination on Art. 84 EPC. In the light of this finding, it appears that this groundbreaking decision is circumventing the statutory limitation to the grounds for opposition set out in Art. 100EPC and has to be questioned.
For the case T 747/10, the application of Art. 84 EPC would have required reverting the case to the Examining division for carrying out the examination on this article.
I wonder if failure to do so could be considered a violation of the applicant’s right to be heard?
This test says that the removal of a feature from a claim does not violate A 123(2) if the skilled person would directly and unambiguously recognise that:
- the feature was not explained as essential in the disclosure;
- the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
- the replacement or removal requires no real modification of other features to compensate for the change.
A first step of the analysis to be carried out consists in identifying the subjective problem solved by the invention (cf. T 331/87 [7.1-7.4]), i.e. the problem defined by the applicant in the original description by reference to the prior art, as it was known to him at that time.In this case, the original specification had actually mentioned two technical problems:
While the passage of the description on page 2, lines 25-27, defines it as an object of the invention to make it possible for a user to perform deskwork when being exposed to light therapy, thus addressing the problem associated with light sources harsh to the eyes […], the passage on page 2, lines 17-20, suggests that another object of the invention is to solve the problem of limited portability encountered with prior art LED sources.and comes to the conclustion that using the (USB-) interface for power supply does at least contribute to the solution of the second problem of improving the portability. Other alternatives (e.g. batteries) were not consistently disclosed. On the other hand, the board argues that the replacement of a feature with an equivalent one (which is originally disclosed) should be possible even tough the original feature may contribute to the technical solution of the subjective problem and comes to the conclusion that:
In the Board’s judgement, the criterion of essentiality is therefore met, if the feature in question is not only involved in the claimed solution but defines the sole alternative actually derivable from the original application documents. In other terms, a feature is essential if the skilled person would not have considered any other configuration as the one actually disclosed in order to solve the problem underlying the invention.It is interesting for me that both the „classical“ decision T 0331/87 and this new decision appear to have problems with the line of demarcation between the requirement of “support by the specification” of Art. 84 EPC and Art. 123 EPC. This is very clear in T 0331/87, where the board argues in item 3 of the reasons:
For the determination whether an amendment of a claim does or does not extend beyond the subject-matter of the application as filed, it is necessary to examine if the overall change in the content of the application originating from this amendment (…) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application […]. In other words, it is to examine whether the claim as amended is supported by the description as filed..
The argument is a little more hidden in the decision T 747/10, but it appears that distinguishing between cases where more than one alternative is mentioned and cases where only one alternative is mentioned is equivalent to answering the question whether or not the broader claim is supported by the specification and is limited to the scope within which the invention makes a technical contribution to the prior art.
So why did the BoA not refer to Art. 84 EPC?
For the ”Houdaille decision T 0331/87, the case is clear: This was an opposition procedure and the BoA was simply not entitled to carry out an examination on Art. 84 EPC. In the light of this finding, it appears that this groundbreaking decision is circumventing the statutory limitation to the grounds for opposition set out in Art. 100EPC and has to be questioned.
For the case T 747/10, the application of Art. 84 EPC would have required reverting the case to the Examining division for carrying out the examination on this article.
I wonder if failure to do so could be considered a violation of the applicant’s right to be heard?
Tuesday, 12 July 2011
Scammy Trademark Registers - We're Ready to Rock and Roll!
It appears to be a lucky coincidence of circumstances that the IPKat has fantasized on last friday on fraud investigations initiated by a bank against scammy trademark- or patent registers sending out demands for payments with an "official" appearance to credulous applicants and that the OLG Köln has decided in the file 6 U 166/10 on such a case.
I think that every patent attorney has experience with clients coming up with this kind of letters and the WIPO holds an ipressive register with samples thereof. Until now, I have simply recommended to throw the letter into the bin.
The intersting point for me in the OLG Decision mentioned above is that the plaintiff was a patent and trademark law firm. Yes, indeed, we are competitors of these poeple and are - ourselves - entitled to fire of all the competition law guns we usually fire off in the name of our clients in our own name. Here we go!
Besides, it's the overall appearance giving the documents an "official touch" which is considered an avoidable deceit on the origin thereof and thus the same legal concept as the one discussed in my last post, which turns out to be impressingly versatile.
I think that every patent attorney has experience with clients coming up with this kind of letters and the WIPO holds an ipressive register with samples thereof. Until now, I have simply recommended to throw the letter into the bin.
The intersting point for me in the OLG Decision mentioned above is that the plaintiff was a patent and trademark law firm. Yes, indeed, we are competitors of these poeple and are - ourselves - entitled to fire of all the competition law guns we usually fire off in the name of our clients in our own name. Here we go!
Besides, it's the overall appearance giving the documents an "official touch" which is considered an avoidable deceit on the origin thereof and thus the same legal concept as the one discussed in my last post, which turns out to be impressingly versatile.
Subscribe to:
Posts (Atom)
