This month we report on a case that looks at genuine use of marks in conjunction with other signs, Villa Alme Azienda vitivinicola di Vizzotto Giuseppe v OHIM; Marques de Murrieta SA. We look at a case that concerned the territorial effect of an order of an injunction in DHL Express (France) SAS  v Chronopost SA and we report on Paul Gregory Allen (acting as Trustee of Adrian Jacobs (Deceased)) v Bloomsbury Publishing PLC & Anr in which Bloomsbury did not succeed in its application for summary judgment on Mr Allen’s claim that the fourth Harry Potter book infringed the copyright in Mr Jacobs’ 16 page “Willy the Wizard” novella (“WTW”).

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 Decisions of the GC (formerly CFI) and CJ (formerly ECJ)


Case   GC
T-201/08
Market Watch Franchise & Consulting, Inc. v OHIM;  Ares Trading SA
(28.09.10)
Application (and where applicable, earlier mark)  

SEROSLIM
- soaps, hair lotions and dentifrices (3)
- pharmaceutical, veterinary and sanitary preparations, dietetic substances, preparations of trace elements, food supplements and vitamins (5)
SEROSTIM
 - pharmaceutical, veterinary and sanitary preparations, dietetic substances, baby food, plasters, dressings, dental products, disinfectants (5)

Comment

 The GC dismissed the appeal from the BoA’s finding that there was a likelihood of confusion under Art 8(1)(b).

Visually, the marks were highly similar. Phonetically, the GC found that the differences between ‘slim’ and ‘stim’ were minimal. The only difference in the signs (the ‘t’ and ‘l’ in the final syllable) was weakened phonetically by the preceding ‘s’ and the dominance of the final ‘im’. Conceptually, the BoA was correct to conclude that the signs did not have any precise conceptual meaning which could help consumers distinguish between them.

The GC concurred with the BoA’s finding that the goods applied for in Class 5 were identical to the goods of the earlier mark, whereas the goods applied for in Class 3 had only a very low degree of similarity.
There was a likelihood of confusion between the respective marks. This was true even for the goods applied for in Class 3 as the low degree of similarity between the goods was offset by the high degree of similarity between the marks.

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Case  

GC
T-388/09
Rosenruist – Gestão e serviços, Lda v OHIM
(28.09.10)

Application (and where applicable, earlier mark)  


- Two Curves Crossed in One Point Design inserted in a Pocket, the mark consists of a decorative stitching made of Two Curves Crossed in One Point Design Inserted in a Pocket, one of the curves is characterised by an arched form, drawn with a fine stroke, while the second one is characterised by a sinusoidal form, drawn with a thick stroke, the unevenly broken lines represent the perimeter of the pocket to which applicant makes no claim and which serves only to indicate the position of the mark on the pocket
- bags, pouches, trunks, umbrellas (18)
- clothing, footwear (25)

Comment

The GC dismissed the appeal, concluding that the BoA was correct to hold that the mark in question was devoid of distinctive character under Art 7(1)(b).

The GC agreed with the BoA that a stitched pocket was a commonplace feature of fashion goods and consumers would perceive these as decorative elements and not as indicators of origin.

Furthermore, the mark applied for did not have any characteristic, memorable or eye catching features likely to confer a minimum degree of distinctive character, nor did it depart significantly from the standard presentations of pockets.

The fact that OHIM had registered other simple signs on pockets was not relevant for the purposes of assessing whether or not the mark applied for was devoid of distinctive character.

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Case  

 GC
T-200/08
Interflon, BV v OHIM; Illinois Tool Works, Inc
(29.09.10)

Application (and where applicable, earlier mark)  

FOODLUBE
- chemicals used in industry, chemical substances for preserving foodstuffs (1)
- industrial oils and greases, lubricants (4)

Comment

The GC partially annulled the decision of the BoA in so far as it considered that the mark applied for was not descriptive of “chemicals used in industry” and “industrial oils, greases, lubricants” under Arts 52(1)(a) and 7(1)(c).

The GC considered that the term “foodlube” could be perceived as meaning “lubricant for foodstuffs” or “food-grade lubricant”. Accordingly there was a sufficient direct and specific relationship between the mark and all the goods in Class 4 and “chemicals used in industry” in Class 1.

