Issue 16
5 March 2019
Embracing Change
INTA’s Europe conference in full
In this issue
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The Great White North
A number of changes to Canada’s intellectual property system threaten to alter the country’s landscape for years to come
Editor: Barney Dixon barneydixon@blackknightmedialtd.com +44 (0)203 750 6026 Reporter: Ben Wodecki benwodecki@blackknightmedialtd.com +44 (0)203 750 6017 Designer: James Hickman jameshickman@blackknightmedialtd.com +44 (0)203 750 6021 Contributors: Becky Butcher Associate Publisher: John Savage johnsavage@blackknightmedialtd.com +44 (0)203 750 6021 Publisher: Justin Lawson justinlawson@blackknightmedialtd.com +44 (0)203 750 6028 Office Manager: Chelsea Bowles accounts@blackknightmedialtd.com Published by Black Knight Media Ltd Copyright © 2018 All rights reserved
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INTA Europe
INTA’s Paris affair taught attendees how can humans and brands can embrace change and learn to coexist with a technological world
Panini Stickers
Return Mail v US Postal Service
A pair of artists have been barred from drawing Manchester United players for panini sticker albums
The US Supreme Court has handed down its ruling in Return Mail v US Postal Service
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Kickstarter Rat
Mission Product v Tempnology
A Kickstarter dedicated to erasing a rat that appears at the end of the film The Departed has been taken down by Warner Bros.
A decision has been made regarding trademark licence agreements in Mission Product Holdings v Tempnology
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Copyright Directive
Latest Events
Jonathan Lockwood of Getty Images explains why the EU’s new Copyright Directive proposals are levelling the playing field for creators
Pick up your copy of the latest issue of IPPro at these industry events
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Copyright · Latest News Manchester United stop bad football sticker artists from drawing its players A pair of artists who help collectors of Panini football stickers fill spaces in their albums by drawing their own Panini stickers have been barred from drawing Manchester United players. The two creators, simply known as Alex and Sian, created Panini Cheapskates because they had many duplicate stickers from the 2014 World Cup edition. There were 681 stickers required to complete the 2018 World Cup edition. However, the real Manchester United has now forced them to stop drawing Manchester United players, claiming that the drawings infringe its intellectual property and took down their Etsy page. A Manchester United spokesperson said: “While we understand the situation with Panini Cheapskates, permission to use Manchester United’s IP is only
granted to official licensees, partners and sponsors of the club.” “Because Panini Cheapskate’s items featured the Manchester United word mark, they, unfortunately, infringed those IP rights and Etsy.com, therefore, removed them from their site.” In return, Panini Cheapskate released an image of a “generic unaffiliated football man Djimi Berbles” that looked like former Manchester United and Bulgaria forward Dimitar Berbatov. This is part of its “Man Red” range of stickers, that are made up of entirely fictitious footballers from an unnamed club who play in red from the north of England. All the proceeds of the Man Red stickers will go to Cancer Research UK.
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Industry · Latest News Comparable post-Brexit trademark rights will retain features of EU rights The UK Intellectual Property Office (UKIPO) has revealed that new UK rights will maintain much of the same features as their comparable EU Trade Mark (EUTM) rights. The comparable UK trademarks, which will be automatically registered for all owners of EUTM post-Brexit, regardless of a deal, will retain their original filing dates, inherit any priority or seniority dates and will retain the EUTM number. In order to identify comparable UK rights and distinguish them from existing UK trademarks, the the number allocated to the comparable mark will be the last 8 digits of the EUTM prefixed with UK009. The UKIPO said the reason behind this decision is to “keep the administrative process to a minimum”.
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Latimer LeVay Fyock hires new IP co-chair Former Partridge Partners partner Colin O’Brien has joined Latimer LeVay Fyock as a partner and co-chair of its intellectual property group. O’Brien spent nine years at Partridge Partners where he conducted extensive litigation in copyright, design patent infringement, and Lanham Act cases. He described his time at Partridge Partners as “wonderful” but said, “the opportunity to lead and grow the IP practice at a firm such as Latimer LeVay Fyock rarely comes along. I am excited for the next phase of my career and looking forward to the new challenges ahead.” He has a global outlook with his work, with a particular focus on Europe and South America.
