GROKSTER AT LAST

The US Supreme Court has provided its long awaited decision in MGM v Grokster. The court has held that providers of filesharing software COULD be liable for infringing downloading of material using that software.


The key question was whether supply of the Grokster software, which enabled music, movies etc to be downloaded, constituted an inducement of copyright infringement; or whether, in line with previous cases, it did not, as the software could be used for non infringing uses. The latter outcome would have meant that copyright owners would have needed to attack those using the software for infringing purposes, rather than at least trying to attack the "problem" at source (or at least in terms of some supplier).

Although likely to give rise to lots of public comment, from a legal perspective there is little change from the existing law from Sony/Betamax. There too it was possible to be liable for inducing infringement - the question was whether, on the facts, this was done. On the facts here, the court found evidence that the software was intended to be used for infringing purposes: so for the risk averse and risk managers, simply a question of carefully drafted advertising?

For others, the question is unlikely to be allowed to go away - the fight may go on....

The Grokster decision -Stop Press

The US Supreme Court has provided its long awaited decision in MGM v Grokster. According to Bloomberg (the decision is not yet on the Supreme Court website), the court has held that providers of filesharing software could be liable for infringing downloading of material using that software.


More comment (holidays permitting!) once full decision is available - it will be particiularly interesting to see how much of the decision is based on the facts of this case or on legal analysis.

US Supreme Court to consider link between patent and market power

The US Supreme Court has agreed to consider this rather vexed question in Illinois Tool Works Inc v Independent Ink. It will be be reviewing the decision of the Appeals Court (see link) which held that if there was a relevant patent (here for a "tying" product - where 2 products are linked together) then it would be assumed that there was market power.



Given the complex issues and variety of opinion on the correct and proper relationship between markets, patents and power this has provoked outcry. The autumnal consideration by the Supreme Court will be welcome, and hopefully it will provide an open and balanced review of patents, competition and product and market development.

The Magic Pill and the Big Picture

I attended an excellent, thought provoking and humbling discussion in Edinburgh late last week - "Africa's Health: Is There a Magic Pill". This was part of the African Conversations Series organised by Edinburgh City Council in advance of the G8. The panel included health professionals and aid workers with field experience, a representative from Pfizer, and was chaired by a broadcaster. The audience seemed broadly based, and included young people from Rwanda in Edinburgh to perform at other events.

While degrees of approach differed, the common theme was that while there is a crucial role for research, to develop "magic pills" (comparison was made with the present rarity of Yellow Fever, as opposed to HIV); and while it was important to make such pills widely available at low or no charge, this was only part of the picture. Education, means of female empowerment, awareness, infrastructure, corruption and endemic poverty must be addressed, by working in conjunction with, and respecting, communities.

A persuasive plea was also made for the role of local radio, and mobile phones, in raising awareness of issues and enabling help to be called when needed, particularly given often high levels of illiteracy.

The evening was a helpful reminder at two levels: that our legal research does not and should not exist in a vaccuum of different legal rights; but that there is a role for legal solutions to provide tools for necessary work in health and communications.

Access to Knowledge - Momentum Grows

Long running concern as to the negative impact of IP on knowledge access and development, and the need for a more equitable approach, is reaching a crescendo just now. The TACD (Trans Atlantic Consumer Dialogue) is playing a key role.

Building on the Geneva Declaration on the Future of WIPO, a conference was held in London 12-15 May 2005, which led to a draft Treaty on Access to Knowledge. This focusses on expansion of IP exceptions, competition issues and preservation and expansion of "the commons". As ever, CPTECH provide an excellent collection of resources and comment.

Although there is a long way to go, the growing number of such initiatives (including, for example, the IP Charter of the RSA) means that the need for a broader, less economic, more questioning approach to IP and its proper scope is centre stage - which can only be a good thing.

EC Commission patent abuse decision

The European Commission has found AstraZeneca to have abused its dominant position in breach of article 82 EC Treaty and imposed a large fine.

The finding related to the supply of incorrect marketing authorisation details in respect of the anti-ulcer product LOSEC. This information enabled AstraZeneca to obtain an unwarranted extension to its patent protection, under the Supplementary Protection Certificate System. This meant that generic competitors were, unjustifiably, kept out of the market.

The Commission, while clearly expressing its support for the patent system, considered that this conduct constituted an abuse of the system and of the dominant position held by AstraZeneca. The decision is a clear indication that the Commission will be prepared to look at unilateral conduct in exploiting patents - might this be a precurser to "abuse of a dominant position" developments in patents to mirror those seen in copyright?

More experimental freedom - but who wins?

