This month we report on the decision of the CJEU in SAS Institute Inc v World Programming Ltd on copyright in computer programmes, and we report on the decision of the Court of Appeal in Samsung v Apple on the interpretation of Article 91 of the Community Design Regulation.


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


Decisions of the GC and the CJEU 



Case  

T-435/11
Universal Display Corp (“UDC”) v OHIM
(02.05.12)

Application (and where applicable, earlier mark)  

UniversalPHOLED


- chemicals for use in the manufacture of organics light-emitting devices and other organic electronic devices (1)

Comment

The GC upheld the BoA’s decision that the sign UNIVERSALPHOLED was descriptive for the goods sought to be registered under Art 7(1)(c).


The BoA was correct to find that the sign was descriptive of the type and nature of the goods it applied to. The element “pholed” was descriptive being an acronym for phosphorescent organic light-emitting devices.


The fact that the term “pholed” had been coined by UDC or that it was purportedly the market leader in the field did not mean it was entitled to claim an exclusive right to the term. Furthermore, UDC had not evidenced that the mark had acquired distinctive character through use.

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Case   T-244/10
Tsakiris-Mallas AE v OHIM; Seven SpA
(08.05.12)
Application (and where applicable, earlier mark)  


- leather goods (18)


- men and women's footwear and belts (25)



- goods made from leather and bags (18)



- goods made from leather, bags (18)


- clothing, footwear, headgear (25)


(Italian marks)

Comment

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


The BoA was correct to find that the marks were visually, phonetically and conceptually similar. A comparison between the marks could be undertaken in spite of the fact that the earlier marks contained the word “seven” and that the numeral “7” posed very low inherent distinctive character, as is generally the case with numerals and numbers. The inclusion of the words “fashion shoes” in the mark applied for was only of secondary importance due to that element’s low degree of distinctive character. Even though the earlier marks had a low degree of distinctive character this did not preclude an assessment of the likelihood of confusion.


On that basis, and in light of the identicality of the goods in issue, the BoA was correct to find that there was a likelihood of confusion between the marks.

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Case

GC
T-331/10
T-416/10
Yoshida Metal Industry Co Ltd v OHIM; Pi-Design AG, Bodum France, Bodum Logistics A/S
(08.05.12)

Application (and where applicable, earlier mark)


- cutlery, scissors, knives, forks, spoons, whetstones, whetstone holders, knife steels and  fish bone tweezers (8)


- household or kitchen utensils and containers (not of precious metal or coated therewith), turners, spatulas for kitchen uses, knife blocks for holding knives, tart scoops and pie scoops (21)

Comment

The GC annulled the BoA’s decision and found that the marks were not invalid pursuant to Art 7(1)(e)(ii).


The GC held that the BoA was correct that the ground for refusal set out in Art 7(1)(e)(ii) may apply to any sign, whether a two-dimensional representation of a three-dimensional shape or a two- or three-dimensional shape, where all the essential characteristics of the sign perform a technical function.


However, the BoA was wrong to conclude that the dots were concave in character (and therefore that the signs were representative of three-dimensional shapes) and performed a technical, non-skid function. This characteristic was not referred to in the signs as filed but was a representation of the goods as actually marketed by Yoshida. Only the shape as reproduced in an application could be the subject-matter for consideration.


In stating that there was nothing in the Regulation that precluded an assessment involving “reverse-engineering” to determine what the mark really represented, the BoA had erred. Accordingly, the decision was annulled.

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Case

GC
T-273/10
Olive Line International SL v OHIM; Umbria Olii International Srl
(22.05.12)

Application (and where applicable, earlier mark)


- substances for laundry use, cleaning preparations, soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices (3)


- medical services and veterinary services, hygiene and beauty care for humans and animals and horticulture and forestry services  (44)



OLIVE LINE


- soaps, perfumery, essential oils, cosmetics hair lotions, dentifrices, all olive oil-based (3)


(Spanish mark)

Comment

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


The BoA had erred in concluding that because the similar element “olive” was descriptive in the earlier mark it could not contribute to any relevant conceptual similarity between the marks. The weak distinctive character of this element could not call into question the fact there was a similar concept creating a link between the marks.


