Copyright Calm - Yoga Poses Refused Copyright Protection in the US

Many in the legal community could benefit from more relaxation and meditation, and today's fitness culture harbors a great appreciation for activities like pilates and yoga. As many of you will be aware, yoga (and similar forms of exercise) are composed of a variety of poses and movements, allowing for the targeting of specific muscle groups and/or physical (and mental) benefits as a result. If the different poses and exercises were not enough to confuse many, there are several different styles of yoga, all encompassing different methodologies and exercises, such as Ashtanga and Hatha yoga, some of which have been developed fairly recently by modern yogis. One of these is Bikram Yoga, developed by Bikram Choudhury, comprising of 26 poses conducted in a hot, humid environment. As the style has been designed and 'created' by Mr. Choudhury, one could imagine the program or poses could be protected; a fact that Mr. Choudhury has vigorously asserted over the years. To that end, could a yoga pose or series of poses be protected by copyright?

The US Court of Appeals recently took this question on in the case of Bikram Yoga College of India v Evolution Yoga, LLC, which dealt with the aforementioned yoga style. Bikram Choudhury's version of Hatha yoga consists of 26 different 'asanas', or in other words, poses, and two breathing exercises, all collectively known as the Sequence. He also released a book called "Bikram's Beginning Yoga Class" in late the 1970s, and registering its with the US Copyright Office along with a 'compilation of exercises' some time later. The final chapter in the development of his yoga empire was the launch of a Bikram Yoga instructors course in the late 1990s, called the "Bikram Yoga Teacher Training Course", where individuals could learn the Sequence and the underlying philosophy of Bikram Yoga and instruct others in the same. In the early 2000s, Mark Frost and Zefea Samson participated in the course, and subsequently founded Evolution Yoga, where they taught, among other classes, "hot yoga", which was similar to Bikram's take on yoga. Mr. Choudhury subsequently took the two to court, alleging copyright infringement of his copyright protected works.

The case stems from the idea-expression dichotomy, which separates the protection of ideas without an expressive manifestation in a tangible form. The Court therefore had to assess whether the Sequence would amount to a mere idea, or whether it would be a form of expression protected by copyright.

Yoga isn't always all fun and stretches

Under 17 U.S.C. § 102(a), many different forms of works are covered by copyright; however subsection (b) specifically excludes protection from "...any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work". Judge Wardlaw, handing down the Court of Appeals' judgment, extensively considered precedent dealing with the Court's view on the division of ideas and expression. Baker v Selden, dealing with the protection (or lack thereof) for a book-keeping system, and Palmer v Braun, dealing with the protectability of meditation exercises, illustrate the unavailability of copyright protection for ideas, even if they are 'expressed' in some sort of tangible form.

Ultimately, the Sequence was deemed to be not protected by copyright. Even though Mr. Choudhury's Sequence promotes health and the development of human mental and physical well-being, the Court determined it fell short from copyright's remit. Judge Wardlaw did, however, remark that "...if it is entitled to protection at all, that protection is more properly sought through the patent process". The prevention of competition was also a consideration for the Court, as they saw that "[c]onsumers would have little reason to buy Choudhury's book if Choudhury held a monopoly on the practice of the very activity he sought to popularize. Rather than "stimulat[ing] artistic creativity for the general public good," copyright protection for the Sequence would prevent the public from engaging with... [the] idea and building upon it".

Mr. Choudhury also argued that the Sequence should be protected as a compilation work under 17 U.S.C. § 103. Judge Warlaw quickly rejected this argument, as, for a work to be awarded protection under section 103, it would first have to qualify as a protectable work under section 102; something that, as the above shows, it failed to do. The argument was based on Mr. Choudhury's arrangement and organization of the poses and exercises within the Sequence, but this still does not extend copyright to subject matter that it did not protect to begin with. This makes sense, as it seeks to prevent the protection of non-qualifying works, since the extension of compilation protection to works not covered by section 102 could open the floodgates for works not contemplated by the legislature in drafting the law.

