This month we report on the CJ's decision on keywords and electronic marketplace operators in L’Oréal v eBay, the decision of the Supreme Court in Lucasfilm v Ainsworth on copyright in Stormtrooper helmets, and the Court of Appeal decision in The Newspaper Licensing Agency & Ots v Meltwater Holding concerning copyright in newspaper headlines and extracts.


To be taken to your case of interest please click on the below:  


  • Audi AG & Anr v OHIM
  • Zino Davidoff SA v OHIM; I. Kleinakis kai SIA OE
  • Inter IKEA Systems BV v OHIM; Meteor Controls International Ltd
  • Imagion AG v OHIM
  • i-content Ltd Zweigniederlassung Deutschland v OHIM
  • Timehouse GmbH v OHIM
  • Cree Inc v OHIM
  • Aldi Einkauf GmbH & Co v OHIM; Illinois Tools Works Inc
  • Evonik Industries AG v OHIM
  • Dr Robert Winzer Pharma GmbH v OHIM; Alcon Inc
  • ratiopharm GmbH v OHIM; Nycomed GmbH
  • Ergo Versicherungsgruppe AG v OHIM; Société de développement et de recherche industrielle
  • L’Oréal SA & Ots v eBay International AG & Ots
  • Edwin Co. Ltd v OHIM; Elio Fiorucci
  • Viking Gas A/S v Kosan Gas A/S
  • Schütz (U.K.) Ltd & Anr v Delta Containers Ltd & Anr*
  • Orifarm A/S & Ots v Merck Sharp & Dohme Corp. & Ots
  • Bureau national interprofessionnel du Cognac v Gust. Ranin Oy
  • Samuel Smith Old Brewery (Tadcaster) (“SS”) v Philip Lee T/A Cropton Brewery*
  • Martin Steven Lewis v Client Connection Ltd (“CC”)*
  • Lucasfilm Ltd & Ots v Ainsworth & Anr*
  • The Newspaper Licensing Agency & Ots v Meltwater Holding BV & Ots*


  • Decisions of the GC (formerly CFI)  




    Case   GC
    T-318/09
    Audi AG & Anr v OHIM
    (07.06.11)
    Application (and where applicable, earlier mark)  


    TDI
    - vehicles and constructive parts thereof (12) 

    Comment

    The GC dismissed the appeal from the BoA’s decision that the sign (an abbreviation of ‘turbo diesel injection’ or ‘turbo direct injection’) was descriptive under Art 7(1)(c) and that there was insufficient evidence to show acquired distinctive character through use under Art 7(3).


    The GC held that, when assessing descriptive character, other national and international registrations for the same sign held no relevance. Furthermore, Audi could not rely on registrations of other similar signs (such as CDI or HDI) as CTMs to demonstrate the unlawfulness of the BoA’s decision.


    When considering acquired distinctive character, the GC concluded that, as the sign was inherently descriptive throughout the EU, the acquisition of distinctive character through use therefore must be proved in respect of each of the Member States. Audi had not done this. It was not possible to apply the same criterion for demonstrating acquired distinctive character as that for establishing whether a mark has a reputation under Art 9(1)(c). To do otherwise would imply that a descriptive mark could be registered if it had acquired distinctive character in a substantial part of the EU, even though the mark remained descriptive in other parts of the EU.


    Finally, the GC rejected Audi’s submissions relating to OHIM’s lack of reply to requests for a meeting to discuss the need and scope of an opinion poll, as the examiner had stated that opinion polls were ‘almost always indispensable’ to prove the acceptance of a mark.  

      <top>



    Case   GC
    T-108/08
    Zino Davidoff SA v OHIM; I. Kleinakis kai SIA OE
    (15.07.11)
    Application (and where applicable, earlier mark)  


    GOOD LIFE
    - various goods in Class 3
    GOOD LIFE
    - perfumery, cosmetics, fragrant and air freshening preparations (3, 5)
    (Greek mark)
     

    Comment

    The GC annulled the BoA’s decision to annul the Opposition Division’s finding that genuine use of the earlier mark in Greece had not been established. The BoA had acted in breach of Art 76(1) and the duty of diligence by failing to examine carefully and impartially all relevant evidence.


    The BoA had partly based its conclusion on a Greek decision rejecting an application for cancellation of the earlier mark for non-use, on the basis that the decision was ‘very relevant for the case at hand’.


    A diligent examination of the Greek decision would have revealed that it only briefly referred to the documents submitted to it and the arguments raised by the parties. Furthermore, those documents were not put in the file before OHIM. Therefore the BoA was not in a position to understand the reasoning or to identify the evidence on which the Greek decision was based.


    The BoA had also relied on two invoices when reaching its decision on genuine use. However, by reason of an incorrect translation and interpretation, the BoA wrongly inferred they established the sale of 19,287 and 782 items respectively when a correct translation included these numbers to be considerably smaller (40 and 45 items). The BoA had therefore made an error which was not negligible in its assessment of the invoices.

      <top>





    Case   GC
    T-88/10
    Inter IKEA Systems BV v OHIM; Meteor Controls International Ltd
    (13.07.11)
    Application (and where applicable, earlier mark)  


    GLÄNSA
    - goods in Class 11
    GLANZ
    - goods in Classes 6, 9 and 11
     

    Comment

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


    The GC agreed with the BoA’s finding that there were visual, aural and conceptual similarities between the marks.  


    The GC dismissed Inter IKEA’s submission that the umlaut in GLÄNSA created a visual and aural distinction. Visually, the umlaut would not particularly attract the attention of consumers whose language(s) do not contain the letter “ä”. Phonetically, given the relevant territory was the EU (because the earlier mark was a CTM) it was sufficient to establish phonetic similarity that in one part of the EU the first syllable of both signs was pronounced in the same way. This was the case for the English, French and Spanish speakers.


    The GC concurred with the BoA’s finding that for the great majority of the Member States there was no conceptual difference between the marks.   


    As the marks were similar and the goods were in part similar and in part identical, there was a likelihood of confusion. 

        <top>


    Decisions not yet in English



    Case   GC
    T-463/08
    Imagion AG v OHIM
    (30.06.11)
    Application (and where applicable, earlier mark)  


    DYNAMIC HD
    - storage, systemisation, compilation and marketing of information (35)
    - telecommunications (38)
    - production and storage of films and audiovisual media (41)
    - support functions and advice, particularly regarding DVD, DVD HD and Blu-ray (42)

    Comment

    The GC upheld the BoA’s decision that the mark was descriptive under Art 7(1)(c). Further, it had not acquired distinctive character through use under Art 7(3).

        <top>



    Case   GC
    T-258/09
    i-content Ltd Zweigniederlassung Deutschland v OHIM
    (06.07.11)
    Application (and where applicable, earlier mark)  


    BETWIN
    - various services in Classes 35, 38 and 41

    Comment

    Under Arts 7(1)(b) and (c), the GC upheld the BoA’s decision to reject the application for services in Classes 35 and 41 that specifically related to games or betting, but allowed the appeal for the remaining services.

