Top 10 recent European/UK
IP developments – in one hour
Members of the Intellectual Property
& IT Group, London
28 June 2012
Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe-Brussels LLP both limited liability partnerships
established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer
Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown
logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.
Today’s speakers
Sarah Byrt
Partner
Oliver Yaros
Senior Associate
Mark Prinsley
Partner
Jonathan Radcliffe
Partner
Kelly Rossiter
Trainee Solicitor
Mahisha Rupan
Associate
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Agenda
1.
Where does digital infringement take place when your servers are offshore?
The Football Dataco case
2.
UK courts grant injunctions against ISPs over Newzbin2 and Pirate Bay websites
3.
Can you get a pan-European injunction for trade mark infringement?
4.
The TV decoder cards case - Murphy v Premier League
5.
The latest news from Europe on software copyright. The SAS case
6.
Brand owners versus eBay in Europe
7.
Developments in copyright – how much can you take without infringing? The
Meltwater and Infopaq cases
8.
Breach of confidence – recent UK guidance on compensation
9.
An update on the single European patent court
10. Copyright reform in the UK – where are we now?
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1. Liability for offshore servers– the CJEU Football
Dataco case
General principles
• The general rule: IP is defined territorially - acts committed
outside national boundaries cannot be infringements.
• The English approach: mere access to material on a foreign
server does not constitute infringement unless that material is
directed at England and English consumers.
The Football Dataco Ltd v. Sportradar GmbH case
• This issue is at the heart of the dispute in this case concerning
the internet transmission of sports data for gambling, and
what was the correct test for internet infringement.
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1. Liability for offshore servers– the CJEU Football
Dataco case
• The theoretical tests:
– Transmission theory: internet provision of data involves both the acts
of hosting the website (in Austria and Holland in this case) and of the
English user in accessing it. There is no transmission unless and until it
is received + there must be both a "transmittor" and a "transmittee".
– Emission theory: the relevant acts occur only in the place from which
the data emanates (i.e. the main server in Austria and/or the back-up
server in Holland).
• English Court in Football Dataco held that the "better view"
was that the emission theory was the correct test.
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1. Liability for offshore servers– the CJEU Football
Dataco case
The CJEU Advocate-General’s Opinion
• In the context of the internet, the usefulness of the
transmission and emission theories, taken analogously
from broadcasting, is “highly questionable”.
• Instead, the key idea is that of the intended target of the
information.
• Conclusion: the “place” of infringement is therefore each
and every country in which the relevant underlying factual
matrix took place.
– the infringing re-utilisation was “making available” the data in
England from the Austrian server, so liability in both countries.
Mayer Brown alert here
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2. UK courts grant injunctions against ISPs over
Newzbin2 and Pirate Bay websites
• Twentieth Century Fox Film Corporation v British
Telecommunications Plc (2011)
• Dramatico Entertainment Ltd v British Sky Broadcasting Ltd
(2012)
• Key points:
– Newzbin2 is a members only site that indexes links to illegally copied
films, TV programmes, music and games on the internet. Pirate Bay
allows users to search for and download copies of music and films from
each other
– Both have been successfully sued in the English High Court for
infringement of copyright
– Section 97A of the CDPA gives UK courts the power to grant an
injunction against an ISP if it has actual knowledge that someone has
used its service to infringe copyright
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3. Can you get a pan-European injunction for trade
mark infringement?
• Community Trade Mark Regulation 207/2009
• DHL Express France SAS v Chronopost SA Case C-235/09, 12 April
2011
• Key points:
– Chronopost sued DHL, for infringement of its French trade mark and CTM for
WEBSHIPPING when DHL used mark for its express mail management service
– Trial court found no infringement of the CTM. Paris Court of Appeal found
infringement of both the French and Community trade marks and injuncted
DHL from using them in France
– Chronopost appealed, arguing that the injunction should cover the entire EU
– CJEU confirmed that an injunction issued by a court in relation to a CTM must
extend to the entire EU and other member states must recognise and enforce
the judgment to give it a cross-border effect to ensure the uniform character
of a CTM throughout the EU
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4. The TV decoder cards case
• FA Premier League v Karen Murphy and others
Mayer Brown alert here
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4. The TV decoder cards case
• Were the pubs infringing the Premier League's copyright
by showing the football matches?
• CJEU said "yes", by "communicating to the public" – a
new public in a different EU country
• BUT English Court of Appeal said "no" in relation to films
of matches because of exception of showing film to an
audience who had not paid for admission
• And (CJEU and Court of Appeal): absolute ban on selling
decoder cards outside Greece was anti-competitive and
so void
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5. Update on the scope of copyright protection for
computer programs - SAS Institute Inc v World
Programming Ltd
• Program functionality, program language and format of
data files are not protected by copyright
• A licensee is entitled to observe, study or test the
functioning of software in order to determine the ideas
and principles behind it, provided that the copyright
owner’s exclusive rights are not infringed
• Reproduction of particular elements described in a user
manual may constitute copyright infringement if the
material reproduced constitutes an expression of the
author’s creation
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5. Software systems – what is protected by copyright?