Finally, the last argument dealt with by the Court was whether the Sequence would be protected as a choreographic work under 17 U.S.C. § 102(a)(4). Similarly to the above, the claim fails due to a lack of protection as a qualifying work under section 102 from the very beginning. As settled by Judge Wardlaw: "[e]ven if the Sequence could fit within some colloquial definitions of dance or choreography, it remains a process ineligible for copyright protection".

The case remains a novelty in the sphere of copyright, and offers very little that was not known already. Yet, it does highlight an important aspect of intellectual property law: the importance of picking your form of protection. Should Mr. Choudhury sought patent protection for the Sequence, he could have potentially used it to prevent others from using his Sequence, or teaching similar routines at non-affiliated yoga studios. Even so, he did not, and fell foul of copyright and its remit.

Source: JDSupra

Retrospective - Groundless Threats in Intellectual Property Law

A big aspect of intellectual property law is the possible threat of infringement, even when you might not know it. With strong legal protective measures comes a great deal of responsibility in wielding that capability, especially in the light of competition. IP can be used to stifle those aiming to compete with you, as well as those who blatantly want to benefit from your hard-work and intellectual output. A balance has to therefore be struck, and certain legal tethers have been placed to restrict the unwarranted use of IP rights without due cause. Groundless threat provisions exist in relation to all registrable IP rights (trademarks, patents and designs) under the Patents Act 1977, Trade Marks Act 1994, Registered Designs Act 1949 and Copyright, Designs and Patents Act 1988. What amounts to a groundless threat is not entirely clear under all of the provisions above (which act fairly similarly to each other), however the High Court endeavored to answer this at the cusp of the 21st century.

The case of Brain v Ingledew Brown Bennington & Garrett (No 3), decided in 1997, dealt with Patrick John Brain, who, in the early 90s, set up a consulting business in an effort to exploit new technologies and inventions all over the world, particularly in the Far East. Upon meeting Jørgen Jensen, the Head of Chemistry at Risø National Labratory (the second defendant), a Danish research company, the pair struck a deal to utilize a patented technology developed at Risø by a number of individuals called "Wet Oxdiation" (e.g. patents US5053142A and EP0284754) in foreign markets. The pair started a company called Intox Corporation Limited, and successfully marketed the process to a company in Canada, which included passing on technical documents attained by Mr. Jensen. Risø found out about Intox Corporations' activities, and initiated court proceedings against Mr. Jensen in Denmark. During the proceedings Risø also instructed UK lawyers, Ingledew Brown Bennington & Garrett, to pursue Intox Corporation. Mr. Brain argued that, in correspondence between him and lawyers at Ingledew, several threats were included, and as a result, the projects incorporating the above technology did not come to fruition, causing him a great deal of monetary loss. He then initiated proceedings for groundless threats under the Patents Act 1977.

Under the above Act, in section 70: "...a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may... bring proceedings in the court against the person making the threats".

Rory was aggrieved by threats made in relation to his cap

Justice Laddie, handing down the judgment of the High Court, had to therefore first determine whether Mr. Brain was a 'person aggrieved', allowing him to bring forth his claim. For a person to be considered as such there has to be clear damage, not just hurt feelings. As Justice Laddie described it: "...a trader's chosen route to exploitation of his product or process is interfered with by the threat, that is damage in the broad sense and makes him a person aggrieved". Reliance on the threat, and subsequent action causing detriment, is key, not just annoyance or mere displeasure. Even if loss is prevented or mitigated in the event of a threat does not mean the person cannot be seen as a person aggrieved. What the person has to show is "...that his commercial interests are or are likely to be adversely affected in a real as opposed to a fanciful or minimal way". The Court saw that, as the threats were made to Mr. Brain directly, that he would fall under the definition of a 'person aggrieved'.

Justice Laddie then had to assess what the meaning of the letters were, and whether they actually constituted a threat. This assessment has to be done "...in accordance with how they would be understood by an ordinary reader", and what the initial impression would be to a reasonable addressee. In the light of the three letters discussed as a whole, Justice Laddie saw that their purpose would be reasonably understood as a threat to initiate patent proceedings.