        <top>




    Case  

    GC
    T-235/10

    Timehouse GmbH v OHIM
    (06.07.11)

    Application (and where applicable, earlier mark)  


    - jewellery, watches/clocks and chronometric instruments (14)

    Comment

    The GC upheld the BoA’s decision that the mark lacked distinctive character under Art 7(1)(b).

        <top>




    Case  

    GC
    T-208/10

    Cree Inc v OHIM
    (07.07.11)

    Application (and where applicable, earlier mark)  

    TRUEWHITE
    - light emitting diodes (LEDs) (9)
    - lighting fixtures (11)

    Comment

    The GC upheld the BoA’s decision that the mark was descriptive under Art 7(1)(c).

        <top>




    Case  

    GC
    T-374/08

    Aldi Einkauf GmbH & Co v OHIM; Illinois Tools Works Inc
    (12.07.11)

    Application (and where applicable, earlier mark)  


    - various chemical products, including adhesives and cleaning solutions in Classes 1 and 3

    - various goods in Classes 1 and 3
    (Spanish marks)

    Comment

    The GC overturned the BoA’s decision and held that there was no likelihood of confusion between the marks under Art 8(1)(b).

        <top>





    Case  

    GC
    T-499/09

    Evonik Industries AG v OHIM
    (13.07.11)

    Application (and where applicable, earlier mark)  


    - goods and services in all Classes 1 to 45

    Comment

    The GC upheld the BoA’s decision that the mark lacked distinctive character under Art 7(1)(b).

        <top>




    Case  

    GC
    T-160/09

    Dr Robert Winzer Pharma GmbH v OHIM; Alcon Inc
    (14.07.11)

    Application (and where applicable, earlier mark)  

    OFTAL CUSI
    - pharmaceutical and hygiene products, ophthalmologic and otolaryngological products, pharmaceutical preparations (5)
    OPTHAL 
    -  various pharmaceutical and hygiene products for the eyes, nose and mouth (5)

    Comment

    The GC upheld the BoA’s decision that there was no likelihood of confusion between the marks under Art 8(1)(b).

        <top>




    Case  

    GC
    T-222/10

    ratiopharm GmbH v OHIM; Nycomed GmbH
    (14.07.11)

    Application (and where applicable, earlier mark)  

    ZUFAL
    - pharmaceutical products (5)
    ZURCAL
    -  gastro-intestinal products (5)

    Comment

    The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks under Art 8(1)(b).

        <top>



    Case  

    GC
    T-220/09 and
    T-221/09

    Ergo Versicherungsgruppe AG v OHIM; Société de développement et de recherche industrielle
    (15.07.11)

    Application (and where applicable, earlier mark)  

    ERGO
    ERGO Group
    - various hygiene, pharmaceutical and veterinary products in Classes 3 and 5
    URGO
    -  various hygiene, pharmaceutical and veterinary products in Classes 3 and 5

    Comment

    The GC upheld the BoA’s decision that there was a likelihood of confusion between the marks applied for and the earlier mark under Art 8(1)(b).

        <top>


    Keywords and electronic marketplace operators


    L’Oréal SA & Ots v eBay International AG & Ots (CJ (Grand Chamber); C-324/09; 12.07.11)


    eBay, an electronic marketplace operator (“EMO”), bought keywords including trade marks from paid internet referencing services (such as Google’s AdWords) to attract customers to its website. L’Oréal, a manufacturer and supplier (by a closed selective distribution network) of perfumes, cosmetics and hair-care products, claimed that by buying such keywords, eBay attracted customers who bought, in addition to legitimate goods, branded goods that were counterfeit, unpackaged, or from non-EEA sources and which therefore infringed L’Oréal’s trade mark rights.


    eBay operated a Verified Rights Owner (“VeRO”) programme, a notice and take-down system that provided intellectual property owners with assistance in removing infringing listings from its site. L’Oréal declined to participate in the VeRO programme, contending that it was inadequate and asked eBay to take steps to address its concerns of widespread sales of infringing goods on eBay’s European websites. However, unsatisfied with eBay’s response, L’Oréal brought a number of actions including one before the High Court (reported in CIPA Journal, June 2009) which referred a number of questions to the CJ. This action concerned the use of signs identical to L’Oréal’s trade marks on goods identical to those for which the trade marks were registered. L’Oréal sought to obtain a ruling that eBay was jointly liable with certain individuals who were infringing its trade marks and primarily liable (in relation to infringing goods) for keywords consisting of trade marks by purchasing them as sponsored links on third party search engines and using them on its own website.


    Non-EEA goods
    The CJ first addressed the question of whether L’Oréal was entitled to rely on its trade mark rights to prevent the offer for sale on an online marketplace of goods bearing a trade mark that had not previously been put on the market in the EEA by the trade mark owner or with his consent. 


    The CJ agreed with the AG (reported in CIPA Journal, January 2011) that to exercise the exclusive right conferred by the trade mark it was sufficient to show that the advertisement was targeted at consumers within the territory covered by the trade mark. To conclude otherwise would mean that activities targeting EU markets could escape EU rules by merely situating the activity in a third country. National courts needed to assess on a case by case basis whether this was the case.  However, the mere fact that a website was accessible from the territory covered by the trade mark would not be a sufficient basis for concluding that the offers for sale displayed were targeted at consumers in that territory. In the case before the referring Court, the website address was www.ebay.co.uk and, in the absence of evidence to contrary, that appeared to be targeted at consumers in the territory covered by L’Oréal’s national and community trade marks. 


    Nature of the goods sold
    The CJ then turned to the first question, which asked whether perfume and cosmetic testers and dramming bottles supplied to the trade mark proprietor’s authorised distributors on the basis that they were not intended for sale in the EU were ‘put on the market’ under Article 7(1) of the Trade Marks Directive and Article 13(1) of the Trade Marks Regulation. L’Oréal’s goods were supplied without charge and often marked ‘not for sale’ or ‘not for individual sale’. The CJ again followed the AG, who had followed Coty Prestige (C-127/09, reported in CIPA Journal, July 2010), concluding that, in the absence of evidence to the contrary, L’Oréal’s consent could not be implied in these circumstances: the goods had therefore not been ‘put on the market’.


    The CJ interpreted the second to fourth questions to ask whether the removal of boxes or other outer packaging from the perfumes and cosmetics without L’Oréal’s consent infringed L’Oreal’s exclusive rights or otherwise constituted a ‘legitimate reason’ to oppose further commercialisation under Article 7(2) or Article 13(2).


