US Supreme Court addresses patent eligibility of isolated DNA and cDNA in Myriad V

Authors: Charles R. Macedo and David P. Goldberg (Amster, Rothstein & Ebenstein LLP)

Association for Molecular Pathology v Myriad Genetics, Inc, 133 S Ct 2107 (US 2013) (‘Myriad V’), US Supreme Court, 13 June 2013

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt156, first published online: September 29, 2013

The US Supreme Court unanimously ruled that Myriad Genetics, Inc's claims to isolated, naturally occurring human DNA sequences are not patent-eligible, but that Myriad's claims to cDNA, which necessarily includes manipulated DNA sequences, are patent-eligible. The court also indicated that claims to methods of generating isolated DNA could be patent-eligible, even though no such claims were at issue. This decision marks the second time the Supreme Court granted certiorari in this case, and is yet another in a series of recent decisions by the Supreme Court that identifies the dividing line between patent-eligible and patent-ineligible subject matter.

Legal context

Myriad's patents protecting its discovery and inventions related to the use of the BRCA1 and BRCA2 genes to diagnose breast cancer had, for much of their life, remained unchallenged. Myriad patented isolated versions of these genes, complementary DNA (‘cDNA’, ie modified versions) of the relevant excerpts of these genes and methods of using these genes to identify genetically predisposed cancer patients and/or evaluate cancer treatments. This ground-breaking discovery has been used to save countless lives, and is the type of innovation that the patent system was created to foster.

However, in the context of this case, a challenge by various medical associations, doctors and patients, represented by the American Civil Liberties Union and the Public Patent Foundation, ignited a debate and resulted in two trips to the US Supreme Court to determine not merely if ‘human genes [are] patentable’, as the question was phrased to the US Supreme Court in the most recent petition, but when really, if ever, patent protection can be obtained when human genes are involved.

In Myriad IV (Association for Molecular Pathology v US Patent & Trademark Office, 689 F 3d 1303 (Fed Cir 2012)), the Supreme Court recognized that merely isolating naturally occurring human genes, without more, is not enough, while fashioning new molecules in the form of cDNA derived from human genes is enough to become patent-eligible. In striking this balance, the Supreme Court reversed 30 years of policy at the US Patent and Trademark Office but nonetheless laid a blueprint for continuing patent protection in this very important area of scientific endeavour.


This case regards patents owned by Myriad Genetics that involve isolating the BRCA1 and BRCA2 genes from a human body and using the isolated genes to diagnose an increased likelihood of developing breast or ovarian cancer. The patent claims at issue in the current decision cover the exact sequences of the BRCA1 and BRCA2 genes. Another set of Myriad's claims cover corresponding ‘cDNA versions’ of the same genes.

Complementary DNA is synthetic DNA created in a laboratory. The production of cDNA involves the ‘expression’ (activation) of a gene, such as BRCA1 or BRCA2, for the purpose of producing a corresponding protein molecule. A derivative molecule, known as messenger RNA (‘mRNA’), is then ‘transcribed’. mRNA is an intermediate molecule that ‘mirrors’ the DNA sequence of the transcribed gene. Importantly, mRNA undergoes an ‘editing’ process in which certain portions of the protein sequence are discarded and the remaining portions joined to form a shortened molecule. The discarded portions are called ‘introns’ and the remaining portions are called ‘exons’. A laboratory technician can reverse this transcription process and synthesize a DNA molecule that ‘mirrors’ the shortened mRNA molecule. The DNA thus produced is cDNA.

This case began in 2009, when a number of medical associations, doctors and patients challenged the patent eligibility of claims in seven patents held in part by Myriad Genetics, Inc and the University of Utah Research Foundation (‘Myriad’). At the trial-court level, all of the claims were held to be patent-ineligible on summary judgment: Association for Molecular Pa­thology v US Patent & Trademark Office, 702 F Supp 2d 181, 220–37 (SDNY 2010) (‘Myriad I’).

On appeal, in a split decision, the US Court of Appeals for the Federal Circuit (‘Federal Circuit’) reversed in part, finding all of the isolated DNA composition claims, as well as one method claim directed to screening potential cancer therapies based upon changes in the growth rates of transformed cells, to be patent-eligible: Association for Molecular Pathology v US Patent & Trademark Office, 653 F 3d 1329, 1358 (Fed Cir 2011) (‘Myriad II’). The Federal Circuit also found one set of method claims directed to identifying cancer-predispos­ing mutations by analysing or comparing a patient's DNA sequence to a normal sequence to be patent-ineligible.