The visual similarity resulting from the common element “olive” was average; this was the element that would be remembered by the relevant consumers and was the first of the two word elements with equal distinctive force in the earlier mark. The relevant public might not notice the absence of the second element.


The BoA had erred in concluding that the phonetic similarity between the marks was below average due to the presence of the second element “line” in the earlier mark. In the absence of evidence that Spanish consumers would particularly stress the second word element, the phonetic similarity was greater than the visual similarity between the marks.


The BoA had erred in concluding there was no likelihood of confusion between the marks in respect of the majority of the goods and services applied for.

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Case

GC
T-570/10
Environmental Manufacturing LLP v OHIM; Société Elmar Wolf (“SEW”)
(22.05.12)

Application (and where applicable, earlier mark)


- machines for professional and industrial processing of wood and green waste (7)




- garden machinery and tools (7, 8 and 12)


(French and International (Spain and Portugal) marks)

Comment

The GC upheld the BoA’s decision that there was genuine use of the earlier marks under Arts 42(2) and (3) and that there was a risk of dilution of the earlier marks under Art 8(5).


SEW had demonstrated genuine use of its earlier marks for garden machinery and tools. It was not possible to distinguish distinct categories or sub-categories of those goods depending on whether they were intended for the general public or professional gardeners. Both professional and domestic gardeners use the same tools, even if some were larger gardening appliances.


Although the BoA had not distinguished between the relevant public for the purposes of its assessment of the risk of dilution (being the target public of the earlier marks) and free-riding (being the target public of the application), this did not affect its assessment of the relevant public for the risk of dilution.


Under Art 8(5), SEW had evidenced a non-hypothetical risk of detriment to the distinctive character of the earlier marks. The earlier marks were highly distinctive for the goods. Furthermore, those goods were identical or highly similar to those for which the mark was applied for. The GC held that in this case there was a risk that consumers of the goods would no longer immediately associate SEW’s marks with its goods. The message conveyed by a mark with a reputation conferred on the mark a significant value that deserved protection.


Without such protection the commercial effort in developing the reputation of the marks would be undermined.

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Case

GC
T-585/10
Aitic Penteo SA v OHIM; Atos Worldline SA
(22.05.12)

Application (and where applicable, earlier mark)

PENTEO


- apparatus for recording, transmission, reproduction of sound or images, magnetic data carriers (9)


- telecommunications (38)


- consultancy services by information technology professionals (42)


XENTEO


- equipment for electronic funds transfer, magnetic or electronic recording media (9)


- telecommunications (38)


- rental of computers for electronic transfer of funds (42)


(Benelux and International (CTM) marks)

Comment

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


The GC held that the BoA was correct to have found that there was some visual and phonetic similarity between the marks. As the goods and services applied for were identical or highly analogous there was a likelihood of confusion.


There was no evidence before the BoA that the co-existence of the two marks on the market prior to application had reduced the likelihood of confusion. On that basis, co-existence was not a relevant factor to be considered.

Case

GC
T-179/11
Sport Eybl & Sports Experts GmbH v OHIM; Seven SpA
(22.05.12)

Application (and where applicable, earlier mark)


- goods made of leather, various types of bags, holdalls, rucksacks and umbrellas (18)



 
- goods made from leather and imitations of leather not included in other classes, rucksacks, various types of bags and umbrellas (18)


(Community mark)

Comment

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


The BoA was correct to find that there was at the very least, a very low degree of visual similarity between the marks as well as a medium degree of phonetic similarity due to the common presence of the element “seven”.


Although the “Summits” element of the application in combination with the red figurative elements representing mountains might be understood by a very small part of the relevant public to mean the seven highest peaks of the seven continents, for the most part, this would simply be understood to refer to seven mountains. There was, therefore, some conceptual similarity as both marks referred to the number 7.


