It’s been a while and much has happened since the last HCU newsletter. Due to the active court proceedings, there are many matters which we have not been permitted to share with you until now. Today there is good news to share!
Table of contents:
- Berne Copyright Proceedings Update
- Dutch Copyright Proceedings Update
- Patent Proceedings – A historic dispute now put to rest
- URGENT call for Donations to be able to proceed + Upcoming Instrument Lotteries and Call for Donations
1. Berne Copyright Proceedings Update
Walder Wyss filed our second brief to the court of Bern last month. It represents countless hours of work and is the product of the legal team (Bird & Bird and Walder Wyss) closely collaborating with numerous members of the handpan community along with prestigious external scientific experts. You can find the Brief here.
Jim Woodhouse, an emeritus professor of the Department of Engineering in the University of Cambridge, prepared an opinion on technical aspects of certain features of the Hang, which was filed to the court of Bern together with the brief. You can find his expert statement here.
We are pleased with the result and feel that it provides a very convincing case.
PANArt has received the brief recently and now has time over the summer to reply. After that the final hearing will take place in Berne. It’s expected this could happen as in the first quarter of next year.
One key thing to keep in mind in regards to this legal situation is that it all comes down to copyright – specifically, can PANArt claim a copyright on a musical object that is lense-shaped, with a circular note arrangement and featuring a tone-field with a dome on the top side (Ding) and a port-hole (Gu) on the bottom side? This is exactly what came to the forefront in the court of Bern in October of 2021. Upon reviewing submissions from both sides, the court suggested to split the legal proceedings into two separate questions:
a) can PANArt legally apply a copyright on Handpans?
b) if the answer to a) is ‘yes’ and Panart has a copyright on all or some of the elements as claimed, then how wide/narrow would such a copyright be? Are any of the parties involved actually infringing on that copyright with their instruments?
This means that, before looking at handpans and the question of if they would violate a potential copyright, the court will focus first on the question if there can be a copyright at all for this musical instrument. This question has also been the focus of the latest brief (attached) that our legal team has prepared.
2. Dutch Copyright Proceedings Update
It has been over a year since Ayasa Instruments had 70 instruments and 400 shells legally seized.
From our May 2021 Newsletter:
“On the 28th of April a Police officer (Assistant Prosecutor), a bailiff, and a locksmith arrived at Ayasa Instruments and seized all of their handpans, as well as the shells that were in the process of being made into instruments, on behalf of PANArt. Their wish is to have all handpans and shells destroyed by a third party at the expense of Ayasa Instruments, amongst other heavy demands stated below. PANArt initiated what is called a prejudgment seizure. A judge of the Court of Central-Netherlands reviewed PANArt’s claim of copyright infringement and has granted PANArt the permission to seize handpan instruments along with any shells in process until further review. In the Netherlands, a party can demand a seizure without the accused party’s knowledge so that the accused party does not have the time to move/sell their goods before the seizure. The threshold for a judge to allow such a prejudgment seizure is relatively low. The law states that the judge looks “briefly” at the claim, and upon seeing a potential infringement, the seizure will be granted.”
This has now been reviewed by the courts and it has been determined that there is a jurisdiction issue. Due to the fact that Ayasa Instruments and others filed against PANArt in the courts of Bern in the Fall of 2020, the Dutch courts decided that things first need to be settled in Switzerland before they can determine the outcome in the Netherlands. In a way this can be considered good news because for the time being, no more financial and time resources need to be spent on this action in the Netherlands. But it also means that everything that was seized from Ayasa Instruments will stay seized until there is a decision in the courts of Berne.
3. Patent proceedings – A historic dispute now put to rest
In 2009, PANArt filed an international patent application which ultimately resulted in the grant of essentially identical patents in the U.S. and the EU. Specifically, each granted patent covered processes used in the manufacture of handpans utilizing gas nitriding. Unfortunately, after the patents were granted, PANArt quickly began accusing certain handpan makers of infringement and thus a long-standing dispute began.
It was contested by the accused makers that as PANArt’s own research paper, published nearly a decade earlier, had already placed the patented subject matter into the public domain, PANArt’s processes for gas nitriding steel handpan shells were rendered free for anyone to use, ultimately preventing any future patent enforcement efforts.
Relying on PANArt’s own prior publication, Pantheon Steel, the first company to be targeted by PANArt, challenged PANArt’s newly-granted U.S. patent with a patent reexamination in 2014. As a result of the reexamination, all but two of PANArt’s original U.S. patent claims were canceled and the surviving claims were substantially narrowed to be limited to particular ranges of needle-shaped iron nitride densities. Evidently seeing no value in maintaining the U.S. patent with such narrow claims, and faced with evidence that the narrower claims were also invalid regardless, PANArt abandoned the U.S. patent in October of 2021.
At the same time, a newly-formed worldwide collective of makers, called Handpan Makers United, was established to challenge PANArt’s nitriding process patent in the European Patent Office (“EPO”). Although PANArt tried to save some patent scope by amending its claims during the EPO patent opposition, Handpan Makers United appealed to prevent PANArt’s patent from surviving in any form.
Word was received recently that the extensive and painstaking efforts in the EU have been rewarded. Specifically, the appeal board at the EPO issued an opinion agreeing that PANArt’s claims are invalid, and PANArt’s EU patent, like its U.S. patent, is also now extinguished. This process took eight years to complete, but thankfully the legal position on the use of nitrided steel shells has finally been made clear and the matter is now resolved.
4. Urgent call to be able to proceed + Upcoming Instrument Lotteries and Call for Donations
As you can see from the attached brief and all the other legal developments mentioned here, considerable amounts of financial resources were spent in the last 12 months for lawyers and the courts. Through generous donations from inside and outside the handpan community we were able to give the handpan the best defense possible. To be able to financially stay “in the game”, however, we are unfortunately reliant on more donations.. There are two ways to donate to the cause:
donate any amount directly to the Gofundme campaign or into the bank account of the HCU foundation (see below)
purchase an instrument from one of our regular lotteries (all proceeds will go to the HCU foundation)
You can find the HCU Gofundme campaign here.
It is also possible to make a direct donation to the bank account of HCU. Donations can be made to Stichting Handpan Community United – IBAN: NL62BUNQ2049174195. For anyone who would like to make a direct donation from an account that uses a different currency than euro, we would advise to use Transferwise to save transfer fees and additional exchange rate costs: https://transferwise.com/. If any further details are required, please contact firstname.lastname@example.org.
What happens next:
Now that HCU have submitted the legal brief, time is given to PANArt to to submit their rejoinder. We expect that the court will grant PANArt a deadline of around 3 – 4 months for that, so we should probably expect their next filing after the summer break. We then expect that the court will probably summon for the main hearing on the case either late this year, or possibly early next year.