However, there was no sufficiently direct and specific relationship between the mark and “chemical substances for preserving foodstuffs” for the mark to be considered descriptive of these goods. The mark was also not invalid for being devoid of distinctive character under Art 7(1)(b) for these goods.

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Case   GC
T-92/09
Strategi Group Ltd v OHIM;  Reed Business Information
(05.10.10)
Application (and where applicable, earlier mark)  

STRATEGI
- personnel recruitment services, advisory and consultancy services (35)

STRATÉGIES
- assistance to undertakings in the running of their business (35)
- business consultancy, information or enquiries, organisation of exhibitions and other events (41)
(earlier French national mark)

Comment The GC dismissed the appeal from the BoA’s conclusion that the Opposition Division’s decision should be annulled because of errors of law and procedural irregularities, in particular, its finding of no genuine use of the earlier mark under Art 42(2).

The BoA was correct to consider that, in principle, use of a trade mark could be proven by the affixing of a trade mark on a magazine if the contents of the magazine confirmed use of the mark for the goods and services covered. It was for the Opposition Division to examine whether the services on which the opposition was based were in fact provided through the medium of a magazine.

Silberquelle (Case C-495/07, reported in the CIPA Journal, February 2009) was not relevant because the magazine, which provided support for use of the mark for the supply of services, was not distributed free of charge.

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Case  

GC
T-244/09
Accenture Global Services GmbH v OHIM; Silver Creek Properties SA
(07.10.10)

Application (and where applicable, earlier mark)  

 


- IT apparatus (9)
- business services (35)
- financial services (36)
- telecommunications (38)
- educational services (41)
- computer hardware and software (42)

ACCENTURE


- various goods (9, 16, 35 to 37, 41, 42)
(CTMs and German national marks)

Comment

The GC dismissed the appeal from the BoA’s decision to reject the opposition under Art 8(1)(b).


There was no visual similarity between the respective marks, despite the combinations of letters ‘ac’ and ‘en’ being common to both, as the differences (namely their length, endings, the absence of the ‘cc’ in the mark applied for and the figurative elements) visually neutralised any similarities.


The marks also differed phonetically due to the differences in the pronunciation of the final syllables which prevailed over their phonetic similarities.


There was no concept which could strengthen or weaken the overall visual and phonetic impression.

As the marks were neither identical nor similar, the alleged similarity between the respective goods and services was irrelevant.


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Case  

GC
T-365/09
Michalakopoulou Ktimatiki Touristiki AE v OHIM;  Free SAS
(27.10.10)

Application (and where applicable, earlier mark)  

FREE
- publications, magazines, posters, newspapers, books, photographs (16)



- advertising, electronic mail services and electronic distribution of information particularly for internet-type worldwide communication networks (35, 38)
(earlier French national mark)

Comment

The GC dismissed the appeal from the BoA’s decision to uphold the opposition under Art 8(1)(b).

The BoA was correct to conclude that there was some similarity between the respective goods and services. The printed publications covered by the mark applied for had the same purpose as the online information distribution service covered by the earlier mark. The differences in their nature and distribution did not override the similarity.

The GC concurred with the BoA’s finding that the marks were visually and phonetically similar since the average consumer would principally remember the word ‘free’ in the earlier mark.
The BoA was also correct to find the marks conceptually the same by taking account of the relevant public who understood the meaning of the word ‘free’.


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Decisions not yet in English


Case  

 GC
T-47/09
Deutsche Behindertenhilfe; Aktion Mensch v OHIM
(07.10.10)

Application (and where applicable, earlier mark)  

DIEGESELLSCHAFTER.DE
- advertising, company management, advice to consumers, public relations (35)
- training, organization of events, consultancy related to education (41)

Comment

 The GC upheld the BoA’s decision that the mark was devoid of any distinctive character in relation to the services applied for under Art 7(1)(b).
(Note that diegesellschafter means “the shareholders” in English.)



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Case  

GC
Joined Cases
T-230/08
T-231/08
Paul Asenbaum v OHIM
(12.10.10)

Application (and where applicable, earlier mark)  

WIENER WERKSTÄTTE
- boxes of common metal (6)
- lamps (11)
- boxes of precious metal (14)
- inkwells (16)
- frames (20)
- candlesticks (21)
- ashtrays (34)

Comment

The GC upheld the BoA’s decision that the mark was descriptive in relation to the goods applied for under Art 7(1)(c).

