Philip Morris USA v. Williams, Mayola
This is one of the most famous case which created a new landmark over the punitive damages and Compensation. Philip Morris case gave us an answer for Whether due process permits a jury to punish a defendant for the effects of its conduct on non-parties??..., as well in reviewing a jury's award of punitive damages,is it possible an appellate court's conclusion that a defendant's conduct was highly reprehensible and analagous to crime can override the constitutional requirement that punitive damages must be reasonably related to the harm to the plaintiff.
Term: 06-07
Appealed From: Oregon Supreme Court (Feb. 2, 2006)
Oral Argument: 10-31-06
Opinion Issued: 5-4 for Philip Morris USA (Breyer-Feb. 20, 2007)
Subjects: Tobacco, punitive damages, due process
Questions presented: (1) Whether, in reviewing a jury's award of punitive damages, an appellate court's conclusion that a defendant's conduct was highly reprehensible and analagous to crime can override the constitutional requirement that punitive damages must be reasonably related to the harm to the plaintiff? (2) Whether due process permits a jury to punish a defendant for the effects of its conduct on non-parties?
BY STEVEN ROSS JOHNSON, MEDILL NEWS SERVICE
Jesse Williams was a devoted husband and father who worked as a school custodian in Portland, Ore. He began smoking Marlboro cigarettes in his early twenties. Over the next 47 years, he developed a three pack-a-day habit, ignoring the large amounts of evidence compiled in that time that documented tobacco's hazardous health effects.
The undeniable proof for Williams, unfortunately, came in the form of an inoperable lung cancer diagnosis. Six months later, he was dead. He was 67.
In May of 1997, Williams' widow, Mayola, filed a lawsuit in an Oregon trial court against Philip Morris Inc., the parent company of Marlboro brand cigarettes, claiming the company knew for 50 years of the potential health risks its product posed, but failed to inform the public of those risks.
The trial began in February of 1999. Attorneys representing Williams argued that the efforts by Philip Morris to hide the dangers of smoking went well beyond simply ignoring the evidence. Rather a deliberate, clandestine campaign to dispel public concerns by instilling false impressions of serious debate going on within the scientific community over smoking's hazardous effects.
On March 31, a jury found Philip Morris had engaged in negligent and fraudulent practices, which made the company, along with Jesse Williams, equally at fault for his death and awarded $821,485 in compensatory damages.
What happened next would stand as the basis for a legal fight over the role monetary awards should, or should not play in punishing corporate misconduct.
In addition to compensatory damages, the jury found the fraud Philip Morris had perpetrated to be systemic, affecting a large group of individuals over a 50-year period, and awarded $79.5 million in punitive damages.
The trial judge in the case found that though the large punitive award "...was within the range a rational juror could assess based on the record as a whole," it was "...excessive under federal standards," and reduced the amount to $32 million.
The ruling was appealed by both Williams and Philip Morris to the Oregon Court of Appeals, where on June 5, 2002, the court reversed the trial judge's decision to reduce the award and reinstated the $79.5 million, rejecting Philip Morris's appeal. An appeal to the Oregon Supreme Court produced the same result for the tobacco giant.
Philip Morris sought review from the U.S. Supreme Court where the judgment of the Court of Appeals was vacated and sent back to that court to reconsider the punitive amount, in light of the Supreme Court's 2003 decision in State Farm v. Campbell.
In that case, the Court ruled awards for punitive damages could be restricted if it greatly exceeded the amount of the compensatory award. It also took the additional step of applying a mathematical test in determining a punitive damage award limit. Awards could not be more than nine times the amount of the compensatory amount, and in cases where the compensatory damages award was sizeable, the award amount for punitive damages was not to go beyond the compensatory amount.
The standard the Court applied in making its decision came from its 1996 ruling in BMW of North America v. Gore, in which it first established the three factors courts were to consider in determining a punitive damage award:
"(1)The degree of reprehensibility of the defendant's misconduct; (2)the disparity between the actual or potential harm suffered by the plaintiff and the punitive damages award; and (3) the difference between the punitive damages awarded by the jury and the civil penalties authorized or imposed in comparable cases."
The Oregon Supreme Court re-reviewed Philip Morris' appeal under these new qualifications, and again upheld the jury's punitive damage award of $79.5 million, stating in a written opinion by Justice W. Michael Gillette:
"Philip Morris showed indifference to and reckless disregard for the safety not just Williams, but of countless other Oregonians, when it knowingly spread false or misleading information to keep smokers smoking. Philip Morris's actions were no isolated incident, but a carefully calculated program spanning decades."
For those reasons, the court decided the jury had not violated the factors established in BMW v. Gore in assessing punitive damages. The amount of the award, though it appeared to violate the spirit of State Farm v. Campbell, could be reinstated based on the high degree of culpability it found for Philip Morris's acts of fraud on the people of Oregon at large.
Philip Morris returned to the U.S. Supreme Court, which on May 30, 2006, accepted review in the case, limiting consideration to the first and second questions in Philip Morris' petition for certiorari.
What came before the Court when it decided to hear the case, goes well beyond an issue of personal injury, individual versus corporation or even public perceptions of the tobacco industry.
The questions the Court is being asked to review are whether: a court can find a company's misconduct so egregious that it can go past the 9:1 ratio set out by the Court in Campbell, and whether juries can award punitive damages based on actions affecting those beyond the suing parties.
What the Court will attempt to answer is the functionality of the punitive damage award, as it pertains to its intended purpose.
The Court took this case because the tobacco industry is involved in litigation that's left some serious questions in the wake of its prior rulings," said Anthony J. Sebok, a law professor at Brooklyn Law School, who specializes in tort law.
Sebok said that allowing juries to award large monetary awards to punish companies that do harm to thousands, could begin a slippery slope if a company is hit with multiple judgments based on the outcome of a case such as Philip Morris v. Williams.
"How many plaintiffs can play this card until Philip Morris has been punished enough?" Sebok said. "A lot of times, juries are left to their own devices when deciding punitive monetary awards. It's possible juries may decide differently if they were instructed that they could not punish for what companies did to other people, but only for what they may have done to the person who filed the suit."
Robert Peck, one of the trial lawyers who represents Mayola Williams, said regulating the amount of punitive damage awards only benefits corporations such as Philip Morris and takes away the power to hold those who engage in misconduct truly accountable for their actions.
"I think holding courts to limits takes it away from jurors and judges," Peck said. "If the amounts are too small, large corporations begin to think it's just an acceptable part of the cost of doing business."
Both men agreed that the impact of the Supreme Court's decision could have long-lasting effects on lower courts, as well as provide a glimpse into the Court's future direction.
"This is the first time [since the addition of Chief Justice John Roberts and Justice Samuel Alito] that the Supreme Court is considering a personal injury, wrongful death claim," Peck said. "We will see what extent states' interests are supposed to be reflected."
On Feb. 20, 2007, by a vote of 5-4, the Supreme Court threw out the $78.5 milliion punitive damages award finding that the Oregon jury could not punish the tobacco company for injuring people, whom the Court called "strangers to the litigation." The majority opinion was written by Justice Stephen Breyer and joined by Chief Justice Roberts and Justices David Souter, Anthony Kennedy and Samuel Alito.
In so holding, the majority said it was not deciding whether the punitive award was unconstitutionally excessive, as Philip Morris had asked it to do. Instead, it ordered the state Supreme Court to reconsider, applying the new constitutional standard outlined in the decision.
Attorneys in this case:
Attorneys for Petitioner:
Andrew L. Frey
Mayer, Brown, Rowe & Maw, LLP
(212) 506-2500
1675 Broadway
New York, NY 10019
Party name: Philip Morris USA
Attorneys for Respondent:
Robert S. Peck
Center for Const. Litigation
(202) 944-2803
10530 31st Street, N.W.
Washington, DC 20007
Party name: Mayola Williams
Other:
Theodore J. Boutrous Jr.
Gibson, Dunn & Crutcher LLP
(202) 955-8500
1050 Connecticut Avenue, NW
Washington, DC 20036
Party name: Product Liability Advisory Council
Jonathan D. Hacker
O'Melveney & Meyers LLP
(202) 383-5300
1625 Eye Street, NW
Washington, DC 20006
Party name: Chamber of Commerce of the United States
Related Links:
Supreme Court opinion (Feb. 20, 2007)
Feature - How deep can juries dig into a deep pockets?
Oregon Supreme Court opinion (Feb. 2, 2006)
Petition for certiorari - Philip Morris USA
Reply brief - Philip Morris USA
News coverage of another Oregon tobacco case (Portland Oregonian)
Courtesy: findlaw.com, Caselaw.com and Supremecourtus.gov
Showing posts with label One case Law a day. Show all posts
Showing posts with label One case Law a day. Show all posts
Thursday, June 5, 2008
Monday, December 3, 2007
Nokia Corporation v. Nokia India Private Limited
Nokia Corporation v. Nokia India Private Limited
Case No. D2006-0080
1. The Parties
The Complainant is Nokia Corporation, Espoo, Finland, represented by Sen-Oberoi, India.
The Respondent is Nokia India Private Limited, Bangalore, Karnataka, India.
2. The Domain Name and Registrar
The disputed domain nameis registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 18, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 18, 2006, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2006.
The Center appointed Andrew Mansfield as the sole panelist in this matter on March 8, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the leading manufacturer of mobile phones and accessories in nearly every country in the world. Complainant has one-third of the world’s market share for mobile phones. The Complainant’s trademark NOKIA is famous in most countries of the world by virtue of long, extensive, and continuous use for nearly a century. In 2005, Interbrand Corporation ranked NOKIA as the sixth most valuable trademark in the world.
Worldwide, Nokia has registered 429 trademarks, with one in nearly every state. In India, Complainant holds trademark registration 466,090 to the word NOKIA. Complainant has eight additional trademark applications pending in India.
Complainant operates a website at “www.nokia.com” that links to various other websites divided on the basis of geographical location and type of product.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the domain name is identical or confusingly similar to its trademark NOKIA. The domain name contains the exact letters that constitute NOKIA in English and adds “ind,” a common abbreviation for India.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized Respondent to register or use the domain name or any trademark forming part of it. Complainant also informs the Panel that it is not aware of a company named NOKIA India PVT and that the domain name was registered under this false company name by Respondent in order to make the registration appear legitimate.
Complainant asserts that the domain name was registered and is being used in bad faith. Respondent has operated a commercial website at the domain name selling Complainant’s products or unauthorized copies of Complainant’s products since November of 2005. Respondent links to information on Complainant’s legitimate website, thus increasing the likelihood of confusion engendered by the domain name in the minds of the average user. Respondent is using Complainant’s trademark and copyrighted material without permission. Complainant argues that Respondent is obviously well aware of Complainant’s trademark NOKIA. Finally, Respondent misrepresented itself to the Registrar by failing to provide a complete and accurate physical address.
B. Respondent
The Respondent, even though properly notified of the proceedings, did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s famous mark NOKIA plus the letters IND. Complainant has proven that it is the owner of the trademark NOKIA. It has long been held that domain names that entirely incorporate a trademark, such as the case here, may be confusingly similar to the trademark. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004) (); Bayerische Motoren Werke AG v. DLR, WIPO Case No. D2001-1231 (December 14, 2001) (). The addition of a geographic identifier to a trademark may also render a domain name confusingly similar to a trademark. Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 (August 8, 2003) ().
The Panel finds that the domain name is confusingly similar to Complainant’s trademark NOKIA. The addition of the three letters IND, even if used as a place indicator, do not reduce the confusing similarity between the domain name and the mark but serve to increase it, instead.
B. Rights or Legitimate Interests
The Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel notes that, even though not contended by the Respondent, a respondent may have rights or legitimate interests to a domain name as a reseller. This is discussed further under the third element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Respondent is using the domain name to intentionally attract customers to its website under the misrepresentation that its website is licensed, sanctioned, or operated by Nokia. There is substantial and undeniable likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. Nevertheless, Respondent may be allowed to make use of the NOKIA trademark if it is a reseller of Complainant’s goods and thus had a legitimate interest in the domain name.
The majority view of panels considering whether a reseller of products may use the trademark of such products in a domain contains several requirements. A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements if: (1) Respondent actually offers goods and services at issue; (2) Respondent uses the site to sell only the trademarked goods; and, (3) the site accurately discloses the registrant’s relationship with the trademark owner.
Respondent fails the third prong of this test. There is no disclosure on Respondent’s website of the relationship between Respondent and Complainant. In fact, the website is intentionally created to look like the official Indian website of Complainant.
Finally, the Panel notes that Respondent failed to provide an accurate mailing address to the registrar. The Panel takes this failure to provide accurate information as further indication of bad faith, as has been done by prior panels. Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613 (September 22, 2004).
Complainant has satisfied this element of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name,be transferred to the Complainant.
Case No. D2006-0080
1. The Parties
The Complainant is Nokia Corporation, Espoo, Finland, represented by Sen-Oberoi, India.
The Respondent is Nokia India Private Limited, Bangalore, Karnataka, India.
2. The Domain Name and Registrar
The disputed domain name
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2006. On January 18, 2006, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On January 18, 2006, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2006.
The Center appointed Andrew Mansfield as the sole panelist in this matter on March 8, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the leading manufacturer of mobile phones and accessories in nearly every country in the world. Complainant has one-third of the world’s market share for mobile phones. The Complainant’s trademark NOKIA is famous in most countries of the world by virtue of long, extensive, and continuous use for nearly a century. In 2005, Interbrand Corporation ranked NOKIA as the sixth most valuable trademark in the world.
