Seize or not to seize? This is the problem

In a recent hearing between the European Court of Justice and Nokia (Case C-495/09), Nokia argued that the interpretation of British Courts of EU custom rules could turn the EU into a safe harbour for counterfeits. The dispute started when UK officials declared that goods in transit from a non-EU country to a non-EU country and not (at least apparently) destined for the EU, could not be seized, even if declared to be fakes (by Nokia in this case).

The question posed to the ECJ was:

“are non-Community goods bearing a Community trade mark which are subject to customs supervision in a Member State and which are in transit from a non-Member State to another non-Member State capable of constituting ‘counterfeit goods’ within the meaning of Article 2(1)(a) of Regulation 1383/2003 if there is no evidence to suggest that those goods will be put on the mark in the EU, either in conformity with a customs procedure or by means of an illicit diversion?’

The UK, Czech Republic and the EU Commission answered “no”. France, Finland, and Poland answered “yes”. The Advocate General will answer on 3 February 2011 – so we have to wait a bit longer…

However, the question poses interesting points. Our readers may remember the heated debate when Dutch authorities seized generic medicines from India to Brazil and stopped in transit in Holland (17 June 2009). Are medicines different from mobile phones? And can we even compare generic medicines to counterfeits?

If the Advocate General answers “no” to the above question, and likewise all the other courts Nokia will appeal to, will this make the EU more flexible towards certain other goods until now widely debated? I don’t know you, but I look forward to 3 February (which is also a very boring period of the year, no Christmas, no holiday on the horizon) to keep me excited.

Thanks to our favourite Kat (IPKat) for drawing our attention to this interesting case.  “Nokia/Philips rulings on fakes in transit: write-up of submissions”

 post written by Francesca Re Manning,  solicitor and consultant to CAS-IP

New Fashion Law Institute

Further to Francesca’s Re Manning’s post on September 1st “the changing styles of intellectual property“, Kai Ryssdal of NPR’s Marketplace interviewed Susan Scafidi, the director of Fordham University’s new Fashion Law Institute. 

You can read or listen to the short interview at: http://marketplace.publicradio.org/display/web/2010/09/13/pm-confronting-piracy-in-the-world-of-fashion/

And visit the Institute’s web site at: http://law.fordham.edu/fashion-law-institute/fashionlaw.htm

Working in partnership with CFDA (Council of Fashion Designers of America, the key sponsor) the Institute will provide Fordham Law students with opportunities to become leaders in this emerging field. Students will develop skills in diverse areas of the law that affect the fashion industry, including intellectual property, business and finance, international trade and government regulation, and consumer culture and civil rights.

When asked about copyright, Scafidi commented:

You cannot copyright a fashion design in the United States at this point. However, I have been very involved working on legislation* that would permit copyrighting of fashion designs, or rather a very, very short-term form of copyrighting — a three-year copyright. A good fashion lawyer needs to know the basics of the intellectual property system, but also get creative and borrow from areas of intellectual property law that might apply. We’re talking about the trademarks that protect labels and logos, for example. So it’s about getting creative with the lot out there and learning to apply it to the special needs of the fashion industry…..

And finished with:

….So fashion law is catching up with how the culture is starting to perceive fashion.

Scafidi comes across as someone who has learned how to “connect the dots”, and we can expect to see some innovation in this sector where, traditionally, the pirates have ruled. 

* Shumer’s, no doubt.

Post written by Peter Bloch, consultant to CAS-IP

U.S. refocusing on IP enforcement — including “enforcement across borders”

I first read on IP-Watch news about recent release of a national intellectual property strategy from the US government.

IP-Watch highlight that:

“The strategy  encompasses 33 enforcement strategy action items that fall within six categories of focus for the United States: (1) leading by example; (2) increasing transparency; (3) ensuring efficiency and coordination; (4) enforcing our rights internationally; (5) securing our supply chain; and (6) building a data-driven government.”

A complete copy of the strategic plan can be viewed here.
The “Enforcing Our Rights Internationally” is particularly interesting as the strategy seeks to influence enforcement outside of US government jurisdiction.

“..Federal agencies, in coordination with the IPEC, will expeditiously assess current efforts to combat such sites and will develop a coordinated and comprehensive plan to address them that includes: (1) U.S. law enforcement agencies vigorously enforcing intellectual property laws; (2) U.S. diplomatic and economic agencies working with foreign governments and international organizations; and (3) the U.S. Government working with the private sector.”

This includes (from IP-Watch site):

“Cracking down on foreign-based and foreign-controlled websites that infringe on American intellectual property rights and having federal law enforcement agencies encourage cooperation with their foreign counterparts on enforcement investigations, particularly in China.”

PCmag.com picked up on that part in their items:
“DOJ, FBI to Monitor Foreign Web Sites for IP Piracy” and “Biden: U.S. to Target Pirate Web Sites“.
In the former PCmag include one of the voices who were not applauding the stance, the Computer & Communications Industry Association (CCIA) who:

“…warned against imposing too broad an enforcement strategy. “We are surprised that no one appears to be recognizing the broader economic debate on this issue. A proper enforcement strategy would ensure that legitimate innovation is not being squashed by an overly broad, overly zealous crackdown,” CCIA president and CEO Ed Black said in a statement. “Balanced intellectual property will promote innovation, investment, and civic discourse, while ensuring that intellectual property rights holders are fairly treated.”