    The CJ again followed the AG: L’Oréal could oppose the resale of the goods in issue on the ground that the person reselling the goods had removed their packaging where the consequence of that removal was that essential information, such as that required by the Cosmetics Directive, was missing, or if it could be established that the removal of the packaging had damaged the image of the product and hence the reputation of the trade mark as would sometimes by the case for perfumes or cosmetics. However, the CJ stated that whether this damage had occurred had to be considered on a case by case basis. 


    eBay’s liability
    The fifth and sixth questions were then considered together. These asked whether the display as a sponsored link of a sign identical to a registered trade mark, that had been purchased by an EMO, constituted ‘use’ of a sign under Article 5(1) and then whether clicking on the resulting sponsored link, which led the internet user directly to advertisements or offers for sale of goods identical to the trade mark registration, some of which infringed and some of which did not infringe the trade mark, constituted use by EMO of the sign ‘in relation to’ the infringing goods under Article 5(1)(a).


    The CJ again followed the AG and applied Google France (C-236/08 to C-238/08 reported in CIPA Journal, April 2010) to conclude that the display as a sponsored link of a sign identical to a registered trade mark where the use promoted its customer-sellers’ offers for sale of goods bearing those marks did constitute ‘use’ of that sign in the course of trade in the Article 5(1) sense where the use was such that a link was established between the sign and the service, which would be the case in the instance of eBay’s sponsored links (which were effectively advertisements). However, there could only, at most, be use in the Article 5(2) sense where the use promoted eBay’s own service of making an online electronic marketplace available to sellers and buyers of products in general. 


    However, the EMO’s use of the sign ‘in relation to’ the infringing goods under Article 5(1)(a), permitting the trade mark proprietor to prevent such use would only be the case if it had an adverse effect on the functions of the trade mark. This would occur only if the display of the sign did not enable a reasonably well-informed and reasonably observant internet user, or only enabled him to understand with difficulty, that the goods bearing the trade mark which were offered for sale originated from either the trade mark proprietor or an economically linked entity, or on the contrary from a third party.


    Question eight asked whether it made any difference if the use consisted of the display of the sign on the EMO’s website rather than in a sponsored link. The CJ again agreed with the AG that when a sign was displayed on the EMO’s website rather than in a sponsored link of a search engine, that use was not by the EMO but by its users. Insofar as the EMO enabled that use to be made by its customers, its liability had to be examined instead under the E-Commerce Directive. Therefore, following Google France, the sign was not used by the EMO in these circumstances ‘in relation to’ the infringing goods under Article 5(1).


    Hosting Exemption
    Question nine asked three related queries as to the extent, if any, that eBay, as the host of an online marketplace, could benefit from the limitation of liability set out in Article 14(1) of the E-Commerce Directive (the “hosting exemption”).


    The CJ confirmed that in order for an internet service provider to fall within the scope of the hosting exemption, it had to be an intermediary provider as defined by the E-Commerce Directive. This would not be the case if the service provider, instead of providing a neutral service of merely technically and automatically processing its customers’ data, went further to provide assistance such as, in particular, optimising the presentation of offers for sale or promoting them. In these circumstances, the EMO would not be taking a neutral position and so would not be entitled to rely on the hosting defence.


    Further, even if the intermediary had adopted a neutral position, it could only benefit from the hosting exemption if it acted expeditiously to remove infringing content once it became aware of facts or circumstances on the basis of which a diligent EMO should have identified the illegality in question. This responsibility extended to both facts that had been notified to it by third parties and facts that it had obtained through its own investigations. 


    Remedy: Scope of injunction available
    The tenth question referred asked whether, when the services of an intermediary such as a website operator had been used to infringe a trade mark, Article 11 of the IP Enforcement Directive required Member States to ensure that the trade mark proprietor could obtain an injunction against the intermediary to prevent further infringements of the trade mark (rather than just the specific act of infringement) and, if so, what the scope of the injunction should be.


    The CJ ruled that Article 11 had to be interpreted as requiring Member States to ensure that the trade mark proprietor could obtain measures which brought an end to the existing infringements of its rights on the marketplace and also to prevent future infringements of that kind. It could not require an online service provider to actively monitor all of its customers’ data in order to prevent a future intellectual property infringement but such injunctions had to be effective, proportionate and dissuasive and could not create barriers to legitimate trade.


    Personal names: Interpretation of national law on an application to invalidate a CTM


    Edwin Co. Ltd v OHIM; Elio Fiorucci (CJ (Grand Chamber); C-263/09; 05.07.11)


    Elio Fiorucci was a fashion designer who achieved certain renown in the 1970s in Italy. Following financial difficulties, an administrator was appointed in respect of his company, Fiorucci SpA, and the entirety of the company’s assets were transferred to Edwin Co. Ltd. For several years Fiorucci and Edwin collaborated.


    Edwin registered ELIO FIORUCCI as a CTM for a range of goods in Classes 3, 18 and 25 and some years later Fiorucci applied for revocation of the mark under Article 51(1)(c) and a declaration of invalidity under Article 53(2)(a). Under Article 53(2)(a) a CTM may be declared invalid if its use can be prohibited pursuant to another earlier right under national law. The relevant national law in this instance, Article 8(3) of the Italian Industrial Property Code (Codice della Proprieta Industriale “CPI”), provided that, if they are well known, personal names may be registered as trade marks by the proprietor or with his consent. The cancellation division allowed the application under Article 53(2)(a) without finding it necessary to rule on Article 51(1)(c). Edwin successfully appealed to the BoA which held that Article 53(2)(a) did not apply. The alleged infringement under Article 51(1)(c) was also rejected. Fiorucci appealed to the GC. The GC rejected the appeal under Article 51(1)(c) but allowed the appeal under Article 53(2)(a) (reported in CIPA Journal, June 2009).


    Edwin then appealed to the CJ, submitting primarily that the GC erred in its interpretation of the Italian provision relevant to Article 53(2)(a). The CJ dismissed the appeal.


    The CJ firstly noted that the wording and structure of Article 53(2) did not, where a right to a name was asserted, restrict that provision just to situations where the registration of a CTM conflicted with a right intended exclusively to protect a name as an attribute of the personality of the person concerned. The list of rights cited in Article 53(2) were examples only and not intended to be exhaustive.


    The CJ then gave guidance as to the jurisdiction it had concerning the findings made by the GC with regard to national law. The CJ could determine:



    • whether the GC, on the basis of the documents and other evidence submitted to it, distorted the wording of the national provisions at issue or of the national case-law relating to them, or of the academic writings concerning them;

    • whether the GC, as regards those particulars, made findings manifestly inconsistent with their content; and

    • whether the GC, in examining all the particulars, attributed an inappropriate significance to one of them, where that was manifestly apparent from the documentation in the case file.

    The CJ rejected Edwin’s submission that the GC had interpreted Article 8(3) of the CPI in a way that was inconsistent with the wording of that provision and with academic writings. Since the wording of Article 8(3) made registration of the names of well-known persons as trade marks conditional on consent being given by the proprietor of the name, it was possible for the GC, without distorting that text, to infer from it that the proprietor of a well-known name was entitled to prevent the use of that name as a trade mark where he maintained that he had not given his consent to registration of that mark. Edwin’s other submissions regarding the GC interpretation of Article 8(3) also failed.