It was apparent that at least some of the relevant public was familiar with the mark WIENER WERKSTÄTTE (meaning “Vienna Workshop”; a Vienna based artist group from 1903) and the particular style associated therewith. Therefore, a sufficiently direct and specific relationship existed between the mark applied for and the relevant goods.


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Genuine use in conjunction with other signs


Villa Almè Azienda vitivinicola di Vizzotto Giuseppe v OHIM; Marqués de Murrieta SA (GC; T-546/08; 21.09.10) (decision not yet in English)


The GC upheld the BoA’s decision that there was a likelihood of confusion under Article 8(1)(b) between the earlier national Spanish registration ‘YGAY’ (registered in Class 33 in respect of “alcoholic beverages (other than beers)”) and the figurative sign ‘i GAI’ (applied for in Class 33 in respect of “wine”), represented below:


In so doing, the GC rejected the submission that there had not been genuine use of the earlier mark. Villa Almè had submitted that the proof of genuine use supplied in relation to the earlier mark was insufficient because the earlier mark was used in conjunction with other signs whose level of distinctive character was greater. The GC approved the BoA’s finding that there was no rule according to which use could only be genuine if the mark was used separately and independently from all other marks. In any event, on the facts, the earlier mark had in fact also been used on its own. However, even where used together with a ‘house mark’ denoting the producer of the wine, the earlier mark retained a function of identifying a particular type of wine among the range of wines sold by that producer. Proof of genuine use of the earlier mark was therefore sufficient.


The GC went on to endorse the BoA’s view that the signs were visually similar and phonetically practically identical, and that no meaningful conceptual comparison could be made. Taking into account the identity of the goods concerned, the BoA had been right to find that there was a likelihood of confusion.


 


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Registrability of colour marks and the territory for establishing acquired distinctive character


CNH Global NV v OHIM (GC; T 378/07; 29.09.10)


The GC dismissed CNH’s appeal from the decision of the BoA that the application for a sign representing a tractor in red, black and grey for “tractors” in Class 12 had not acquired distinctive character through use in a substantial part of the Community pursuant to Article 7(3).


 


According to Article 1(2), a CTM must have unitary character implying that it ‘shall have equal effect throughout the Community’. Therefore, in order to be accepted for registration under Article 7(3), the sign must have acquired distinctive character throughout the Community as it existed at the time when the application was filed, with the exception of any parts of the Community in which the mark applied for already had such a character ab initio. As the application was made in July 2004, this territory included those states which acceded to the EU following the enlargement in May 2004.


Although the GC concluded that affidavits from specialised members of the public could be used as evidence to prove an acquired distinctive character through use, CNH only submitted affidavits from the UK and Belgium. CNH could not establish that those professionals were representatives of pan-European organisations whose affidavits related to the whole of the Community. Consequently, the GC held that the affidavits could not be regarded as sufficient evidence to establish that the mark applied for had acquired distinctive character through use outside those Member States.


Furthermore, the GC held that CNH had not provided sufficient evidence of the requisite acquired distinctive character in the 10 new Member States following the accession in May 2004. Specifically, CNH did not submit any evidence capable of substantiating its claims that it had made ‘significant inroads’ in those Member States or that at the time the application was filed the mark had acquired distinctive character through use in those Member States.


The GC also emphasised that it considered sales volumes and advertising material to be secondary evidence which only supported direct evidence of distinctive character acquired through use, such as provided by affidavits. This type of evidence therefore did not show that the public perceived the sign as an indication of commercial origin.


Therefore the GC held that CNH had not provided sufficient evidence that it had acquired a distinctive character through use throughout the Community in accordance with Article 7(3).


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Restituto in integrim – time limits


Evets Corp.  v OHIM (CJ (Fifth Chamber); C-479/09; 30.09.10)


The CJ dismissed the appeal from the GC’s decision not to re-establish two CTMs which had been cancelled for non-payment of renewal fees (T-20/08 and T-21/08, reported in the CIPA Journal, October 2009).


Having not received renewal fees, OHIM notified Evets’ agents that registration of the two CTMs had been cancelled. Evets was notified of the cancellations by its agent a few days later and applied for the marks to be restored under Article 81.


