Category: Intellectual Property

Multi-Speed Europe: Enhanced Cooperation or Increased Litigation?

Background

The idea of a ‘multi-speed Europe’ finds its concrete expression in a range of European Union (EU) policy fields from the single currency to EU criminal law. As the product of specific treaty authorizations, these examples of ‘enhanced cooperation’ have become a familiar means by which European integration has deepened while allowing individual states to avoid being bound by measures adopted in a new field of cooperation. With the Amsterdam Treaty, a new capacity was created to deploy enhanced cooperation on a more ad hoc policy issue basis, particularly where legislative negotiations had failed to resolve disagreements between Member States.

Yet the new capacity remained unused until after the entry into force of the Lisbon Treaty, which amended the provisions on enhanced cooperation (now Article 20 TEU and Articles 326-334 TFEU). The new provisions were deployed for the first time to permit a group of states to adopt a regulation on the law applicable to divorce and legal separation. However, it was the second authorization of enhanced cooperation in the area of the EU unitary patent which was more controversial and which gave rise to legal actions by Spain and Italy seeking an annulment of the authorizing decision. Both states had objected to the proposal to restrict the languages used for submission of patent applications to English, French and German. In the absence of the unanimity required for the establishment of the language regime (Article 118 TFEU), legislative negotiations had reached a stalemate and so the decision was taken by the Member States – with the exception of Spain and Italy – to authorize enhanced cooperation. The two countries then brought legal proceedings seeking the annulment of the authorizing decision.

This post considers the implications of this litigation for the use of enhanced cooperation with a particular eye towards the legal action which has been launched by the United Kingdom challenging the use of enhanced cooperation for the adoption of the controversial Financial Transactions Tax (FTT). Continue reading →

Commission withdraws request for an Opinion on ACTA

The European Commission has decided to withdraw its request for an Opinion of the CJEU on the compatibility of ACTA with EU law, and more specifically the EU Charter of fundamental rights (the decision was allegedly taken on Wednesday’s meeting of the Commission, although we are still waiting for an official press release). As I reported earlier, the admissibility of the request was doubtful in any case. Nonetheless, this is a nice Christmas present from the Commission to the CJEU, which will not have to deal with this political hot potato anymore. Too bad for the academic world I guess; I was quite curious what the CJEU would make of the request.

Solvay / Honeywell: cross border provisional relief under Brussels I

In its Solvay/Honeywell judgment (C-616/10) of 12 July, the CJEU decided on several important issues regarding the Brussels I Regulation. Those active in international commercial litigation, particularly patent infringement proceedings, will be interested in this case. The questions in Solvay concern the application of several ‘Brussels I’ rules of jurisdiction to cross-border patent infringement proceedings. The CJEU gets the chance to clarify some questions-left-open related to the 2006 cases GAT v. LuK (C-4/03 ) and Roche v. Primus (C-539/03). Unfortunately, the ruling in Solvay itself also leaves several questions unanswered. I wonder especially whether it was necessary for the CJEU to ‘reformulate’ the questions put before it. I’m afraid it looks like the ‘reformulation’ has obscured the view of what is really going on here.

Continue reading →

What happens to the request for the Court’s Opinion now that ACTA has been rejected by the European Parliament?

Well, that came as no surprise. Today, the European Parliament officially rejected ACTA. In a vote today 478 MEPs voted against ACTA, 39 in favour, and 165 abstained. As we mentioned earlier on the blog, the Commission already requested the Opinion of the Court on the compatibility of ACTA with the Treaties and the Charter in accordance with article 218 (11) TFEU.

Now that the European Parliament has rejected ACTA, what happens to this request? The Commission could retract its request, saving the Court from a lot of headaches and drawing it into this political mud-fight. That would be kind of the Commission of course. However, since the Commission has been so determined in arguing the benefits of ACTA, as well as defusing concerns over fundamental rights issues, the Commission might be tempted to hear the Court’s Opinion anyway. The advantage for the Commission would be that it obtains legal certainty on whether ACTA is compatible with the Treaties and the Charter, possibly opening the door to ratification or renegotiation. And if the Court were to rule that ACTA is compatible, the Commission would have proven its case and save some face.

The question is: does the Court still need to give an Opinion now that the European Parliament has rejected ACTA?

Continue reading →

C-406/10 SAS Institute v. World Programming Ltd (WPL)

The ECJ issued an important ruling last week regarding how far copyright protection for software should extend.

The case involves two software development companies: SAS and WPL. SAS Institute developed a set of computer programs used for data analysis (the ‘SAS System’) that allows users to write and run their own Scripts in an SAS-specific programming language (para. 24).