    Finally, the CJ held that the GC had provided adequate grounds and reasoning in so far as it enabled Edwin to know why the GC had not upheld its arguments and the CJ to review its decision.


    Exhaustion: Refilling of gas bottles


    Viking Gas A/S v Kosan Gas A/S (CJ (First Chamber); C-46/10; 14.07.11)


    Kosan Gas produced and sold bottled gas, under an exclusive licence, in Denmark in ‘composite’ (lightweight) bottles, the shape of which was registered as a 3-D CTM and Danish mark. Kosan Gas’s name and logo (registered as CTMs) were affixed to those bottles. On first purchase of a composite bottle filled with gas from one of Kosan Gas’s dealers the consumer also paid for the bottle, which thus became the consumer’s property. Kosan Gas also refilled empty composite bottles. A consumer could exchange, at one of Kosan Gas’s dealers, an empty composite bottle for a new composite bottle filled by Kosan Gas and would pay only the price of the gas purchased.


    Viking Gas had a filling station from which composite bottles were dispatched, after being filled with gas, to independent dealers. Viking Gas attached to those bottles an adhesive label bearing its name and the filling station number together with a further adhesive label providing inter alia information as required by law on the filling station and the contents of the bottles. Kosan Gas’s word and figurative marks on those bottles were neither removed nor covered. A consumer could therefore go to a dealer cooperating with Viking Gas and get an empty gas bottle exchanged for a similar one filled by Viking Gas. Kosan Gas initiated infringement proceedings in the Danish Courts and was successful at first instance and on appeal. Viking Gas then appealed to the Danish Supreme Court which referred a number of questions to the CJ on the interpretation of Articles 5 and 7 of Directive 89/104 (now replaced by Directive 2008/95/EC).


    The CJ held that Articles 5 and 7 must be interpreted as meaning that the holder of an exclusive licence for the use of composite gas bottles intended for re-use, the shape of which is protected as a 3D mark and to which the holder has affixed its own name and logo that are registered as word and figurative marks, may not prevent those bottles, after consumers have purchased them and consumed the gas initially contained in them, from being exchanged by a third party, on payment, for composite bottles filled with gas which does not come from the holder of that licence, unless that holder is able to rely on a proper reason for the purposes of Article 7(2) of Directive 89/104.


    In reaching this decision, the CJ noted that a balance must be struck between, on the one hand, the legitimate interests on the part of the licensee of the right to the 3-D trade mark and the proprietor of the marks affixed to that bottle in profiting from the rights attached to those marks and, on the other, the legitimate interests of purchasers of the bottles, in particular the interest in fully enjoying their property rights in those bottles, and the general interest in maintaining undistorted competition.


    When considering the proper reasons under Article 7(2), the CJ noted that the proprietor of a mark may, despite the putting on the market of goods bearing his mark, oppose further commercialisation of those goods where legitimate reasons for such opposition existed and especially where the condition of the goods had been changed or impaired after they have been put on the market. Such a legitimate reason exists when the use by a third party of a sign identical with, or similar to, a trade mark seriously damages the reputation of that mark or when that use is carried out in such a way as to give the impression that there is a commercial connection between the trade mark proprietor and that third party, and in particular that the third party is affiliated to the proprietor’s distribution network or that there is a special relationship between those two persons. The CJ noted that it was reasonable to assume that a consumer who goes directly to Viking Gas to exchange his empty gas bottle or have it refilled is more readily in a position to be aware that there was no connection between Viking Gas and Kosan Gas. The CJ also noted that the fact that Kosan Gas’s marks remained visible despite Viking Gas affixing labels to the bottles constituted a relevant factor, in so far as it seemed to rule out the labelling from altering the condition of the bottles by masking their origin.


    Infringement found in relation to reconditioned container


    Schütz (U.K.) Ltd & Anr v Delta Containers Ltd & Anr* (Briggs J; [2011] EWHC 1712 (Ch); 05.07.11)
     
    Briggs J held that Delta’s practice of replacing the original bottle in Schütz’s intermediate bulk containers (“IBCs”) with the bottles of other manufacturers (a practice known as “cross-bottling”) infringed and passed off Schütz’s trade marks in relation to both the bottle and the IBC as a whole.  


    Schütz was the leading manufacturer and supplier of 1,000 litre rigid composite IBCs in the UK.  It sold new and used IBCs into a market consisting primarily of “fillers” who wished to use them as containers for the sale of industrial liquids. The IBCs in issue consisted of a metal cage and a plastic bottle which fit inside the cage, as shown below:
     



    The cage was likely to have a longer re-use life cycle than the bottle and Delta had begun cross-bottling Schütz’s used IBCs. It was common ground that Delta affixed labels to its cross-bottled IBCs stating that they were rebottled by Delta and that the bottle and cage may not be sourced from Schütz.


    Schütz displayed its name and a triangular device on its cages and, to a lesser extent, on its bottles. It had CTMs and UK trade marks for both signs in Classes 6 and 20. The CTMs were registered in respect of the cage and the bottle separately whereas the UK marks were registered in respect of the IBC as a whole.   


    No complaint was made of the use of the Schütz marks in relation to the cage because the rights were exhausted under Article 13. But, during argument, Delta dropped their defence of exhaustion in relation to the bottle and IBC as a whole, accepting that a cross-bottled IBC is not a Schütz IBC.


    Briggs J noted that the issue between the parties was whether Delta used the Schütz marks in relation to the bottle and the IBC as a whole. The view of witnesses who were “fillers” i.e. those who purchased IBCs for use in delivery of fluids, was that they did not regard the use of the Schütz trade marks on the cage of cross-bottled IBCs as relating to anything other than the cage itself. In contrast, witnesses who were “end-users” i.e. those who purchased the IBCs from the fillers as a means of storage and convenient pouring, assumed that every IBC with a Schütz name on the cage was an IBC manufactured as a whole by Schütz. The Judge held that the end-user was to be regarded as the average consumer of a re-bottled IBC in a Schütz cage because he was the person to whom the trade mark, as a badge of origin or authenticity of the IBC as a product, may have significance, for example, if the IBC were to fail. On this basis, Schütz’s case of trade mark infringement succeeded under Article 9(1)(a), both in relation to the bottles and in relation to the IBCs as a whole. 


    The Judge rejected Delta’s case that any infringing use was negated by the disclaimers affixed to its re-bottled IBCs because: (i) the language was not sufficient; (ii) the labels were not sufficiently prominent; and (iii) there was a risk that the adhesive labels used would be removed through use. 