Worldwide, Nokia has registered 429 trademarks, with one in nearly every state. In India, Complainant holds trademark registration 466,090 to the word NOKIA. Complainant has eight additional trademark applications pending in India.
Complainant operates a website at “www.nokia.com” that links to various other websites divided on the basis of geographical location and type of product.
5. Parties’ Contentions
A. Complainant
Complainant asserts that the domain name is identical or confusingly similar to its trademark NOKIA. The domain name contains the exact letters that constitute NOKIA in English and adds “ind,” a common abbreviation for India.
Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized Respondent to register or use the domain name or any trademark forming part of it. Complainant also informs the Panel that it is not aware of a company named NOKIA India PVT and that the domain name was registered under this false company name by Respondent in order to make the registration appear legitimate.
Complainant asserts that the domain name was registered and is being used in bad faith. Respondent has operated a commercial website at the domain name selling Complainant’s products or unauthorized copies of Complainant’s products since November of 2005. Respondent links to information on Complainant’s legitimate website, thus increasing the likelihood of confusion engendered by the domain name in the minds of the average user. Respondent is using Complainant’s trademark and copyrighted material without permission. Complainant argues that Respondent is obviously well aware of Complainant’s trademark NOKIA. Finally, Respondent misrepresented itself to the Registrar by failing to provide a complete and accurate physical address.
B. Respondent
The Respondent, even though properly notified of the proceedings, did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s famous mark NOKIA plus the letters IND. Complainant has proven that it is the owner of the trademark NOKIA. It has long been held that domain names that entirely incorporate a trademark, such as the case here, may be confusingly similar to the trademark. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004) (
The Panel finds that the domain name is confusingly similar to Complainant’s trademark NOKIA. The addition of the three letters IND, even if used as a place indicator, do not reduce the confusing similarity between the domain name and the mark but serve to increase it, instead.
B. Rights or Legitimate Interests
The Complainant has made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel notes that, even though not contended by the Respondent, a respondent may have rights or legitimate interests to a domain name as a reseller. This is discussed further under the third element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Respondent is using the domain name to intentionally attract customers to its website under the misrepresentation that its website is licensed, sanctioned, or operated by Nokia. There is substantial and undeniable likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website. Nevertheless, Respondent may be allowed to make use of the NOKIA trademark if it is a reseller of Complainant’s goods and thus had a legitimate interest in the domain name.
The majority view of panels considering whether a reseller of products may use the trademark of such products in a domain contains several requirements. A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements if: (1) Respondent actually offers goods and services at issue; (2) Respondent uses the site to sell only the trademarked goods; and, (3) the site accurately discloses the registrant’s relationship with the trademark owner.
Respondent fails the third prong of this test. There is no disclosure on Respondent’s website of the relationship between Respondent and Complainant. In fact, the website is intentionally created to look like the official Indian website of Complainant.
Finally, the Panel notes that Respondent failed to provide an accurate mailing address to the registrar. The Panel takes this failure to provide accurate information as further indication of bad faith, as has been done by prior panels. Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613 (September 22, 2004).
Complainant has satisfied this element of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name,
Moseley versus V Secret Catalogue Inc [VICTORIA'S SECRET CASE]
Victoria's Secret case sends message - An Advertising Supplement - a discussion of the U.S. Supreme Court's decision in Moseley versus V Secret Catalogue Inc
Los Angeles Business Journal, May 12, 2003 by Christopher C. Larkin
In March, the U.S. Supreme Court for the first time addressed the question of trademark dilution, when it issued its decision in Moseley v. V Secret Catalogue, Inc. popularly known as the Victoria s Secret case. Despite the unanimity of the decision, however, the majority and concurring opinions left open key questions, setting the stage for additional litigation on the uncertain parameters of trademark dilution, or possible legislative action.
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The United States Trademark Act, or Lanham Act, deals primarily with trademark infringement, based on the policy that consumers should be able to use marks to accurately identify the source or sponsorship of goods and services. The use of a junior trademark that is identical or very similar to a famous trademark on very different goods or services often may not cause consumer confusion and therefore not result in infringement. In 1995, the Federal Trademark Dilution Act (FTDA) was added to the Lanham Act to protect owners of famous trademarks against having their marks lose uniqueness due to the use of the same or a very similar mark by others even where there is no likelihood of consumer confusion.
When the FTDA was enacted, about half the states already had their own dilution statutes. The FTDA s biggest difference from those statutes was its requirement that the defendants use of a mark causes dilution of the distinctive quality of the famous mark, rather than the mere likelihood of injury to the famous mark s reputation. But in construing this language in the FTDA, the Fourth and Fifth Circuits held that the owner of a famous mark must show actual dilution, such as measurable economic harm to the mark, while the Second and Seventh Circuits held that a showing that dilution is likely to occur in the future is sufficient. The Moseley case turned on this question.
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The case arose when Victoria s Secret, the famous lingerie retailer, discovered that an adult-themed novelty store was operating as Victor s Secret. When asked to change its name, proprietor Victor Moseley adopted Victor s Little Secret, but Victoria s Secret filed suit, claiming that the new name diluted its mark by blurring its distinctiveness and tarnishing its reputation through association with lewd subject matter. The federal district court in Louisville, Kentucky granted summary judgment on Victoria s Secret dilution claim and the Sixth Circuit affirmed, but the Supreme Court unanimously reversed the Sixth Circuit and sent the case back to the lower courts for trial.
Justice Stevens opinion for the Court addressed whether objective proof of actual injury to the economic value of a famous mark (as opposed to a presumption of harm arising from a subjective likelihood of dilution standard) is a requisite for relief under the FTDA. In his opinion, the Court held that the FTDA does require proof of actual dilution, but not proof of actual lost sales or profits. Justice Stevens wrote that at least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior users mark with a famous mark is not sufficient to establish actionable dilution.
Justice Stevens opinion did not specify what type of direct evidence, such as a consumer survey, might prove actual dilution. But in emphasizing the fact that the marks in Moseley were not identical, he suggested that less proof might suffice to show actual dilution where the marks are identical. He wrote that tilt may well be... that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proven through circumstantial evidence the obvious case is one where the junior and senior marks are identical. Here again, however, his opinion did not explain what sort of circumstantial evidence (beyond the identity of the marks) might be needed in that fact situation.
A short concurring opinion by Justice Kennedy did not clarify these issues. Although he joined Justice Stevens opinion for the Court, Justice Kennedy wrote that [w]hen a competing mark is first adopted, there will be circumstances when the case can turn on the probable consequences its commercial use will have for the famous mark. In Justice Kennedy s view, [a] holder of a famous mark threatened with diminishment of the marks capacity to serve its purpose should not be forced to wait until the damage is done and the distinctiveness of the mark has been eroded, and should be able to obtain a prompt injunction. Justice Kennedy s views seem inconsistent with the Courts opinion that he joined, particularly with the Courts holding that actual dilution must be shown in all cases.
In Moseley, the Court failed to set clear guidelines for lower courts faced with FTDA claims. Although it is clear that actual dilution is now the standard for relief, the Court did not provide any guidance as to how that standard may be satisfied. Moseley makes it more difficult for owners of famous marks to obtain relief under the FTDA, but leaves open many questions for future resolution in litigation or by amendment to the FTDA.
Los Angeles Business Journal, May 12, 2003 by Christopher C. Larkin
In March, the U.S. Supreme Court for the first time addressed the question of trademark dilution, when it issued its decision in Moseley v. V Secret Catalogue, Inc. popularly known as the Victoria s Secret case. Despite the unanimity of the decision, however, the majority and concurring opinions left open key questions, setting the stage for additional litigation on the uncertain parameters of trademark dilution, or possible legislative action.
Related Results
Nightclub coils to strike in...
BEYOND CONFUSION: REEXAMINING...
TV's name game heats up with...
A Trademark Saved is More Than...
Most Popular Articles
in Business
Smart investments for ...
Culture, leadership, ...
Skip-level meetings ...
Life without illegal ...
Perks for part timers ...
More »
The United States Trademark Act, or Lanham Act, deals primarily with trademark infringement, based on the policy that consumers should be able to use marks to accurately identify the source or sponsorship of goods and services. The use of a junior trademark that is identical or very similar to a famous trademark on very different goods or services often may not cause consumer confusion and therefore not result in infringement. In 1995, the Federal Trademark Dilution Act (FTDA) was added to the Lanham Act to protect owners of famous trademarks against having their marks lose uniqueness due to the use of the same or a very similar mark by others even where there is no likelihood of consumer confusion.
When the FTDA was enacted, about half the states already had their own dilution statutes. The FTDA s biggest difference from those statutes was its requirement that the defendants use of a mark causes dilution of the distinctive quality of the famous mark, rather than the mere likelihood of injury to the famous mark s reputation. But in construing this language in the FTDA, the Fourth and Fifth Circuits held that the owner of a famous mark must show actual dilution, such as measurable economic harm to the mark, while the Second and Seventh Circuits held that a showing that dilution is likely to occur in the future is sufficient. The Moseley case turned on this question.
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The case arose when Victoria s Secret, the famous lingerie retailer, discovered that an adult-themed novelty store was operating as Victor s Secret. When asked to change its name, proprietor Victor Moseley adopted Victor s Little Secret, but Victoria s Secret filed suit, claiming that the new name diluted its mark by blurring its distinctiveness and tarnishing its reputation through association with lewd subject matter. The federal district court in Louisville, Kentucky granted summary judgment on Victoria s Secret dilution claim and the Sixth Circuit affirmed, but the Supreme Court unanimously reversed the Sixth Circuit and sent the case back to the lower courts for trial.
Justice Stevens opinion for the Court addressed whether objective proof of actual injury to the economic value of a famous mark (as opposed to a presumption of harm arising from a subjective likelihood of dilution standard) is a requisite for relief under the FTDA. In his opinion, the Court held that the FTDA does require proof of actual dilution, but not proof of actual lost sales or profits. Justice Stevens wrote that at least where the marks at issue are not identical, the mere fact that consumers mentally associate the junior users mark with a famous mark is not sufficient to establish actionable dilution.
Justice Stevens opinion did not specify what type of direct evidence, such as a consumer survey, might prove actual dilution. But in emphasizing the fact that the marks in Moseley were not identical, he suggested that less proof might suffice to show actual dilution where the marks are identical. He wrote that tilt may well be... that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proven through circumstantial evidence the obvious case is one where the junior and senior marks are identical. Here again, however, his opinion did not explain what sort of circumstantial evidence (beyond the identity of the marks) might be needed in that fact situation.
A short concurring opinion by Justice Kennedy did not clarify these issues. Although he joined Justice Stevens opinion for the Court, Justice Kennedy wrote that [w]hen a competing mark is first adopted, there will be circumstances when the case can turn on the probable consequences its commercial use will have for the famous mark. In Justice Kennedy s view, [a] holder of a famous mark threatened with diminishment of the marks capacity to serve its purpose should not be forced to wait until the damage is done and the distinctiveness of the mark has been eroded, and should be able to obtain a prompt injunction. Justice Kennedy s views seem inconsistent with the Courts opinion that he joined, particularly with the Courts holding that actual dilution must be shown in all cases.
In Moseley, the Court failed to set clear guidelines for lower courts faced with FTDA claims. Although it is clear that actual dilution is now the standard for relief, the Court did not provide any guidance as to how that standard may be satisfied. Moseley makes it more difficult for owners of famous marks to obtain relief under the FTDA, but leaves open many questions for future resolution in litigation or by amendment to the FTDA.
Patent - Diamond Vs Chakrabarty
Diamond v. Chakrabarty, 447 U.S. 303 (1980), was a United States Supreme Court case dealing with whether genetically modified micro-organisms can be patented.
Contents [hide]
1 Background
2 Decision
3 Ruling
4 Dissent
5 External links
[edit] Background
Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed a bacterium (derived from the Pseudomonas genus) capable of breaking down crude oil, which he proposed to use in treating oil spills. He requested a patent for the bacterium in the United States but was turned down by a patent examiner, because the law dictated that living things were not patentable.
The Patent Office Board of Appeals agreed with the original decision; however, the United States Court of Customs and Patent Appeals overturned the case in Chakrabarty's favor, writing that "the fact that micro-organisms are alive is without legal significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court.
The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980.
[edit] Decision
In a 5-4 ruling, the court ruled in favor of Chakrabarty, and upheld the patent, holding that:
A live, human-made micro-organism is patentable subject matter under [Title 35 U.S.C.] 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute.
[edit] Ruling
Chief Justice Warren E. Burger wrote the decision, and was joined by Potter Stewart, Harry Blackmun, William Rehnquist, and John Paul Stevens.
Burger wrote that the question before the court was a narrow one - the interpretation of 35 U.S.C. 101, which says:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
He wrote that:
We have [in earlier ruling 289 U.S. 178] cautioned that courts "should not read into the patent laws limitations and conditions which the legislature has not expressed."
Regarding the scope of the original legislation, he wrote:
In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would be given wide scope.
Finding that Congress had intended patentable subject matter to "include anything under the sun that is made by man," he concluded that:
Judged in this light, respondent's micro-organism plainly qualifies as patentable subject matter. His claim is ... to a nonnaturally occurring manufacture or composition of matter - a product of human ingenuity.
[edit] Dissent
The dissenting opinion was written by William J. Brennan, who was joined by Byron White, Thurgood Marshall, and Lewis Franklin Powell.
Brennan's dissent focused on the argument that there is evidence in the legislative record that Congress did not intend living organisms to be patented.
We must be careful to extend patent protection no further than Congress has provided.