OHIM rejected the application and the BoA refused the appeal on the basis that the application for restoration had not been filed within the two month period (as prescribed under Article 81). Although the application for restoration had been filed within two months of the agent notifying Evets of the cancellations, it fell outside the two month window following OHIM’s notification to Evets’ agents.  The GC dismissed the appeal and Evets appealed to the CJ.


The CJ concurred with the GC and held that the date on which OHIM informed Evets’ representative of the expiry of the registration of the CTMs must be deemed to be the date on which Evets became aware of the loss of its rights. Following the rules of representation in the context of Regulation 40/94 (now Regulation 207/2009), what matters are the communications and notifications exchanged between OHIM and the representative of the proprietor of the relevant trade mark, and not those exchanged between the representative and the proprietor itself.


The CJ noted, inter alia, that if several representatives had been appointed for a single interested party, notification to any one of them would be sufficient. 


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Territorial effect of an order of an injunction


DHL Express (France) SAS  v Chronopost SA (AG Cruz Villalón for the CJ (Grand Chamber); C-235/09; 07.10.10) (decision not yet in English)


AG Cruz Villalón considered a reference from the Cour de Cassation (French Supreme Court) concerning the territorial scope of an order (issued under Article 98 of Regulation 40/94 now Article 102 of Regulation 207/2009) of a competent national court prohibiting a defendant from continuing to infringe a CTM.


Chronopost owned French and Community CTMs for WEBSHIPPING in Classes 35, 38, 39 and 42 relating, in particular, to services for the collection and delivery of mail.  DHL used the same word to designate its internet-based express mail management service. DHL was ordered by the Regional Court Paris (acting as a Community trade mark court) to cease its infringement of Chronopost’s marks. The court also imposed a financial penalty should DHL fail to comply with the prohibition. DHL appealed and Chronopost cross-appealed, submitting that the effect of the order and periodic penalty payment should not be limited to the French territory.  The Cour de Cassation made a reference to the CJ in order to ascertain the territorial extent of the prohibition and of the coercive measures adopted in order to ensure compliance with the prohibition.


AG Cruz Villalón noted that a Community trade mark court has, subject to exceptions, jurisdiction in respect of acts of infringement committed within the territory of any of the Member States (by virtue of Articles 93 and 94 of Regulation 40/94 now Articles 97 and 98 of Regulation 207/2009).   He stated that Articles 93 and 94 are underpinned by the objectives of the Regulation, allowing a trade mark owner to go to one court, instead of a plurality of jurisdictions, to seek relief from infringement of its mark. Therefore, where a Community trade mark court has jurisdiction under Article 93, it will decide whether the mark has been infringed, regardless of where the infringement occurred, and may grant a prohibition and sanctions to ensure compliance.  


He was of the opinion that a prohibition issued by a national court acting as a Community trade mark court has effect as a matter of law throughout the entire area of the EU.  However, where the infringement is limited to a specific geographical or linguistic area, the court’s order is limited to that territory. With regard to coercive measures, the AG considered that these have effect within the territory in which the declaration of infringement was made and the order issued. However, the courts of other Member States in which the order is infringed must recognise the effects of periodic penalty payments which ensure compliance with the order and enforce them in accordance with the Brussels I Regulation and their national law. Therefore, the court of the Member State in which the prohibition had been infringed, if its law so permitted, would have to recognise the order and apply the periodic penalty payment to the specific case. If its national law did not provide for such a measure, it would have to achieve enforcement in accordance with its own national provisions.  


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Trade mark infringement based on initial interest confusion


Och-Ziff Management Europe Ltd & Anr v OCH Capital LLP & Ots* (Arnold J [2010] EWHC 2599 (Ch); 20.10.10)


Och-Ziff succeeded in its claims against OCH Capital for passing off and trade mark infringement under Article 9(1)(b).  Its claims under Articles 9(1)(a) and Articles 9(1)(c) failed, as did OCH Capital’s counterclaim that the marks were invalid. 


Och-Ziff, an asset management group, was the proprietor of the Community trade marks, OCH-ZIF and OCH registered in Classes 9, 16 and 36, inter alia for financial services. Och-Ziff contended that OCH Capital, an investment management business established by Mr Ochocki, had infringed its marks by using six different signs featuring the letters “och” and also that this constituted passing off.  OCH Capital contended that the name OCH Capital was intended to be, and was, vocalised as “Oh-See-Aitch Capital” whereas Och-Ziff was pronounced “Ock-Ziff”.