Arguments as to the available defence under section 70(4), preventing any proceedings under section 70 for "...a threat to bring proceedings for an infringement alleged to consist of making or importing
a product for disposal or of using a process" (defined in section 60), failed, as the correspondence targets a much broader base of infringement, not just the ones exempted under section 60. Justice Laddie found that the defendants had made groundless threats against Mr. Brain, and ordered an inquiry into damages.

The law in relation to groundless threats has since moved on, and more leeway has been given in terms of bringing information as to any existing IP rights to the attention of the potentially infringing party. The Patents Act 2004 made significant changes to section 70, however the above does still apply to all groundless threat cases, giving the courts the basis for their determination for a cause of action under these provisions.

Taking a Break - Kit Kat Decision Issued by ECJ

For all lovers of confectionery goods the name Kit Kat will undoubtedly be a familiar one, even without its highly memorably slogan. The iconic British chocolate bar has been around since the 1930s, and above all else what many will remember is its shape, comprising of five individual chocolate covered wafer 'fingers' connected at the base by a lawyer of chocolate. As such shapes can be protected through intellectual property law, but whether Kit Kat's design is truly distinctive enough to be protected as a trade mark, has been a contested question here in the UK for several years, ultimately being referred to the European Court of Justice by Justice Arnold nearly two years ago in Société Des Produits Nestlé SA v Cadbury UK Ltd [UK High Court of Chancery]. As a result the ECJ handed down its judgment in September this year.

The case of Société Des Produits Nestlé SA v Cadbury UK Ltd [European Court of Justice] dealt with an application for a trademark by Nestle for a three-dimensional representation of the Kit Kat bar, omitting the embossed words "Kit Kat" from the top of the chocolate bar's individual fingers. After the application's publication Cadbury submitted an opposition against its registration, arguing a lack of distinctive character, initially having the mark rejected by the UK Intellectual Property Office, ending in Nestle's appeal to the UK High Court.

Justice Arnold submitted three questions to the ECJ prior to his later judgment applying the Court's consideration.

The ECJ started by answering the second question posed by Justice Arnold. What was asked was seen as "...whether Article 3(1)(e) of Directive 2008/95... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result".

After a very brief consideration of precedent, especially relating to the prevention of any registration monopolizing a technical solution or functional characteristics, the Court determined that "...Article 3(1)(e)... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue". What remains key is the refusal of registration based on a single ground under Article 3(1)(e), even if, predominantly, the shape does not fall under all of the grounds. Public interest in the strict enforcement of the grounds of refusal was important in the Court's view, as a contrary position would allow for the monopolization of the very subject matter the Article seeks to disallow. What is uncertain is how this applies to a shape as whole and its respective components. Would a shape be negated as a whole if it contains a part that would fall under the grounds (negating the registrability of the whole design)? Arguably, this would be the case, but the decision leaves this unclear.

Terry's take on Halloween was more diabetes inducing

The Court then moved on to the third question, which it saw as asking "...whether Article 3(1)(e)(ii)... under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function or whether it also applies to the manner in which they are manufactured". As the wording of the sub-section does not discuss the manner of manufacture for the goods, the Court had to decide whether it implicitly does so. They quickly decided against this, setting out that "...that Article 3(1)(e)(ii)... must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured". The inclusion of manufacturing methods, in this writer's mind, would encroach onto the territory of patents, and how a product is made does not designate its origin; the primary function of trademarks.

Finally, the Court proceeded to question one, which was set out as "...whether an applicant to register a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant’s goods".

Again, considering precedent in brevity, the Court saw that "...in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company". What the question therefore requires is that the proprietor of the mark has to prove that the relevant class of people perceive their mark, in this case "Kit Kat", to only originate from them and not other proprietors selling similar goods, even if the goods contain other registered trademarks (or a design, in this case). The onus would be on Nestle to show that the shape of the chocolate bar, regardless of the inclusion of the words "Kit Kat", would be indicative of the source of the bar by itself (i.e. a distinctive feature). The Court did omit Justice Arnold's question on reliance on the mark, focusing on their 'perception' and 'recognition' of the mark. Arguably reliance does not necessarily follow the two, but this writer thinks, in the Court's mind, their intention is to include reliance through perception, as seeing and knowing a mark in conjunction with another would still carry some weight in the purchase decision, effectively creating a level of 'reliance'.