Brennan noted that "we do not confront a complete legislative vacuum", and commented on the 1930 Plant Patent Act and 1970 Plant Variety Protection Act, which explicitly allow patents for plants in certain cases:
The Acts evidence Congress' understanding, at least since 1930, that 101 does not include living organisms. If newly developed living organisms not naturally occurring had been patentable under 101, the plants included in the scope of the 1930 and 1970 Acts could have been patented without new legislation.
Therefore:
Because Congress thought it had to legislate in order to make agricultural "human-made inventions" patentable and because the legislation Congress enacted is limited, it follows that Congress never meant to make items outside the scope of the legislation patentable.
And with regard to the specifics of the 1970 act:
Congress specifically excluded bacteria from the coverage of the 1970 Act ... The fact is that Congress, assuming that animate objects as to which it had not specifically legislated could not be patented, excluded bacteria from the set of patentable organisms.
[edit] External links
Complete ruling
Retrieved from "http://en.wikipedia.org/wiki/Diamond_v._Chakrabarty"
Contents [hide]
1 Background
2 Decision
3 Ruling
4 Dissent
5 External links
[edit] Background
Genetic engineer Ananda Mohan Chakrabarty, working for General Electric, had developed a bacterium (derived from the Pseudomonas genus) capable of breaking down crude oil, which he proposed to use in treating oil spills. He requested a patent for the bacterium in the United States but was turned down by a patent examiner, because the law dictated that living things were not patentable.
The Patent Office Board of Appeals agreed with the original decision; however, the United States Court of Customs and Patent Appeals overturned the case in Chakrabarty's favor, writing that "the fact that micro-organisms are alive is without legal significance for purposes of the patent law." Sidney A. Diamond, Commissioner of Patents and Trademarks, appealed to the Supreme Court.
The Supreme Court case was argued on March 17, 1980 and decided on June 16, 1980.
[edit] Decision
In a 5-4 ruling, the court ruled in favor of Chakrabarty, and upheld the patent, holding that:
A live, human-made micro-organism is patentable subject matter under [Title 35 U.S.C.] 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute.
[edit] Ruling
Chief Justice Warren E. Burger wrote the decision, and was joined by Potter Stewart, Harry Blackmun, William Rehnquist, and John Paul Stevens.
Burger wrote that the question before the court was a narrow one - the interpretation of 35 U.S.C. 101, which says:
"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title."
He wrote that:
We have [in earlier ruling 289 U.S. 178] cautioned that courts "should not read into the patent laws limitations and conditions which the legislature has not expressed."
Regarding the scope of the original legislation, he wrote:
In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress plainly contemplated that the patent laws would be given wide scope.
Finding that Congress had intended patentable subject matter to "include anything under the sun that is made by man," he concluded that:
Judged in this light, respondent's micro-organism plainly qualifies as patentable subject matter. His claim is ... to a nonnaturally occurring manufacture or composition of matter - a product of human ingenuity.
[edit] Dissent
The dissenting opinion was written by William J. Brennan, who was joined by Byron White, Thurgood Marshall, and Lewis Franklin Powell.
Brennan's dissent focused on the argument that there is evidence in the legislative record that Congress did not intend living organisms to be patented.
We must be careful to extend patent protection no further than Congress has provided.
Brennan noted that "we do not confront a complete legislative vacuum", and commented on the 1930 Plant Patent Act and 1970 Plant Variety Protection Act, which explicitly allow patents for plants in certain cases:
The Acts evidence Congress' understanding, at least since 1930, that 101 does not include living organisms. If newly developed living organisms not naturally occurring had been patentable under 101, the plants included in the scope of the 1930 and 1970 Acts could have been patented without new legislation.
Therefore:
Because Congress thought it had to legislate in order to make agricultural "human-made inventions" patentable and because the legislation Congress enacted is limited, it follows that Congress never meant to make items outside the scope of the legislation patentable.
And with regard to the specifics of the 1970 act:
Congress specifically excluded bacteria from the coverage of the 1970 Act ... The fact is that Congress, assuming that animate objects as to which it had not specifically legislated could not be patented, excluded bacteria from the set of patentable organisms.
[edit] External links
Complete ruling
Retrieved from "http://en.wikipedia.org/wiki/Diamond_v._Chakrabarty"
Aerotel case - Patent
Aerotel v Telco and Macrossan's application
From Wikipedia, the free encyclopedia
Jump to: navigation, search
Aerotel v Telco and Macrossan's application[1] is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved GB patent 2171877[2] granted to Aerotel Ltd and their infringement action against Telco Holdings Ltd and others. The second case concerned GB patent application 2388937 filed by Neal Macrossan but refused by the UK Patent Office, now operating as the UK Intellectual Property Office.
The reasoning in the judgment forms the basis for the current practice of the UK Intellectual Property Office, when assessing whether patent applications are for patentable subject matter.
The approach applied in the judgment has been criticized by a Board of Appeal of the European Patent Office (EPO) as being "irreconcilable with the European Patent Convention".[3]
Contents [hide]
1 History
1.1 Aerotel's patent
1.1.1 Application procedure
1.1.2 High Court
1.2 Macrossan's application
1.2.1 Application procedure
1.2.2 High Court
2 Judgment
2.1 Aerotel v Telco
2.2 Macrossan's application
2.3 Reasoning
2.4 Criticism of a practice of the European Patent Office
3 Appeal to House of Lords
4 Effects
4.1 UK Intellectual Property Office
4.2 High Court of England and Wales
5 Parallel procedure before the European Patent Office
6 Criticism
7 References
8 See also
9 External links
[edit] History
[edit] Aerotel's patent
[edit] Application procedure
Zvi Kamil, an Israeli inventor, filed his UK patent application number 8600691 for a "telephone system" on 13 January 1986, claiming priority from two previous Israeli patent applications filed on 13 January 1985 and 10 November 1985. The application related to a "special" telephone exchange. A caller has an account with the owner of that exchange and deposits a credit with him. The caller has a code. To make a call he calls the number of the special exchange and inputs his code and then the callee's number. If the code is verified and there is enough credit he is put through: the call will be terminated if his credit runs out.
The application was published as GB patent application 2171877 on 3 September 1986 and the patent was granted with effect from 21 December 1988. Kamil assigned his patent to Aerotel Limited on 12 April 1999. The patent expired on 12 January 2006.[4]
[edit] High Court
Aerotel sued Telco Holdings Limited for patent infringement in February 2005 and Telco counterclaimed for revocation of the patent. The action started in the Patents County Court, but HHJ Fysh QC transferred it to the High Court in November 2005. In February 2006, Telco applied for summary judgment on its counterclaim, basing the application on the exclusion to patentability. This application succeeded before Lewison J who ordered revocation of the patent on 3 May 2006.[5][6][7]
[edit] Macrossan's application
[edit] Application procedure
Macrossan's GB patent application 2388937 has a December 2000 priority date. It was for a new automated method of acquiring the documents necessary to incorporate a company. It involved a user sitting at a computer and communicating with a remote server, answering questions. By posing questions to the user in a number of stages, enough information was gleaned from the user's answers to produce the required documents. Questions posed in the second and subsequent stages were determined from previous answers provided and the user's answers were stored in a database structure. This process was repeated until the user had provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates were also stored and the data processor was configured to merge at least one of these templates with the user's answers to generate the required legal documents. The documents could then be sent to the user in an electronic form for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user.
The UK patent office did find that Macrossan's process was both novel and involved an inventive step, but nonetheless rejected the application for a patent since the claimed subject matter was not patentable subject matter under UK patent law.[8]. The UK patent examiner found that the claims related to a method for doing business and a computer program as such.
Macrossan sought a review of the patent examiner's finding, by way of a hearing before a UKPO hearing officer - she held[8] that the application related to a computer program as such, a method for doing business as such, and a method for performing a mental act as such, and thus was excluded from patentability on each of those three grounds.
[edit] High Court
Macrossan then appealed to the High Court. The High Court concurred in finding[9] that the application related to a computer program as such, and to a method for performing a mental act as such and was unpatentable for each of those two reasons. However the High Court specifically overruled the UKPO hearing officer on one of the three grounds of exclusion, by holding[10] that the application did not relate to a method of doing business as such.
[edit] Judgment
The judgment approved a new four-step test to be used when assessing whether or not an application actually describes an invention. The four-step test is as follows:
Properly construe the claim;
Identify the actual contribution;
Ask whether the contribution falls solely within excluded subject matter; and
Check whether the contribution is technical in nature.
The second step, that of identifying the contribution, was highlighted as being the most problematical since it may be difficult to determine what the contribution actually is.
[edit] Aerotel v Telco
Aerotel's patent was found to relate to a patentable invention in principle because the system as a whole was new in itself, not merely because it is to be used for the business of selling phone calls. While this system could be implemented using conventional computers, the key to it was a new physical combination of hardware. The judge felt that this was clearly more than just a method of doing business as such. The method claims were construed as relating to a use of the new system and were also deemed to relate to a patentable invention in principle. The additional questions of whether the claimed invention was novel and involved an inventive step were not considered directly by the judge, although the implication is that the invention was at least novel.
[edit] Macrossan's application
In relation to Macrossan's patent application, it was held that the subject matter was unpatentable on the grounds of the computer program and business method exclusions. However in relation to the mental act exclusion, the Court of Appeal made no specific finding.[11]
[edit] Reasoning
In both cases, the judgment does not explain in detail how the contributions provided by the claimed inventions were identified and provides little guidance for how the second step of the test could be carried out in other cases.[12] Instead, the reader is directed to the lengthy summary of past case law that is included as an Appendix to the judgment to understand the reasoning of the judges fully. Based on this summary of the case law, the judgment rejects the notion set out in the earlier judgment concerning Fujitsu's application that the UK Courts should be guided by the case law of the EPO since the judges were of the opinion that EPO case law was too unsettled.
The judgment briefly mentions[13] the TRIPS agreement and the fact that its lack of a list of exclusions from patentability and its requirement that patents should be available in "all fields of technology" puts political pressure on Europe to remove or reduce the categories of non-inventions. However, Jacob had previously ruled[14][15] that TRIPS does not have direct effect on UK law and thus did not affect the case in question. Instead, cases relating to the exclusions from patentability must be decided by simply trying to make sense of the language of the EPC without bias for or against exclusion.[16]
[edit] Criticism of a practice of the European Patent Office
The judgment proposes several questions to be put to the Enlarged Board of Appeal in an effort to resolve the perceived conflicts between the different decisions of the Boards of Appeal. In response to this, Alain Pompidou, president of the European Patent Office (EPO), wrote to Lord Justice Jacob to say that while clarification of certain issues relating to excluded subject matter would be welcomed, there were currently insufficient differences between relevant Board of Appeal decisions that would justify a referral. Instead, a referral would be appropriate if the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not.[17]
The practice of the EPO to deem non-technical subject matter, such as new music or a story, as part of the prior art was criticised as not being intellectually honest.[18] A similar criticism was also raised during appeal T 1284/04, in response to which the Board of Appeal stated that:
“ the COMVIK approach does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention since they may lead to a technical problem without contributing to its solution. Such aspects have never been taken into account for assessing inventive step, irrespective of whether or not they were known from the prior art.[19] ”
See also: Criticism section below.
[edit] Appeal to House of Lords
Citing as reasons a clear divergence in reasoning between the UK courts and the European Patent Office, Neal Macrossan sought leave to appeal the refusal of his patent application to the House of Lords.[20][21] Within the patent profession it was hoped that a ruling by the House of Lords would clarify the extent to which patent protection is available to computer-implemented inventions. The House of Lords had already tackled fundamental questions such as novelty[22], inventive step[23], claim construction and sufficiency[24] during 2004 and 2005.
The House of Lords refused leave to hear the appeal, citing the reason that the case "does not raise an arguable point of law of general public importance".[25][26][27]
Some patent attorneys have expressed surprise at this decision since, while the merits of Macrossan's case might have been arguable, it was felt that there are issues with the law that require resolving. Consequently, there is disappointment at this missed opportunity to better establish where the boundary lies between patentable and non-patentable software. The Foundation for a Free Information Infrastructure have expressed the view that the decision of the House of Lords confirms that the correctness of the Court of Appeal.[28][29]
[edit] Effects
[edit] UK Intellectual Property Office
Main article: Software patents under United Kingdom patent law
Following this judgment, the UK Patent Office (now the UK Intellectual Property Office) issued a Practice Note[30] on 2 November 2006 announcing an immediate change in the way patent examiners will assess whether inventions relate to patentable subject matter. The Patent Office also prepared four case studies as examples of how they saw the test being applied in practice.[31]
[edit] High Court of England and Wales
The first judgment of the High Court[32] following the Aerotel/Macrossan judgment concerned two appeals filed from decisions of the UK Patent Office to refuse applications of Cappellini and Bloomberg. Taking the lead from Jacob LJ's approach of killing two birds with one stone in Aerotel/Macrossan, Pumfrey J decided that, since the decisions raised similar questions, it would be convenient to deliver a single judgment in respect of the legal issues, dealing with the facts relating to each case after considering the law.[33]
[edit] Parallel procedure before the European Patent Office
Main article: Software patents under the European Patent Convention
A European patent application, namely EP patent application 1346304, in the patent family of patent application GB 2388937 filed by Macrossan, is currently pending at the European Patent Office (EPO).