On petition for certiorari for the first time, the US Supreme Court summarily vacated Myriad II and remanded the case to the Federal Circuit to be reconsidered in light of its recent decision in Mayo Collaborative Services v Prometheus Laboratories, Inc, 132 S Ct 1289 (US 2012): Association for Molecular Pathology v Myriad Genetics, Inc, 132 S Ct 1794 (US 2012) (‘Myriad III’). In Mayo, the Supreme Court invalidated certain blood testing method claims di­rected towards diagnosing and treating a disease, finding that the subject method claims impermissibly claimed unpatentable laws of nature.

In its 2012 decision on remand, the same Federal Circuit panel issued another split decision. The Federal Circuit's decision on remand generally mirrored its original decision finding all of the isolated DNA composition claims, as well as one method claim directed to screening potential cancer therapies based upon changes in the growth rates of transformed cells, to be patent-eligible. The panel also found that the Supreme Court's decision regarding method claims in Mayo had little impact on the issue of whether Myriad's composition claims were patent-eligible: Myriad IV; see generally Charles R Macedo, Michael J Kasdan and David P Goldberg ‘Isolated Human Genes and Related Therapeutic Treatment Methods Held Patent-Eligible’ (2013) 8 (2) Journal of Intellectual Property Law & Practice 96.

The Association for Molecular Pathology once again filed a petition for certiorari, which the US Supreme Court granted solely as to the question: ‘[a]re human genes patentable?’ Association for Molecular Pathology v Myriad Genetics, Inc, 133 S Ct (US 2012). Thus, only composition claims were the subject of the appeal. The Federal Circuit's ruling on the method claim was left standing.

The US Supreme Court heard arguments in the case on 15 April 2013, and a decision was issued on 13 June 2013.


In the current decision (Myriad V), after lying out the facts of the case, the US Supreme Court undertook an unexpectedly short analysis of whether Myriad's patents claimed ‘naturally occurring phenomena’. Justice Thomas, writing for a unanimous court, reframed the issue presented as follows:
It is undisputed that Myriad did not create or alter any of the genetic information encoded in the BRCA1 and BRCA2 genes. The location and order of the nucleotides existed in nature before Myriad found them. Nor did Myriad create or alter the genetic structure of DNA. Instead, Myriad's principal contribution was uncovering the precise location and genetic sequence of the BRCA1 and BRCA2 genes within chromosomes 17 and 13. The question is whether this renders the genes patentable. In answering this question, the court applied distinctions set forth in two earlier decisions that establish the boundaries of patent-eligible compositions of matter.
In Diamond v Chakrabarty, 447 US 303 (1980), ‘scientists added four plasmids to a bacterium, which enabled it to break down various components of crude oil’. This invention was patent-eligible because it did not claim ‘a hitherto unknown natural phenomenon’ but ‘a nonnaturally occurring … composition of matter—a product of human ingenuity “having a distinctive name, character [and] use”.’ However, in Funk Brothers Seed Co v Kalo Inoculant Co, 333 US 127 (1948), the patent applicant mixed different naturally occurring strains of nitrogen-fixing bacteria to create a single inoculant that helped crops improve soil nitrogen levels. This invention ‘was not patent eligible because the patent holder did not alter the bacteria in any way’.

From the court's perspective, because ‘Myriad did not create anything’ but just ‘found an important and useful gene’, Myriad's invention was less like the patent-eligible invention in Chakrabarty, which was a product of human ingenuity, and more like the patent-ineligible invention in Funk Brothers, which retained the properties of a naturally occurring phenomenon. The court explained that, even though Myriad isolated DNA from the human genome, ‘separating that gene from its surrounding genetic material is not an act of invention’ that necessarily creates a non-naturally occurring molecule. This is because Myriad's claims ‘understandably focus on the genetic information encoded in the BRCA1 and BRCA2 genes’, not on ‘the specific chemical composition of a particular molecule’.

By way of contrast, the court stated that ‘cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments’. This is because ‘the lab technician unquestionably creates something new when cDNA is made. cDNA retains the naturally occurring exons of DNA, but is distinct from the DNA from which it was derived.’ Accordingly the court opined that Myriad's patent claims directed to cDNA were patent-eligible under 35 USC § 101. The court added that an exception might exist where the DNA sequence is so short that there are ‘no intervening introns to remove when creating cDNA. In that situation, a short strand of cDNA may be indistinguishable from natural DNA.’

