COPYRIGHT
SAS Institute Inc v World Programming
Ltd, Case C-406/10, 29 November 2011
Advocate General Bot has issued his opinion regarding the scope of
protection conferred by copyright on computer programs in Case
C-406/10 SAS Institute Inc v World Programming Ltd, a
referral from the High Court. The key question was whether it is an
infringement of the copyright in a computer program to create
another computer program that replicates its functionality, but
without accessing the source code.
This is a very important software copyright case and is relevant to
authors of computer programs, and any licensors or users of
computer programs in Europe. The AG has made it clear that copying
the functionality or the language of a computer program, does not
constitute copyright infringement. If the opinion is followed, the
ability of owners of computer software to prevent the functionality
of their programs being replicated will be limited. Other means of
protecting their software rights will have to be considered. As the
AG is also in favour of interoperability, computer program
developers may need to amend their terms of use to give themselves
maximum protection.
For our Law-Now of the decision, click
here
Scarlet Extended SA v Société belge des
auteurs, compositeurs et éditeurs SCRL, Case C-70/10,
24 November 2011.
In the long awaited judgment in the case of Scarlet Extended SA
v SABAM, the Court of Justice of the European Union delivered
a landmark decision preventing an onerous obligation being imposed
by injunction on an Internet Service Provider (ISP) requiring it to
prevent copyright infringements online. It ruled that the proposed
injunction, which would require an ISP to install an expensive
system for filtering, applied indiscriminately to all users as a
preventative measure, and capable of identifying files which
infringe copyright, was illegal and contrary to applicable
fundamental rights, notably proportionality.
The case is a useful exposition of the relevant Directives and
fundamental freedoms that must be balanced by the Courts in cases
where rights holders seek injunctions against intermediaries. The
CJEU has made it clear that such a costly and unlimited filtering
requirement imposed on an ISP would be contrary to the E-Commerce
Directive and the Copyright Directive and would not respect the
rights of ISPs or consumers.
The decision appears to close the door on generalised attempts to
require ISPs to filter all communications on their networks to
identify copyright infringing material and prevent its
transmission. It also implies that any injunctions against
intermediaries or other analogous obligations imposed on them,
(such as 'technical measures' proposed to be imposed on
ISPs under the Digital Economy Act), would need to be shown to be
materially better targeted, less onerous and less costly than the
filtering obligation proposed here.
For the full text of the decision, click here.
Forensic Telecommunications Services Ltd v West
Yorkshire Police & Another [2011] EWHC 2892 (Ch), 9
November 2011
In a decision earlier this month, the High Court held that a table
of data produced by Forensic Telecommunications Services Ltd
concerning "permanent memory absolute" addresses (known
as "PM Abs" addresses) for mobile phones was protected by
database right, which had been infringed by West Yorkshire Police.
Further, the table was confidential and had been misused. However,
copyright did not subsist in the individual addresses or in the
table, as there was insufficient skill and labour expended and the
selection or arrangement of the contents of the table did not
constitute the author's own intellectual creation.
This is an interesting case, particularly concerning database
right. It will be a relief to database right owners to see that
Arnold J applied protection to the significant investment in data
which was not held electronically or arranged in a complex way, but
appeared in simple tabular form. Arnold J noted that while no
defence had been argued based on WYP's status as a law
enforcement agency, it was regrettable that the case had progressed
so far as to have expended considerable public funds.
For our Law-Now of the decision, click
here.
Circul Globus Bucureşti v Uniunea
Compozitorilor şi Muzicologilor din România
– Asociaţia pentru Drepturi de Autor (UCMR
– ADA), Case C-283/10, 24 November 2011
The CJEU has ruled on the scope of the right to communicate a
copyright work to the public under Article 3(1) of the Copyright
Directive (2001/29/EC). The CJEU held that Article 3(1) of
the Directive had to be interpreted as referring only to a
communication to the public which is not present at the place where
the communication originates, to the exclusion of any communication
of a work which is carried out directly in a place open to the
public using any means of public performance or direct presentation
of the work.
This decision is unsurprising, however, while the
point was arguably fairly clear from the terms of recital 23 and
Article 3(1) of the Copyright Directive, in any event, the
CJEU's discussion and clarification of the concept of
"communication to the public" in this case and the recent
Premier League case may be useful.
It should be noted that, whilst not covered by Article 3(1) of the
Copyright Directive, communication of a work which is carried out
directly in a place open to the public using any means of public
performance or direct presentation of the work would, however, be
covered by the right to perform, show or play the work in
public.
For the full text of the decision, click here.
TRADE MARKS
Chartered Institute of Patent Attorneys
v Registrar of Trade Marks, Case C-307/10, 29 November
2011
The Advocate General of the CJEU has indicated that the long
established practice at OHIM to accept CTM applications on the
basis of class headings is potentially illegitimate, which could
significantly impact a large number of existing CTMs in all
aspects, from enforcement and oppositions to invalidity and
revocation proceedings.