On Monday 30 October 2006 (the first business day following the handing down of the Court of Appeal's judgment on Friday 27 October 2006), the Search Division of the EPO in charge of establishing a search report for the European patent application issued a declaration under Rule 45 EPC that a search could not be established.[34] The declaration indicates that the EPO search examiner is of the opinion that Macrossan's application contains nothing of technical merit, but only commonplace technical features (i.e. a computer) for implementing a business method. As a consequence, no meaningful search was considered to be possible.
Current EPO practice when examining computer-implemented inventions is that any technical feature in a claim, such as a computer, results in the finding that there is "an invention", but only those features which provide a technical solution to a technical problem (as opposed to a business problem) can contribute to an inventive step. In contrast to the UKIPO and courts, therefore, the EPO is unlikely to refuse the application as relating to a computer program or a method of doing business as such (Article 52(2) and (3) EPC), but will probably use reasoning relating to the question of whether the invention involves an inventive step (Article 56 EPC).
[edit] Criticism
The "technical effect approach (with the rider)" applied in the judgment has been criticized by the Board of Appeal 3.5.01 of the EPO in its decision T 154/04 of November 15, 2006. [35] The Board considered that the examination of whether there is an invention within the meaning of Article 52(1) to (3) EPC has to be strictly separated from and not mixed up with the other three patentability requirements referred to in Article 52(1) EPC.
“ This distinction abstracts the concept of "invention" as a general and absolute requirement of patentability from the relative criteria novelty and inventive step, which in an ordinary popular sense are understood to be the attributes of any invention (...). [36] ”
In relation to the "ordinary popular sense" according to which novelty and inventive step are understood to be attributes of all inventions and in relation to the corresponding meaning of the term invention, the Board considered that:
“ The "technical effect approach" endorsed by Lord Justice Jacob in the Aerotel/Macrossan judgement (...) seems to be rooted in this second ordinary meaning of the term invention, a practice which might be understandable "given the shape of the old law" (Lord Justice Mustill, loc.cit. [37]), but which is not consistent with a good-faith interpretation of the European Patent Convention in accordance with Article 31 of the Vienna Convention on the Law of Treaties of 1969. [38] ”
The "contribution" or "technical effect" approach followed in the Aerotel/Macrossan judgement was abandoned by the Boards of Appeal of the EPO ten years ago and the board in T 154/04 confirmed that there were "convincing reasons" for abandoning this approach. [38]
The Board further considered that
“ The "technical effect approach (with the rider)" applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that "novel and inventive purely excluded matter does not count as a 'technical contribution'" (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria (...)" [3] ”
[edit] References
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371)
^ Note: This link goes to the published patent application, not the granted patent.
^ a b Decision T 154/04 of November 15, 2006, Reasons 13, to be published at the Official Journal of the European Patent Office.
^ The Patents Status Enquiry service of the UK IPO lists landmarks for GB2171877
^ Aerotel Ltd v Telco Holdings Ltd and others (2006) EWHC 997 (Pat) (Word). Practical Law Company. Retrieved on 10 March 2007.
^ High Court grants summary judgment of invalidity. Practical Law Company. Retrieved on 10 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 1
^ a b Patent Office Decision BL O/078/05, Neal William Macrossan's application (PDF). UK Patent Office. Retrieved on 10 March 2007.
^ Neal William Macrossan's application ([2006] EWHC Ch 705)
^ Patent Office Decision BL O/078/05, Neal William Macrossan's application (PDF). UK Patent Office. Retrieved on 10 March 2007., paragraphs 28-30
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 62
^ UK Patent Office Change Practice when Examining Business Method and Computer Program Patent Applications. Boult Wade Tennant. Retrieved on 10 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 16
^ Lenzing AG’s European Patent (UK) ([1996] EWHC Admin 390), paragraph 61
^ Patent Office Decision BL O/226/06, Sony Electronics Inc's application (PDF). UK Patent Office. Retrieved on 10 March 2007. Paragraph 17
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 21
^ The text of the President of the EPO's letter to Jacob LJ, Re: Court of Appeal Judgement [2006 EWCA Civ 1371]. UK Patent Office. Retrieved on 16 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 27
^ Boards of Appeal of the European Patent Office, Decision T 1284/04 of March 7, 2007, Reasons 3.1
^ Marks and Clerk.
^ Patent Appeal, The Register 2006-11-10.
^ Out Law.
^ MWE.
^ Boult Wade Tennant.
^ http://www.ukcorporator.co.uk/H_of_L_Report.pdf
^ Macrossan Refused Leave to Appeal, IPKat.
^ Macrossan at the Highest Court, The Register 2007-02-08.
^ http://www.vnunet.com/itweek/news/2174365/lords-refuses-hear-software
^ http://www.marks-clerk.com/attorneys/news_one.aspx?newsid=122
^ Patents Act 1977: Patentable subject matter. UK Intellectual Property Office. Retrieved on 10 March 2007.
^ Applying the Aerotel/Macrossan test. UK Intellectual Property Office. Retrieved on 10 March 2007.
^ Pablo Cappellini's application and Bloomberg LP's application ([2007] EWHC Patents 476)
^ Cappellini's & Bloomberg's Applications: untethered from the real world. IPKat. Retrieved on 16 March 2007.
^ Copy of EPO declaration under Rule 45 EPC (PDF). UK Corporator. Retrieved on 13 March 2007.
^ Decision T 154/04, Reasons 12 and 13.
^ Decision T 154/04, Reasons 10.
^ This expression "given the shape of the old law" refers to the reasoning in the UK decision re Genentech Inc.'s Patent [1989] R.P.C. 147, pages 262 f.
^ a b Decision T 154/04, Reasons 12.
Courtesy : wikipedia
From Wikipedia, the free encyclopedia
Jump to: navigation, search
Aerotel v Telco and Macrossan's application[1] is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved GB patent 2171877[2] granted to Aerotel Ltd and their infringement action against Telco Holdings Ltd and others. The second case concerned GB patent application 2388937 filed by Neal Macrossan but refused by the UK Patent Office, now operating as the UK Intellectual Property Office.
The reasoning in the judgment forms the basis for the current practice of the UK Intellectual Property Office, when assessing whether patent applications are for patentable subject matter.
The approach applied in the judgment has been criticized by a Board of Appeal of the European Patent Office (EPO) as being "irreconcilable with the European Patent Convention".[3]
Contents [hide]
1 History
1.1 Aerotel's patent
1.1.1 Application procedure
1.1.2 High Court
1.2 Macrossan's application
1.2.1 Application procedure
1.2.2 High Court
2 Judgment
2.1 Aerotel v Telco
2.2 Macrossan's application
2.3 Reasoning
2.4 Criticism of a practice of the European Patent Office
3 Appeal to House of Lords
4 Effects
4.1 UK Intellectual Property Office
4.2 High Court of England and Wales
5 Parallel procedure before the European Patent Office
6 Criticism
7 References
8 See also
9 External links
[edit] History
[edit] Aerotel's patent
[edit] Application procedure
Zvi Kamil, an Israeli inventor, filed his UK patent application number 8600691 for a "telephone system" on 13 January 1986, claiming priority from two previous Israeli patent applications filed on 13 January 1985 and 10 November 1985. The application related to a "special" telephone exchange. A caller has an account with the owner of that exchange and deposits a credit with him. The caller has a code. To make a call he calls the number of the special exchange and inputs his code and then the callee's number. If the code is verified and there is enough credit he is put through: the call will be terminated if his credit runs out.
The application was published as GB patent application 2171877 on 3 September 1986 and the patent was granted with effect from 21 December 1988. Kamil assigned his patent to Aerotel Limited on 12 April 1999. The patent expired on 12 January 2006.[4]
[edit] High Court
Aerotel sued Telco Holdings Limited for patent infringement in February 2005 and Telco counterclaimed for revocation of the patent. The action started in the Patents County Court, but HHJ Fysh QC transferred it to the High Court in November 2005. In February 2006, Telco applied for summary judgment on its counterclaim, basing the application on the exclusion to patentability. This application succeeded before Lewison J who ordered revocation of the patent on 3 May 2006.[5][6][7]
[edit] Macrossan's application
[edit] Application procedure
Macrossan's GB patent application 2388937 has a December 2000 priority date. It was for a new automated method of acquiring the documents necessary to incorporate a company. It involved a user sitting at a computer and communicating with a remote server, answering questions. By posing questions to the user in a number of stages, enough information was gleaned from the user's answers to produce the required documents. Questions posed in the second and subsequent stages were determined from previous answers provided and the user's answers were stored in a database structure. This process was repeated until the user had provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates were also stored and the data processor was configured to merge at least one of these templates with the user's answers to generate the required legal documents. The documents could then be sent to the user in an electronic form for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user.
The UK patent office did find that Macrossan's process was both novel and involved an inventive step, but nonetheless rejected the application for a patent since the claimed subject matter was not patentable subject matter under UK patent law.[8]. The UK patent examiner found that the claims related to a method for doing business and a computer program as such.
Macrossan sought a review of the patent examiner's finding, by way of a hearing before a UKPO hearing officer - she held[8] that the application related to a computer program as such, a method for doing business as such, and a method for performing a mental act as such, and thus was excluded from patentability on each of those three grounds.
[edit] High Court
Macrossan then appealed to the High Court. The High Court concurred in finding[9] that the application related to a computer program as such, and to a method for performing a mental act as such and was unpatentable for each of those two reasons. However the High Court specifically overruled the UKPO hearing officer on one of the three grounds of exclusion, by holding[10] that the application did not relate to a method of doing business as such.
[edit] Judgment
The judgment approved a new four-step test to be used when assessing whether or not an application actually describes an invention. The four-step test is as follows:
Properly construe the claim;
Identify the actual contribution;
Ask whether the contribution falls solely within excluded subject matter; and
Check whether the contribution is technical in nature.
The second step, that of identifying the contribution, was highlighted as being the most problematical since it may be difficult to determine what the contribution actually is.
[edit] Aerotel v Telco
Aerotel's patent was found to relate to a patentable invention in principle because the system as a whole was new in itself, not merely because it is to be used for the business of selling phone calls. While this system could be implemented using conventional computers, the key to it was a new physical combination of hardware. The judge felt that this was clearly more than just a method of doing business as such. The method claims were construed as relating to a use of the new system and were also deemed to relate to a patentable invention in principle. The additional questions of whether the claimed invention was novel and involved an inventive step were not considered directly by the judge, although the implication is that the invention was at least novel.
[edit] Macrossan's application
In relation to Macrossan's patent application, it was held that the subject matter was unpatentable on the grounds of the computer program and business method exclusions. However in relation to the mental act exclusion, the Court of Appeal made no specific finding.[11]
[edit] Reasoning
In both cases, the judgment does not explain in detail how the contributions provided by the claimed inventions were identified and provides little guidance for how the second step of the test could be carried out in other cases.[12] Instead, the reader is directed to the lengthy summary of past case law that is included as an Appendix to the judgment to understand the reasoning of the judges fully. Based on this summary of the case law, the judgment rejects the notion set out in the earlier judgment concerning Fujitsu's application that the UK Courts should be guided by the case law of the EPO since the judges were of the opinion that EPO case law was too unsettled.
The judgment briefly mentions[13] the TRIPS agreement and the fact that its lack of a list of exclusions from patentability and its requirement that patents should be available in "all fields of technology" puts political pressure on Europe to remove or reduce the categories of non-inventions. However, Jacob had previously ruled[14][15] that TRIPS does not have direct effect on UK law and thus did not affect the case in question. Instead, cases relating to the exclusions from patentability must be decided by simply trying to make sense of the language of the EPC without bias for or against exclusion.[16]
[edit] Criticism of a practice of the European Patent Office
The judgment proposes several questions to be put to the Enlarged Board of Appeal in an effort to resolve the perceived conflicts between the different decisions of the Boards of Appeal. In response to this, Alain Pompidou, president of the European Patent Office (EPO), wrote to Lord Justice Jacob to say that while clarification of certain issues relating to excluded subject matter would be welcomed, there were currently insufficient differences between relevant Board of Appeal decisions that would justify a referral. Instead, a referral would be appropriate if the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not.[17]
The practice of the EPO to deem non-technical subject matter, such as new music or a story, as part of the prior art was criticised as not being intellectually honest.[18] A similar criticism was also raised during appeal T 1284/04, in response to which the Board of Appeal stated that:
“ the COMVIK approach does not consider the non-technical constraints as belonging to the prior art, but rather as belonging to the conception or motivation phase normally preceding an invention since they may lead to a technical problem without contributing to its solution. Such aspects have never been taken into account for assessing inventive step, irrespective of whether or not they were known from the prior art.[19] ”
See also: Criticism section below.
[edit] Appeal to House of Lords
Citing as reasons a clear divergence in reasoning between the UK courts and the European Patent Office, Neal Macrossan sought leave to appeal the refusal of his patent application to the House of Lords.[20][21] Within the patent profession it was hoped that a ruling by the House of Lords would clarify the extent to which patent protection is available to computer-implemented inventions. The House of Lords had already tackled fundamental questions such as novelty[22], inventive step[23], claim construction and sufficiency[24] during 2004 and 2005.