Validity
OCH Capital counterclaimed that the OCH mark was invalid on the basis that Och-Ziff had acted in bad faith for the purposes of Article 52(1)(b).  The application had been made after Och-Ziff became aware of OCH Capital and to assist in its planned action against OCH Capital; but the defendant accepted that this did not in itself constitute bad faith (see paragraphs 189 and 190 of Arnold J’s judgment in Hotel Cipriani v Cipriani (Grosvenor St) [2009] RPC 9, which was accepted as valid despite the appeal).  The allegation of bad faith arose from the fact that Och-Ziff would have appreciated that the registration would cover both the name “Och” and the three letters “OCH” when used as an acronym.  Arnold J held that the fact that OCH has a potential dual significance did not make it illegitimate for Och-Ziff to seek to register it as a trade mark.  Och-Ziff had a perfectly legitimate interest in seeking to monopolise the use of OCH in relation to financial services.


Article 9(1)(a)
Arnold J held that purely internal use of a trade mark by its proprietor was not “genuine use” of that mark.  Considering in particular the Court of Justice’s judgment in Google France SARL v Louis Vuitton Malletier SA (C-236/08 – C-238/08), reported in the CIPA Journal, April 2010), Arnold J held that OCH Capital’s use of the sign “OCH” in internal emails did not constitute “use” of the sign within the meaning of Article 9(1)(a) and even if it did, the use was not in any case use “in the course of trade” because the use was “as a private matter”.


The five remaining signs complained of used the word “capital” in conjunction with the letters “och”.  Arnold J held that OCH was highly distinctive and that CAPITAL was descriptive, or at least non-distinctive. However, the addition of CAPITAL to OCH was not so insignificant as to go unnoticed by the relevant average consumer and so the signs were not identical to the OCH mark.  There was therefore no infringement under Article 9(1)(a). 


Article 9(1)(b)
It was common ground that OCH Capital had used the signs in relation to services identical to some of those for which the OCH mark was registered.  Arnold J noted that in considering OCH Capital’s use of the sign, the Court must confine itself to consideration of the actual context and circumstances of such use and should not consider other possible types of use.  On this basis, Arnold J concluded that there had been only “initial interest confusion” (which he defined as confusion on the part of the public as to the trade origin of the goods or services arising from use of the sign prior to the point of purchase and, in particular, confusion arising from the use in advertising and promotional services).  The Judge held that “initial interest confusion” was actionable under Article 9(1)(b); the confusion did not have to take place at the point of sale.  He came to this finding both on a point of principle as well as on the authorities, in particular BP Amoco v John Kelly [2002] FSR 5, Whirlpool v Kenwood [2008] EWHC 1930 and a number of CJ cases, most recently Case C-558/08, Portakabin v Primakabin.  Although there would be no diversion of sales in such circumstances, there were at least two other ways in which the trade mark proprietor might be damaged: firstly, a confusing advertisement may affect the reputation of the goods or services for which the mark was registered; and secondly, the confusion could be liable to erode the distinctiveness of the mark. 

Given the distinctiveness of the OCH mark for financial services, the identity of the services and the non-distinctiveness of the word CAPITAL, Arnold J held that there was a manifest likelihood of confusion.  In relation to the OCH-ZIFF mark, Arnold J held that the defendant did not avoid a likelihood of confusion because of the inclusion of the suffix “ZIFF”; OCH retained an independent, distinctive role in both the mark and in the signs. 


OCH Capital’s “own-name” defence under Article 12(a) failed because OCH Capital’s use of the signs was not in accordance with honest, commercial practices since, for example, Mr Ochocki admitted that he has been vaguely aware of Och-Ziff before he set up OCH Capital and although Mr Ochocki was often called Mr Och because people had difficulty pronouncing his name, “OCH” was neither Mr Ochocki’s actual name nor an acronym of it.


Article 9(1)(c)
Although it was unnecessary for Arnold J to rule on Article 9(1)(c), he nevertheless considered the claim on the assumption that there had been no likelihood of confusion and thus no Article 9(1)(b) infringement.  The Judge held that marks had the requisite reputation, that use of the signs gave rise to a link with the trade mark in the mind of the relevant consumer and that Och-Ziff’s best case on damage was to allege blurring.  However, since both the “OCH” and “ZIFF” elements of the mark were distinctive, a reduction in the distinctiveness of OCH would not affect the distinctiveness of ZIFF and it could not therefore be assumed that the distinctiveness of the combination would be reduced.  Thus, there was no Article 9(1)(c) infringement.