In reaching these conclusions, the court pointed out that ‘this case does not involve patents on new applications of knowledge about the BRCA1 and BRCA2 genes’ and indicated that many of Myriad's unchallenged patent claims ‘are limited to such applications’ and thus are patent-eligible.

Finally, the court also specifically noted that it did not consider, and has no opinion on, ‘the patentability of DNA in which the order of the naturally occurring nucleotides has been altered’.

Justice Scalia issued a separate opinion concurring in the judgment while reserving his opinion on the finer points of molecular biology discussed therein.

Practical significance

While, on the one hand, Myriad V overturns decades of patent office practice by holding that composition claims directed merely to isolated, naturally occurring human DNA sequences are not patent-eligible, Myriad V also offers guidance on how inventions related to discoveries of useful DNA sequences can be patent-eligible subject matter. Myriad V identifies composition claims to cDNA, which necessarily includes manipulated DNA sequences, as one way to protect such inventions. Myriad V also identifies, as another road to patent eligibility, method claims to new applications of knowledge about identified genes.

Thus Myriad V seeks to implement the court's policy concerns to preserve a patentee's ability to protect practical applications of discoveries, like the link between BRCA1 and BRCA2 genes to breast cancer, without granting patentees excessively broad protection that precludes the use of important ‘handiworks of nature’ from further scientific research and other applications. This may be the last round in the Myriad litigation but, no doubt, as uncertainty and sharply divided opinions on patent eligibility continue to percolate through the courts, Myriad V will not be the final decision of the US Supreme Court on patent eligibility.

Premier League 1, Internet pirates 0: sports streaming website the latest to be blocked

Author: Darren Meale (Dentons UKMEA LLP)

The Football Association Premier League Ltd v British Sky Broadcasting Ltd and others [2013] EWHC 2058 (Ch), Chancery Division, England and Wales, 16 July 2013

Journal of Intellectual Property Law & Practice (2013), doi: 10.1093/jiplp/jpt165, first published online: September 26, 2013

Section 97A blocking injunctions are fast becoming an established weapon in the previously ineffective arsenal of rightsholders seeking to curb online piracy. For the first time the jurisdiction has been relied upon by the sports industry, to protect the lucrative rights to broadcast Premier League football and other major sporting events against streaming website

Legal context

Internet piracy is tough to fight. There are too many individual infringers to sue. The pirate websites themselves set up out of the jurisdiction; cloak themselves in anonymity; refuse to engage with legal processes and generally make themselves very unattractive targets for litigation. Fortunately, s 97A of the United Kingdom's Copyright, Designs and Patents Act 1988 (CDPA) allows rightsholders to request that the High Court order the UK's ISPs—of which there are only a handful serving most of the country—to block their subscribers from accessing an infringing site in the first place. No access, no infringement.


Section 97A of the CDPA provides that ‘[t]he High Court … shall have power to grant an injunction against a service provider, where that service provider has actual knowledge of another person using their service to infringe copyright.’ This provision was implemented to comply with the Information Society Directive (2001/29). This author has covered previous uses of this power in articles such as ‘A triple strike against piracy as the music industry secures three more blocking injunctions’, to which readers are referred for background [Darren Meale ‘A triple strike against piracy as the music industry secures three more blocking injunctions’ (2012) 8(8) JIPLP, 591–594].

FirstRow is a very simple website: it provides links to live streams of sporting events. It does not host the streams itself, which are uploaded by third parties (some likely well known to FirstRow) to video streaming websites like FirstRow's moderators then vet and index these streams. Many of the events available on FirstRow are premium events, only lawfully available with Sky Sports or other paid-for subscriptions, like UK Premier League football matches. The broadcast rights for those matches exceeded £3 billion in value last time they were auctioned, an asset which it is clearly in the interest of the rightsholders—in this case, the Football Association Premier League (FAPL)—to protect.

FirstRow's exploits have led to it becoming the 268th most popular website in the UK, ahead of such household names as and Despite claiming that its service honourably allows impecunious fans to enjoy sport, FirstRow was estimated by FAPL to be making between £5 million and £10 million a year in advertising revenues from adverts shown before and alongside streams.