WPL developed a competing program called the World Programming System that sought to emulate the SAS System as close as possible. In the process, it obtained a license to the “Learning Edition” of the SAS program and manuals, which it studied, but did not access or copy the SAS source code. The World Programming System is written in the SAS Language, and is designed to allow the use of Scripts originally written for the SAS System (para. 25)…

Continue reading →

Jurisdiction in cases of Google AdWord Trademark infringement

Another episode in the line of cases before the Court concerning Google AdWords. The Intellectual Property battle over the use of trademarks as keywords for the purpose of triggering advertisements on Google’s search result pages can be seen in the cases (most notably) C-236-238/08 Google/Louis Vuitton, C-558/08 Portakabin, C-324/09 L’Oréal/eBay and C-323/09 Interflora. The recently handed down judgment in the case Wintersteiger (C-523/10) however, concerns the interpretation of the notion ‘place where the harmful event occurred or may occur’ in Article 5(3) Brussels I Regulation in cases of alleged Trademark infringement through registration of a Google AdWord.

An Austrian company, Wintersteiger, initiated proceedings in Austria for infringement of its Austrian Trademark ‘Wintersteiger’ by a German company, Products 4U. Products 4U had reserved the Trademark  ‘Wintersteiger’ as Google Adword for Google’s German top-level domain (www.google.de). Wintersteiger argued that the Austrian judge could assume jurisdiction under Article 5(3) since the website google.de is also accessible in Austria. On appeal, the Austrian Oberster Gerichtshof (OGH) asked the Court which criteria are to be used to determine jurisdiction under Article 5(3) to hear an action relating to an alleged infringement of a trademark through the use of a Google AdWord on the website operating under a top-level domain different from that of the Member State where the trademark is registered…

Continue reading →

Opinion of Advocate General Jääskinen in Case C-5/11 Donner

The case I wish to highlight in this post is the Opinion of Advocate General Jääskinen in Case C-5/11 Donner, concerning a rather crafty and ingenious attempt by Mr. Donner to circumvent the application of certain German copyright laws. Mr. Donner sold various types of ‘Bauhaus’ furniture which was protected by German copyright, but not protected by Italian copyright. Although Mr Donner targeted German customers through advertisements in Germany and a website in German, he sold these products not in Germany but from a warehouse in Italy through cooperation with an Italian company called Dimensione. Those products could nonetheless be delivered optionally to German customers by the Italian company Imspem (owned by Mr. Donner).

One of the questions the Advocate General answers in this case is whether the conduct of Mr. Donner leads to ‘distribution to the public’, that is the German public, within the meaning of the Copyright Directive. Mr. Donner, of course, considers that these products were distributed to the public in Italy, not in Germany. The Copyright Directive provides in Article 4(1) that ‘Member States shall provide for authors, in respect of the original of their works or of copies thereof, the exclusive right to authorise or prohibit any form of distribution to the public by sale or otherwise’. The Advocate General considers that the products were distributed to the public in Germany:

55.      In the situation of cross border distance selling arrangements, the assessment of whether copies are made available to the public in the Member State where enforcement of copyright is sought must be based on the criteria elaborated by the Court in L’Oréal and Others. (38) If a seller targets consumers in a given Member State and creates or makes available to them a specific delivery arrangement and method of payment that enables consumers to purchase copies of copyright protected works in that Member State, then there is distribution by sale in that Member State. (39) The existence of a German language website, the content of Dimensione’s marketing material, and their sustained cooperation with Inspem, as an undertaking engaged in sales and delivery to Germany, all point toward a targeted exercise. What is important is whether the seller has created a targeted sales and delivery channel for buyers to acquire works that are copyright protected in the buyer’s Member State.

56.      In this respect the way the delivery of the copies is organised is of secondary importance. There is distribution by sale from Member State A to the targeted public in Member State B even if under the distribution scheme the copies of the works are delivered by mail or a distribution service. But the extent of the involvement of the carrier in the selling arrangement affects the question whether the carrier is to be considered as a participant in the distribution scheme or merely an intermediary referred to in Article 8(3) of the Copyright Directive, (40) whose services are used by a third party. Such an intermediary may be made subject to injunctions, but not to sanctions under Article 8(1) of the Copyright Directive and the corresponding provision in Article 11 of the Enforcement Directive.

Cases C-162/10 Phonographic Performance (Ireland) Limited (PPL), and C-135/10 Società Consortile Fonografici (SCF)

Last week, the ECJ released two judgments regarding the issue of copyrights on music broadcasts. According to EU law (specifically, Directive 2006/115), artists have a right to remuneration when recordings of their work are communicated to the public. But what exactly does ‘communication to the public’ entail?

In the PPL case, an Irish court asked the ECJ for a preliminary ruling to clarify whether ‘communication to the public’ includes broadcasts by a hotel to guests in hotel bedrooms, and whether Ireland was therefore in violation of European law when it exempted hotels from paying remuneration for these broadcasts. In the SCF case, an Italian court asked the ECJ to clarify whether ‘communication to the public’ includes background music played by a dentist in a dental practice.