The BoA had been correct to find that there was a likelihood of confusion because the prominent display of the word component “seven” meant that the relevant public might perceive the goods as belonging to two distinct product ranges coming from the same manufacturer.

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Case

GC
C-98/11
Chocoladefabriken Lindt & Sprüngli AG v OHIM
(24.05.12)

Application (and where applicable, earlier mark)

- chocolate and chocolate products (30)

Comment

The CJ dismissed the appeal from the GC’s decision that (i) the mark was devoid of distinctive character under Art 7(1)(b); and (ii) distinctive character had to be acquired in the EU as a whole in order to be registrable under Art 7(3); evidence of use in only three Member States was insufficient (reported CIPA Journal, February 2011).


The GC followed the correct criteria in its assessment of distinctive character and it did not err when finding that the registrations already allowed in Member States were only one factor which may be taken into account when assessing registrability. OHIM was, however, under no obligation to follow the assessment of the national authorities.


Furthermore, since it was apparent that the applicant had failed to establish that the mark had inherent distinctive character and that was the case throughout the EU, the GC did not err in concluding that the mark must acquire distinctive character through use throughout the EU in order to rely on Art 7(3). The CJ did note that it would be unreasonable to require proof of such acquisition for each individual Member State.

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Case

GC
C-196/11
Formula One Licensing BV v OHIM; Global Sports Media Ltd
(24.05.12)

Application (and where applicable, earlier mark)


- magazines, pamphlets and books (16)


- communication of books, magazines and newspapers via computer terminals (38)


- electronic publication of books, journals and periodicals and entertainment information (41)
all in the field of Formula 1



 
F1


- goods and services in Classes 16, 38 and 41


(International, German and UK registrations)

Comment

The CJ allowed the appeal and referred the case back to the GC. The GC had wrongly called into question the validity of the earlier national trade marks and so concluded that there was no confusion under Article 8(1)(b) (reported CIPA Journal, March 2011).


The CJ held that the GC’s assessment of the distinctive character of the F1 word marks infringed Article 8(1)(b). Such an assessment may not culminate in a finding of the lack of distinctive character of a sign identical to a registered and protected national trade mark, since such a finding would not be compatible with the coexistence of CTMs and national trade marks or with Article 8(1)(b) when read in conjunction with Article 8(2)(a)(ii). In order to avoid infringing Article 8(1)(b), it was necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition was based. The CJ noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character.

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Challenging the decisions of the GC


Helena Rubinstein SNC and L’Oréal SA v OHIM; Allergan Inc (CJ (First Chamber); C-100/11; 10.05.12)


The CJ dismissed Helena Rubinstein and L’Oréal’s appeal from the GC’s decision to uphold the BoA’s declaration of invalidity of the marks BOTOLIST and BOTOCYL pursuant to Articles 53(1)(a) and 8(5).


Helena Rubinstein and L’Oréal (the “Appellants”) had respectively registered BOTOLIST and BOTOCYL (the “Contested Marks”) in Class 3 for various toiletries. Following registration, Allergan applied to invalidate these marks on the basis of various national and Community marks for BOTOX in respect of goods primarily in Class 5, including pharmaceutical preparations for the treatment of wrinkles. The Appellants appealed the GC’s findings that the BOTOX trade mark had a reputation and that use of the Contested Marks without due cause took unfair advantage of, or was detrimental to, the distinctive character or repute of the earlier marks.