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Trademarks · Latest News Elder Scrolls creators hit with trademark opposition over ‘Redfall’ ZeniMax Media, the company behind the creators of the popular Elder Scrolls video games, has been hit with an opposition to its application to trademark the term Redfall. ZeniMax had attempted to register the term Redfall in classes 021, 023, 026, 036 and 038. The trademark may be the name of the next instalment in the series, the as yet untitled Elder Scrolls VI. The game is rumoured to be taking place in the Hammerfell and Daggerfall areas of the fictional continent of Tamriel. However, ZeniMax’s attempt to trademark what many speculate to be the name of the next Elder Scrolls game has been opposed by Jay Falconer, a science fiction author. Falconer has written a series of books titled Redfall and took to Twitter to say that his lawyers had attempted to contact ZeniMax, however “they ignored me every time”.
Babybel creator loses red wax trademark to Sainsbury’s opposition Fromageries Bel, the creator of Babybel, has had its trademark for a 3D round wax coating with the colour limited to red cancelled following a successful invalidation request by Sainsbury’s. Sainsbury’s filed an invalidity application with the UK Intellectual Property Office (UKIPO) on the grounds that the colour note was ambiguous. It argued that there was “a mismatch between the verbal description of the trademark and the colour(s) shown in the pictorial representation of it”. It argued that the unadorned red wax/plastic wrapper is customary in the trade and that the contested mark was “is devoid of any distinctive character”. The UKIPO’s head of trade mark tribunals, Allan James, found Baybel’s trademark to be invalid on the basis that it failed to meet §3(2) of §47(1) of the 1994 Trade Marks Act. UKIPO said the trademark would be cancelled. Sainsbury’s will be entitled to a contribution towards costs. James also ordered Babybel’s owners to pay Sainsbury’s £200 due to unreasonable behaviour following the way it pleaded and how it pursued its application.
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Falconer said he was left no choice and that “all could have been avoided” had ZeniMax returned called his lawyers back. In a statement on his website, he said he wasn’t “standing in the way of the game” and wanted to create a “no-cost deal, one in which everyone wins”. He said it was “probably just a misunderstanding or unfortunate timing, needing a conversation and a licence to resolve”. He continued: “Either way, I have worked hard to develop this brand and I can’t afford to stop earning a living for my family. I am a hardworking author and they are a billion-dollar, megasuccessful company who produces fabulous products that everyone loves. They have done nothing wrong and neither have I. We just need to have a conversation and resolve the matter. Simple to do.” Falconer made it clear in his statement that he “never wanted any of this to happen, only wishing for a simple resolution”.
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Patents · Latest News
Oral arguments heard in Return Mail v US Postal Service Oral arguments have been heard in the dispute between Return Mail v US Postal Service over whether the government is a “person” who may petition to institute review proceedings under the America Invents Act (AIA). Return Mail’s had a patent for the processing of mails items that are undeliverable invalidated by the US Patent Trial and Appeal Board following a complaint from the US Postal Service which argued that it was invalid due to its ineligible subject matter. Return Mail contends that the federal government is not a ‘person’ that may file a petition for a covered business method review. During oral arguments in Return Mail Inc v US Postal Service, chief justice John Roberts questioned what the director of the US Patent and Trademark Office (USPTO) would do if the government called for the reexamination of a patent. He said: “Is he or she supposed to make an independent determination, or is he or she supposed to salute and go ahead and do it?” Roberts took issue with Return Mail’s questioning of whether the director of the USPTO should be able to initiate America Invents Act (AIA) proceedings from a phone call from the government. Return Mail had argued that the term ‘person’, in this instance, does not extend to include the government because other branches rely on the Dictionary Act definition of person and this court’s presumptive definition of ‘person’ to not include the government.