    Applying Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341, the Judge also upheld Schütz’s passing off claim. A likelihood of damage could be sufficiently proved by a demonstration that the mistaken association in the mind of consumers between the claimant and the defendant’s product exposed the claimant’s goodwill and reputation to damage by being wrongly blamed for a failure or defect, should it occur (Associated Newspapers Group plc v Insert Media & Ots [1991] FSR 380). Briggs J held that there was sufficient evidence to demonstrate a real risk that Delta’s cross-bottled IBCs might fail and that end-users might wrongly attribute those short comings to defects in the manufacture or design by Schütz. 


    Parallel imports: Repackaged products and the inclusion of the name of the repackager


    Orifarm A/S & Ots v Merck Sharp & Dohme Corp. & Ots (CJ (First Chamber); Joined Cases C-400/09 and C-207/10; 28.07.11)


    Orifarm and a number of other companies were involved in the parallel import into Denmark of certain medicinal products manufactured by Merck and for which Merck owned trade marks. These medicinal products had been repackaged, but the new packaging did not state the name of the undertaking which had actually performed the repackaging.


    Merck brought proceedings before the Danish Courts. The case reached the Danish Supreme Court which stayed the proceedings and referred a number of questions to the CJ concerning Article 7(2) of the Trade Marks Directive 89/104 (now replaced by 2008/95/EC).


    The CJ decided to read all the questions referred together and considered whether Article 7(2) must be interpreted as allowing the proprietor of a trade mark relating to a pharmaceutical product which is the subject of parallel imports to oppose the further marketing of that product in repackaged form on the ground that the new packaging indicated as the repackager not the undertaking which, on instructions, actually repackaged the product and holds an authorisation to do so, but the undertaking which holds the marketing authorisation for the product, on whose instructions the repackaging was carried out, and which assumes liability for the repackaging.


    The CJ answered this question in the negative. In reaching this decision, the CJ noted that the trade mark proprietor had no interest in requiring that the name of the undertaking which actually repackaged the product should appear on the packaging merely because the repackaging is liable to affect the original condition of the product and might therefore cause harm to his trade mark rights. The trade mark proprietor’s interest was fully safe guarded where the name of the undertaking at whose order and on whose instructions the repackaging has been carried out, and which assumes responsibility for the repackaging, appears clearly on the packaging of the repackaged product. Provided that the indication is printed so as to be comprehensible to a normally attentive person, this would avoid the end user being given the incorrect impression that the product had been repackaged by the proprietor.


    Trade Marks incorporating Geographical Indications


    Bureau national interprofessionnel du Cognac v Gust. Ranin Oy (“GRO”) (CJ (First Chamber); Joined Cases C-4/10 and C-27/10; 14.07.11)


    GRO applied to register in Finland two figurative marks including the term ‘Cognac’ and its Finnish translation:



    • For ‘Konjakit [Cognacs]’ in Class 33 the figurative element of the mark included the endorsement ‘COGNAC L & P HIENOA KONJAKKIA Lignell & Piispanen Product of France 40% Vol 500 ml’.

    • For ‘liqueurs containing “konjakki”’ in Class 33, the figurative element included the endorsement ‘KAHVI-KONJAKKI Café Cognac Likööri – Likör – Liqueur 21% Vol Lignell & Piispanen 500 ml’.

    The two marks were registered on 31 January 2003.


    The Bureau National Interprofessionnel Du Cognac opposed the registration of both marks. Following a series of appeals, the Finnish Supreme Administrative Court stayed proceedings and referred a number of questions to the CJ on the interpretation of Articles 16 and 23 of Regulation 110/2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks. Regulation 110/2008 came into force on 20 February 2008. It replaced Regulation 1576/89 which had been in force from 15 June 1989. Both regulations protected ‘Cognac’ as a geographical indication (“GI”) identifying a spirit drink originating from France.


    By its first question, the referring court asked whether Regulation 110/2008 was applicable to the assessment of the validity of the registration of a trade mark containing a GI protected by that regulation, where registration took place before the regulation entered into force. Following a review of the terms and objectives of Article 23 of Regulation 110/2008, the CJ held that it was. The CJ concluded that the principles of legal certainty and of the protection of legitimate expectations were not undermined in this instance. Regulation 110/2008 was a continuation of the protection ensured by Regulation 3378/94 which, with effect from 1 January 1996, had amended Regulation 1576/89 so as to require Member States to permit those concerned to prevent, under the conditions laid down in Articles 23 and 24 of the TRIPS Agreement, the use within the Community of a geographical designation for products which do not originate in the place referred to by the geographical designation in question.


    By the second question the referring court asked whether Articles 16 and 23 of Regulation 110/2008 precluded the registration of a mark containing a GI, or a term corresponding to that indication and its translation, in respect of spirit drinks which did not meet the specifications set for that GI. The CJ held that such a situation fell within the situations referred to in Article 16(a) and (b) of Regulation (EC) 110/2008. With respect to Article 16(a), such use constituted a direct commercial use of a GI in respect of products which are comparable to the spirit drink registered under that indication, but which are not covered by the indication. For the purposes of Article 16(b), the CJ concluded that such use could be categorised as an ‘evocation’. In accordance with Article 16(b) the mention of the actual origin of the product or the use of the GI in translation or accompanied by expressions such as ‘like’, ‘type’, ‘style’, ‘made’, ‘flavour’, or similar term, did not alter that categorisation. Accordingly, in such situations, national authorities must on the basis of Article 23(1) of Regulation (EC) 110/2008 refuse or invalidate the registration of the mark subject to the mark not being covered by the temporary derogation provided for in Article 23(2). The marks in question could not benefit from this derogation as ‘Cognac’ had been protected as a GI since 15 June 1989, long before the registration of the marks on 31 January 2003. The CJ ruling was without prejudice to the possible application of other rules laid down by Article 16. The CJ considered that it was for the referring court to determine, by taking account of the interpretative guidance already provided, whether the situations referred to in Article 16(c) and 16(d) of Regulation (EC) 110/2008 existed.


    Indication concerning geographical origin and unjustified threats


    Samuel Smith Old Brewery (Tadcaster) (“SS”) v Philip Lee T/A Cropton Brewery* (Arnold J; [2011] EWHC 1879 (Ch); 22.07.11)


    The Judge upheld in part SS’s claim for trade mark infringement and passing off relating to its white rose device mark and dismissed Cropton’s counterclaim for unjustified threats.


    SS had used a particular white rose device on their beer bottles since the 1960s. The rose was registered as a UK trade mark in 1973 in respect of “beer” in Class 32:


     

    Cropton marketed two beers of which SS complained, ‘Yorkshire Bitter’ and ‘Yorkshire Warrior’:

    ‘Yorkshire Bitter’ was marketed exclusively by Marks & Spencer who had designed the original packaging in 2007.