In dismissing the appeal, the CJ (concurring with AG Mengozzi’s opinion – reported in CIPA Journal, March 2012) held as follows:


  • The GC was legitimately able to confine its review to the two earlier UK national marks (the “Earlier Marks”), since the UK was the territory in respect of which Allergan had produced most evidence.
  • The CJ dismissed the Appellants’ submission that the GC had not carried out any specific analysis as to whether the Earlier Marks had a reputation in each of the two categories comprising the relevant public (the general public and health-care professionals). If a trade mark enjoys a reputation with the general public then, in principle, it is assumed to be known to professionals. It could not reasonably be maintained that the reputation of the BOTOX mark was unknown to health-care professionals.
  • By disputing the probative force of certain evidence relating to reputation, the Appellants’ true goal was to obtain a fresh assessment of that evidence by the CJ. Since no distortion of the evidence had been properly alleged, this point of appeal fell outside the CJ’s jurisdiction and was thus inadmissible.
  • The GC was entitled to take into consideration a decision of the UKIPO when assessing reputation of the Earlier Marks.
  • The Appellants’ submission that the GC erred in confirming the existence of link between the Earlier Marks and the Contested Marks also fell outside the CJ’s jurisdiction as it would have involved an appraisal of the finding of facts by the GC.
  • The submission that the GC’s determination of parasitic intent was not supported by evidence was unfounded. The GC had reached its conclusion after an overall assessment of the factors relevant to the case. Furthermore, the Appellants’ claim sought to call into question the GC’s assessment that the prefix “boto” was not descriptive and was thus not open to review by the CJ.
  • In the present case, the GC was entitled to admit English articles which had not been translated into French (the language of the proceedings before the BoA). Although it was settled law that evidence supporting an opposition or application for invalidity/revocation of a trade mark must be submitted in the language of the proceedings in order to ensure the equality of arms between the parties, it could not be held that the lack of translations adversely affected the rights of the Appellants. Both admitted that they understood the contents of those articles and, furthermore, the language of the proceedings before the GC was English.
  • The GC did not infringe Article 75 by rejected the submissions alleging failure by the BoA to state sufficient reasons for its decisions. Although some of these reasons were tersely stated, the Appellants’ rights of defence were not affected.




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No jurisdiction of national Court to hear counterclaims where the counterclaim does not act as a defence to the infringement claim

Adobe Systems Inc v Netcom Distributors & Ots* (Mann J; [2012] EWHC 1087 (Ch); 24.05.12)


Mann J held that the High Court did not have jurisdiction to hear a counterclaim for revocation based on non-use where the counterclaim was not capable of being a defence to the infringement claim. 


Adobe brought a claim against Netcom for infringement of certain of its CTMs and UK trade marks by introducing parallel imports. In addition to raising a defence based on (among other things) abuse of dominant position, Netcom also counterclaimed for revocation or partial revocation of the marks on the basis of non-use. However, the classes in respect of which non-use was alleged did not include any of the classes in respect of which infringement was claimed. As such, even if the counterclaim were successful, it would not have allowed Netcom to defend the infringement claim. 


The Judge found that the CTM Regulation did not provide a clear answer to the question of the jurisdiction of national Courts over counterclaims. Ultimately, it came down to a contest between the literal and purposive interpretation of Article 96, of which the latter was to be preferred. Mann J highlighted the fact that the CTM Regulation generally prevented national Courts from exercising jurisdiction over the validity of marks, as this was one of the prime roles of OHIM. The Regulation allowed national Courts to deal with revocation counterclaims, and this made policy sense where the counterclaim was linked to the main claim as a defence.


Mann J concluded that it was most unlikely that the legislators had intended that all counterclaims would be allowed; it would be an absurdity to grant the national Court a wider jurisdiction purely because the revocation claim was presented as a counterclaim.  The counterclaim which could be brought, therefore, was one which, if successful, was capable of being a defence to a claim.  




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Applications for expedition


J.W. Spear & Sons Ltd & Ots v Zynga Inc (Henderson J; [2012] EWHC 1374 (Ch); 04.05.12)


Henderson J refused the claimants’ application for an expedited trial of its claim against Zynga for trade mark infringement. 


The claimants were members of the Mattel group of companies, one of the world’s largest manufacturers of toys and games, including the well-known word game “Scrabble” and various electronic versions, including “Scrabble Scramble”. Zynga was the world’s largest social gaming company and a leading developer of applications, or “apps”. Zynga had launched a new app for a game called “Scramble with Friends” which Mattel claimed infringed four of its CTMs and UK trade marks for the word marks SCRAMBLE and SCRABBLE, a device mark SCRABBLE, and a 3D “Tile” mark. 