The Opinion was given in case C-307/10, concerning the use of class
headings from the Nice Classification to identify goods or services
in a trade mark application or registration. In a test case, CIPA
had applied and failed to register "IP Translator" as a
UK trade mark for class 41 on the basis that this mark is
descriptive, since class 41 includes translation services. On
appeal, the Appointed Person stayed proceedings and referred
questions to the CJEU to ask them to determine with what degree of
precision goods or services need to be identified in a trade mark
application, and in particular, whether the identification of goods
or services by means of class headings is sufficiently precise to
identify the goods/ services.
The Advocate General opined that the goods or services must be
identified with sufficient clarity and precision so as to enable
the competent authority and economic operators to determine
accurately the scope of the protection conferred by the trade mark.
A reference to class headings may but will not always be sufficient
identification provided that these requirements for precision and
clarity are met. In practice, however, it seems likely that
class-headings will rarely be considered precise enough as a result
of the broad range of services that are usually included under a
specific class.
If the CJEU follows the approach of the Advocate General this could
have a significant impact on both future applications for trade
marks and existing registered trade marks. In particular, the
"class-heading-covers-all" approach of OHIM may well be
revised. This is likely to affect a substantial number of existing
registrations for CTMs that have been granted with reference to a
class heading in their specifications (there is some suggestion
that this may affect around 20% of CTMs). There may well be
implications for enforcement (both litigation and opposition) and
invalidity and revocation proceedings involving trade marks with
such class-heading specifications, since the scope of the
protection afforded by such trade marks may be called into
question. However, it will be a matter for national courts (those
designated as CTM courts) and OHIM to apply the guidance given by
the CJEU when the full decision is handed down.
For our Law-Now of the decision, click here.
PROCEDURAL UPDATE
Government to introduce small-claims
service for IP claims
In response to the recommendations of the Hargreaves review of
Intellectual Property and Growth, the Government has announced that
it will be introducing a new small claims service for IP cases in
the Patents County Court.
The review indicated that small firms are currently put off
enforcing their IP rights due to high costs – 17% of
small and medium-sized companies had given up attempting to enforce
their IP rights due to high court costs.
The new small claims track will be created for low-value IP claims.
It will limit fixed costs and allow damages of up to £5000
per case. The IPO has estimated that around 150 firms will benefit
from the service every year – boosting UK business by
£350,000.
This is good news for small businesses as it gives them confidence
to protect their IP rights. Lengthy court battles can be diminished
and they can concentrate on growing their business, thus boosting
the UK economy.
COUNTERFEIT GOODS
Koninklijke Philips Electronics NV v
Lucheng Meijing Industrial Company Ltd and others, Nokia
Corporation v Her Majesty's Commissioners of Revenue and
Customs - Joined cases C-446/09 and 495/09, 1 December
2011
The CJEU has issued a preliminary ruling in respect of two queries
referred in joined cases by the English Court of Appeal and the
Belgian Court of First Instance in relation to criteria for the
legitimate detention of goods and the determination of whether
these goods are counterfeit.
In relation to the question referred by the English court, the CJEU ruled that in order for the detention of goods to be legitimate, customs authorities must have evidence that intention (on the part of the manufacturer, importer or distributor) is for these goods to be placed on the market in the EU.
In response to the Belgian court's question, the CJEU held that the "production fiction" (a legal presumption that goods held under a suspensive procedure were manufactured in the country where they are being held) cannot be applied in order to determine whether goods are counterfeit or pirated under the law of the country in which they are held. Going further, it stated that a remedy for infringement will only be available where the rights-owner is able to prove: (i) that the goods would infringe an IP right applicable within the EU if they were placed on the EU market; and (ii) that the release of the goods in the EU was foreseen.
Although disappointing for rights-owners, the
ruling is noteworthy in that it provides detailed guidance as to
what must be proved in order to obtain detention and remedies, and
the kinds of evidence that will be appropriate.
For the full text of the decision, click here.
PATENTS
Schutz (UK) Ltd v Werit UK Ltd and
another [2011] EWCA Civ 1337, 22 November 2011
The Court of Appeal has held that the fact that a replacement
exclusive licence had not been registered did not deprive the
exclusive licensee of its substantial (£2 million) costs. The
purpose of registration was to notify the public of who had claims
to rights over the patent, and this had been fulfilled by the
registration of the original licence. To deprive the licensee of
his costs because of a failure to register something which had no
effect on the notice to the public would be unfair and would
therefore infringe Article 14 of the Enforcement Directive.
Schütz had obtained a replacement exclusive licence to get
round the effects of section 44(3), then failed to register that
replacement. However, they have managed to evade the effects of
this failure due to the broad provisions of Article 14 of the
Enforcement Directive.
The Court of Appeal was clear that the purpose of the registration provision is merely to provide notice to the public of who is claiming rights over the patent, and the public is not entitled to any further details of the agreement involved. Provided this notice is correct, even though the agreement on which the original registration was based has been replaced by an unregistered agreement, it would meet the criteria and therefore to deprive the licensee of costs for non-registration of the replacement agreement would fall foul of Article 14.
For the full text of the decision, click here.
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 23/12/2011.