Yes
No
Code (i.e. literal copying infringes
copyright)
Logic, algorithms and programming
languages, where these are just ideas
and principles
Design, aka “structure, sequence and
organisation” – how the functionality is
expressed in the code
General business logic / functionality –
but confidentiality may help here
GUI screen displays, icons, graphics,
manuals, specifications
Ideas underlying programme elements
and interfaces
Data stored on system – may be
protected by copyright or database right
Ad hoc languages such as user command
interfaces
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6. Brand owners vs. eBay in Europe
• L'Oréal SA and others v eBay International AG and others,
12 July 2011 (CJEU)
• Key points
– “In the course of trade”’;
– Use of L'Oréal’s trade marks as keywords on eBay;
– Use of L'Oréal’s trade marks on eBay website;
– Scope of the “hosting defence” under Article 14 E-commerce
Directive;
– Trade mark exhaustion; and
– Injunctions against online marketplaces.
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7. Developments in copyright – how much can you take
without infringing?
Infopaq v. Dankse Dagblades (CJEU)
• Originality
"Copyright … is liable to apply only in relation to a subject-matter which is original in
the sense that it is its author’s own intellectual creation.
… the various parts of a work [should be treated in the same way as the work as a
whole and] thus enjoy protection under Article 2(a) … , provided that they contain
elements which are the expression of the intellectual creation of the author of the
work. …”
•How much is too much?
“The reproduction of an extract of a protected work … is such as [to infringe
copyright] if that extract contains an element of the work which … expresses the
author's own intellectual creation".
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7. Developments in copyright – how much can you
take without infringing?
Newspaper Licensing Agency v. Meltwater
• English High Court applies Infopaq re how much is too much:
"There is no reference to "substantial part" in [the Copyright
Directive]; the ECJ makes it clear that originality rather than
substantiality is the test to be applied to the part extracted.
… This is now the only real test.”
• English Court of Appeal then looks at originality and says: the
ECJ has not changed the traditional test i.e. you still do not
require novelty or merit for copyright to exist.
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8. Breach of confidence – recent UK guidance on
compensation
Where the Claimant...
It can recover for...
Exploits the information by
making and selling products
for a profit
Its loss of profit
Exploits the information by
granting licences
Its lost licensing revenue
Would have “sold” rather than The lost market value
licensed the information
Has not suffered any of the
above financial losses
“Negotiating damages” i.e. the
price it could reasonably have
demanded for agreeing to
release its rights
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Vercoe v Rutland Fund
Management (2010)
Key points:
Account of defendant’s
profits unlikely unless the
breach of confidence
involves:
•Fiduciary relationship; or
•Something like a secret
process
17
Force India Formula One
Team v 1 Malaysia
Racing Team (2012)
Key points:
Be realistic about what has
been misused
Be realistic about its value
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9. The single European patent court
Problem
Drawbacks of the current nationally-based patent litigation regime
– jurisdictional challenge of multiple litigations
– the risk of conflicting decisions on identical cases
– high legal costs overall, and uneven quality of experience
Solution
Have a single unified patent court with pan-European jurisdiction to
make litigation cheaper and more predictable
– very ambitious in scope; it will regulate both European and
the future Community patents
– significant political capital has been expended on this
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9. The single European patent court
Overview
• Regional Divisions for the Courts of First Instance (circuit style)
with a single Court of Appeal, all with specialist judges
– jurisdiction based on seat of the defendant
– default Central Division for non-EU parties
– official languages: English, French and German
• The principal attraction is a pan-European injunction from a single
court
• But the whole project is caught up in European politics
– languages and rules are a vexed issue; doubts over the
legality of the proposal from both the EU and the EPO
perspectives
– where next?
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10. Copyright reform in the UK – where are we now?
• Hargreaves Review May
2011 → IPO Consultation
• Digital Copyright Exchange
Phase 2 “Seeking Solutions”
due to report July 2012
Prof Ian Hargreaves
Richard Hooper
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10. Copyright reform in the UK – where are we now? –
the UKIPO's Copyright Consultation
• Parody, caricature and pastiche
"Copying should be lawful where it is
for private purposes, or does not
damage the underlying aims of
copyright".
• Use of works for education
• Copyright exceptions for people
with disabilities
• Orphan works
• Use of works for quotation and
reporting current events
• Collecting societies
• Private copying
• Use of works for public
administration and reporting
• Preservation by libraries and
archives
• Other exceptions
• Research and private study
• Protecting copyright exceptions
from override by contract
• Text and data mining for research
• Copyright “notices”
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For more information, please contact:
Sarah Byrt
Partner, London
+44 (0)20 3130 3832
sbyrt@mayerbrown.com
Mark Prinsley
Partner, London
+44 (0)20 3130 3900
mprinsley@mayerbrown.com
Jonathan Radcliffe
Partner, London
+44 (0)20 3130 3230
jradcliffe@mayerbrown.com
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Thank you.
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Top 10 recent European/UK
IP developments – in one hour
Members of the Intellectual Property
& IT Group, London
28 June 2012
Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe-Brussels LLP both limited liability partnerships
established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer
Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown
logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.