Mattel applied for expedition on the basis that (i) it was currently developing a new game, to be launched under the SCRAMBLE name alone, between December 2012 and February 2013, and (ii) there was a risk of serious and unquantifiable damage to the existing SCRABBLE brand in its digital version if it too had to compete with “Scramble with Friends”.


Henderson J held that although Mattel had discovered that a slot in the Court list had recently become available after an unrelated case had settled, there would still inevitably be a risk of prejudice to other litigants and Court users, or of extra strain on Court resources and judicial time, whenever an application for expedition was granted. Only where a case met the threshold of real objectively viewed urgency could an application for expedition be properly granted with the result that it would jump its normal place in the queue. The Judge held that the present case did not meet this threshold of urgency; Mattel’s evidence about the general nature and chronology of its new product was thin, and although there would be difficulties in quantification, they were familiar difficulties with which the Court was well used to dealing. The Judge stated that trade mark cases did not occupy a special position, nor was there a presumption in favour of granting expedition in such cases. 


Accordingly, the application was refused. 



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PASSING OFF


Lumos Skincare Ltd v Sweet Squared Ltd & Ots (“SSL”)* (Mr Recorder Douglas Campbell; [2012] EWPCC 22; 10.05.12)


Mr Recorder Campbell rejected Lumos’ claim for passing off as no misrepresentation had been established. 


Lumos distributed specialist premium-priced skincare products under the mark LUMOS.  It brought a passing off action against SSL in respect of its sale of nail care products under the mark LUMOS. 


Mr Recorder Campbell found that only a very modest goodwill had been generated in the LUMOS mark in relation to skincare products, which was limited to high end anti-ageing products. Although even a very modest goodwill could support a claim for passing off (Stannard v Reay [1967] RPC 589 and Stacey v 2020 Communications [1991] FSR 91), there was a clear division between the skincare industry and the nail industry. The Judge found it more difficult to accept that there was a likelihood of deception where the relevant industries were distinct. Although the skincare and nail industries were both part of the overall beauty industry, this umbrella term covered a number of distinct areas. The lack of evidence of customer confusion suggested that there had been no misrepresentation.






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DESIGNS


Interpretation of Article 91 of the Community Design Regulation


Samsung Electronics (UK) Ltd v Apple Inc* (Lord Neuberger MR, Lloyd and Moore-Bick LJJ; [2012] EWCA Civ 729; 30.05.12)


The Court of Appeal dismissed Apple’s appeal against an order of Mann J who refused Apple’s application for a stay of Samsung’s claim for a declaration that its “Galaxy” tablet does not infringe Apple’s Registered Community Design for its “iPad” device. The Court held that where there was a claim for a declaration of non-infringement and a counterclaim for infringement, the stay pending ongoing invalidity proceedings at OHIM required by Article 91(1) of Community Design Regulation (6/2002/EC) (the “CDR”), absent special grounds, was of the counterclaim, not of the claim. 


In the English proceedings, which formed part of an ongoing international dispute between the parties concerning their respective tablet computers, Samsung was seeking a declaration of non-infringement and Apple was counterclaiming for infringement of its registered design. Apple applied for a stay of Samsung’s claim and of its own counterclaim under Article 91 on the basis that the validity of Apple’s registered design was in issue on application to OHIM. 


The Court held that Mann J had been right to reject the contention that Samsung’s claim touched upon the validity of the registered design and therefore did not fall within the exception for an action for a declaration of non-infringement in Article 91(1). The issue to be decided on appeal was whether the words “the proceedings” in Article 91(1) referred to both the claim and counterclaim (in which case both would be stayed in the absence of “special grounds”), or simply the counterclaim (in which case the claim could continue but the counterclaim would be stayed in the absence of “special grounds”). 