The CCIA website publishes some questions they raised around the issues of the new strategy.  They quote their own report “Fair Use in the U.S. Economy“:

“…companies benefiting from limitations on copyright-holders’ exclusive rights, such as “fair use” – generated revenue of $4.7 trillion in 2007 – a 36 percent increase over 2002 revenue of $3.4 trillion. The most significant growth over this period was in Internet publishing and broadcasting, web search portals, electronic shopping, electronic auctions and other financial investment activity.”

In the preface Ed Black, President & CEO of the CCIA says:

“we are only beginning to fully understand in the 21st century that what copyright leaves unregulated—the ‘fair use economy’—is as economically significant as what it regulates.”

Interesting….

Text messaging will fight drug counterfeiting in Africa

Another innovative new application for African cell phone users is described in this story: http://www.businessweek.com/magazine/content/10_21/b4179037128534.htm

If drug companies sign on, purchasers of prescription drugs will be able to text message a unique bar code number on the package to a service provider and receive an immediate confirmation that it is (or is not!) what it claims to be.  Two providers (mPedigree and Sproxil) will be testing competing services later this year, and both Merck and Glaxo-SmithKline are interested.

This new service, if implemented, will address at least part of the problem we commented on in February https://casipblog.wordpress.com/2010/02/10/africa-as-a-dumping-ground-for-counterfeit-goods.

According to the Financial Times, the number of mobile telephones in Africa rose from 15.6 million in 2000 to 135 million in 2005. That represents a compound annual growth rate of almost 54%, compared with 24% globally.  Between 2005 and 2009, when the installed base had increased to 300 million units, the growth rate slowed to 22%.  And a study by the London Business School concluded that an extra ten mobile phones per 100 people in a typical developing country leads to an additional 0.44 percentage points of growth in GDP per person[1].

The market has continued to expand, exciting new services such as M-Pesa (money transfers) continue to be introduced, and competition between providers is intense.   Scientific American warns, however, that the increasing reliance on mobile telephony for sensitive transactions presents risks:

As cell phones become more technologically advanced, they will become the top tech platform for the large majority of the world…. Mobile devices and networks, however, will be vulnerable to malware, hacker attacks and theft, just like computers are today.

Post written by Peter Bloch, consultant to CAS-IP

---

[1] http://www.theglobalist.com/globalicons/syndication/sample.htm

Africa as a dumping ground for counterfeit goods

I made a reference to black market Kiwi shoe polish in a previous post.

The current issue of the BBC magazine Focus on Africa contains a cover story, Copycats Go for the Kill:

“…recent research by ICF (International Climate Facility) found that in the East African Community $500 million in revenues from unpaid taxes was lost to counterfeit goods…”

The article cites cases of counterfeit toothpaste bearing the Unilever brand and suggests that 30% of medicines on sale are fake.  And a 2009 UN report revealed that:

“Revenues gained from 45 million counterfeit anti-malarial medicines were worth $438 million, greater than the GDP of Guinea-Bissau.”

One of the objectives of the ICF is to “secure property rights” throughout Africa, and I suspect that the definition of this goal has now been broadened to include IP.

Addressing the observation that Africa has become a dumping ground for counterfeit goods will require a general crackdown on corruption, new legislation and the strengthening of IPRs.  So this is a problem that will not be resolved without political will.

Post written by Peter Bloch, consultant to CAS-IP

The global problem of counterfeiting & piracy and the Anti-Counterfeiting Trade Agreement (ACTA)

http://www.ip-watch.org/weblog/2009/04/14/the-acta-threat-to-the-future-of-wipo/
This link is to an interesting piece on IP Watch written by Dr Michael Geist discussing the organisation, role and possible intentions of the Anti-Counterfeiting Trade Agreement (ACTA).  The writer suggests that lack of developing country participation in talks for this agreement could mean:

“non-member countries will face great pressure to adhere to the treaty or to implement its provisions within their domestic laws, particularly as part of bilateral or multilateral trade negotiations”

He also observed:

”it seems odd to conclude an anti-counterfeiting treaty without the participation of the countries most often identified as the sources or targets of counterfeiting activities”

In his summary he makes a case for more involvement from developing countries to have their say:

“the developing world faces a stark choice – remain on the ACTA sidelines and face a future filled with pressure to implement its provisions or demand a seat at the table now [to] … ensure that the counterfeiting and piracy concerns of the global community are appropriately addressed.”

Clearly a controversial topic with talk of “secret” meetings and leaked information – there is a hint of conspiracy even!  For this view see docs in connection to the agreements Wikipedia page and the Inquisitr site:  http://en.wikipedia.org/wiki/Anti-Counterfeiting_Trade_Agreement or
http://www.inquisitr.com/21747/secret-acta-international-copyright-treaty-leaked-to-wikileaks/
For a more sober view from the technology press see:
http://www.computerworlduk.com/community/blogs/index.cfm?entryid=2101&blogid=14