Passing Off
It was clear that Och-Ziff had a substantial reputation and goodwill in the name “Och-Ziff”.   Arnold J held that OCH Capital’s use of the signs complained of gave rise to a misrepresentation for similar reasons to those given in relation to the Article 9(1)(b) case, including initial interest confusion.  In relation to damage, Arnold J held that a misrepresentation leading to the belief that the defendant’s business was associated with the claimant’s was damaging to the claimant’s goodwill.  Further, if there was a misrepresentation which eroded the distinctiveness of the indication in question, then that was also damage for the purposes of a claim in passing off.  Both of these types of damage were found to be likely in the present case and accordingly the claim for passing off succeeded. 


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COPYRIGHT


Extent of copyright protection for graphic user interfaces


Bezpečnostní softwarová asociace v Svaz softwarové ochrany (AG Bot for the CJ (Third Chamber); C-393/09; 14.10.10) (decision not yet in English)


AG Bot considered a reference from the Nejvyšší správní soud (Supreme Administrative Court of the Czech Republic) concerning whether a graphic user interface fell within the scope of a computer program under Directive 91/250 on the legal protection of computer programs and, if so, whether copyright was infringed when it was broadcasted on television.


The Association for Software Protection applied to the Ministry of Culture of the Czech Republic for authorisation to collectively administer the copyright in computer programs. The Ministry of Culture rejected the application on the basis that the graphic user interface was not a form of expression of a computer program and therefore did not attract copyright protection.


The AG was of the opinion that a graphic user interface is not a form of expression of a computer program within the meaning of Article 1(2) of Directive 91/250 and cannot therefore benefit from the protection afforded by the Directive. However, when a graphic user interface is the author’s own intellectual creation, it will benefit from the copyright protection afforded under Article 2(a) of the Copyright Directive (Directive 2001/29).  Finally, the broadcast of a graphic user interface is not a communication of the work to the public within the meaning of Article 3(1) of the Copyright Directive because the dissemination of the interface through a television screen removes the interaction with the user and brings it outside the scope of Article 2(a). The purpose of the graphical user interface is to allow interaction between the program and the user.  A graphical user interface therefore differs from other copyright works by its nature. Once aired on screen, the graphical user interface loses the essential element it represents, namely, the interaction with the user, and no longer falls within the diffraction of the work under Article 2


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Private copying levy under the private copying exception


Padawan SL v Sociedad General de Autores y Editores de España (SGAE) (CJ (Third Chamber); C-467/08; 21.10.10)


The CJ gave a ruling on a reference from the Provincial Court of Barcelona on the interpretation of Article 5(2)(b) of the Copyright Directive (Directive 2001/29) in relation to the concept and practicalities of a private copying levy under the ‘private copying exception’. The AG opinion is reported in the CIPA Journal, June 2010.


SGAE, a body responsible for collective intellectual property management in Spain, claimed payment from Padawan, which marketed digital recording equipment, media and devices. SGAE was awarded payment of the private copying levy from Padawan by the Barcelona Commercial Court. The appeal court (the Barcelona Provincial Court) stayed the proceedings in order to make a number of references to the CJ. The reference was based on five questions which were dealt with in three general points.


The first question concerned the concept of ‘fair compensation’ within the meaning of Article 5(2)(b). The CJ held that it was an autonomous concept and must be given an independent and uniform interpretation throughout the EU regardless of individual Member States’ powers to determine the form of implementation. As such, any state which had implemented a private copying exception was subject to the uniform interpretation of ‘fair compensation’.

The second question concerned calculation of the ‘fair balance’ of compensation and the parties between which the balance was to be established. The CJ held that the amount of compensation must adequately compensate authors for harm caused by the unauthorised use of their protected work. Therefore ‘fair compensation’ must be calculated on the ‘criterion of harm’ caused by the private copying exception. The court considered that, in principle, the individuals causing the harm through copying should pay the compensation.  However given the practical difficulties in identifying private users and obliging them to compensate rightholders for the harm caused to them, and bearing in mind the fact that the harm which may arise from each private use may be minimal, it was open to the Member States to establish a private copying levy chargeable not to the private persons concerned, but to those who have the digital reproduction equipment and who make that equipment available or who provided copying services. The burden could be passed on to individuals through the price of the equipment/services and the private individuals would therefore finance the compensation indirectly.