The Court rejected Apple’s argument that because its counterclaim was an infringement action it fell within the main provision of Article 91 rather than the exception. Although the language of Article 91 drew a distinction between “actions” and “proceedings”, the Court was reluctant to place too much weight on linguistic points where different inferences could be drawn from different language versions. More important was the policy behind the relevant provisions of the CDR, and the purpose of Article 91(1) was plain; subject to two exceptions it created a rule which prevented the validity of a registered Community design being considered in simultaneous proceedings in different fora.


It seemed to the Court natural to read “the proceedings” as referring back to the opening words of the paragraph, i.e. to “an action referred to in Article 81, other than an action for a declaration of infringement”. That was the part of the litigation which involved or could involve an issue of validity or invalidity, whereas a claim for a declaration of non-infringement could not do so, by virtue of Article 84(4). A potential infringer should not have to wait for validity proceedings to be determined before he could know whether it was safe to market his product. This would be to his benefit, and to that of the public. 
The Court therefore held that Samsung’s claim should not be stayed but that, absent special grounds, Apple’s counterclaim should be stayed. The Court ordered that the question whether there were special grounds should be remitted to the Patents Court, to be determined upon argument at the imminent trial. 


Summary judgment


Dahlia Fashion Co Ltd v Broadcast Session Ltd & Anr* (Judge Birss; [2012] EWPCC 23; 16.05.12)


Judge Birss declined to grant summary judgment in favour of the claimant in a claim for infringement of unregistered design rights in its dress. However, to reflect the weakness of the defence and the disproportionality of defending the claim, the Judge made a conditional order requiring the defendants to pay a sum into Court.


Dahlia claimed that the defendants had infringed its UK and Community unregistered design rights in two of its garments (a dress and a playsuit) by importing and selling infringing copies. Dahlia accepted that summary judgment could not be given in respect of the playsuit but applied in respect of the dress. 


Although Judge Birss found that the defendants’ dress was virtually identical to Dahlia’s, the defendants denied subsistence of any design rights, as well as Dahlia’s title. Dahlia’s dress and playsuit had both been designed by the same freelance designer whom Dahlia had commissioned, and the defendants had found what they contended was an earlier garment of a similar design to Dahlia’s playsuit. Judge Birss therefore reluctantly held that if the defendants succeeded at trial in showing that the playsuit was not in fact made by Dahlia’s designer, it was unlikely, but conceivable, that this would have a knock-on effect on the dress, which had been designed by the same person in the same circumstances. Accordingly, it would be wrong to grant summary judgment.


However, the Judge granted a conditional order requiring the defendants to pay £10,000 into Court or face having their defence in respect of the dress struck out. This was to reflect the improbability of the defence and the questionable proportionality of defending the claim where only £477 worth of sales had been made.



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COPYRIGHT



SAS Institute Inc. (“SAS”) v World Programming Ltd (“WPL”) (CJEU (Grand Chamber); C-406/10; 02.05.12)


The CJEU has handed down its decision on the interpretation of Directive 91/250 on the legal protection of computer programmes and 2001/29 on the harmonisation of certain aspects of copyright and related rights in the information society, holding that legal protection of computer programmes conferred by copyright does not extend to the protection of their functionalities, programming language or the data files used therein.


The initial dispute between SAS and WPL related to a computer programme created by WPL. The programme emulated the functionality of SAS software, which enabled users to execute application software which was written in SAS specific coding language. SAS claimed that in doing so, WPL had infringed the copyright in the manual for its software and thereby indirectly also the copyright in the software itself. SAS further argued that the copyright in the manual was infringed by WPL creating a manual for its own programme. Finally, SAS alleged that in observing, studying and testing its learning edition software to create its programme, WPL had acted contrary to the terms of the licence for use thereof. 


The CJEU ruled that Directive 91/250 must be interpreted as meaning that neither the functionality of a computer programme, its programming language nor the format of data files are protected by copyright because they are not forms of expression for the purposes of Article 1(2). However, this did not necessarily mean that the SAS language and format of the SAS data files were not protected as works; if they were the author’s own intellectual creation, they would be.