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Return Mail’s legal team claimed that this “is a stable framework that’s critical to that communication between the branches”. Return Mail argued that the definition presented in the Dictionary Act would “do the work here because that is the reliance by Congress and the give-and-take before the branches so Congress knows how the word ‘person’ is going to be interpreted when they use it”. Justice Samuel Alito voiced similar concerns to Roberts, stating: “That’s an argument that makes me doubt your argument on the statutory language because I think if this were presented to Congress and the issue before Congress was do we want a federal agency to initiate one of these AIA proceedings in the open, in accordance with the law, or do we want to allow them to pick up the phone to the USPTO … Do you think they chose the latter?” Justice Neil Gorsuch appeared to agree on similar concerns with Roberts and Alito, suggesting that Return Mail’s choice to bring the case to the Supreme Court wouldn’t be needed if Congress wanted to conduct such an action. He proposed a scenario in which the government would be speaking “out of both sides of its mouth”. Gorsuch referred to the idea of having the USPTO director resolving a case and then coming to the Supreme Court to resolve the dispute about the executive department’s view of the law as “unusual”. Alito referred to the entire case as “indulg[ing] the possible fiction that Congress actually gave a second of thought to the issue that’s before us”. www.ippromagazine.com
Patents · Latest News DLA Piper brings in experienced life sciences partners to New York DLA Piper has added two partners to its intellectual property and technology practice in New York. Michael Furrow and Brian O’Reilly are both extensively experienced litigators who counsel life science companies in all aspects of complex patent disputes. Furrow, who joins from Venable will serve as the firm’s US chair for life sciences patent strategy. He has previously represented numerous major pharmaceutical and biotechnology companies in patent disputes in federal courts and before the Patent Trial and Appeal Board of the US Patent and Trademark Office.
EPO and USPTO invalidate obvious antibody patents The European Patent Office (EPO) and the US Patent and Trademark Office (USPTO) have both invalidated patents Immunex Corporation. The patents cover antibodies that target human interleukin-4 receptors. Regeneron Pharmaceuticals had opposed the patents, arguing that European patent 2,990,420 and US patent 8,679,487 were invalid due to the insufficiency of disclosure. The EPO invalidated Immunex’s European patent a day after the USPTO’s Patent Trial and Appeal Board invalidated all 17 claims of the US patent due to obviousness. Joseph LaRosa, executive vice president of Regeneron, commented: “We applaud decisions by the US and European patent offices this week, which invalidate Immunex’s functional patent claims to antibodies that target human IL-4 receptors.” He added: “It is our position that Immunex’s functional claims unfairly attempt to claim ownership far beyond the molecules developed, and stifle innovation within the broader scientific community.”
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Furrow commented: “The firm has an impressively deep patent litigation bench, with top-tier trial and appellate counsel, and the firm’s long-standing commitment to the life science industry around the globe, along with its roster of attorneys with technical degrees, makes it a natural fit. I am thrilled to be able to help advance the firm’s vision for servicing clients in this critical arena of patent contests.” O’Reilly has represented clients in high-profile, strategically important and ground-breaking pharmaceutical cases in federal courts throughout the US. He said: “No other firm has a comparable global reach, life sciences client base, and dedication to defending pharmaceutical innovation.” Mark Fowler, US chair of the firm’s patent litigation practice, added: “We are excited to expand our practice with two litigators who have the capabilities to handle the most complex pharmaceutical and biological cases our clients face.” “Their extensive experience representing innovators across the life sciences, including their record of success in high-stakes litigation, adds depth to our fast-growing team. Michael Furrow and Brian O’Reilly bring a strong spirit of collaboration that will mesh well with the DLA Piper team.”