The House of Lords refused leave to hear the appeal, citing the reason that the case "does not raise an arguable point of law of general public importance".[25][26][27]
Some patent attorneys have expressed surprise at this decision since, while the merits of Macrossan's case might have been arguable, it was felt that there are issues with the law that require resolving. Consequently, there is disappointment at this missed opportunity to better establish where the boundary lies between patentable and non-patentable software. The Foundation for a Free Information Infrastructure have expressed the view that the decision of the House of Lords confirms that the correctness of the Court of Appeal.[28][29]
[edit] Effects
[edit] UK Intellectual Property Office
Main article: Software patents under United Kingdom patent law
Following this judgment, the UK Patent Office (now the UK Intellectual Property Office) issued a Practice Note[30] on 2 November 2006 announcing an immediate change in the way patent examiners will assess whether inventions relate to patentable subject matter. The Patent Office also prepared four case studies as examples of how they saw the test being applied in practice.[31]
[edit] High Court of England and Wales
The first judgment of the High Court[32] following the Aerotel/Macrossan judgment concerned two appeals filed from decisions of the UK Patent Office to refuse applications of Cappellini and Bloomberg. Taking the lead from Jacob LJ's approach of killing two birds with one stone in Aerotel/Macrossan, Pumfrey J decided that, since the decisions raised similar questions, it would be convenient to deliver a single judgment in respect of the legal issues, dealing with the facts relating to each case after considering the law.[33]
[edit] Parallel procedure before the European Patent Office
Main article: Software patents under the European Patent Convention
A European patent application, namely EP patent application 1346304, in the patent family of patent application GB 2388937 filed by Macrossan, is currently pending at the European Patent Office (EPO).
On Monday 30 October 2006 (the first business day following the handing down of the Court of Appeal's judgment on Friday 27 October 2006), the Search Division of the EPO in charge of establishing a search report for the European patent application issued a declaration under Rule 45 EPC that a search could not be established.[34] The declaration indicates that the EPO search examiner is of the opinion that Macrossan's application contains nothing of technical merit, but only commonplace technical features (i.e. a computer) for implementing a business method. As a consequence, no meaningful search was considered to be possible.
Current EPO practice when examining computer-implemented inventions is that any technical feature in a claim, such as a computer, results in the finding that there is "an invention", but only those features which provide a technical solution to a technical problem (as opposed to a business problem) can contribute to an inventive step. In contrast to the UKIPO and courts, therefore, the EPO is unlikely to refuse the application as relating to a computer program or a method of doing business as such (Article 52(2) and (3) EPC), but will probably use reasoning relating to the question of whether the invention involves an inventive step (Article 56 EPC).
[edit] Criticism
The "technical effect approach (with the rider)" applied in the judgment has been criticized by the Board of Appeal 3.5.01 of the EPO in its decision T 154/04 of November 15, 2006. [35] The Board considered that the examination of whether there is an invention within the meaning of Article 52(1) to (3) EPC has to be strictly separated from and not mixed up with the other three patentability requirements referred to in Article 52(1) EPC.
“ This distinction abstracts the concept of "invention" as a general and absolute requirement of patentability from the relative criteria novelty and inventive step, which in an ordinary popular sense are understood to be the attributes of any invention (...). [36] ”
In relation to the "ordinary popular sense" according to which novelty and inventive step are understood to be attributes of all inventions and in relation to the corresponding meaning of the term invention, the Board considered that:
“ The "technical effect approach" endorsed by Lord Justice Jacob in the Aerotel/Macrossan judgement (...) seems to be rooted in this second ordinary meaning of the term invention, a practice which might be understandable "given the shape of the old law" (Lord Justice Mustill, loc.cit. [37]), but which is not consistent with a good-faith interpretation of the European Patent Convention in accordance with Article 31 of the Vienna Convention on the Law of Treaties of 1969. [38] ”
The "contribution" or "technical effect" approach followed in the Aerotel/Macrossan judgement was abandoned by the Boards of Appeal of the EPO ten years ago and the board in T 154/04 confirmed that there were "convincing reasons" for abandoning this approach. [38]
The Board further considered that
“ The "technical effect approach (with the rider)" applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention also for the further reason that it presupposes that "novel and inventive purely excluded matter does not count as a 'technical contribution'" (Aerotel/Macrossan, e.g. paragraph No. 26(2)). This has no basis in the Convention and contravenes conventional patentability criteria (...)" [3] ”
[edit] References
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371)
^ Note: This link goes to the published patent application, not the granted patent.
^ a b Decision T 154/04 of November 15, 2006, Reasons 13, to be published at the Official Journal of the European Patent Office.
^ The Patents Status Enquiry service of the UK IPO lists landmarks for GB2171877
^ Aerotel Ltd v Telco Holdings Ltd and others (2006) EWHC 997 (Pat) (Word). Practical Law Company. Retrieved on 10 March 2007.
^ High Court grants summary judgment of invalidity. Practical Law Company. Retrieved on 10 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 1
^ a b Patent Office Decision BL O/078/05, Neal William Macrossan's application (PDF). UK Patent Office. Retrieved on 10 March 2007.
^ Neal William Macrossan's application ([2006] EWHC Ch 705)
^ Patent Office Decision BL O/078/05, Neal William Macrossan's application (PDF). UK Patent Office. Retrieved on 10 March 2007., paragraphs 28-30
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 62
^ UK Patent Office Change Practice when Examining Business Method and Computer Program Patent Applications. Boult Wade Tennant. Retrieved on 10 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 16
^ Lenzing AG’s European Patent (UK) ([1996] EWHC Admin 390), paragraph 61
^ Patent Office Decision BL O/226/06, Sony Electronics Inc's application (PDF). UK Patent Office. Retrieved on 10 March 2007. Paragraph 17
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 21
^ The text of the President of the EPO's letter to Jacob LJ, Re: Court of Appeal Judgement [2006 EWCA Civ 1371]. UK Patent Office. Retrieved on 16 March 2007.
^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application ([2006] EWCA Civ 1371), paragraph 27
^ Boards of Appeal of the European Patent Office, Decision T 1284/04 of March 7, 2007, Reasons 3.1
^ Marks and Clerk.
^ Patent Appeal, The Register 2006-11-10.
^ Out Law.
^ MWE.
^ Boult Wade Tennant.
^ http://www.ukcorporator.co.uk/H_of_L_Report.pdf
^ Macrossan Refused Leave to Appeal, IPKat.
^ Macrossan at the Highest Court, The Register 2007-02-08.
^ http://www.vnunet.com/itweek/news/2174365/lords-refuses-hear-software
^ http://www.marks-clerk.com/attorneys/news_one.aspx?newsid=122
^ Patents Act 1977: Patentable subject matter. UK Intellectual Property Office. Retrieved on 10 March 2007.
^ Applying the Aerotel/Macrossan test. UK Intellectual Property Office. Retrieved on 10 March 2007.
^ Pablo Cappellini's application and Bloomberg LP's application ([2007] EWHC Patents 476)
^ Cappellini's & Bloomberg's Applications: untethered from the real world. IPKat. Retrieved on 16 March 2007.
^ Copy of EPO declaration under Rule 45 EPC (PDF). UK Corporator. Retrieved on 13 March 2007.
^ Decision T 154/04, Reasons 12 and 13.
^ Decision T 154/04, Reasons 10.
^ This expression "given the shape of the old law" refers to the reasoning in the UK decision re Genentech Inc.'s Patent [1989] R.P.C. 147, pages 262 f.
^ a b Decision T 154/04, Reasons 12.
Courtesy : wikipedia
Online Policy Group v. Diebold, Inc.
Online Policy Group v. Diebold, Inc.
EFF helped protect online speakers by bringing the first successful suit against abusive copyright claims under the Digital Millennium Copyright Act (DMCA). This landmark case set a precedent that allows other Internet users and their ISPs to fight back against improper copyright threats.
In OPG v. Diebold, a California district court has determined that Diebold, Inc., a manufacturer of electronic voting machines, knowingly misrepresented that online commentators, including IndyMedia and two Swarthmore college students, had infringed the company's copyrights. EFF and the Center for Internet and Society Cyberlaw Clinic at Stanford Law School sued on behalf of nonprofit Internet Service Provider (ISP) Online Policy Group (OPG) and the two students to prevent Diebold's abusive copyright claims from silencing public debate about voting.
Diebold sent dozens of cease-and-desist letters to ISPs hosting leaked internal documents revealing flaws in Diebold's e-voting machines. The company claimed copyright violations and used the DMCA to demand that the documents be taken down. One ISP, OPG, refused to remove them in the name of free speech, and thus became the first ISP to test whether it would be held liable for the actions of its users in such a situation.
In his decision, Judge Jeremy Fogel wrote, "No reasonable copyright holder could have believed that the portions of the email archive discussing possible technical problems with Diebold's voting machines were proteced by copyright." In turn, Diebold had violated section 512(f) of the DMCA, which makes it unlawful to use DMCA takedown threats when the copyright holder knows that infringement has not actually occured.
Diebold subsequently agreed to pay $125,000 in damages and fees.
Order Granting In Part And Denying In Part Crossmotions For Summary Judgment [PDF 112k] September 30, 2004
Transcript from Summary Judgment hearing February 9, 2004
Plaintiffs' Opposition to Defendents' Motion for Summary Judgment January 30, 2004
Defendents' Opposition to Plaintiffs' Motion for Summary Judgment January 30, 2004
Plaintiffs' Motion for Summary Judgment January 12, 2004
Declaration of Cohn in Support of Plaintiffs January 12, 2004
Declaration of Pavlosky in Support of Plaintiffs January 12, 2004
Declaration of Weekly in Support of Plaintiffs January 12, 2004
Declaration of Laroia in Support of Plaintiffs January 12, 2004
Defendants' Motion for Summary Judgment January 12, 2004
Defendants' Notice of Motion for Summary Judgment January 12, 2004
Declaration of Sand in Support of Defendants January 12, 2004
Defendants' Proposed Order January 12, 2004
Diebold Withdrawal Letter to Will Doherty of OPG (December 3, 2003)
Diebold's Answer to Complaint, (December 5, 2003)
Scheduling Order Detailing Diebold's Withdrawal of Threats (PDF 34k - December 1, 2003)
Diebold Response to Cohn Letter (PDF 391k - November 24, 2003)
Transcript of Preliminary Injunction (November 17, 2003)
Letter of Cindy Cohn
Supplemental Declaration of Benny Ng regarding Diebold's "second notice" to Hurricane Electric (PDFs, November 17, 2003)
Plaintiffs' Reply Brief on Preliminary Injunction (PDF 175k - November 14, 2003)
Declaration of Vincent V. Carissimi, Swarthmore College Counsel (PDF 154k)
Proposed Preliminary Injunction Order (PDF 73k)
Second Supplemental Declaration of Luke Thomas Smith (PDF 412k)
Amendment to Application for Preliminary Injunction (PDF 12k)
Diebold's Opposition to Motion for Preliminary Injunction (PDF 2.2MB - November 12, 2003)
Declaration of Nancy Reeves (PDF 154k - November 12, 2003)
Plaintiffs' Supplemental Brief Supporting Preliminary Injunction (PDF 908k - November 7, 2003)
Supplemental Declaration of David E. Weekly (PDF 328k - November 7, 2003)
Supplemental Declaration of Luke Thomas Smith (PDF 572 - November 7, 2003)
Judge Fogel's order, setting expedited hearing schedule for Preliminary Injunction (November 4, 2003)
Complaint (November 4, 2003)
First Amended Complaint, (November 14, 2003)
Application for Temporary Restraining Order (November 4, 2003)
Proposed Temporary Restraining Order (November 4, 2003)
Declaration of David E. Weekly, OPG Board Member
Declaration of Luke Thomas Smith, Swarthmore Student
Declaration of Nelson Chu Pavlosky, Swarthmore Student
Declaration of Benny Ng, Hurricane Electric
Declaration of Wendy Seltzer, EFF Staff Attorney
Diebold's opposition to TRO (November 4, 2003)
Diebold cease-and-desist letter to OPG
EFF's response to Diebold on behalf of OPG
Press releases
EFF Wins in Diebold Copyright Abuse Case Sept 30, 2004
Diebold Coughs Up Cash in Copyright Case Oct 15, 2004
Electronic Frontier Foundation and Stanford Law Clinic Sue Electronic Voting Company
ISP Rejects Diebold Copyright Claims Against News Website
Media coverage:
File Sharing Pits Copyright Against Free Speech (Requires free registration) [John Schwartz, New York Times]
Black Box Voting Blues [Steven Levy, Newsweek]
Diebold Issues Threat to Publishers of Leaked Memos [AP]
E-Vote Protest Gains Momentum [Wired]
Students Fight E-Vote Firm [Wired]
Commentary:
Latest DMCA Takedown Victim: The Election Process [Ed Foster, Gripelog]
Something Truly Terrifying [Tom Tomorrow, This Modern World]
(Electronic) Civil Disobedience at Swarthmore [Ernest Miller, The Importance Of...]
Swarthmore Crackdown on Protesting Students Reaches New Low [Ernest Miller, The Importance Of...]
Related documents/resources:
Congressman Dennis J. Kucinich endorses open design processes for electronic voting machines, and condemns Diebold's coercive copyright claims.
Security researchers discover huge flaws in e-voting system
Chilling Effects on the DMCA's safe harbor provisions
Courtesy: EFF
EFF helped protect online speakers by bringing the first successful suit against abusive copyright claims under the Digital Millennium Copyright Act (DMCA). This landmark case set a precedent that allows other Internet users and their ISPs to fight back against improper copyright threats.
In OPG v. Diebold, a California district court has determined that Diebold, Inc., a manufacturer of electronic voting machines, knowingly misrepresented that online commentators, including IndyMedia and two Swarthmore college students, had infringed the company's copyrights. EFF and the Center for Internet and Society Cyberlaw Clinic at Stanford Law School sued on behalf of nonprofit Internet Service Provider (ISP) Online Policy Group (OPG) and the two students to prevent Diebold's abusive copyright claims from silencing public debate about voting.
