Author Archives: James Koessler

The new disclosure obligation regarding modern slavery: leveraging market forces to foster a race to the top?

The Modern Slavery Act 2015, requires, amongst other things, businesses with a minimum turnover of £36 million to disclose all steps taken (if any) during the preceding financial year to ensure that slavery and human trafficking are not taking place in their supply chains and business. This is the latest in a line of both international and national reporting obligations (such as the California Transparency in Supply Chains Act of 2010 or the US Securities and Exchange Commission’s Conflict Minerals Rules) aiming at increasing transparency in supply chains and boosting corporate social responsibility. Businesses with a financial year starting today (1 April 2016) will be the first ones to be required to publish such a statement – what can they expect? Continue reading

Introducing Lexfinder.co.uk: a free and simplified search engine for the legal web

lexfinderlogo

One of the projects I have worked on recently is Lexfinder, a free search engine for the anglophone legal web. Our aim is to build upon the many freely accessible legal resources, especially those spurred by the Free Access to Law Movement, by making these disparate sources easily accessible to lawyers and laypersons alike.

How does it work?

Lexfinder is built upon Google’s back-end database and uses a series of filters to target queries to the most relevant resources, news, updates, commentary and primary sources of law. These filters are work in progress (hence the ‘beta’ tag) and will be continuously updated to improve accuracy.

Why not give it a try: www.lexfinder.co.uk

Here are some screen captures of top-results for sample searches:

Screen Shot 2013-01-07 at 21.05.51

Screen Shot 2013-01-07 at 21.06.48

Screen Shot 2013-01-07 at 21.08.03

Screen Shot 2013-01-07 at 21.28.01

Is the proposed EU unitary patent system flawed?

The Guardian has published a succinct and compelling run-down of the flaws in the new draft EU unitary patent system. Here are some of the highlights:

[It will] take effect across the EU, except in Spain and Italy.

Implementation will be piecemeal and nothing can come into being until the Court system has been set up. The agreement creating it is likely to be signed in February and that then needs to be ratified by thirteen contracting states (which must include the UK, France and Germany). The expectation at EU level is that this will happen by April 2014, but that is highly unlikely. The earliest the system will be in place is the end of 2014 or early 2015.

The technology sector is concerned. The new single enforcement system (which will apply to most existing patents as well as Unitary ones) may be a boon for patent trolls. Companies such as Motorola and Nokia, which has been very vocal on the subject, have been faced with multiple actions in recent years by patent holding companies seeking to monetise patent portfolios they have acquired. These patents should be licensed under the standards rules, but price can be an issue and there are thousands of them. Although they are usually held to be invalid, phone makers face pressure to settle because if they don’t they could be injuncted.

http://www.guardian.co.uk/law/2012/dec/19/eu-unitarty-patent-and-technology-sector

IPCopy has also exposed the possible consequences of article 58 (dealing with the transitional provisions):

  • There will be a transitional period of at least 7 years (i.e. until 1 January 2021), which may be extended by a further 7 years (i.e. until 1 January 2028).

  • Up until 1 month before the end of this transitional period, a proprietor of or an applicant for a European patent granted or applied for prior to the end of the transitional period may opt out of the exclusive competence of the unified patent court.

  • The proprietor or Applicant can withdraw the opt-out at any time.

By our calculation, this means that an Applicant can file a patent application up until 30 November 2020, and, on filing, opt out of the unified court system, giving the national patent courts competence for the life time of the patent, until 30 November 2040. If the Applicant changes its mind, it can opt back in again at any time.

If the transitional period is extended by 7 years, this will apply to patent applications filed up until 30 November 2027, giving the national patent courts competence until 30 November 2047!

http://ipcopy.wordpress.com/2012/12/19/avoiding-the-unified-patent-court-do-our-eyes-deceive-us/

The final agreement isn’t expected to be signed until February/March.

“How Google beat the feds”

Google escaped from a nearly two-year federal antitrust probe with only a few scratches by proving that the best defense is a good offense.