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Copyright · Latest News
Kickstarter drops rat removal fundraiser for ‘The Departed’ edit A Kickstarter dedicated to erasing a rat that appears at the end of the film The Departed has been taken down following a Digital Millennium Copyright Act (DMCA) takedown request by Warner Bros. Adam Sacks, the creator of the Kickstarter, aimed to digitally erase the rat, describing it as a “bad idea”. He said: “A movie as good as The Departed has such a cheesy ending, and I recently realised it could be fixed by digitally erasing the rat from the last shot.” Sacks was seeking funds to send copies of the edited film to backers. But Warner Bros. filed a takedown request with Kickstarter, claiming that the distribution of the edited footage would violate its copyright. A post on the Kickstarter’s Twitter page read: “In order to comply with the DMCA, Kickstarter had no choice but to take down my project to digitally erase the rat from the end of The Departed.” “I could fight this, but I checked my bank account, and I have far less money than Warner Bros. made off A Star Is Born in the 21st week in theatres alone ($700,000. Very impressive!)” “Although we live in an era when money and copyright laws allow corporations to stop a Kickstarter, nothing can stop ideas. Ideas like digitally erasing the rat from the end of The Departed. Clearly, there is a lot of grassroots support for this too.” “If there is a silver lining here (besides me not having to actually follow through on this), it’s that maybe all this online controversy about the rat will convince Warner Bros. to release a 4k Blu-Ray of The Departed. And maybe, just maybe, they will include an alternate rat-less ending. I’m fairly confident it would make them at least an additional $4,000.”
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Since the takedown, Sacks has uploaded a separate “pitch video” on YouTube, with a similar premise to the Kickstarter. Alan Behr, partner at Phillips Nizer and entertainment law specialist, commented: “Anyone who speaks with such clarity and ironic wit cannot be dismissed out of hand.” “He appears sincere in his belief that he is honouring the director of The Departed by fixing a ‘giant glaring flaw’.” Behr said: “As a copyright lawyer and film buff, I have to respect his sincerity as surely as I have to question his proposed methods.” “Then again, what lawyer, if given the chance, would not take advantage of the opportunity, with the passage of time, to go back and digitally alter briefs he had filed in court?” He explained that while Warner Bros. was right in asserting that Sacks should not be permitted to make and distribute his own version of the film, as opposed to digitally altering a few seconds of the film and posting solely that clip online, along with critical commentary, Sacks had not yet done anything with the movie. Behr added: “So far, he has done nothing more than provide film criticism and try to raise money to create an edit that would support his opinions.” However, Behr conceded that doing so and distributing it to backers “would be deemed willful infringement under the US Copyright Act”, albeit with a “curiously altruistic motive: willfully attempting to make a great film even better (in his opinion)”. Behr concluded: “The DMCA takedown notice appears to have had the intended effect of preventing Sacks from making his version of the film, which proves, once again, that strong lawyering will win out over irony and wit almost every time.” www.ippromagazine.com
Trademarks · Latest News
Oral arguments heard in Mission Product Holdings v Tempnology Oral arguments have been heard in Mission Product Holdings v Tempnology, a case questioning whether a trustee’s rejection of a trademark licence agreement terminates the rights of the licensee that would survive the licensor’s breach under applicable nonbankruptcy law. Tempnology, a developer of cooling fabrics for athletic apparel and accessories, had granted a licence to Mission Product Holdings to sell Tempnology’s patented products and to use its trademark. After Tempnology filed for bankruptcy, it rejected the licence. The Supreme Court agreed to review the aspect of the case related to trademark licensing after several hearings in lower courts ruled that Tempnology’s rejection terminated Mission Product’s rights. The Bankruptcy Code §365(a) gives trustees the authority to reject executory contracts. Congress recognised that this rule can be harsh and established limited statutory “exceptions” that grant counterparties to certain types of contracts, including real estate leases and patent licences, the choice to treat the contract as terminated, per the general rule, or to retain certain rights specified by the exceptions. Neither trademark licences nor exclusive distribution rights fall within those exceptions. Congress has previously considered but declined to adopt an exception for trademark licences. During the oral arguments, Mission Product’s legal team argued that an “overwhelming consensus of courts and scholars [believe] that rejection can’t give the estate any greater rights with respect to the rejected contract than the debtor would have outside bankruptcy”.