Diebold sent dozens of cease-and-desist letters to ISPs hosting leaked internal documents revealing flaws in Diebold's e-voting machines. The company claimed copyright violations and used the DMCA to demand that the documents be taken down. One ISP, OPG, refused to remove them in the name of free speech, and thus became the first ISP to test whether it would be held liable for the actions of its users in such a situation.
In his decision, Judge Jeremy Fogel wrote, "No reasonable copyright holder could have believed that the portions of the email archive discussing possible technical problems with Diebold's voting machines were proteced by copyright." In turn, Diebold had violated section 512(f) of the DMCA, which makes it unlawful to use DMCA takedown threats when the copyright holder knows that infringement has not actually occured.
Diebold subsequently agreed to pay $125,000 in damages and fees.
Order Granting In Part And Denying In Part Crossmotions For Summary Judgment [PDF 112k] September 30, 2004
Transcript from Summary Judgment hearing February 9, 2004
Plaintiffs' Opposition to Defendents' Motion for Summary Judgment January 30, 2004
Defendents' Opposition to Plaintiffs' Motion for Summary Judgment January 30, 2004
Plaintiffs' Motion for Summary Judgment January 12, 2004
Declaration of Cohn in Support of Plaintiffs January 12, 2004
Declaration of Pavlosky in Support of Plaintiffs January 12, 2004
Declaration of Weekly in Support of Plaintiffs January 12, 2004
Declaration of Laroia in Support of Plaintiffs January 12, 2004
Defendants' Motion for Summary Judgment January 12, 2004
Defendants' Notice of Motion for Summary Judgment January 12, 2004
Declaration of Sand in Support of Defendants January 12, 2004
Defendants' Proposed Order January 12, 2004
Diebold Withdrawal Letter to Will Doherty of OPG (December 3, 2003)
Diebold's Answer to Complaint, (December 5, 2003)
Scheduling Order Detailing Diebold's Withdrawal of Threats (PDF 34k - December 1, 2003)
Diebold Response to Cohn Letter (PDF 391k - November 24, 2003)
Transcript of Preliminary Injunction (November 17, 2003)
Letter of Cindy Cohn
Supplemental Declaration of Benny Ng regarding Diebold's "second notice" to Hurricane Electric (PDFs, November 17, 2003)
Plaintiffs' Reply Brief on Preliminary Injunction (PDF 175k - November 14, 2003)
Declaration of Vincent V. Carissimi, Swarthmore College Counsel (PDF 154k)
Proposed Preliminary Injunction Order (PDF 73k)
Second Supplemental Declaration of Luke Thomas Smith (PDF 412k)
Amendment to Application for Preliminary Injunction (PDF 12k)
Diebold's Opposition to Motion for Preliminary Injunction (PDF 2.2MB - November 12, 2003)
Declaration of Nancy Reeves (PDF 154k - November 12, 2003)
Plaintiffs' Supplemental Brief Supporting Preliminary Injunction (PDF 908k - November 7, 2003)
Supplemental Declaration of David E. Weekly (PDF 328k - November 7, 2003)
Supplemental Declaration of Luke Thomas Smith (PDF 572 - November 7, 2003)
Judge Fogel's order, setting expedited hearing schedule for Preliminary Injunction (November 4, 2003)
Complaint (November 4, 2003)
First Amended Complaint, (November 14, 2003)
Application for Temporary Restraining Order (November 4, 2003)
Proposed Temporary Restraining Order (November 4, 2003)
Declaration of David E. Weekly, OPG Board Member
Declaration of Luke Thomas Smith, Swarthmore Student
Declaration of Nelson Chu Pavlosky, Swarthmore Student
Declaration of Benny Ng, Hurricane Electric
Declaration of Wendy Seltzer, EFF Staff Attorney
Diebold's opposition to TRO (November 4, 2003)
Diebold cease-and-desist letter to OPG
EFF's response to Diebold on behalf of OPG
Press releases
EFF Wins in Diebold Copyright Abuse Case Sept 30, 2004
Diebold Coughs Up Cash in Copyright Case Oct 15, 2004
Electronic Frontier Foundation and Stanford Law Clinic Sue Electronic Voting Company
ISP Rejects Diebold Copyright Claims Against News Website
Media coverage:
File Sharing Pits Copyright Against Free Speech (Requires free registration) [John Schwartz, New York Times]
Black Box Voting Blues [Steven Levy, Newsweek]
Diebold Issues Threat to Publishers of Leaked Memos [AP]
E-Vote Protest Gains Momentum [Wired]
Students Fight E-Vote Firm [Wired]
Commentary:
Latest DMCA Takedown Victim: The Election Process [Ed Foster, Gripelog]
Something Truly Terrifying [Tom Tomorrow, This Modern World]
(Electronic) Civil Disobedience at Swarthmore [Ernest Miller, The Importance Of...]
Swarthmore Crackdown on Protesting Students Reaches New Low [Ernest Miller, The Importance Of...]
Related documents/resources:
Congressman Dennis J. Kucinich endorses open design processes for electronic voting machines, and condemns Diebold's coercive copyright claims.
Security researchers discover huge flaws in e-voting system
Chilling Effects on the DMCA's safe harbor provisions
Courtesy: EFF
Tuesday, November 6, 2007
WTO
INTELLECTUAL PROPERTY
WTO: Impact on IT Sector
By Justice Yatindra Singh
Cite as : (2003) PL WebJour 9
WTO
It was around the middle of the last century (1945), Germany was losing, and World War II was coming to an end, that some economists held a conference in Breton Woods, Hampshire, USA to improve economic order. They thought the world would be a better place if there were three international bodies, namely,
(i) to solve monetary/currency problems,
(ii) for reconstruction and development of nations, and
(iii) to harmonise tariffs and international trade.
The first and the second were established and are loosely known as the International Monetary Fund (IMF) and the World Bank, but the third one to be known as the International Trade Organisation (ITO) never took off. US Congress did not approve it and without their support it was not possible to establish it. But all was not lost; representatives of 56 countries again met in Havana (1948) to formulate principles to be followed by nations to improve international trade. This formed the basis for signing up a General Agreement on Tariff and Trade (GATT) in Geneva by the end of the same year. The contracting nations also resolved to form a Board of Trade with a Secretary General to look after its further revision and implementation; thus ended the first round of GATT. Legally, GATT was not a formal organisation, but an agreement entered into by contracting nations.
Broadly, GATT dealt with reducing tariffs and improving trade among the nations, though there wasn't any dispute settlement mechanism. A few more rounds were held and it was the eighth round (started in 1986 with the meeting in Uruguay) that led to creation of the World Trade Organisation (WTO). It was in this round that US sought inclusion of a few other items, among others, *
Trade related to intellectual property rights. *
Trade related to investment measures. *
Trade related to service. *
Agricultural subsidy. *
Dispute settlement mechanism.
The eighth round continued for seven-and-a-half years and it often appeared that agreement would not be reached. But ultimately a draft of proposals was prepared under Secretary General Mr Arthur Dunkel and came to be known as Dunkel Draft. It was debated and most of it was approved in December 1994 by 125 countries in the meeting held in Marrakech (Morocco). Among the others it meant, *
Establishment of WTO, trade policy review body and dispute settlement body, and *
Accepting the agreements forming the basis for international trade.
Thus WTO came into existence on 1-1-1995.
All the WTO agreements (except for a few plurilateral agreements) apply to all WTO members i.e. a member has to accept all of them; it cannot choose. These agreements provide with certain minimum standards to be observed by members and keep trade policies of the members within agreed limits. Among the other agreements, two are:
(i) General Agreement on Trade in Services (GATS).
(ii) Agreement on Trade Related Aspect of Intellectual Property Rights (TRIPS).
Information technology depends upon hardware and software and it provides services relating to information. Any changes in these areas would have impact on IT sector:
(i) In 1996 some member countries of WTO also entered into Information Technology Agreement to reduce tariffs to zero on items related to information technology. India is also one of the signatories to Information Technology Agreement and is to reduce tariffs on it by 2005. This will affect the hardware sector.
(ii) GATS relates to services; much is to be done in this area. This will have impact on IT sector, as services are its main forte.
(iii) The third aspect relates to intellectual property rights (IPR) and is covered by TRIPS.
We will discuss the third aspect in some detail.
Intellectual property rights (IPR)
"What is worth copying is prima facie worth protecting"1 is the genesis for the intellectual property rights. These rights refer to the property that is a creation of the mind. It is broadly divided into two categories: *
Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, drawings, paintings, photographs, sculptures and architectural designs. *
Industrial property, which includes inventions (patents), trademarks, industrial designs and geographic indications of source.
In India intellectual property is protected under five different Acts, namely, *
The Copyright Act, 1957; *
The Patents Act, 1970; *
The Trade Marks Act, 1999; *
The Design Act, 1911; and *
The Geographical Indications of Goods (Registration and Protection) Act, 1999.
One more Act titled "The Biological Diversity Bill, 2000" is in the pipeline. There is another area of intellectual property known as "trade secret" but as the name suggests, it is a secret formula or process known to certain individuals that is not registered under any intellectual property law. It does not prohibit anyone else to find it out or develop it who did not know the secret. Nevertheless an employee who has gained knowledge may be prohibited in using it on the ground of breach of confidence, or trust. This is still a part of common law and is so protected under Section 16 of the Copyright Act. It is also so provided in Article 39 of TRIPS. Among different areas of intellectual property two, namely, copyright and patents have impact on software industry.
Computer Program and Copyright
Source code and object code
Computers do not understand our language. They only understand "machine language" or "machine code" i.e. instructions which consist of a series of 0s and 1s. A suitably trained or skilled programmer can write a program in machine code for a computer. But the process is slow and tedious and the program, although intelligible to the computer, will be virtually unintelligible to anyone except an equally skilled programmer. From the early days of computers, an alternative language for writing programs, known as "assembler language", was devised. While assembler language had advantages over writing a programme in machine code, it still required many instructions to be written in order to achieve the simplest tasks. A number of high-level languages such as BASIC, Fortran, COBOL, Pascal etc. have been devised in order to simplify the work of a programmer. The use of these high-level languages enables a programmer to write a program in terms, which nearly resembles ordinary English than those used in lower-level languages. They also permit complex operations for the computer to be directed by a relatively compact command. The programs as written by a programmer are known as the source code. When an assembler or a compiler converts them into machine code, they are known as the object code. This conversion is one-way. It is not possible to convert object code into source code.
The question, whether source code and object code both are protected by copyrights or not, has troubled the courts and has been differently answered by them. The Australian High Court in 1986 held that the source code is a literary work and is protected as a copyright. But no such protection was given to the object code. The majority held2:
"I have not found anything ... that has persuaded me that (the object code) a sequence of electrical impulses in a silicon chip not capable itself of communicating anything directly to a human recipient, and designed only to operate a computer, is itself a literary work, or is the translation of a literary work within the Copyright Act."
Amendments in the Copyright Act
The Berne Convention, 1986 (for protection of literary and artistic works) provided that computer software (object code and source code) and compilation of data be protected under the Copyright Acts. TRIPS has proceeded from the Berne Convention and Article 10 of TRIPS requires members to amend the laws accordingly. Since then, we have amended the Copyright Act by two amending Acts, namely, Act 38 of 1994 and Act 49 of 1999. These amending Acts amended Section 2(o) of the Copyright Act to change the definition of the words "literary work". It now includes computer programme as well as computer database. The result is that not only the computer programs (subject code as well as object code) are protected but computer database is also protected as a copyright. In India infringement of a copyright is a penal offence and civil remedies (injunction, damages etc.) are also available (TRIPS Articles 41 to 50, 61). By the two amending Acts consequential amendments were also made in other sections to make enforcement more realistic.
Article 11 of TRIPS mandates members to provide authors with right to authorise or to prohibit commercial rental of at least computer programs and cinematographic works. This has also been so provided under Section 14(b) of the Copyright Act.
Some are using copyrights so that no one may have any rights in software; they copyleft it. In open-source software or free software, source code and object code are freely available to be used, modified and improved. In order to copyleft it, the owner first states that it is copyrighted and then adds distribution term that gives everyone the right to use, modify and redistribute (original or modified programme) only if the distribution terms are unchanged: modified version (source code and object code) are freely available and could be further modified and distributed only on the same terms. Not all open-source software is copylefted; it could be non-copylefted. This depends on the terms of the licence of the software. There are different kinds of licences. General Public Licence (GPL) contains a condition that copylefts software. Such software, under GPL licence, is also known as GPLed software.
Business Methods, Computer Programs and Patent
Patent rights are stronger rights than copyrights and like copyright laws, differ from country to country. Article 27 of TRIPS, read along with the footnote, provides that patents may be granted for inventions (process or end product) that are new and useful: they should not be obvious or frivolous. Laws of member countries are similar. If a patent is for a process for a known result then any other person may take out patent for another process for arriving at the same result. But if it is for the end result and describes a process then the patent is entitled to protection against other processes for arriving at the same result. In India, unlike copyright, only civil remedies of injunction and damages are available for infringement of a patent. TRIPS mandates members to provide criminal procedures and penalties in case of wilful trademark counterfeiting or copyright piracy on commercial scale but not for violation of patents (Article 61).
Section 3 of the Indian Patents Act explains those that are not inventions. There is no such limitation in the US law as the Congress intended to include anything under the sun that is made by man but the US Supreme Court in Diamond v. Chakarbarty3 held:
"This is not to suggest that ... law has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. Thus a new mineral discovered in the earth or a new plant found in the wild is not patentable subject-matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are manifestation of nature free to all men and reserved exclusively to none."