Instead of ignoring Washington — as rival Microsoft did before its costly monopolization trial in the 1990s — Google spent about $25 million in lobbying, made an effort to cozy up to the Obama administration and hired influential Republicans and former regulators. The company even consulted with the late Robert Bork and The Heritage Foundation and met with senators like John Kerry to make its case. In other words, these traditional outsiders worked the system from the inside.

http://www.politico.com/story/2013/01/how-google-beat-the-feds-85743.html?hp=l16

Something for nothing? The standard of ‘originality’ in copyright law: Conclusion (5/5)

This is the conclusion to a series of blog posts looking at the concept of ‘originality’ in copyright law.

Go to: Introduction -> Part II -> Part III -> Part IV -> Conclusion

To conclude this discussion, I shall briefly return to the seminal case of Walter v Lane. The judgements of their Lordships aptly illustrate the three main divergent theoretical underpinnings that any articulation of an originality standard must wrestle with: the value of labour1, the public interest2, and the concept of authorship3. In this series of posts, I have argued that a conception of ‘originality’ based on labour alone, as it currently stands in a number of common law jurisdictions – such as England and Wales – is inadequate due to its impact on the public domain, the fact that it tilts the balance too far in favour of the ‘creator’, and the availability of alternative means of protection. I have also considered the public interest approach, which informs the US & Canadian cases, whereby the label ‘original’ is granted, at least partly, on the basis of the public interest in protecting such works and not solely on the basis of effort or authorial input. Finally, I have considered the civil law and EU approach which seeks genuine authorship, although, as we have seen, this approach has been somewhat tempered.

It has also been observed that there has been a departure from the labour standard in a number of Commonwealth jurisdictions4, and some convergence globally towards a standard based on creative choices, which is perhaps more in line with the spirit of the Berne Convention5.

While I have argued vigorously against a low standard based on labour alone, and would endorse a standard such as the one presented in the CCH case, which espouses both the public interest and the author’s rights, it must be emphasised that originality is only a gateway, and that the infringement stage may also be used as a means to flesh out a thinner level of protection for utilitarian works.

  1. See Earl of Halsbury in Walter v Lane (supra) at 547 and Lord Davey at 552 []
  2. See Lord Brampton at 559, ibid. []
  3. See Lord Robertson at 562 and Lord James at 553, ibid. []
  4. Canada: see Part III; 
Australia: IceTV Pty Limited v Nine Network Australia Pty Limited (2009) ALR 386 paras 343-344; 
India: Eastern Book Company v D.B. Modak, (2008) 1 SCC 1 at 59-64 []
  5. RICKETSON & GINSBURG (supra); GERVAIS, D (supra) []

Something for nothing? The standard of ‘originality’ in copyright law: Going beyond mere labour (4/5)

This is part IV of a series of blog posts looking at the concept of ‘originality’ in copyright law.

Go to: Introduction -> Part II -> Part III -> Part IV -> Conclusion

A number of jurisdictions have, in order to avoid an overly expansive scope for copyright when the industriousness standard is applied, articulated a standard which requires an extra element beyond mere labour and the absence of copying.

A. “Creativity” or “judgement and skill”

In the United States, a number of federal courts included elements of creativity within the definition of originality1, whereas others applied the English industriousness test2. This uncertainty was resolved when the US Supreme Court held, in its Feist decision, that the former approach was to be followed3. Justice O’Connor stated that in order for a work to be considered ‘original’ it must not only be an independent creation, it must also show a “modicum of creativity”4. Is such a threshold too high?

This issue was looked at by the Canadian Supreme Court in 2004 in CCH5, where it found originality to require independent production involving skill and judgement.

In reaching its decision, the court considered the labour standard and found it to be ‘too low’ and as “[shifting] the balance […] too far in favour of the owner’s right, and [failing] to allow copyright to protect the public’s interest in maximizing the production and dissemination of intellectual works”6. It also considered the Feist test and rejected it as too ‘high’, wrongly assimilating it to a novelty or uniqueness requirement7.