    SS provided ample evidence about the mark’s use from which Arnold J readily held that the mark had a reputation and that SS owned goodwill in the mark. Arnold J found under Article 5(1)(b) that ‘Yorkshire Bitter’ did not infringe because of the differences between the white rose devices, the remainder of the sign and the identification of Cropton on the label. However, he held that ‘Yorkshire Warrior’ infringed SS’s mark because the rose, which he found dominated both signs, was more dominant and more similar in the case of ‘Yorkshire Warrior’ and, importantly, Cropton was not identified as the producer. Similarly, Arnold J found that ‘Yorkshire Warrior’ but not ‘Yorkshire Bitter’ was passed off as a product of or connected with SS.


    Cropton defended the claim for trade mark infringement on the grounds that the signs complained of were “indications concerning the…geographical origin” of the goods under Article 6(1)(b), since a white rose is the traditional symbol of Yorkshire. Arnold J accepted that the signs were intended to provide an association with Yorkshire but went on to consider whether their use by Cropton was in accordance with honest commercial practices, as required under Article 6(1)(b). Applying, among other authorities, Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street) Ltd & Ors [2010] EWCA Civ 110, the Judge found that Cropton’s use in relation to both beverages was in accordance with honest commercial practices up until October 2009 for reasons including Mr Lee’s initial ignorance of SS’s marks, lack of actual confusion and the likely intention and consumer perception that the white rose referred to Yorkshire. However, from October 2009, in relation to ‘Yorkshire Warrior’ the situation changed. The label had been derived from the Yorkshire Regiment’s cap-badge.  Regimental officials had given Cropton informal permission to use the sign but in October 2009 this was withdrawn, following advice from the Ministry of Defence that Cropton’s use might amount to trade mark infringement. Mr Lee was aware of this but Cropton continued to use the sign.  Therefore, from October 2009 Cropton had not acted fairly in relation to SS’s legitimate interests in its marks and, therefore, was not acting according to honest commercial practices.


    Cropton counterclaimed for threats under Section 21 in relation to two letters sent to Marks & Spencer referring to ‘Yorkshire Bitter’. In relation to the earlier of these, Marks & Spencer had resolved the issue with SS and continued to buy ‘Yorkshire Bitter’ from Cropton despite the letter; therefore, Cropton were not a “person aggrieved” under Section 21. In relation to the second letter, Arnold J held that the letter did not contain a threat. The letter contained information about SS’s litigation with Cropton. At one stage, Cropton had suggested it had no control over the label for ‘Yorkshire Bitter’ and threatened to join Marks & Spencer: the letter sought to discuss the litigation with Marks & Spencer in an effort to avoid that possibility. Accordingly, the reasonable recipient in the position of Marks & Spencer, already aware as the company was of the dispute, would not treat the second letter as a threat of litigation.


     “Money Saving Expert” awarded summary judgment against “Money Claiming Experts”


    Martin Steven Lewis v Client Connection Ltd (“CC”)* (Norris J; [2011] EWHC 1627 (Ch); 06.07.11)


    Norris J held that Mr Lewis was entitled to summary judgment in his action against CC for infringement of his two UK trade marks for MONEY SAVING EXPERT. 


    Mr Lewis’ marks were registered in Class 36 in respect of advisory services relating to financial matters provided via an internet website. He operated a website under the name “moneysavingexpert.com” which provided advice to consumers on reclaiming monies for, among other things, mis-sold payment protection insurance. CC operated a telephone based claims management business which also dealt with claims arising out of mis-sold payment protection insurance. It operated under the name “Money Claiming Experts”. Mr Lewis brought a claim for trade mark infringement on the basis that, in the course of business, CC made or instructed others to make on its behalf telephone calls in which it held itself out as “Money Saving Expert” or was heard to describe itself as such. 


    Norris J refused summary judgment under Section 10(1) on the grounds that (i) there was a real prospect that Mr Lewis would have been unable to establish that CC used or authorised the use of an identical sign to MONEY SAVING EXPERT; (ii) even if CC had used a sign which contained differences so insignificant that they would go unnoticed by the average consumer, the question whether the difference was so small as to permit identity or sufficiently large to constitute mere similarity was not one for summary judgment; and (iii) as Mr Lewis provided his services via the internet and CC provided its services over the telephone, CC had a real prospect of success in establishing that it did not use any sign in connection with services that were identical to those for which MONEY SAVING EXPERT was registered. 


    However, the Judge granted summary judgment on the basis of the Section 10(2) claim. He found that the evidence adduced by Mr Lewis (including recording of calls made by CC) would be sufficient to show a likelihood of confusion between the two names and there was no real prospect of CC successfully defending the claim at trial.  The Judge rejected CC’s argument that Mr Lewis’ marks were purely descriptive. He found that both marks has been registered on the ground of distinctiveness acquired through use, under the proviso provided in Section 3(1). CC had no real prospect of showing that the proviso was wrongly applied at the time of registration.


    The Judge stated that he would have also granted summary judgment on the Section 10(3) claim. By trading under the name “Money Claiming Experts”, CC was riding on the coat tails of Mr Lewis’ marks, which had a distinctive character and reputation. The association of Mr Lewis and his website with fee-based claims management procured by cold calling would have tarnished the marks. 


    COPYRIGHT


    Supreme Court decision on copyright in Stormtrooper helmets


    Lucasfilm Ltd & Ots v Ainsworth & Anr* (Lords Phillips, Walker, Hale, Mance and Collins; [2011] UKSC 39; 27.07.11)
     
    The Supreme Court (Lords Walker and Collins giving judgment) upheld the decision of the High Court and Court of Appeal in part regarding infringement of copyright in “Stormtrooper” helmets as featured in the Star Wars films. 


    Lucasfilm had sued Ainsworth for infringement of copyright, enforcement of a US judgment, and claims under US copyright law. In the High Court (as reported in CIPA Journal, September 2008) Mann J dismissed all of Lucasfilm’s claims based on English copyright law on the grounds that the helmet did not qualify as a sculpture under the CDPA, and thus Mr Ainsworth had a defence under Section 51. The Court of Appeal agreed with these findings, as reported in CIPA Journal, January 2010. The Judge further held that the US judgment was unenforceable for lack of personal jurisdiction over the defendants, and the Court of Appeal agreed. However, the Court of Appeal disagreed with Mann J on the subject of justiciability of the US copyright claims, finding that such claims were not justiciable in England and Wales. The High Court and Court of Appeal both dismissed Mr Ainsworth’s counterclaim based on his own copyright in the helmets. The issues before the Supreme Court were restricted to whether the “Stormtrooper” helmets qualified as a sculpture under the CDPA, and whether a claim against a defendant domiciled in England for infringement of US copyright is justiciable.