The Court held that determining whether the hotel’s or the dentist’s broadcasts were ‘communication to the public’ would require an individual, case-specific analysis focused on three overlapping factors:

  • the role of the user, which engages in ‘communication’ when it intervenes to give access to a protected work
  • the concept of the public, which refers to an “indeterminate number of potential listeners” and “implies a fairly large number of persons”
  • whether the communication is of a profit-making nature, as judged by whether the user benefits, whether the user targets the public, and whether the public is receptive in some way, rather than merely listening by chance

While both the hotel and the dentist were ‘users’ engaging in communication, the ECJ found that the two situations differed with respect to the second and third criteria. The hotel’s customers were a ‘public’ because they were of ‘indeterminate number’ and were ‘a fairly large number of persons’ (PPL, paras. 41-42). The dentist’s clients, on the other hand, were not a ‘public’ because they formed a consistent, determinate group, and because only a small number would be present in the office listening to the broadcast at the same time (SCF, paras. 95-96). Similarly, the hotel’s broadcast was of a ‘profit-making nature’ because it was “an additional service which has an influence on the hotel’s standing and, therefore, on the price of its rooms” and “is likely to attract additional guests who are interested in that additional service” (PPL, para. 44). The dentist’s broadcast, on the other hand, was not of a ‘profit-making nature’ because the dentist “cannot reasonably either expect a rise in the number of patients because of that broadcast alone or increase the price of the treatment he provides” and because the patients are not ‘receptive’, but rather listen to the music merely by chance (SCF, paras. 97-98).

As a result, the dentist is not making a ‘communication to the public’ and is not required to pay remuneration. The hotel, however, is making such a communication, and is required to pay remuneration. According to the ECJ, therefore, Ireland should not have exempted hotels from this requirement.

Copyright for football league fixture lists?

Here is a nice judgment of the Court for football fans. Have you ever wondered why English  Premier League match fixtures on the internet are made unavailable while other fixtures are? The reason is that the FA and Football Dataco think these fixture lists are protected by copyright. For some of us that does not seem to make any sense: especially on the continent copyright is a property right rewarded because of creativity, not managing an agenda (no matter how difficult and laborous that can be). Football Dataco and the FA thought otherwise, emphasizing the very significant labour and skill that went into creating match fixtures for football matches in England and Scotland.

The FA and Football Dataco  got into a legal battle with Yahoo and other companies over this. The Court of Appeal subsequently referred the case to the Court to ask whether article 3(1) of the Copyright Directive (Directive 96/9/EC) granted copyright to the creators of annual match fixtures. The Court answered that ‘no other criteria than that of the originality is to be applied to determine the eligibility of a database for copyright protection’:

41      Therefore, on the one hand, provided that the selection or arrangement of the data ­– namely, in a case such as the one in the main proceedings, data corresponding to the date, the time and the identity of teams relating to the different fixtures of the league concerned (see paragraph 26 of the present judgment) ­– is an original expression of the creativity of the author of the database, it is irrelevant for the purpose of assessing the eligibility of the database for the copyright protection provided for by Directive 96/9 whether or not that selection or arrangement includes ‘adding important significance’ to that data, as mentioned in section (b) of the referring court’s first question.

42      On the other hand, the fact that the setting up of the database required, irrespective of the creation of the data which it contains, significant labour and skill of its author, as mentioned in section (c) of that same question, cannot as such justify the protection of it by copyright under Directive 96/9, if that labour and that skill do not express any originality in the selection or arrangement of that data.

Consequently:

–        the intellectual effort and skill of creating that data are not relevant in order to assess the eligibility of that database for protection by that right;

–        it is irrelevant, for that purpose, whether or not the selection or arrangement of that data includes the addition of important significance to that data, and

–        the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains.

It is now up to the Court of Appeal to determine whether creating annual match fixtures is an original expression of the creativity of Football Dataco or not.

Commission requests opinion of the Court on ACTA

Today Commissioner Karel de Gucht announced that the Commission will request the opinion (pursuant article 218 (11) TFEU) of the Court on the compatibility of ACTA with the Treaties and the Charter of Fundamental Rights in particular. The Commisioner stated that

We are planning to ask Europe’s highest court to assess whether ACTA is incompatible – in any way – with the EU’s fundamental rights and freedoms, such as freedom of expression and information or data protection and the right to property in case of intellectual property.

(…) But let me be very clear: I share people’s concern for these fundamental freedoms. I welcome that people have voiced their concerns so actively – especially over the freedom of the internet. And I also understand that there is uncertainty on what ACTA will really mean for these key issues at the end of the day.

So I believe that putting ACTA before the European Court of Justice is a needed step. This debate must be based upon facts and not upon the misinformation or rumour that has dominated social media sites and blogs in recent weeks.

As I have explained before the European Parliament on several occasions, ACTA is an agreement that aims to raise global standards of enforcement of intellectual property rights. These very standards are already enshrined in European law. What counts for us is getting other countries to adopt them so that European companies can defend themselves against blatant rip-offs of their products and works when they do business around the world.

More on ACTA can be found here, here and here.