On the second question, the CJEU held that Article 5(3) of Directive 91/250 should be interpreted as meaning that a person who has a copy of a computer programme under licence is entitled, without the authorisation of the owner of the copyright to observe, study or test the programme so as to determine the ideas and principles which underlie any element of the programme, provided that:


(1) they are carrying out acts covered by that licence;
(2) they are carrying out acts of loading and running necessary for the use of the computer programme; and
(3) on condition that the person does not infringe the exclusive rights of the copyright owner.


The Court therefore held that the owner of the copyright in a computer programme may not prevent, by relying on the licensing agreement, the person who has obtained that licence from determining the ideas and principles which underlie all the elements of that programme in the case where that person carries out acts which that licence permits him to perform and the acts of loading and running necessary for the use of the computer programme.


On the third question, in considering the meaning of Article 2(a) of Directive 2001/29, the Court held that copyright infringement can occur where elements from a user manual of a computer programme are reproduced either in another manual or computer programme. This was only the case, however, when such reproduction constitutes the expression of the intellectual creation of the author of the copyright protected user manual. In the present case, this was a matter for the national Courts to decide.


Freezing orders and search and seizure orders in the PCC


Sang-Kook Suh (Mr) & Anr v Kwang-Sun Ryu (Mr) & Ots (Judge Birss; [2012] EWPCC 20; 03.05.12)


Judge Birss granted the first freezing injunction to be ordered in the PCC in a soft IP case. 


In a claim for passing off, copyright infringement, conversion and revocation of a UK registered trade mark, Judge Birss decided that it was appropriate on the facts to make an asset freezing order, and held that the PCC had jurisdiction to grant such an order.  Although the County Court Remedies Regulations 1991 (“CCRR 1991”) provided that county Courts might not grant prescribed relief, Regulation 3(2)(b) CCRR 1991 provided an exemption in respect of a PCC held by the person nominated under Section 291 CDPA. The Judge held that the correct interpretation of the Regulations was that a PCC held by a person nominated under the CDPA had jurisdiction to make orders for prescribed relief irrespective of the jurisdictional basis on which the case came before the Court. Asset freezing orders and search and seizure orders might therefore be made in the PCC by the nominated judge (Judge Birss) in all cases properly before the Court.


Small claims


Tony D Sullivan (aka Rudey Soloman) v Bristol Film Studios Ltd (Ward, Etherton and Lewison LJJ; [2012] EWCA Civ 570; 03.05.12)


The Court of Appeal dismissed Mr Soloman’s appeal against a decision of Mr John Jarvis QC (sitting as a judge of the Chancery Division in Bristol) to strike out his claim on the basis that, even if it were to succeed, the costs of fighting it were out of all proportion to the amount that Mr Soloman was likely to recover.  


Mr Soloman (a hip hop artist) complained that BFS had, without his consent, uploaded a music video which featured him to You Tube, thereby infringing both his copyright and performance right and also infringing his moral right not to have his work subjected to degrading treatment. The video had only remained on You Tube for 5 days, and Mr John Jarvis QC, concluding that the video had been seen by around 50 people, had assessed Mr Solomon’s maximum possible recovery at £50. 


Mr Soloman agreed that the claim should not go forward to trial if indeed it were only worth £50 or thereabouts and the Court, finding that that was the approximate value of the claim, dismissed the appeal. However, the Court stated that the mere fact that a claim is small should not automatically result in the Court refusing to hear it at all, and indicated that in future a judge should consider carefully whether there is a means by which the claim could be adjudicated without disproportionate expenditure. In the present case, the claim could have been tried in the PCC or have been allocated to the small claims track in the Bristol County Court. 


CJEU considers questions on copyright in computer programmes. 