    At first instance Mann J had found that the “Stormtrooper” helmets were a mixture of costume and prop and that their primary function was utilitarian, namely to express an idea as part of character portrayal in the film. It held that the helmets lacked the necessary quality of artistic creation required of a sculpture and thus the helmets did not fall within the definition of “sculpture” in the CDPA.  The Court of Appeal upheld this decision and the Supreme Court did so in turn. The Supreme Court commented that the appropriate test for whether an object fell within the definition of a sculpture was not an “elephant test” (knowing one when you see it) but what the Court of Appeal had termed a multi-factorial approach, in which a judge forms a conclusion based on considering the evidence (including expert evidence) and submissions of the parties. Following the judgment of Lord Hoffmann in Designer Guild Ltd v Russell Williams (Textiles) Ltd T/A Washington Dc [2000] 1 WLR 2416, the Supreme Court was reluctant to interfere with the judgment of the lower courts on such issues unless the lower courts had erred in principle, which it found they had not.


    However, the appeal succeeded in relation to the second issue, which was whether an English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed in a country outside the European Union in breach of the copyright law of that country. Reversing the decision of the Court of Appeal, the Supreme Court found that an English court may exercise such jurisdiction provided there is a basis for in personam jurisdiction over the defendant.


    Copyright in newspaper headlines and extracts


    The Newspaper Licensing Agency & Ots v Meltwater Holding BV & Ots* (The Chancellor of the High Court, Jackson and Elias LJJ; [2011] EWCA Civ 890; 27.07.11)
     
    The Court of Appeal, upholding the ruling of Proudman J (reported in CIPA Journal, December 2010), confirmed that copyright is capable of subsisting in newspaper headlines, and that short extracts of articles may be a “substantial part” of those articles for the purpose of copyright infringement. The Court also found that the decision of the CJ in Case C-5/08 Infopaq International A/S v Danske Dagblades Forening did not qualify the longstanding English test of originality; however it left open the question of whether Infopaq had imported a new definition of “substantial part” into English law.


    The Claimants were a number of newspaper publishers. Meltwater ran a service which, amongst other things, monitored the websites of the publishers with a ’spider’ computer programme which ‘scraped’ or read the contents of those sites for the purpose of monitoring articles published online for keywords which are specified by the end users of Meltwater. The results were communicated to Meltwater’s end users through “Meltwater News” which could be accessed by email or by the end user visiting the Meltwater website. Meltwater News contained a hyperlink to each relevant article, the headline from the article, the opening words of the article after the headline and an extract from the article showing the context in which the keyword appears.
     
    The Newspaper Licensing Agency (the “NLA”) initiated a scheme for licensing media monitoring organisations such as Meltwater by the grant of a Web Database Licence (“WDL”). Under this scheme, the end users of the media monitoring organisations’ services were obliged to enter into a Web End User Licence (“WEUL”). The NLA sought declarations as to copyright infringement by commercial end users of Meltwater’s media monitoring service.
     
    The issue before the High Court and Court of Appeal was confined to whether Meltwater’s end users who did not hold a WEUL infringed the copyright in the publishers’ online articles by making copies on their computer of (1) Meltwater News (whether receiving it by email or accessing it on Meltwater’s website) or (2) the publishers’ articles themselves when clicking on the link to them provided in Meltwater News. The publishers’ websites contained terms and conditions permitting access for personal and/or non-commercial use only.


    The Court of Appeal upheld the decision of Proudman J, finding in summary:



    Copyright was capable of subsisting in headlines as original literary worksProudman J had accepted evidence that newspaper headlines can involve considerable skill in their devising. The Judge thus found that they were sometimes capable of being independent literary works as they may be original in the sense of being their author’s own intellectual creation (Infopaq v Danske). The Court of Appeal agreed, confirming that this test relates to the question of origin and is not a requirement of novelty or merit (and thus does not qualify the longstanding English case law on the test of originality).


    Extracts from articles could be a substantial part of an original literary work. 
    Copyright is infringed by, amongst other things, the copying of a substantial part of an original literary work. Under the WDL, such an extract is limited to 256 characters. Proudman J found that in many cases such an extract could constitute a substantial part of the original article from which the extract was taken. This was true whether applying the test from Infopaq (which asks whether the extract contains elements which are the expression of the intellectual creation of the author of the original article), or applying the test from previous English case law (which asks whether there was unfair appropriation of the author’s labour and skill which went into the creation of the original article). The Court of Appeal agreed, leaving open the question of which test was appropriate, finding that it was inevitable that some of the extracts would constitute a substantial part of the original article from which they were taken.


    End users could not rely on the defence under Section 28A CDPA relating to transient or incidental temporary copies.
    The Court of Appeal found that the defence under Section 28A could only potentially apply to the acts of copying involved in the end users accessing the Meltwater website to view Meltwater News or when accessing the publishers’ website to view the original article. Proudman J found that the point of such copying was to enable the end user to read Meltwater News; the making of the copy was thus not an essential and integral part of a technological process but the end which the process was designed to achieve.  Furthermore the copy clearly had independent economic significance as it is the product for which end users have paid. Therefore the conditions for a successful defence under Section 28A were not met. The Court of Appeal agreed with this finding.


    End users could not rely on the defence of fair dealing under Section 30. The Court of Appeal affirmed the decision of Proudman J that end users could not rely on the defence of fair dealing, characterising part of the defendants’ argument as “absurd”. The court found that end users were neither criticising nor reviewing the parts of the article which were ‘scraped’ by Meltwater. Furthermore, the court found that the scraped extracts were not made for the purpose of reporting current events but so that the end users may see the context in which the relevant keyword arose. The Court of Appeal also affirmed Proudman J’s finding that Meltwater’s dealings were not fair as the dealing was for commercial purposes and was encouraging end-users to infringe the publishers’ copyright.


    The Database Regulation.
    Proudman J found at first instance that there was no infringement of the arrangement or structure of publishers’ websites as a database; on the case as presented there was nothing to suggest that a text extract is a copy of the substantial part of the effort that went into the structure and arrangement of articles within the website. The Court of Appeal rejected the defendants’ argument that Section 19(2) of the Copyright and Rights in Databases Regulations 1996 rendered the conditions of use of publishers’ websites void as they prevented lawful end users from extracting or reutilising insubstantial parts of the contents of a database. The court found that this section is concerned only with acts which would otherwise be an infringement of the database right (and not acts which are merely infringement of literary copyright); furthermore an end user who had not entered into a WEUL was not a ‘lawful user’ and thus could not in any event obtain the benefit of Section 19(2).


    Double Licensing
    The defendants argued that where an online news search service has a licence, its end users did not require a further licence on the basis that since the news search service was licensed to send the extracts to end users, by implication the act of receiving must be licensed. Proudman J rejected this argument and this was affirmed by the Court of Appeal, which stated that the copies created by the end user as a consequence of opening the Meltwater News email, searching the Meltwater website or accessing the publisher’s website through Meltwater’s link were not the same copies as those sent by Meltwater. They were thus not the same acts of copying as undertaken by Meltwater and end users required a separate licence.


     


    The Court of Appeal therefore affirmed the judgment of Proudman J. The court did, however, clarify that the judgment did not mean that every recipient and/or user of Meltwater News would inevitably infringe copyright; it was more the case that “most, if not all” of such users would infringe copyright.