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Mission Product claimed that a “licensor could not use its own breach of contract as a basis to terminate the licensee’s rights under the agreement”. Justice Sonia Sotomayor said Mission Product argument “Seems counterintuitive to me or counter logical, given the explanation that the Congress gave, that it understood that trademark owners would get more rights than provides to other licensors in the intellectual property field”. Mission Product’s argument around the conventional understanding of a breach of contract revolved around the idea that a party that breaches a contract doesn’t get the right to retract whatever the counterparty has received. Justice Elena Kagan later utilised this idea when questioning Tempnology, who questioned whether a party that utilises could “unwind the entire deal”. Kagan’s questioning of Tempnology on contract breaches led to laughter in the court after Tempnology’s legal team called the Bankruptcy Code “very convoluted”, which Kagan responded with “well, I think we can understand it”. Justice Neil Gorsuch relentlessly pressed Mission Product on the exclusive distribution Rights. He questioned how Mission Product was actually injured, to which its legal team claimed it was “wrongly prevented from using the trademark on its goods post-rejection”. Sotomayor took issue with this statement, given that Mission Product were not producing its own goods using the Tempnology trademark, nor was it buying products from them, but in fact were purchasing goods which was a requirement under its contract. Sotomayor took this response, and asked: “So why are we here?” www.ippromagazine.com
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Canada · Country Profile
The Great White North: How Canada is matching US IP system changes A number of changes to Canada’s intellectual property system threaten to alter the country’s landscape for years to come
Ben Wodecki Reports
It’s impossible to consider Canada in the intellectual property sphere without contemplating its relations with the US, its closest neighbour and trading partner.
In the past 12 months, the US has seen a number of changes to its IP systems. Now, one of these changes threatens to alter the way Canada does its IP business with its southern neighbour.
The US-Mexico-Canada Agreement USMCA, touted by US president Donald Trump as a “great deal for all three countries”, is a reorganisation of the North American Free Trade Agreement (NAFTA) and will shape trade and IP relations between the three countries for years to come. For trademarks, USMCA may make statutory damages available for trademark infringement, which Chumak & Co partner Yuri Chumak calls “a helpful development”. Chumak adds that brand owners can expect new or expanded border measures aimed at curbing the supply of counterfeit products coming into and through Canada to the
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US, but adds that the effectiveness of border measures is “an open question”. At present, customs inspection and detention activities remain at the discretion of the agency and officials caution that, even after giving notice, “you should not expect that any particular shipments will or will not be inspected”. For patent owners, Chumak identifies two key developments: “USMCA is set to introduce patent term adjustment to Canada, a welcome change.” “This change will make sure that the 20-year term of patent protection can be extended due to delays caused by the patent granting authority, the Canadian IP Office. Moreover, the USMCA is also set to increase to 10 years (from eight) the regime of data protection for new pharmaceutical products that contain a biologic.” In relation to copyright, Paul Smith, senior partner at Smiths IP, remarks that under USMCA, the extension of the copyright terms from the life of the author +50 years will become the life of the author +70 years. He adds that for terms not calculated based on the life of an individual, such as cinematographic www.ippromagazine.com
Canada · Country Profile works, the new term will be up to 75 years from the date of first publication.
Smith highlights another Canada copyright act change that will take place in June 2019.
Smith points out that the change has been criticised as a curtailment of Canadian heritage and as a significant increase in the cost of education in Canada, all apparently to benefit a handful of large US-based entertainment companies.
He said: “Following the introduction of Canada’s notice and notice regime for internet service providers (ISP), some copyright claimants adopted the practice of issuing (sometimes automatically) infringement notices to ISPs that included offers to settle the claim for a fee.
Apart from the extension of the copyright term, USMCA’s longest lasting effect may, according to Smith, be “the curtailment of Canadian sovereignty and flexibility in developing Canadian copyright policy’”.
Under the notice, the ISPs forward the notices to the subscribers, some of whom were misled as to the nature of the formal notices.