The third and fourth questions were considered jointly. They concerned whether it was necessary to establish a link between the levy and the deemed use of equipment for private copying and accordingly whether indiscriminate application of the levy complied with the Copyright Directive. The CJ held that only where equipment, devices or media were liable to cause damage through being used for private copying could the private copying levy be applied. Consequently, a link between the levy and deemed use for private copying was required and indiscriminate application of the levy to all types of digital reproduction equipment, in particular with respect to equipment not made available to private users and clearly reserved for uses other than private copying, was incompatible with Article 5(2)(b). The CJ considered that there was a necessary link between the application of the private copying levy to digital reproduction equipment and the use for private copying. Where the equipment at issue had been made available to natural persons for private copying, it was unnecessary to show that they had in fact made copies with the help of that equipment and had caused actual harm to the author of the protected work.

The CJ declined to answer the fifth question which asked whether the Spanish copyright levy complied with the Copyright Directive. It was for the Spanish national court to determine this.
 

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No summary judgment in case claiming infringement of underlying ideas in a book


Paul Gregory Allen (acting as Trustee of Adrian Jacobs (Deceased)) v Bloomsbury Publishing PLC & Anr* (Kitchin J; [2010] EWHC 2560 (Ch); 14.10.10)


Bloomsbury did not succeed in its application for summary judgment on Mr Allen’s claim that the fourth Harry Potter book (Harry Potter and the Goblet of Fire (“Goblet”)) infringed the copyright in Mr Jacobs’ 16 page “Willy the Wizard” novella (“WTW”).


Mr Allen alleged that aspects of the plot, sub-plots, themes and incidents in WTW (and not exact words) had been copied into Goblet.  The facts were therefore similar to those of Baigent v The Random House Group Ltd ([2007] EWCA Civ 247, reported in the CIPA Journal, September 2007), in which the claimants had alleged that the copyright in their book “The Holy Blood and the Holy Grail” was infringed by Dan Brown’s “The Da Vinci Code”.  The Court of Appeal held in Baigent that although the claim for breach of copyright was somewhat unusual, it nevertheless had to be tested by reference to the same principles as a more typical case of word-for-word copying.  Kitchin J restated the approach to be adopted by the Court in this situation as follows: (i) identity the material which is found in both the earlier and later work; (ii) ask whether that material was copied from the earlier work – note that an inference of copying is raised where there are similarities between the works and the defendant has had access to the original work; and (iii) ask whether the material which has been copied amounts to a substantial part of the earlier work – in assessing this, the Court must consider whether what has been copied falls on the ideas or expression side of the copyright line for copyright only protects the expression of ideas and not the ideas themselves.


Similarities
Mr Allen’s case was that WTW had five main plot elements, which were a theme of, and important to, the plot of Goblet, plus a number of sub-plots, themes and incidents.  The five main elements were: (i) the main characters of WTW and Goblet were wizards who competed in a wizard contest which they ultimately won; (ii) the wizards were required to deduce the exact nature of the main task; (iii) the wizards made such deduction covertly in a bathroom; (iv) the wizards completed the task using information gained from helpers; and (v) the task involved the rescue of human hostages imprisoned by a community of half-human, half-animal creatures. 


Kitchin J accepted that some of these similarities existed but that others did not.  Where there was similarity, the Judge considered that it often resided in the idea rather than in the detail in which that idea was implemented.  These similarities were therefore on the wrong side of the idea/expression line. 


Access and copying
Mr Allen claimed that copies of WTW were given to Mr Little, who later became JK Rowling’s literary agent.  Mr Allen alleged that Mr Little gave a copy of WTW to JK Rowling at some point before she wrote Goblet.


Mr Little’s evidence was that he met with the author of WTW, at which time he was shown a copy of WTW.  Mr Jacobs claimed to have written WTW to read to his son at bedtime.  Mr Little considered WTW to be a poor work and declined to represent Mr Jacobs.  Mr Little claimed not to have kept a copy of WTW.