Like the most recent rounds of s 97A applications, this was a one-sided piece of litigation. FirstRow was not involved. The UK ISPs did not appear and were not represented. The terms of the orders sought had been agreed with the ISPs beforehand, and so it fell to Mr Justice Arnold to determine whether the orders sought were justified. He did so on paper, without a hearing.

Four matters needed to be established if a block was to be ordered. Each was carefully considered by Arnold J. As the law and circumstances in this case were very similar to the previous s 97A applications (see the references to earlier articles above), three of the four matters will be covered only very briefly:

Were the ISPs ‘service providers’?

Yes there were, as the ISPs accepted. See r 2 of the Electronic Commerce (EC Directive) Regulations 2002, implementing the E-Commerce Directive (2000/31).

Do the users and/or the operators of FirstRow infringe copyright?

Unlike in the earlier cases, FirstRow was not a site involved in peer-to-peer file-sharing using BitTorrent or similar technology, but the infringement issues were highly similar. The court found that FirstRow's operators infringed. Users who were publicans who used FirstRow to show matches in their pubs infringed as well. The court's reasoning is considered below.

Do the users and/or the operators of FirstRow use the ISPs' services to infringe?

Arnold J answered this question in the affirmative following his reasoning in the earlier blocking cases.

Did the ISPs have actual knowledge of this?

Yes, following receipt of letters before action sent to them on 7 June 2013.

Infringements of copyright by FirstRow and its users

The majority of the judgment was taken up by consideration of this question. The court addressed the following: the infringing acts that might be relevant, including communication to the public within s 20 of the CDPA; whether the prerequisites for a communication to the public were met; and whether there was a communication to the public in the UK.

Infringing acts

The key act of alleged infringement of copyright in most internet-concerned cases, as in this one, is that of communication to the public. No allegation of straightforward copying was raised in light of the UK Supreme Court's decision—or in the referral to the Court of Justice of the European Union (CJEU)—in Meltwater [2013] UKSC 18. In this case the Supreme Court concluded that users who merely browse the internet do not infringe copyright in the material they browse by reason of the exemption under Article 5(1) of the Information Society Directive. That exemption covers temporary acts of copying which are, amongst other things, transient or incidental. The Supreme Court's conclusion might well extend to users who view streams, if the CJEU agrees with it.

Prerequisites for communication to the public

Case law (much of it from the CJEU) imposes a number of prerequisites before a finding of communication to the public can be made, including that there needs to be a ‘communication’ and a ‘public’. Consideration of these points took into account the CJEU's recent decision in Case C–607/11 ITV v TVCatchup, 7 March 2013, where that court interpreted ‘communication’ broadly, adding that ‘public’ referred to an indeterminate number of persons and implied a fairly large number of persons. In cases such as Case C–306/05 SGAE [2006] ECR I–11519, the CJEU had previously established that such public also had to be ‘new’. In TVCatchup, the CJEU performed a classic side-step, holding that this was not required where a television broadcast is re-transmitted via the internet. The reason given for this (which is a half reason at best) is that this was because such re-transmission is a separate communication to the public by a different technical means to the original broadcast.

Arnold J quickly concluded that these prerequisites were fulfilled in the present case. He additionally considered whether FirstRow was actually responsible for the communication of the streams, given that it merely linked to other streaming sites. It was, taking into account the interventions of FirstRow in aggregating, indexing and linking to streams for the convenience of users. He also concluded that FirstRow was jointly liable for the communication by the other streaming sites.

Communication to the public in the UK

Earlier decisions established that FirstRow must be shown to be targeting the UK public if there was to be a communication to the public in the UK. The judge concluded it was, on the basis of a number of factors including that the site is in English (not an overwhelming factor, given the ubiquity of the language online and in the real world); that FirstRow's advertising was by UK companies (which, this author notes, might actually be the responsibility of an independent adserving company, rather than FirstRow); that Premier League matches are popular in the UK (as they are in many other countries); and that FirstRow is very popular with UK users (even though nearly 8.5 million of its 10 million or so users were from outside of the UK). No doubt FirstRow targeted the UK (it probably targets everyone everywhere in its quest for ad revenue), but these factors essentially indicate that FirstRow's content is popular in the UK. That is not the same as saying that FirstRow is doing anything consciously to target it.

Having come to decisions on all four ingredients for a block, Arnold J determined that it was proportionate to order a block in this case on much the same basis as the blocks he had previously ordered. The parties had included wording in the draft order permitting the operators of FirstRow to apply to vary or discharge the order if they could show grounds to do so. He felt it beneficial to include this wording in future blocking orders.