He says: “The balancing of interests that underlies copyright will increasingly be constrained by trade agreements, such as the USMCA that in many cases explicitly limits the scope of permissible curtailment of copyright-related rights.” “For example, the only permissible exceptions to the rule against the circumvention of technological measures are explicitly enumerated. Of course, all such constraints cut both ways, with the same constraints equally curtailing the freedom of the US and Mexico in the field of national copyright policy and legislation.” USMCA isn’t the only change coming into force for the Canadian IP landscape, as the Patent Law Treaty goes live later this year. The changes from the Patent Law Treaty will be “compact prosecution” according to Chumak. He said: “For example, the legislation will require PCT international applicants to enter the national phase in Canada within 30 months, curtailed from the 42 months enjoyed by applicants at present.” “The examination deadline is also shortened to four years (from five). As well, post-allowance practice is changing, with the introduction of a new fee to enter an amendment. Applicants should not miss annual maintenance fees or other deadlines, because reinstatement will no longer be automatic, will be subject to the payment of new late fees, and the patent may become unenforceable due to intervening third party rights that arose during the period of abandonment.” Also due this year is the introduction of the new Canadian IP practitioners regulator—the College of Patent and Trademark Agents. Chumak observes that it is not a selfregulatory body with the federal government appointing the majority of the initial board and reserving the power to remove elected members of the board. He adds that licence fees and continuing education requirements for the College are not yet known.
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Subscribers did not know what to make of the fee demands, sometimes asking whether they were required to pay and whether they had in fact been sued. Smith said: “In order to prevent extortionate notice and notice regime claims, the new amendments provide that notices that include any reference to settlement offers, settlement fees or any request for the subscriber’s personal information do not comply with the notice and notice regime. As a result, an ISP will no longer be required to forward an infringement notice if it includes those items.” Any efforts on the part of copyright claimants to secure subscriber information need to be undertaken by commencing actual court proceedings, said Smith. Following successful court proceedings, a motion seeking to force the ISP to reveal the subscriber information (a Norwich order) can be obtained. Smith refers to the method of obtaining Norwich orders as “tend[ing] to week out spurious or extortionate trolling practices”. One change that Chumak highlights as notable is the eight percent increase in trademark filings. He points out that the majority of the growth has come from domestic filings in Canada, and more specifically, a spike in applicants designating goods and services in all 45 classes. Such a spike, in fact, has led to the government to increase fees for a 45 class registration to CAD 4,730. Chumak warns that the increased volume of new filings has contributed to turn-around-time delays and decreased the quality of examination. He concluded: “We are seeing first examination reports take more than a year from the filing date.” “We are hopeful that CIPO can implement processes to improve these service standards and make examination quicker, as in the UK or New Zealand. Reliable and timely IP rights will encourage more filings.” www.ippromagazine.com
INTA Europe · Conference Report
INTA Europe: Embracing Change INTA’s Paris affair taught attendees how can humans and brands can embrace change and learn to coexist with a technological world In Paris, the International Trademark Association (INTA) came fully prepared to discuss the changing world. Be it technology, politics, or law, the By Barney Dixon and INTA Europe Conference on Ben Wodecki Embracing Change set itself up to discuss some of the most pressing issues facing not only IP, but the world. Paris itself has seen its fair share of change—the oldest traces of humans found around the city date back to an encampment of hunter-gatherers from around 8,000 BC. Now, a sprawling metropolis, Paris tells a story of a changing world, from a Roman garrison, to the centre stage for one of the most important revolutions of all time. To a time-travelling observer, the Paris of the past would look nothing like the Paris of today. The city, now in the later stages of its life, has become home to sprawling monuments from throughout the ages—Notre Dame, the Eiffel Tower, the Louvre—exemplifying this evolution and bringing its inhabitants—and visitors— squarely into the modern world. It is in this new order that INTA’s conference found itself, as speakers and attendees strove to understand the nuances of the age of technology and embrace it.