This account was disputed in a number of respects by evidence given by various people connected with Mr Jacobs, who claimed inter alia that: WTW could not have been written for Mr Jacobs’ son since he was 20 years old at the relevant time; Mr Little had in fact taken Mr Jacobs on, contacted publishers on his behalf and then presented Mr Jacobs with various rejection letters; Mr Jacobs got WTW published on his own account and had 1000 copies delivered to Mr Little.  Taken together, Kitchin J held that this evidence raised a real possibility that Mr Little’s account of events was incorrect.


JK Rowling’s evidence was that she did not meet Mr Little until she had already written the first Harry Potter book and mapped out the plots for the other books in the series.  Mr Little made only minor suggestions for improvement and never made any changes to the theme or story lines.  JK Rowling stated that she had not seen a copy of WTW before the present claim was issued.  Kitchin J held that this evidence was powerful.


However, the Judge also took into account the evidence of two experts filed on behalf of Mr Allen.  The first, a specialist in the study of children’s literature, stated that there were a number of original and unusual plot ideas and devices in WTW which could not be found in earlier children’s literature but which did appear in Goblet and were thus unlikely to be attributable to pure coincidence.  Bloomsbury disputed this conclusion and Kitchin J held that it would not be possible to resolve such dispute on a summary judgment application.  The second expert, a forensic linguist, conducted word cluster and lexical sharing investigations commonly used to detect plagiarism, which evidence Bloomsbury again disputed.  Despite being of the opinion that Bloomsbury’s criticisms of this evidence had considerable force, the Judge held that he could not decide the issue on a summary judgment application.


Thus, Bloomsbury had not established that Mr Allen had no real prospect of establishing that JK Rowling did not have access to WTW when writing Goblet.


Reproduction of a substantial part     
In assessing whether a substantial part had been taken, the Court should have regard to all the facts including: the nature and extent of copying; the quality and importance of what had been taken; the degree of originality of what had been taken or whether it was commonplace; and whether a substantial part of the skill and labour contributed by the author in creating the original had been appropriated.


The similarities upon which Mr Allen relied were ideas which were relatively simple and abstract and at such a high level of generality so as to fall on the ideas rather than expression side of the line.  However, the Judge was not able to say that Mr Allen’s case was so bad as to be fanciful and thus refused to grant summary judgment.  The Judge did however comment that he thought it improbable that the claim would succeed at trial.


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DATABASE RIGHTS


Beechwood House Publishing Ltd (“Binley’s”) v Guardian Products Ltd & Anr* (HHJ Birss QC; [2010] EWPCC 12; 26.10.10)


The Judge rejected the application for summary judgment on the issue of database rights infringement holding that, without evidence as to how many entries had been used by the first defendant, it was not possible assess the issue of substantiality.


Binley’s had been publishing its database (consisting essentially of the names and addresses of medical staff associated with GP practices) since 1994 and was now at the stage of maintaining it.  The Judge held that that the kind of work carried out by Binley’s in keeping its database up to date was sufficient to mean that sui generis database rights subsisted under the Copyright and Rights in Databases Regulation 1997.  Binley’s was clearly the rights owner. Accordingly the defendants had no real prospect of successfully defending the issues of subsistence and ownership.


Binley’s put seeds in its database, i.e. dummy entries which did not correspond to real people with addresses of members of its staff.  One of these seeds received a mass-mailed letter from Guardian Products.  Binley’s submitted that the only realistic explanation for the situation was that substantial quantities of data had been taken from its database.  While the Judge thought that this was highly probable, this did not satisfy the test in a summary judgment application that the defendant should have no real prospect of successfully defending the claim.  In particular, there was no evidence as to how many entries were used by Guardian Products.  Binley’s merely stated that there were “a few” seeds.  If only one seed from a hundred was present that suggested a lesser fraction derived from the claimant whereas if “a few” meant 3 or 4 seeds, then that suggested a rather higher fraction.  Although substantiality was not necessarily a purely quantitative matter, some idea of the numbers involved was necessary.  Accordingly the Judge refused to grant summary judgment on the issue of infringement.


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Katharine Stephens, Zoe Fuller and Gina Brueton


Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Hilary Atherton. Nick Aries, Nick Boydell, Alice Sculthorpe, Victoria Dearson, Victoria Gardner, Victoria Poyer and Josh Partridge.


The reported cases marked * can be found at http://www.bailii.org/databases.html#ew and the CJ’s decision can be found at http://curia.europa.eu/jcms/jcms/j_6/home


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