The case has since been referred back to the High Court for ultimate decision, but this writer thinks, based on earlier considerations, that the shape of the Kit Kat bar might not be enough to distinguish it from other similar ones to allow for the registration of the mark. The ECJ's answers to the questions seemed unsurprising, however leaving many things uncertain or somewhat unanswered, but give more nuanced guidance, which is never too abundant in today's legal sphere. How the case will be applied in the future is uncertain, but hopefully this application will manifest even more clarity as a result.

Source: IPKat

Genes Lost - Myriad Genetics Loses in the Australian High Court

The Myriad Genetics saga has been going on for several years now in the Land Down Under, and this writer has been waiting for the Australian High Court decision with bated breath. After a ruling in both the Federal Court and the Full Federal Court (more on which can be found here) in favor of Myriad Genetics, the cause seemed all but lost to the appellant, Yvonne D'Arcy. She was awarded the right to appeal to the High Court of Australia, who handed their judgment down only last month.

Although the case has been discussed on this blog before, some exposition is needed for those who might not be wholly familiar with the matter. The case of D'Arcy v Myriad Genetics dealt with the protein BRCA1; one that is quite relevant as a marker for a potential heightened risk for breast and ovarian cancer should it possess a mutation within it. Myriad Genetics acquired a patent for the sequence's isolation and subsequent analysis (Australian patent no. 686004), which was challenged by Yvonne D'Arcy, a cancer patient herself, in 2013.

What the High Court had to consider was whether the patent can be defined as a 'manner of manufacture' under the Statute of Monopolies 1623; a requirement for patentability under the Australian Patents Act 1990.

Genes are not that important

In a lengthy, multi-opinion decision, the High Court unanimously decided that the disputed claims of the patent were not a 'manner of manufacture', and thus were not patentable. Discussing the science and precedent, the majority still focused on the substance of the patent in in-depth detail. What Myriad Genetics argued, and the preceding judges agreed with, was that the isolation of the genetic sequence, and its analysis, created an artificial state of affairs, changing what is in simplistic terms a natural phenomenon into a man-made substance falling under the definition of a 'manner of manufacture'. The majority disagreed, and saw that "...the information stored in the sequence of nucleotides coding for the mutated or polymorphic BRCA1 polypeptide is the same information as that contained in the DNA of the person from which the nucleic acid was isolated. It is the existence of that information which is an essential element of the invention as claimed. The product is the medium in which that information resides". In the majority's view the isolation of the genetic content retains the very same information as occurs naturally within that person, adding or 'making' nothing new. Myriad Genetics' claims honed on the information within the genetic sequence, and not the chemical changes made to it when isolating, falling foul of a 'manner of manufacture' as a result, attempting to claim what already exists through nature (echoing, and accepting, the position by the US Supreme Court, more on which can be found here).

Ultimately what befell Myriad Genetics' case was the language used in the patent's claims, as stated by the majority: "Although it may be said in a formal sense that the invention as claimed, referring to isolated nucleic acids, embodies a product created by human action, that is not sufficient to support its characterisation as a manner of manufacture. The substance of the invention as claimed and the considerations flowing from its substance militate against that characterisation". As such the High Court allowed the appeal by Ms. D'Arcy.

The complexity and uncertainty around the case is evidenced by the length and multitude of opinions, and even though the decision was unanimous in allowing the appeal, the opinions reflect different approaches in arriving in the same answer. To this writer the focus seems to be very language specific, and had Myriad Genetics differentiated their claims through more specific, composition-heavy language, they could have been successful. Nevertheless, the case was more of a point of principle, as the patent expired only a few months ago, but it does set a precedent for the genetics industry in Australia. The Australian government has given guidance on proper practice in relation to genetic materials and patents, which looks gloomy for the industry, but the consultation does allow for comments and thoughts going forward.

Source: ABC Online