Embracing technology In a session with speakers from some of Europe’s many intellectual property office’s, one speaker, Catherine Chammartin, director general of the Swiss Federal
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Institute of IP (IPI), said that in order to embrace changes in technology, her office would need to give up its old systems and “be ready for this new world”. Catherine Chammartin joked that she’d need a crystal ball to predict what the future of IP offices may look like, given that 20 years ago she had not expected the world to look the way it does today. But her counterpart at the French National Institute of Industrial Property, Pascal Faure, had a very different take on how changes in technology could affect IP offices, claiming that innovation was “double-sided”. New technologies could reduce cost and increase efficiency, but with this would come the potential for a number of human jobs to become redundant, according to Faure. Despite this, Faure concluded that new technologies were a “necessity” and humanity must embrace them and find solutions to potential pitfalls. Mariana Karepova, president of the Austrian Patent Office, echoed some of these sentiments, but honed in on the uses of artificial intelligence. The Austrian Patent Office already utilises a chatbot named Albert that can check trademarks, look for seminars on IP and tell jokes. AIs, like Albert, can
INTA Europe · Conference Report improve speeds of applications, reduce mistakes and raise the quality of the process entirely, according to Karepova. Other speakers discussed AIs in further depth, revealing the many uses it can bring. One speaker, Julien Horn, partner at de Gaulle Fleurance & Associés, suggested that AI can be— and is being—used for advanced prediction of the decisions of judges in court. Horn explained that IP practitioners have to quantify risk and review evidence to make their own opinion on how a judge might approach a case, but statistics and AI can be used to speed up this process Another speaker, Jacques Lévy-Véhel of Case Law Analytics, ran through some of the tools that his company offers, including machine learning, which can offer detailed statistics and potential outcomes for cases in court. However, Lévy-Véhel added that while AI can simulate a decision, there are still limitations on how it can predict realworld changes. One example he used was a specific judge’s mood on a certain day. He added: “You can model the decision process, but you can’t model the world.” In the same session, Marc Van Wesemael, CEO of EURid, discussed how EURid is using AI to develop tools that could prevent domain infringement. The tools allow EURid to reliably identify domains that have been registered for malicious intent as they are being registered. It uses AI clusters of similar registration data and malicious registrations of the past, calculates them and expresses them via metric. After nine months of tests (where domains are not yet stopped, merely assessed for their intent), 79 percent of malicious domain registrations have been predicted with 92 percent precision—only 2 false positives per day.
Addressing concerns that AI would result in less human workers, Van Wesemael said in the case of this particular tool, more humans workers would be needed as there would be more cases to cover. However, he conceded that in the future, these jobs would also be taken by AI, meaning the number of workers will ultimately decrease.
Embracing division Just a train ride away from Paris, the UK is facing its own monumental change—one that could alter the landscape of Europe forever. Brexit is an often talked about topic at conferences in the IP space, despite the unlikelihood that it will change very much about IP. Former Chartered Institute of Trade Mark Attorneys (CITMA) president Kate O’Rourke, stressed the importance of the UK leaving with a deal, and demanded that the British Prime Minister takes no-deal off the table within a week of the conference occurring (which, at the time of writing, is coming to pass). O’Rourke said that while the conference was about embracing change, she was not endorsing Brexit. O’Rourke said British politics was “extremely volatile” at present, referring to the nine Labour MPs and three Conservatives MPs that have left their respective parties. Regardless of a deal, O’Rourke assured delegates that all EU trademarks will be given a UK equivalent regardless of a deal. For the future of rights of representation for trademark attorneys post-Brexit, the future is unclear. O’Rourke discussed alternative arrangements for attorneys and revealed that she is now a registered Irish attorney, as well as a British one.