Practical significance

With this victory, there have now been six reported victims of the music, film and sports industry: Newzbin2, The Pirate Bay, KAT, H33T, Fenopy and FirstRow. Arnold J's judgment also refers to an order against a seventh, torrent site EZTV, an order of Mann J (which does not yet appear to have been reported). The BBC reported in July that websites YIFY, Movie2K and download for all have also been blocked, bringing the total to 10. Another 25 or so websites are reportedly on a music and film industry hit-list, some of which have recently received cease and desist letters from the British Recorded Music Industry.

It therefore looks as if the High Court judiciary in England and Wales will be kept fairly busy entertaining s 97A injunction applications for the foreseeable future. Compared with other court business, the process for obtaining these injunctions now appears fine-tuned. Obtaining a block is also likely to be reasonably low-cost, certainly compared to obtaining other forms of relief against infringers. It is also quick: letters before action were sent out on 7 June 2013; judgment was given less than six weeks later.

Determining a fair licence fee for a celebrity photograph

Author: Garth McDonald (Wiggin LLP)

Jason Sheldon v Daybrook House Promotions Ltd [2013] EWPCC 26, Patents County Court, England and Wales, 8 May 2013

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt155, first published online: September 19, 2013

His Honour Judge Birss QC has held that a fair licence fee for the use of a photograph of pop celebrities Ke$ha and LMFAO was worth substantially more than the few hundred pounds suggested by the defendant due to the subjects' celebrity status and the exclusive nature of the photograph in question.

Legal context

The Enterprise and Regulatory Reform Act 2013, which includes provisions for the use of ‘orphan works’, has, of late, caused photographers to be concerned about the commercial use of photographs by third parties who might come across them on the internet with no indication as to who the author (or rather, the photographer) is. The 2013 Act provides that ‘orphan works’ can only be used if a ‘diligent search’ for the author has been made, and a fair licence fee is paid. While it remains unknown what will constitute a ‘diligent search’, this case sheds some light on the considerations which are relevant in determining a fair licence fee for unauthorized commercial use of a photograph.


Mr Sheldon was a professional photographer who had taken some photographs of pop celebrity Ke$ha while she was on tour with the internationally famous pop duo LMFAO. Mr Sheldon had obtained exclusive access to Ke$ha's tour bus when the tour came to Birmingham, and had taken a photograph showing the three individuals in a back-stage party atmosphere, lounging together on a sofa with a bottle of champagne.

The defendant, Daybrook House Promotions Ltd, ran a dance venue in Nottingham called Rock City. In March 2012, Mr Sheldon found that Daybrook was using the photograph taken in Birmingham in connection with a poster advertising campaign for its ‘Floor Fillers’ events.

As far as Mr Sheldon was concerned, the use of the photograph was unlicensed. Accordingly, he sent Daybrook an invoice for the use, totalling £1,351. This sum was based on Mr Sheldon's then understanding of the extent of the use of the photograph at that time.

Daybrook's position was that it accepted that the photograph had been used, but that it did not appreciate that it was an image which it was not entitled to use since the photograph was freely available on the tumblr social networking website. It said that, had it known that the claimant did not intend the photograph to be made so available it would not have used it. In any event, however, Daybrook argued that the claim was low and that the proper fee to be paid should be measured in the range of a few hundred pounds. In response to Mr Sheldon's invoice, Daybrook offered £150.


Mr Sheldon issued proceedings for copyright infringement for the money that he felt was owed—the root of the difficulty in this case was the very different view the parties took as to what a fair licence fee would have been for the acts complained of. This involved two issues: the extent of the use of the photograph by Daybrook and, more significantly given how far apart the parties were, what a reasonable licence fee would be for the use.

Judge Birss QC decided that the best way forward was to decide the question of quantum as soon as practicable so that the case could be allocated to the correct track, either the small claims track or the multi-track, in the Patents County Court. The question was, therefore, what damages would be awarded to Mr Sheldon, assuming, which was not admitted, that the acts committed by Daybrook were indeed acts of infringement of copyright owned by Mr Sheldon.

Judge Birss QC decided that, assuming infringement had taken place, the correct measure of damages would be a reasonable royalty, ie the licence fee which would have been agreed between a willing licensor and a willing licensee, having regard to the nature of the right and all the circumstances.