The US approach can thus be seen to subsume the author’s private rights as a means to promote progress for the public benefit8. By contrast, the Canadian approach considers author’s rights to be a means to secure the public benefit, as well as an end in themselves9. It is submitted that the latter approach is preferable, providing a more nuanced framework in which to decide the desired level of protection.

The resulting tests bear close resemblance to the ‘creative choices’ doctrine espoused in several civil law jurisdictions.

B. Personal intellectual creation

1) The Civil Law approach

The traditional originality test in France and Germany fully embraces a subjective approach, based on a Hegelian philosophy, by requiring that the work express or reflect the author’s personality10). Indeed, the French Supreme Court decisively rejected a labour approach11. However, as a result of the difficulty in applying this standard to utilitarian works, the French courts developed a level of abstraction for the authorial test by finding the “choices and intellectual operations required to create [a bilingual dictionary]”12 to allow the resulting compilation to meet the threshold.

This test has been termed the “creative choices” standard by commentators13). At its core it requires that the author make choices that were neither guided by the format or function, nor mechanical. Such an approach has, to a certain extent, been adopted in a number of civil law jurisdictions including Switzerland14, the Netherlands15, and Belgium16.

2. Originality on the European level

The ECJ examined the issue of originality in its Infopaq17 case, where it held that the EU originality test (“author’s own intellectual creation”18 applies beyond the ‘works’ designated in a series of directives – namely computer programs19, photographs20, and databases21 – so as to encompass all categories of works under the Berne Convention into the European sphere.

The likely consequence of this decision is that a number of works under the more permissive English copyright regime, as seen above, will no longer attract protection22. This is to be welcomed and it is hoped that it will bring about a further departure from the minimalist English standard.

  1. Burrow-Giles Lithographic Co. v Sarony, 111 U.S. 53, 60 (1884); See also MEADE, T. 1994. Ex-Post Feist: Applications Of A Landmark Copyright Decision. Journal of Intellectual Property Law. 245 (2), at 245 []
  2. DOWD, J. 1992. A Selective View Of History: Feist Publications, Inc. v Rural Telephone Service Co. Boston College Law Review. 137, at 138-39 []
  3. Feist (supra) at 344-351 []
  4. Ibid. at 346; see also Part II []
  5. CCH (supra) []
  6. Ibid. at 24 []
  7. See Justice O’Connor in Feist (supra) at 345, 358 []
  8. Ibid. at 349 per Justice O’Connor, quoting the Constitution of the United States of America, Art I, §8, cl 8 []
  9. Théberge v Galerie d’Art du Petit Champlain Inc. [2002] 2 S.C.R. 336 paras 30-31 []
  10. GERVAIS, D. 2002. Feist Goes Global: A Comparative Analysis of the Notion of Originality in Copyright Law. Journal of Copyright Society of the U.S.A., 49 (summer 2002) at 968; 
CA Paris, 1e ch., May 22, 1990, Légipresse 1990, I, at 67; 
Bundesgerichtshof [BGH] May 9, 1985, Entscheidungen des Bundesgerichtshofes in Zivilsachen [BGHZ] 94 (F.R.G. []
  11. Cass. 1e civ., May 2, 1989: JCP G 1990, II, 21392, note A. Lucas; RIDA 1/1990, at 309 []
  12. CA Paris, 4e ch., Mar. 21, 1989: 142 RIDA 333, 338-39 cited in GERVAIS at 969 []
  13. GERVAIS (supra) at 975; HARIANI & HARIANI (supra []
  14. Van Dale v Romme II, HR Apr. 1, 1993, IER 1993 (3) at 82 []
  15. GERVAIS (supra) at 969 citing BANNELET & EGLOFF in note 148 []
  16. Cass. civ. Apr. 27, 1989: R.W. 1989-90, at 362 []
  17. Infopaq International A/S v Danske Dagblades Forening (C-5/08) [2009] ECDR 16 []
  18. Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of copyright and certain related rights, article 6) []
  19. Directive 2009/24/EC of the European Parliament and of the Council on the legal protection of computer programs []
  20. Duration directive []
  21. Database directive []
  22. Infopaq (supra) paras 33-37 []