The US Supreme Court's 13 June 2005 decision in Merck v Integra provides welcome news for both large researchers and those awaiting the benefits of scientific research.

The court held that an existing exception to patent infringement (35 U.S.C section 27(1) (e)) covering trials solely relating to submissions for regulatory clearance (here, the Food and Drug Adminstration) also applies to early preclinical trials which could lead to the development of new drugs - if there is reasonable basis for belief that the outcome of the tests would be used for regulatory submission.

The case involved work on cancer treatments on animals. It had been argued that the exemption should be limited to later stage tests to enable generic products to be brought to market as quickly as possible after the patent term.

The question of what commercial research and testing is exempt from patent infringement is complex - for example there are differing positions in the UK and Germany, which are both members of the European Patent Convention. A broad exemption is in the public interest, increasing the prospects of important products being developed (and coming to market after the relevant patent term). Smaller companies which own key patents, however, will likely be concerned at loss of royalty income as others use their innovation to move forward.

Free Speech Victory in South Africa

The Constitutional Court of South Africa has held, in Laugh it Off v South Affican Breweries, that parodic (some may use other terms..) use of trade marks on T-shirts was not trade mark infringement (on the basis of dilution). It was held that for trade mark infringement there must be economic harm, which was not established. In any event, the court was very clearly of the view that the interests of free speech were of greater importance that the interests of the trade mark owner and that trade mark law should be approached on this basis.

The decision of the lower court (the Supreme Court)had gone the other way, with the court considering that "abuse" of another through using its trade mark could not seek the protection of free speech. The latest decision, a ringing endorsement of the pre-eminence of free speech over more commercial interests is likely to be watched with interest throughout the world

Implementation of the Commission's Microsoft decision (might) be coming closer

Last week, Microsoft submitted eleventh hour proposals for implementation of the decision of the European Commission. The decision found Microsoft to have abused a dominant position in the market (with the interpretation of each of those terms being incredibly controversial), and ordered Microsoft to unbundle its MEDIA PLAYER from Windows and also provide information (claimed by Microsoft to be subject to IP) to aid interoperability between servers. An attempt failed to suspend implementation of this decision, pending the decision in Microsoft's appeal to the European Court of Justice.

As ever, the devil is in the detail - it will be interesting to see what the Commission is prepared to accept and the approach it adopts in assessing this - or will the fine loom?

Compulsory licensing of essential medicines - the reality

The recent battle over licensing, compulsory or otherwise, of HIV/AIDS drugs between Brazil, the United States and pharmaeutical companies seems to be coming to a head. The US and companies are not happy, concerned that a "large" economy such as Brazil will gain unjustified benefit from patents; NGOs are not happy because they see Brazil as failing to act to impose compulsory licences as the negotiations are not leading anywhere.

A test of the apparent balances in TRIPS and subsequent instruments. IP doesn't seem to be working right, competition law might not be being allowed to try to work and human rights to life, health and dignity seem to be losing out to other rights. Some not quite right... Excellent overview provided by CPTECH.

WTO came to Edinburgh

To get us ready for the G8, there was an influx of international lawyers to Edinburgh last week, to the International Law Association conference organised by the law school here. The topic was Regional Trade Agreements and the World Trade Organization.

While apparently rather dry, this was a very interesting event, considering issues relevant to our project: such can there be a challenge to the validity of an agreement requiring TRIPS PLUS IP protection, and no compulsory licences or parallel importing (excellent paper by Professor Abbott)? And even if it can be done (it would seem not that clear) what are the prospects of, say, least developed countries actually taking on the might of the largest countries?

Perhaps most interesting, however, was the fact that IP was only really considered around the borders of the event - a salutory reminder both of the existence of other areas of concern, and the need to raise awareness and stimulate debate, so that important practical issues raised by IP are considered in the wider legal framework.

WIPO online forum

Intriguing possibilies raised by the opening today of WIPO's online forum on IP in the Information Society. The forum will be open for 2 weeks. WIPO provides background papers, and is seeking comments, on a range of issues relevant to our own project:

the role of IP in the information society;the relationship between IP, freedom of expression and creativity; the links between IP, the public domain and systems of open access to information; the links between IP, education and research; the responsibilities of IP owners and any need for additional limits on their rights; the role of IP in respect of the Millennium Goals; who actually makes IP law and policy; the impact of IP on new business models; and (close to my heart from former life) the challenges of enforcement of IP.


The results will form part of WIPO's submission to the WSIS Summit in Tunis. I think this could be really exciting - but will there be a broad and balanced debate, as does seem at least contemplated by the issues raised and tone of the questions, or will temperatures rise?