    ISP ordered to block website used to distribute infringing copies of films


    Twentieth Century Fox Film Corporation & Ots v British Telecommunications plc* (Arnold J; [2011] EWHC 1981 (Ch); 28.07.11)


    Arnold J granted an injunction ordering BT to utilise specified technology, such as its ‘Cleanfeed’ system, to block access to the Newzbin2 website. The Judge held that he could grant such an injunction because BT’s service was being used to infringe copyright by both Newzbin2 and its end users, and that actual knowledge by an ISP of general infringement, rather than knowledge of specific individual infringements, was all that was required for the court to have jurisdiction to grant an injunction.
     
    The Newzbin website had been found in a previous case (Twentieth Century Fox Film Corp v Newzbin Ltd [2010] EWHC 608 (Ch)) to infringe on a large scale the copyright in films owned by various major studios, who were the applicants in this case. Following the injunction issued in that case, the original Newzbin company ceased to trade, but a virtually identical website, Newzbin 2, opened shortly afterwards. As this was based offshore and run by unidentified individuals, the studios were unable to proceed directly against the new site, so instead brought an action against BT, seeking to block access to Newzbin 2.
     
    Arnold J held that there was jurisdiction to grant an injunction under Section 97A of the CDPA. That section, which had been inserted in 2003 as part of the implementation into UK law of Directive 2001/29/EC on harmonising copyright in the information society (“ISD”), gave the High Court the power to grant an injunction against a service provider, where that service provider had actual knowledge of another person using their service to infringe copyright. BT accepted that it was a “service provider”, but disputed that the other requirements of the provision were satisfied. The Judge found that each of the following requirements had been met:



    BT’s service had been used to infringe copyright.
    This was true of both the end users and the operators of Newzbin2. This issue depended on the meaning of the corresponding provision in Article 8(3) of the ISD. The CJ in LSG-Gesellschaft zur Wahrnehmung von Leistungsschutzrechten GmbH v Tele2 Telecommunication GmbH Case C-557/07 had held that an ISP was an “intermediary” within that provision even though it only provided Internet access and did not offer any other service. The end users, in downloading infringing film copies, were using BT’s service to infringe copyright. The operators also used BT’s services to infringe copyright in these films.


    BT had actual knowledge.
    This requirement did not mean that BT had to have knowledge of every individual infringement before Section 97A applied. The purpose of Article 8(3), and hence of Section 97A, was to enable an injunction against the person best placed to bring the infringing activities to an end, the service provider. This purpose was best carried out by requiring that the service provider be shown to have actual knowledge that persons were using its service to infringe copyright, but proof of actual knowledge of a specific infringement was not required.


    The second issue which Arnold J considered was whether the court should in its discretion grant an injunction, the scope of any injunction to be granted, and whether it could be broad or limited only to the particular infringements of which the service provider had knowledge. After the hearing of the case, but before Arnold J handed down his judgment, the CJ gave its opinion in L’Oréal SA v eBay International AG Case C-324/09 (see report above). This showed that the court was not limited to preventing the continuance of known infringements but could include measures which contribute to preventing further infringements of the same kind, so the broader injunction sought by the claimants could be granted.


     


    High Court refers questions to CJ concerning communication to the public of films and broadcasts by live streaming


    ITV Broadcasting Ltd & Ots v TV Catch Up Ltd (“TVC”)* (Floyd J; [2011] EWHC 1874 (Pat); 18.07.11)


    Floyd J gave a preliminary view on questions of infringement and defences under the CDPA in relation to live internet streaming of films and broadcasts. He subsequently referred the questions to the CJ.


    TVC operated an internet-based live streaming service of television broadcasts and films in which seven commercial broadcasters owned the copyright. The service allowed viewers to access content online which they were legally entitled to view as a result of payment of the television licence fees. ITV alleged infringement of its copyright in the films and broadcasts by communication of the works to the public under Section 20 and by making transient copies of the works in TVC’s servers and in the screens of the users under Section 17. TVC argued that it had not communicated the works to the public and that the transient copies did not constitute a substantial part of the films and broadcasts. It also argued that Section 20 was ultra vires as it went beyond the provisions in Directive 2001/29/EC on harmonising copyright in the information society (“ISD”) and relied on the Section 28A defence which allows temporary copying where the copies have no independent significance.


    Floyd J gave a provisional view, finding that the films and broadcasts had been communicated to the public and that this provision had not been made ultra vires by the UK legislators implementing the ISD. The Judge referred to the CJ’s decision in Case C-306/05 Sociedad General de Autores y Editores de Espana v Rafael Hoteles SL in which providing the technical means to ensure or improve reception of the original broadcast in a catchment area was held not to be a communication to the public. He distinguished this communication from one by an intervening organisation which, for its own profit, intends to attract a new audience to its service who could alternatively have accessed the original broadcast. Although he referred this point to the CJ, his provisional view was that making the broadcasts and films available to the public in this way would constitute a communication to the public.


    Referring to the CJ’s decision in Case C-306/05 Infopaq International A/S v Danske Dablades Forening (“Infopaq”) which held that a fragment of eleven words could constitute a substantial part of the work if it was deemed to express the author’s “own intellectual creation”, the Judge considered that a substantial part of the films had been reproduced. However, he postponed a final judgment on the films until the decision of the CJ in Football Association Premier League  v QC Leisure [2008] EWHC 1411 (Ch); (“FAPL”) in which the AG’s opinion was that storing a single frame could constitute a substantial part of the film due to the intellectual creation in every frame of a film.


    Following the reasoning of the AG in FAPL, the Judge provisionally found that the broadcasts had not been substantially reproduced if a broadcast was to be seen as a collocation of subject matter distinct from a film in which there can be intellectual creation in a much smaller fragment. The transient copying of the broadcasts would only constitute an infringement if a cumulative approach was taken. Floyd J therefore referred a question to the CJ to confirm whether a cumulative approach could be used to determine infringement of broadcasts.


    Floyd J held that TVC could, in any event, rely on the defence under Section 28A in relation to the transient copies of both the films and broadcasts on TVC’s servers. The Judge noted that this provision was not excluded from applying to broadcasts as well as films and followed the requirements set out in Infopaq. Floyd J held that the copies made by TVC were temporary and transient and were an integral and essential part of the technological process of streaming the content. He also held that the copies would be a lawful use of the work, subject to the court’s final position on whether TVC was liable for the act of communication to the public. He considered that the copies had no independent economic significance, but deferred making a final judgment pending the outcome of the CJ’s consideration of this point in FAPL.


    Finally, TVC also relied on a defence under Section 73 to the extent that the broadcast was made for reception in the area in which it was re-transmitted by TVC. The Judge allowed the defence in relation to regional services, except to the extent that these were to mobile phones or to areas outside the relevant region.