Daybrook contended that the reasonable royalty would be a few hundred pounds. It relied on a quotation of £366 from a photographer, David Baird, for a single image for a club night poster with a print run of ten (6 × 4 inches) and a run of 10,000 postcards. The price was based on the photo being used on a promotional poster for a weekly club night at Rock City with a small print run and displayed on the interior and exterior of the club, and postcard-sized flyers distributed around Nottingham. The cost was calculated using professional software called fotoQuote which was built into Mr Baird's website.

Mr Sheldon argued that the artists featured in the photograph were award-winning and internationally renowned. He said that he had had exclusive access to their tour bus, and that it was not commonplace for photographers to have such access, as contended by Daybrook. He argued that the famous subject matter and the exclusive access were relevant to the sums a photographer in his position would charge to license such a photograph and increase the price. Mr Sheldon also contended that the photograph had been used quite extensively by Daybrook and for an extended period.

Mr Sheldon also provided the court with estimates for the value of the use of the photograph. He prepared various estimates on two bases. The first was produced using his own fotoQuote software to give a figure for national or regional advertising. This resulted in a fee of £12,222.54, which he believed would be increased by about 20 per cent to £14,667.05 given the specific subject matter and characteristics of the image.

The second basis was a bespoke quotation, again using fotoQuote, based on the extent of the use of the image that he had established. Mr Sheldon provided a range of quotations from other online photographic licence agencies. The lowest figure was £4,030 from Retna and the highest was £6,160 from Getty Images. Mr Sheldon arrived at a figure of £4,735.31, which with the 20 per cent uplift resulted in a figure of £5,682.37.

Judge Birss QC found that the point that Daybrook would not have expected to pay more than a few hundred pounds for a photograph was, whilst not entirely irrelevant, not the critical issue. The question was focused on the actual photograph Daybrook used, and a reasonable royalty was that which would be associated with the use of the particular copyright work concerned. In other words, what would the copyright owner have earned for the reproduction of this photographic work by someone wishing to reproduce it?

Further, Judge Birss QC said, while there was no doubt there were pop stars who are more famous than Ke$ha and LMFAO, both were plainly very well-known and current acts. This increased the value of the photograph ‘to some degree’, he said. A factor of even more importance was the exclusivity of access. One of the things which made the photograph interesting was its back-stage party atmosphere, which in turn derived from the exclusivity granted to Mr Sheldon. That was also a factor which would enhance its value.

As for the extent of use of the photograph, Judge Birss QC accepted Mr Sheldon's evidence. The judge also preferred Mr Sheldon's evidence about the general level of fees that he would have been able to charge for the photograph for two main reasons. First, Mr Sheldon's evidence was more detailed and contained convincing corroborative material from other sources such as Getty Images and Retna. Secondly, Judge Birss QC doubted that it would be worthwhile for a photographer, going to the trouble of gaining exclusive access to a location, just to license the resulting photographs for a few hundred pounds.

However, Judge Birss QC rejected Mr Sheldon's first estimate as to value, as it was not based on the actual usage: the measure of damages should be based on the actual reproduction that had taken place. That meant that the most relevant elements of Mr Sheldon's evidence were the bespoke quotations. These produced a range of numbers from about £4,000 to £6,000 with Mr Sheldon's own figure coming to £5,682.37 (which included the mark-up as a result of the subject matter of the image, a point that Judge Birss QC had already accepted).

Accordingly, Judge Birss QC determined that the correct measure of damages was £5,682.37, exclusive of VAT and interest.

Practical significance

This case suggests that the courts are willing to take a pragmatic approach to determining fair licence fees for photographs based on the commercial realities of the world of professional photography. Whether infringement had actually occurred remains to be found (unless the parties settle) but the main point is that, taking all the factual circumstances into account, the court decided that the value of the photograph, had it been properly licensed for use, depended on the celebrity status of the subjects. The exclusivity of access of the photographer was also an important point, enhanced by that status.

Passing off and unfair competition: 50 up and still rising

Reservations for the 23 January 2014 event at which experts from both civil law and common law jurisdictions discuss the relative merits and (if any!) demerits of passing off and unfair competition continue to rise. We now have over 50 registrations, drawn from several countries, for this event -- which is free to attend.

Details of the programme and how to register for it can be found on the jiplp website here. There are no further formalities, though registrants who, having signed up for the event, find that they cannot after all attend are requested to let us know as soon as possible so that we can invite people whose names are held on the expected waiting list.