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DATABASE RIGHT


Football Dataco Ltd & Ots v Sportradar GmbH & Anr and Football Dataco Ltd & Ots v Stan James Abingdon & Ots* (Floyd J; [2012] EWHC 1185 (Ch); 08.05.12)


Floyd J held that Sportradar was not jointly liable for database right infringement with UK users who accessed its data. The users themselves were found not to have infringed database rights by accessing Sportradar’s current Live Score service which consisted of details of goals, and the times of goals for English and Scottish football matches. In contrast, prior to May 2011 users who had downloaded Sportradar’s data as part of the Live Score service as it was then constituted were downloading a substantial part of the database, but however it held that Sportradar were not jointly liable for such activity. 
 
The claimants between them administered football in certain English and Scottish leagues and marketed the data (i.e. goals, red cards, yellow cards etc) in such matches.  This data was compiled in a database, along with data from other matches and other sports, which was maintained by PA (the “PA Database”). The data was both updated and provided to third parties while matches were taking place. The defendants were a German and Swiss company which provided data relating to sports events to customers, such as betting and media customers. The trial was concerned with the claimants’ allegation that Sportradar were jointly liable with users of websites for acts of database right infringement committed by the users.
 
Subsistence of Sui Generis database right
The Judge followed Fixtures Marketing Ltd cases on the scope of database right protection and noted that the “substantial investment” required by Article 7 of Directive 96/9/EC on the Legal Protection of Databases (the “Database Directive”) could not be demonstrated by investment in the “creation” as opposed to the “obtaining, verification or presentation of the contents of the database”. 


In holding that database right subsisted in the relevant part of the PA database, the Judge held that factual data which was collected and recorded at a live event such as a football match about events outside of the control of the person doing the collection and recording was not created by that person, but was obtained by him. The Judge’s reasons were that (i) collecting and recording data fell within the ordinary meaning of the term “obtaining”, but less so within the meaning of “creating”; (ii) in determining whether there was creation involved, the focus of the enquiry was whether the investment involved creation of new information, but  recording existing facts was not creating new information. The Judge also noted that, unlike in the Fixtures or British Horseracing Board cases, in principle, others were free to collect and record the observed data for themselves.


Infringement by users
Substantial part
The users accessed data relating to English and Scottish matches by clicking on a link on Sportradar’s website which opened a pop-up window containing match data. The data provided through this link differed before and after the date of the Defence. Before the date of the Defence, goals, goal scorers, red cards, yellow cards and substitutions were provided for all matches. After the date of the Defence, for matches which were not shown live on television, only goals were provided.


The Judge held that the data provided before the date of the Defence was likely to have used sufficient data derived from the PA database to amount to a qualitatively substantial part. The Judge held that the range of data was sufficiently wide to require an investment of the same order as that required for the full data collection operation. However, the Judge held that the position was different after the date of the Defence. The Judge held that even if every goal included in the data extracted by a punter was derived from the claimants’ database, the data so extracted would not be sufficient to amount to a substantial part. 


Insubstantial part
The Judge held that there was no evidence that individual users were extracting the data repeatedly and systematically nor was there any evidence that an individual user was accumulating data entries so as to reconstitute a substantial part of the original database.
 
Joint liability
Sportradar’s joint liability with users
The Judge held that Sportradar were not joint tortfeasors with the users. He held that the mere making available, abroad, of the means whereby a right may or will be infringed is not sufficient to make the supplier a joint tortfeasor.


Stan James’ Case
A Judgment was given at the same time in relation to a second action brought by the Claimants against Stan James, a Gibraltan betting company and customer of Sportradar’s Live Scores service. 


The Judge held that Stan James were not currently liable for infringement in respect of the current service provided to its users. This was because its users were not extracting or re-utilising a substantial part of the database. However, the Court did find that Stan James was jointly liable with users for the Live Score service as constituted prior to May 2011. This was because Stan James was directly encouraging its customers to use the Live Scores service.




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Reporters’ note: We are grateful to our colleagues at Bird & Bird LLP for their assistance with the preparation of this report: Abby Minns, Alexander Payne, Alice Sculthorpe, Anna Stanley, Emily Mallam, Laura MacHale, Mark Livsey, Ning-Ning Li, Toby Sears, Zoe Fuller and Zoe Grant.


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