The US Supreme Court in Parkar v. Flook4 also held that a method for updating alarm limits during catalytic conversion, which is a mathematical formula, is not patentable.
The Patents Act in India or in US neither specifically refers to programs for computers nor to the business methods. The US Supreme Court in Gottschalk v. Benson5 held that a method for programming any type of general purpose digital computer to convert binary-coded decimal numerals into pure binary numerals—not being limited to any art or technology or to any particular machinery or to a particular end use—is not a process, capable of being patented: algorithm itself can not be patented. The result is that computer software may not be patented in its own right but what would be the position if it were a part of an industrial or business process?
Industrial process
Diamond v. Diehr6 (the Diehr case) was a case involving a process for curing rubber that included a computer program.7 The court by a 5:4 decision held that a patentable claim does not become unpatentable merely because it uses a mathematical formula, computer program or a computer. In short, a computer program may not be patentable as such but may be patentable as a part of an industrial process.
Business methods
Traditionally, the only kinds of processes that could be patented were those concerned with technology. Many other activities including business methods or data analysis which one would consider processes were excluded from patents. But since the Diehr case there has been a shift in US. US Patent and Trade Office (USPTO) has issued Manual of Patent Examining Procedures containing guidelines for patenting inventions. Its earlier policy for computer-related inventions para 706.03(a) was as follows8:
"Though seemingly within the category of process or method, a method of doing business can be rejected as not being within the statutory clauses."
This was deleted and a new paragraph para 706.03(a) was added:
"Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead such claims should be treated like any other process claims."
This was noticed by the Court of Appeals in US in State Street Bank v. Signature Financial Group (the State Street case)9 and the Court held that:
"Whether the claims are (patentable or not) should not turn on whether the claimed subject-matter does 'business' instead of something else."
The Court also held that:
"To be patentable an algorithm must be applied in a 'useful' way. ... We hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces a useful, concrete and tangible result."
In short, the law in US is that, "an abstract idea by itself never satisfies the requirements of patent law. However, an abstract idea when practically applied to produce a useful, concrete and tangible result satisfies it". Today, USPTO has one chapter on patent business methods and is granting patents to software techniques for business methods and data analysis if they are useful. Australia and Japan have also followed suit. Some examples of patents of business methods are: single click to order goods in an online transaction; an online system of accounting; online rewards incentive system; online frequent buyer program; and programs letting customers setting their own prices for hotel bookings etc.
The European Patent Convention, 1973 specifically states that "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers" will not be regarded as inventions Article 52(2)(c). This is also the law of member countries of the European Patent Convention and computer programs and business methods cannot be patented there. However, in practice, the approach has changed. The applications for patents are now considered if presented as producing technical effects (i.e. programme for speeding up image enhancement) rather than as claiming abstract programs or business methods.
The European Commission in February 2002 unveiled a new approach to software patents, which may draw US criticism, as it would set tougher criteria in Europe for granting of a patent. The proposal, which aims to standardise a variety of software patent rules across the fifteen-member EC bloc, requires that software contain new ideas to qualify for patent protection. In addition, patents would apply only to software loaded on a machine or connected to an operating system. It is different than US patent rules, which permit patents for software independent of machines and which do not necessarily require innovation. These proposals have yet to be approved by European Parliament and EC member States.
The law whether computer programs are patentable per se or in conjunction of business methods is still in a flux. In US "the Business Method Patent Improvement Act of 2000"10 was introduced in the Congress on 3-10-2000 and would apply to all pending applications as well as to all patents issued. It will restrict the ability of USPTO to issue business method patents and among others would create a presumption of obviousness where a computer has been used primarily to implement a known business method. It is not yet passed and many feel that it may never be passed. Perhaps this could be one of the points of discussion in WTO.
Conclusion
In 1999, Michael Lewis wrote a book on the success story of the Silicon Valley entitled The New New Thing: a Silicon Valley Story. The most quoted line from this book is: "The definitive smell inside a Silicon Valley start-up was of curry." Let's hope—with better understanding of WTO and its impact on IT sector—not only inside a Silicon Valley start-up but also the operating system of e-commerce will smell of curry.
WTO: Impact on IT Sector
By Justice Yatindra Singh
Cite as : (2003) PL WebJour 9
WTO
It was around the middle of the last century (1945), Germany was losing, and World War II was coming to an end, that some economists held a conference in Breton Woods, Hampshire, USA to improve economic order. They thought the world would be a better place if there were three international bodies, namely,
(i) to solve monetary/currency problems,
(ii) for reconstruction and development of nations, and
(iii) to harmonise tariffs and international trade.
The first and the second were established and are loosely known as the International Monetary Fund (IMF) and the World Bank, but the third one to be known as the International Trade Organisation (ITO) never took off. US Congress did not approve it and without their support it was not possible to establish it. But all was not lost; representatives of 56 countries again met in Havana (1948) to formulate principles to be followed by nations to improve international trade. This formed the basis for signing up a General Agreement on Tariff and Trade (GATT) in Geneva by the end of the same year. The contracting nations also resolved to form a Board of Trade with a Secretary General to look after its further revision and implementation; thus ended the first round of GATT. Legally, GATT was not a formal organisation, but an agreement entered into by contracting nations.
Broadly, GATT dealt with reducing tariffs and improving trade among the nations, though there wasn't any dispute settlement mechanism. A few more rounds were held and it was the eighth round (started in 1986 with the meeting in Uruguay) that led to creation of the World Trade Organisation (WTO). It was in this round that US sought inclusion of a few other items, among others, *
Trade related to intellectual property rights. *
Trade related to investment measures. *
Trade related to service. *
Agricultural subsidy. *
Dispute settlement mechanism.
The eighth round continued for seven-and-a-half years and it often appeared that agreement would not be reached. But ultimately a draft of proposals was prepared under Secretary General Mr Arthur Dunkel and came to be known as Dunkel Draft. It was debated and most of it was approved in December 1994 by 125 countries in the meeting held in Marrakech (Morocco). Among the others it meant, *
Establishment of WTO, trade policy review body and dispute settlement body, and *
Accepting the agreements forming the basis for international trade.
Thus WTO came into existence on 1-1-1995.
All the WTO agreements (except for a few plurilateral agreements) apply to all WTO members i.e. a member has to accept all of them; it cannot choose. These agreements provide with certain minimum standards to be observed by members and keep trade policies of the members within agreed limits. Among the other agreements, two are:
(i) General Agreement on Trade in Services (GATS).
(ii) Agreement on Trade Related Aspect of Intellectual Property Rights (TRIPS).
Information technology depends upon hardware and software and it provides services relating to information. Any changes in these areas would have impact on IT sector:
(i) In 1996 some member countries of WTO also entered into Information Technology Agreement to reduce tariffs to zero on items related to information technology. India is also one of the signatories to Information Technology Agreement and is to reduce tariffs on it by 2005. This will affect the hardware sector.
(ii) GATS relates to services; much is to be done in this area. This will have impact on IT sector, as services are its main forte.
(iii) The third aspect relates to intellectual property rights (IPR) and is covered by TRIPS.
We will discuss the third aspect in some detail.
Intellectual property rights (IPR)
"What is worth copying is prima facie worth protecting"1 is the genesis for the intellectual property rights. These rights refer to the property that is a creation of the mind. It is broadly divided into two categories: *
Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, drawings, paintings, photographs, sculptures and architectural designs. *
Industrial property, which includes inventions (patents), trademarks, industrial designs and geographic indications of source.
In India intellectual property is protected under five different Acts, namely, *
The Copyright Act, 1957; *
The Patents Act, 1970; *
The Trade Marks Act, 1999; *
The Design Act, 1911; and *
The Geographical Indications of Goods (Registration and Protection) Act, 1999.
One more Act titled "The Biological Diversity Bill, 2000" is in the pipeline. There is another area of intellectual property known as "trade secret" but as the name suggests, it is a secret formula or process known to certain individuals that is not registered under any intellectual property law. It does not prohibit anyone else to find it out or develop it who did not know the secret. Nevertheless an employee who has gained knowledge may be prohibited in using it on the ground of breach of confidence, or trust. This is still a part of common law and is so protected under Section 16 of the Copyright Act. It is also so provided in Article 39 of TRIPS. Among different areas of intellectual property two, namely, copyright and patents have impact on software industry.
Computer Program and Copyright
Source code and object code
Computers do not understand our language. They only understand "machine language" or "machine code" i.e. instructions which consist of a series of 0s and 1s. A suitably trained or skilled programmer can write a program in machine code for a computer. But the process is slow and tedious and the program, although intelligible to the computer, will be virtually unintelligible to anyone except an equally skilled programmer. From the early days of computers, an alternative language for writing programs, known as "assembler language", was devised. While assembler language had advantages over writing a programme in machine code, it still required many instructions to be written in order to achieve the simplest tasks. A number of high-level languages such as BASIC, Fortran, COBOL, Pascal etc. have been devised in order to simplify the work of a programmer. The use of these high-level languages enables a programmer to write a program in terms, which nearly resembles ordinary English than those used in lower-level languages. They also permit complex operations for the computer to be directed by a relatively compact command. The programs as written by a programmer are known as the source code. When an assembler or a compiler converts them into machine code, they are known as the object code. This conversion is one-way. It is not possible to convert object code into source code.
The question, whether source code and object code both are protected by copyrights or not, has troubled the courts and has been differently answered by them. The Australian High Court in 1986 held that the source code is a literary work and is protected as a copyright. But no such protection was given to the object code. The majority held2:
"I have not found anything ... that has persuaded me that (the object code) a sequence of electrical impulses in a silicon chip not capable itself of communicating anything directly to a human recipient, and designed only to operate a computer, is itself a literary work, or is the translation of a literary work within the Copyright Act."
Amendments in the Copyright Act
The Berne Convention, 1986 (for protection of literary and artistic works) provided that computer software (object code and source code) and compilation of data be protected under the Copyright Acts. TRIPS has proceeded from the Berne Convention and Article 10 of TRIPS requires members to amend the laws accordingly. Since then, we have amended the Copyright Act by two amending Acts, namely, Act 38 of 1994 and Act 49 of 1999. These amending Acts amended Section 2(o) of the Copyright Act to change the definition of the words "literary work". It now includes computer programme as well as computer database. The result is that not only the computer programs (subject code as well as object code) are protected but computer database is also protected as a copyright. In India infringement of a copyright is a penal offence and civil remedies (injunction, damages etc.) are also available (TRIPS Articles 41 to 50, 61). By the two amending Acts consequential amendments were also made in other sections to make enforcement more realistic.
Article 11 of TRIPS mandates members to provide authors with right to authorise or to prohibit commercial rental of at least computer programs and cinematographic works. This has also been so provided under Section 14(b) of the Copyright Act.
Some are using copyrights so that no one may have any rights in software; they copyleft it. In open-source software or free software, source code and object code are freely available to be used, modified and improved. In order to copyleft it, the owner first states that it is copyrighted and then adds distribution term that gives everyone the right to use, modify and redistribute (original or modified programme) only if the distribution terms are unchanged: modified version (source code and object code) are freely available and could be further modified and distributed only on the same terms. Not all open-source software is copylefted; it could be non-copylefted. This depends on the terms of the licence of the software. There are different kinds of licences. General Public Licence (GPL) contains a condition that copylefts software. Such software, under GPL licence, is also known as GPLed software.
Business Methods, Computer Programs and Patent
Patent rights are stronger rights than copyrights and like copyright laws, differ from country to country. Article 27 of TRIPS, read along with the footnote, provides that patents may be granted for inventions (process or end product) that are new and useful: they should not be obvious or frivolous. Laws of member countries are similar. If a patent is for a process for a known result then any other person may take out patent for another process for arriving at the same result. But if it is for the end result and describes a process then the patent is entitled to protection against other processes for arriving at the same result. In India, unlike copyright, only civil remedies of injunction and damages are available for infringement of a patent. TRIPS mandates members to provide criminal procedures and penalties in case of wilful trademark counterfeiting or copyright piracy on commercial scale but not for violation of patents (Article 61).
Section 3 of the Indian Patents Act explains those that are not inventions. There is no such limitation in the US law as the Congress intended to include anything under the sun that is made by man but the US Supreme Court in Diamond v. Chakarbarty3 held:
"This is not to suggest that ... law has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. Thus a new mineral discovered in the earth or a new plant found in the wild is not patentable subject-matter. Likewise, Einstein could not patent his celebrated law that E=mc2; nor could Newton have patented the law of gravity. Such discoveries are manifestation of nature free to all men and reserved exclusively to none."
The US Supreme Court in Parkar v. Flook4 also held that a method for updating alarm limits during catalytic conversion, which is a mathematical formula, is not patentable.
The Patents Act in India or in US neither specifically refers to programs for computers nor to the business methods. The US Supreme Court in Gottschalk v. Benson5 held that a method for programming any type of general purpose digital computer to convert binary-coded decimal numerals into pure binary numerals—not being limited to any art or technology or to any particular machinery or to a particular end use—is not a process, capable of being patented: algorithm itself can not be patented. The result is that computer software may not be patented in its own right but what would be the position if it were a part of an industrial or business process?
Industrial process
Diamond v. Diehr6 (the Diehr case) was a case involving a process for curing rubber that included a computer program.7 The court by a 5:4 decision held that a patentable claim does not become unpatentable merely because it uses a mathematical formula, computer program or a computer. In short, a computer program may not be patentable as such but may be patentable as a part of an industrial process.