Baby™ — a not quite serious look at motherhood and brands

This month's guest Editorial comes from Birgit Clark (Baker & McKenzie LLP), a senior trade marks practitioner, member of the MARQUES Class 46 blog team and a founder member of the JIPLP editorial board.  Birgit writes as follows:
"When I went on maternity leave I — naively — expected a short pause from trade marks. Little did I know that new motherhood is a microcosm of trade mark issues.

Being aware of the ‘allure and prestigious image’ of some brands, it was when we decided on a pram that the power of baby-related branding first struck me. While I was pondering the various features, my usually brand-restrained husband had already taken his decision: it had to be brand B. Why? He could not quite say but it transpired that this fashionable brand was the one everyone he knew had bought for their offspring. For him this brand clearly stood for a certain lifestyle. Inwardly amused, I was oddly relieved when I realised that most of the other mothers from my ante-natal class had also joined the brand B brigade.

Feeling a tad inadequate when it comes to infant care, I believed that I could contribute when it came to discussing the quality of nappies. Excitedly reciting the CJEU's decision in BABY DRY, I noticed with some dismay that the other mothers' eyes started glazing over when I elaborated on the unusual juxtaposition of the word elements. Was the mark distinctive and should it be kept free for others, I mused. The response I got was sobering and taught me about common sense, which trade mark practitioners sometimes lack: “Only if it keeps the baby dry should a nappy be called that!” Oh well, never mind the origin function.

An ‘emotional issue’ new mothers face is whether to use formula milk. I was startled by the unexpected response I received on a parenting forum when discussing one charity's demand to introduce plain packaging for formula. It was argued that formula packaging should have no branding at all. My: ‘All issues of property rights aside, I really want to know the brand’ was answered with ‘Why do you need to know, is it not enough that it says formula?’ The origin function (not) striking again.

While I was still secretly amused, when I overheard that one particularly glamorous ‘mummy’ of our acquaintance had bought more outfits by an iconic British brand than her daughter could ever wear, it was at a baby music class (a franchise, of course!) where I noticed that the brand bug had bitten me too. I owned the same changing bag as Angelina Jolie, I learnt from the proud owner of the same bag; an item purchased by my now brand-savvy husband. Indeed, we had also chosen the same baby car-seat as the Swedish Crown Princess. I am only relieved that my son was born a year before the “Royal Baby”. Just imagine how the ‘Kate effect’ will strike when the Duchess of Cambridge decides on certain brands for the little Prince. One lucky supermarket chain was already giving a 20% discount on baby products sold under its ‘George' brand the weekend after the little Prince was born.

There is, however, a serious side to it all, which I realised when it came to buying a certain brand of baby carrier online after having learned from parenting sites that there are numerous, potentially dangerous, counterfeits in circulation. The fact that there are such counterfeits is telling in itself. What is more surprising is that for some parents the idea of being associated with a certain brand will make them decide to buy obvious fakes.

Seeking to send a message about consumerism, Russian artist Petro Wodkins created a website which purported to offer nappies under the brand of a famous Italian designer (‘When only the best is good enough’). The fact that I looked at a blogpost about this and initially wondered how expensive such nappies might be rather than realising it was satire, tells you that it is time for me to return to work. Motherhood has however made me re-evaluate the CJEU's comments on “the investment function” (“a reputation capable of attracting consumers and retaining their loyalty”) when I read that most daughters buy those brands for their babies which their own mothers already trusted. Having grown up in Germany, I live in the UK and the brands are not always the same. You guessed it, I stocked up on childhood brands when on my most recent visit to Germany. Nonetheless, I am still not convinced that you should decide cases based on trade mark functions, but that is a different matter".

October JIPLP now online

The October 2013 issue of JIPLP has been online since yesterday.  The contents list appears below.  This month's Guest Editorial, a tongue-in-cheek reflection on motherhood and brands (or, given the perpetually renewable protection open to trade marks, should that be 'maternity and eternity'?) will be posted on this weblog later today.

Subscribers to the online version of the journal can access all of the features listed below, as well as the journal's extensive online archives -- which stretch all the way back to 2005. Non-subscribers who wish to purchase limited-time online access to any of these items can do so via JIPLP's official website here.

The print version of this issue will be available in due course. The jiplp weblog will let you know when you should have received it.

Guest Editorial

Current Intelligence

From GRUR Int.

IP in Review