Embracing change At INTA’s conference, IPPro was lucky enough to speak to INTA CEO, Etienne Sanz de Acedo, who reminded us that humans see change as “disruptive”. He remarked that lawyers “tend to be conservative” when it comes to change, but “like it or not, change is happening and the best thing we can do is help our members identify and prepare for those changes and empower them.” INTA itself is embracing change, with Acedo suggesting that the association is looking to have a “more holistic approach”, bringing it in line with the modern world. www.ippromagazine.com
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Why the EU must go the distance and stand up for content creators Jonathan Lockwood of Getty Images explains why the EU’s new Copyright Directive proposals are levelling the playing field for creators In September 2016, after several years of consultation, the European Commission issued its proposal for a new EU Directive on Copyright as part of its Digital Single Market Strategy (the Copyright Directive). The new Directive is intended to level the playing field between photographers, artists and musicians and the digital platforms that benefit and profit from the content they create. Last month, a final version of the directive was agreed which achieves just this, and will be put to a final Parliamentary vote at the end of March. It stipulates that certain large online platforms will be required to make ‘best efforts’ to licence all types of copyright protected content that its users might upload when the users have not themselves created that content (for example, where they are uploading third party owned content, such as video clips, music tracks or images). Should this version receive endorsement from member states and the European Parliament, members of the EU creative industries will begin to be properly recompensed for the re-use of their work online. This is great news for the photographic community. After all, images are incredibly powerful vessels of culture, knowledge, and mutual understanding. They put faces to causes in ways that words simply cannot. We turn to images to express ourselves, to commemorate great events (personal and political), to build brands, grow campaigns, and effect change in the world. For instance, the Great Depression photography of Dorothea Lange was instrumental in changing social attitudes to poor and dispossessed people in American society. In more recent times, the tragic image of drowned Syrian refugee Alan Kurdi washed up on a Turkish beach served to concentrate minds and force EU leaders to come together to tackle the refugee crisis.
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Jonathan Lockwood · Opinion To maintain a supply of high-quality photography requires significant investment and planning, sometimes only possible if the photographer takes serious personal risks in conflict zones or sites of natural disasters. Photographers have a right to earn a living and they do this by licensing their copyright. In today’s world, where imagery is the main content that attracts and retains user attention online, it is fair and just that image creators are able to receive a share of the value generated when their works are re-used, uploaded and shared online. Technology exists to achieve this, its promising that the law will hopefully now be set out in a way that incentivises it to happen. Unfortunately, that hasn’t been the case to date. Under existing copyright law, platforms of all kinds are disincentivised from seeking to identify or license useruploaded content. Should they gain actual knowledge of what is displayed on their pages, they lose ’safe harbour’ protection from needing to license creative content. Therefore, it currently pays for digital platforms to avoid better understanding the content posted to their sites. And why should they try to, when the current laws incentivise inertia?
All evidence suggests that, given opportunity, image owners would much rather allow their work to be licensed and to see it shared widely, rather than try to prevent its distribution. Licensing should therefore be thought of as a way of liberating content, not imposing censorship. Above all, the value gap provisions represent empowerment and employment for image creators—not only professional photographers, but everyone who uploads a picture from their phone. If you create the next viral image or contribute to a newspaper’s coverage of an unfolding event, you would stand to gain, together with the platforms that propel your content around the globe. A personal hope of mine is that the next generation will be duly recognised and rewarded if they take a photograph which becomes an iconic image of tomorrow. The introduction of fair and robust EU rules for copyright in the digital age will be a crucial first step towards realisation of this vision on a global basis. It is hugely encouraging to see the needs of photographers, and other creators, represented in the final text of the Directive. But we’re not out of the woods yet. The European Parliament must retain the courage of its convictions. We call upon its MEPs to endorse this final Copyright Directive—and to put creators on a more level playing field as visual content increasingly helps shape our lives.
This is the cause of the ‘value block’ for creators, where platforms reap the full benefits of user-uploaded content— the ad revenue, the customer data, and so on—without needing to split the proceeds with the content creators. The value gap provisions of the new Copyright Directive (aka Article 13) seek to remove this ‘value block’, to incentivise platforms to seek to license the content that their users avidly consume. The ultimate consequence will be more investment in high-quality, EU-origin content, with money flowing back to the EU’s creative industries. Throughout the reform process, we have seen a tide of disinformation and sabre-rattling, raising concerns that the new laws will give rise to censorship and a stifling of freedom of expression. These concerns are unfounded. Far from locking down content, banning memes or ‘killing the internet’, the proposal will make more content available on a fully licensed basis, reducing legal uncertainty and removing the risk of enforcement actions being taken against individual uploaders.
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Jonathan Lockwood Vice president, corporate counsel Getty Images www.ippromagazine.com
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