Business methods
Traditionally, the only kinds of processes that could be patented were those concerned with technology. Many other activities including business methods or data analysis which one would consider processes were excluded from patents. But since the Diehr case there has been a shift in US. US Patent and Trade Office (USPTO) has issued Manual of Patent Examining Procedures containing guidelines for patenting inventions. Its earlier policy for computer-related inventions para 706.03(a) was as follows8:
"Though seemingly within the category of process or method, a method of doing business can be rejected as not being within the statutory clauses."
This was deleted and a new paragraph para 706.03(a) was added:
"Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead such claims should be treated like any other process claims."
This was noticed by the Court of Appeals in US in State Street Bank v. Signature Financial Group (the State Street case)9 and the Court held that:
"Whether the claims are (patentable or not) should not turn on whether the claimed subject-matter does 'business' instead of something else."
The Court also held that:
"To be patentable an algorithm must be applied in a 'useful' way. ... We hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces a useful, concrete and tangible result."
In short, the law in US is that, "an abstract idea by itself never satisfies the requirements of patent law. However, an abstract idea when practically applied to produce a useful, concrete and tangible result satisfies it". Today, USPTO has one chapter on patent business methods and is granting patents to software techniques for business methods and data analysis if they are useful. Australia and Japan have also followed suit. Some examples of patents of business methods are: single click to order goods in an online transaction; an online system of accounting; online rewards incentive system; online frequent buyer program; and programs letting customers setting their own prices for hotel bookings etc.
The European Patent Convention, 1973 specifically states that "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers" will not be regarded as inventions Article 52(2)(c). This is also the law of member countries of the European Patent Convention and computer programs and business methods cannot be patented there. However, in practice, the approach has changed. The applications for patents are now considered if presented as producing technical effects (i.e. programme for speeding up image enhancement) rather than as claiming abstract programs or business methods.
The European Commission in February 2002 unveiled a new approach to software patents, which may draw US criticism, as it would set tougher criteria in Europe for granting of a patent. The proposal, which aims to standardise a variety of software patent rules across the fifteen-member EC bloc, requires that software contain new ideas to qualify for patent protection. In addition, patents would apply only to software loaded on a machine or connected to an operating system. It is different than US patent rules, which permit patents for software independent of machines and which do not necessarily require innovation. These proposals have yet to be approved by European Parliament and EC member States.
The law whether computer programs are patentable per se or in conjunction of business methods is still in a flux. In US "the Business Method Patent Improvement Act of 2000"10 was introduced in the Congress on 3-10-2000 and would apply to all pending applications as well as to all patents issued. It will restrict the ability of USPTO to issue business method patents and among others would create a presumption of obviousness where a computer has been used primarily to implement a known business method. It is not yet passed and many feel that it may never be passed. Perhaps this could be one of the points of discussion in WTO.
Conclusion
In 1999, Michael Lewis wrote a book on the success story of the Silicon Valley entitled The New New Thing: a Silicon Valley Story. The most quoted line from this book is: "The definitive smell inside a Silicon Valley start-up was of curry." Let's hope—with better understanding of WTO and its impact on IT sector—not only inside a Silicon Valley start-up but also the operating system of e-commerce will smell of curry.
Thursday, October 25, 2007
Consumer case _ The great Mc Donald's
Business Ethics Consumer Rights and Complaints The Case of McDonalds Coffee Albuquerque New Mexico USA
The Incident: In an early morning of February 1992, a lady drove into a McDonald's restaurant in Albuquerque, New Mexico to have breakfast. She had just dropped her son at the local airport. She ordered Mcbreakfast with coffee and decided to have the breakfast in the car itself. She could not place the coffee cup on the dash board as it was slanted too steeply. Since both her hands were busy, she placed the coffee cup between her knees. She also tried to open the lid off the cup in that position. What she did not know was that the coffee supplied in that cup was heated to 170 Degrees.Many people do not know that when you pour something very hot into containers and immediately close the lid, it can be very difficult to open for scientific reasons. You need to be a Tarzan to open the lids in case of metal containers. You will also spill the contents, invariably. In case of plastic containers you might damage the container and it can be dangerous. The same thing happened to the lady. Hot coffee poured out on her thighs and she suffered second degree burns on her private parts. She was hospitalized for 3 weeks and further went for skin grafting, which can be very painful. Her experience was traumatic, lost lot of weight and she also lost further 3 to 4 weeks recuperating. Her daughter had to stay at home to look after her and she lost her salaries and wages.This lady wrote to McDonald's asking for just USD 2000 as compensation. McDonald's offered her USD 800. Her daughter decided to approach some lawyer and did so. The lawyer filed a case in courts asking for USD 100,000 as compensatory damages and 300,000 as punitive damages. The jurors were quite irritated and not amused when the case came up in courts and thought that the issue was frivolous. However, when they learnt that McDonald's had not reduced the temperature of the coffee for 10 years even after receiving 700 complaints, they changed their minds. Medical experts confirmed that at 170 degrees, coffee can cause serious second degree burn injuries. McDonald's blamed the lady completely for the incident and said it was her fault in keeping the cup between her knees. The jury decided in favor of the lady. She was awarded USD 200,000 as compensatory damages and USD 2.7 million as punitive damages. The trial judge later reduced it to USD 640,000. The case was finally decided out of court and the final settlement is a secret.
i do appreciate feedbacks....
cheers
sumi
The Incident: In an early morning of February 1992, a lady drove into a McDonald's restaurant in Albuquerque, New Mexico to have breakfast. She had just dropped her son at the local airport. She ordered Mcbreakfast with coffee and decided to have the breakfast in the car itself. She could not place the coffee cup on the dash board as it was slanted too steeply. Since both her hands were busy, she placed the coffee cup between her knees. She also tried to open the lid off the cup in that position. What she did not know was that the coffee supplied in that cup was heated to 170 Degrees.Many people do not know that when you pour something very hot into containers and immediately close the lid, it can be very difficult to open for scientific reasons. You need to be a Tarzan to open the lids in case of metal containers. You will also spill the contents, invariably. In case of plastic containers you might damage the container and it can be dangerous. The same thing happened to the lady. Hot coffee poured out on her thighs and she suffered second degree burns on her private parts. She was hospitalized for 3 weeks and further went for skin grafting, which can be very painful. Her experience was traumatic, lost lot of weight and she also lost further 3 to 4 weeks recuperating. Her daughter had to stay at home to look after her and she lost her salaries and wages.This lady wrote to McDonald's asking for just USD 2000 as compensation. McDonald's offered her USD 800. Her daughter decided to approach some lawyer and did so. The lawyer filed a case in courts asking for USD 100,000 as compensatory damages and 300,000 as punitive damages. The jurors were quite irritated and not amused when the case came up in courts and thought that the issue was frivolous. However, when they learnt that McDonald's had not reduced the temperature of the coffee for 10 years even after receiving 700 complaints, they changed their minds. Medical experts confirmed that at 170 degrees, coffee can cause serious second degree burn injuries. McDonald's blamed the lady completely for the incident and said it was her fault in keeping the cup between her knees. The jury decided in favor of the lady. She was awarded USD 200,000 as compensatory damages and USD 2.7 million as punitive damages. The trial judge later reduced it to USD 640,000. The case was finally decided out of court and the final settlement is a secret.
i do appreciate feedbacks....
cheers
sumi
Tuesday, October 23, 2007
Shah Bano Case
Hi friends ... Everyday one case law will be there in this blog.., any comments or suggesstions can be given..., being an advocate i beleive that u people will also like this.., and now......
this is an important case law in Indian Divorce law which really created a controversy...... though u would have know about this already.., jus refresh it for the day..., so now today's case law is
The Shah Bano case is an infamous divorce lawsuit in India and has generated political controversy in the country. It is sometimes described as an example of appeasement of the vote bank for political gains. This case caused the Rajiv Gandhi government, with its absolute majority, to pass the Muslim Women (Protection of Rights on Divorce) Act, 1986 which diluted the secular judgment of the Supreme Court and, in reality, denied even utterly destitute Muslim divorcees the right to alimony from their former husbands.
Contents[hide]
1 Brief of the Case
2 The Indian Government's Reaction
3 Consequences
4 Personal Laws
5 External links
Brief of the Case
Shah Bano, a 62 year old Muslim woman and mother of five from Indore, Madhya Pradesh, was divorced by her husband in 1978. The Muslim family law (marriage, gifts, inheritance, adoption and a few other civil laws are under the purview of personal laws in India - they are different for Christians, Muslims and Hindus) allows the husband to do this without his wife's consent: the husband just needs to say the word Talaaq before witnesses for a valid divorce. There are different classifications on Talaaq. There are also different aspects as well as other norms of Talaq which differ from sect to sect in Islam. Some sects also have certain prerequisities for a Talaq to be valid. They believe that during the Talaq, the woman should have purified herself from menstruation and her husband should not have had any sexual relationship with her.
Shah Bano, because she had no means to support herself and her children, approached the courts for securing maintenance from her husband. When the case reached the Supreme Court of India, seven years had elapsed. The Supreme Court invoked Section 125 of Code of Criminal Procedure, which applies to everyone regardless of caste, creed, or religion. It ruled that Shah Bano be given maintenance money, similar to alimony.
The orthodox Muslims in India felt threatened by what they perceived as an encroachment of the Muslim Personal Law, and protested loudly at the judgement. Their spokesmen were Muslim community leaders Obaidullah Khan Azmi, MJ Akbar and Syed Shahabuddin, They formed an organization known as the All India Muslim Personal Law Board and threatened to agitate in large numbers in all major cities. The then Prime Minister, Rajiv Gandhi, agreed to their demands and cited the gesture as an example of "secularism".
The Indian Government's Reaction
In 1986, the Congress (I) party, which had an absolute majority in Parliament at the time, passed an act that nullified the Supreme Court's judgment in the Shah Bano case. This act upheld the Muslim Personal Law and writ as excerpted below:
"Every application by a divorced woman under section 125… of the Code of Criminal Procedure, 1973, pending before a magistrate on the commencement of this Act shall, notwithstanding anything contained in that code… be disposed of by such magistrate an accordance with the provisions of this Act."
The Government with its absolute majority passed the Muslim Women (Protection of Rights on Divorce) Act, 1986 to dilute the secular judgment of the Supreme Court. The Statement of Objects and Reasons of this Act (i.e. the objective of the Act) needs a mention. According to the stated objects of the Act, where a Muslim divorced woman is unable to maintain herself after the period of iddat, the Magistrate is empowered to make an order for the payment of maintenance by her relatives who would be entitled to inherit her property on her death according to Muslim Law...But where a divorced woman has no relatives or such relatives..has not enough means to pay the maintenance the magistrate would order the State Waqf Board to pay the maintenance. The 'liability' of husband to pay the maintenance was thus restricted to the period of the iddat only. 'Read about 'The iddat of divorce'
Critics strongly contend that this Act was passed in order to appease minorities and safeguard the Muslim vote bank.
Consequences
The Shah Bano case generated tremendous heat in India. It proved that fundamentalist minorities can exert pressure on government and judicial decisions. The mainstream media disapproved of the decision. The opposition reacted strongly against the Congress party's policies (which, according to BJP, reflect "Pseudo-secularism".)
The case has led to Muslim women receiving a large, one-time payment from their husbands during the period of iddat, instead of a maximum monthly payment of 500 Rs (around 10 US Dollar per month) - an upper limit which has since been removed. Cases of women getting lump sum payments for lifetime maintenance are becoming common.
Critics of the Shah Bano case point out that while divorce is within the purview of personal laws, maintenance is not, and thus it is discriminatory to exclude Muslim women from a civil law. Exclusion of non-Muslim men from a law that appears inherently beneficial to men is also pointed out by the Indian orthodoxy.
The Shah Bano case once again spurred the debate on the Uniform Civil Code in India. Ironically, the Hindu Right led by parties like the Jan Sangh which had strongly opposed reform of Hindu law in the 50's, in its metamorphosis as the Bharatiya Janata Party became an advocate for secular laws across the board. The sabre-rattling by Islamic fundmentalists caused women's organisations and secularists to cave in.
Personal Laws
The existence of personal laws is, in itself, an indicator of a constitutional bias towards maintaining religious harmony. They have been part of the Civil Law since the British Raj. The importance of personal laws lies in the fact that India is a secular nation with a sizeable concentration of several different religious groups. However, personal laws have been criticized by Feminists for their orthodox approach and for disadvantaging women. Religious rights and women's rights remain at conflict due to the disparities in religious laws. The likelihood that a common civil code for India may be introduced in the future seems bleak as even a discussion of the topic evokes strong reactions.
Judicial craftsmanship has ensured that The Muslim Women's [Protection of Rights on Divorce] Act hasn't completely violated the rights of women. High Courts have interpreted "just and fair provision" that a woman is entitled to during her iddat period very broadlly to include amounts worth lakhs (hundred thousand) of rupees. More recently the Supreme Court in Danial Latifi v. Union of India read the Act with Art 14 and 15 of the constitution which prevent discrimination of the basis of sex and held that the intention of the framers could not have been to deprive Muslim women of their rights. Further the Supreme Court construed the statutory provision in such a manner that it does not fall foul of Articles 14 and 15. The provision in question is Section 3(1)(a) of the Muslim Women (Protection of Rights on Divorce) Act, 1986 which states that "a reasonable and fair provision and maintenance to be made and paid to her within the iddat period by her former husband;". The Court held this provision means that reasonable and fair provision and maintenance is not limited for the iddat period (as evidenced by the use of word, "within" and not "for"). It extends for the entire life of the divorced wife until she remarries.
[edit] External links
The Shah Bano legacy
Shah Bano: Muslim Women's Right
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