The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 30 November 2011

Past historic 6: Elzie Segar, icon creator

The sixth item in the little bundle of photocopied articles on IP history which this Kat researched and wrote back in the 1980s, when he was still a full-time academic, has a very different focus to that of its predecessors. Its subject is Elzie Segar (1894 to 1938). 

Though relatively little is known of Elzie Segar, this man is credited with creating some of the best-known icons of the 20th century and beyond: Popeye the Sailor, Wimpy and Jeep. This article takes a look at the man, his creations and some of the litigation that surrounded them

This article appeared as "Elzie Segar, Intellectual Property Creator Extraordinary" and was first published in [1986] European Intellectual Property Review 373 to 376. You can read it in full here.

More Wednesday Whimsies

From the IPKat's Turkish friend Mehmet Artemel comes information about the adventures of Hello Kitty, who found herself transformed into a handsome piece of bonnet decoration for a pink Jeep owned by the stylish Ersoy sisters. The vehicle was towed into custody by the traffic police in Kuruçeşme on the ground that the logo had not been recorded in the vehicle's registration certificate. The unlucky girls were fined 66 Turkish Lira. Artemel kindly explains:
"According to Schedule 2 of the Turkish Road Traffic Regulations, car owners are under an obligation to provide requisite evidence that all signs, logos or pictures have been affixed on to a vehicle are subject to the prior authorisation and approval of their rightful owners". 
If your Turkish is up to it, you can read the original, and get to see the Ersoys, here.

A very excited Ben Zevenbergen (from the office of MEP Marietje Schaake) has emailed the IPKat to tell him all about a seminar which Marietje has organised for 7 December -- in the hallowed arena of the European Parliament itself -- on self-regulation of online services. The event seeks to assess the concept critically, taking a careful look at policing the internet. Says Ben

"With ACTA, the review of the IPR enforcement directive and the review of the E-commerce Directive coming to the European Parliament soon, politicians need to be aware of the technical and societal implications of terms such as 'self-regulation' and 'cooperation between service providers and rights-holders.

Also, Europe's credibility in the worldwide information society may be put at risk if we allow for private regulation of content, especially with regards to respect for fundamental rights and promoting a free flow of information abroad".

The striking poster (above) gives you an idea what it's all about. If you click it, you should be able to get it to look bigger. In any event, you can follow the topic and register here, should you wish to do so.

Via Chris Torrero (thanks, Chris!) comes news that a team of researchers from the Technical University of Berlin, examining the interrelation of patents and standards, have prepared a short survey. Now duly enriched and informed by data received from France and Germany, they seek help from the UK. According to information received by the IPKat, Daniel Mansfield (Head of National and European Policy, BSI) says:
"If you have 20 minutes or so to complete the online survey, I know they would appreciate it. The results of the survey will be shared among members of the European standards bodies CEN and CENELEC and could help us as we work on the better use of standards to support innovation and new developments in products and services. 
Your personal details will not be disclosed to third parties, and the researchers will be happy to share any results with you".

Always sympathetic to his fellow bloggers, the IPKat could not help smile at a little exchange between two of them. When he's not industriously solving all the problems past, present and future of the European Patent Office, its president, Benoît Battistelli, is a denizen of the blogosphere -- and what can be more reassuring for the rest of us than to know that our president is rolling up his sleeves, firing up the old PC and giving us a personal glimpse of Life at the Top. His recent post, "European Patent Academy – developing a patent culture in Europe" (here), did not however find much favour with one reader, "Ron" -- who as Ronny Patz is a not inconsiderable blogger and tweeter even though he is not, so far as we are aware, president of anything in particular. Commenting on El Presidente's post, he wrote
"I find this blog post a little confusing. For someone who’s never heard of the academy, this mix of self-congratulation and hardly interesting statistics isn’t what I’d call informative or interesting."
Having read the presidential post herself, Merpel thinks she sees where Ron is coming from. While the IPKat chided her for not knowing about the Academy, since he briefly mentioned it in a post back in April 2010, she reminded him that, as a Kat with a short memory, she could hardly be expected to recall so distant a post. Anyway, the moderator of the president's blog kindly directed Dear Readers Ron and Merpel to the Academy's web page here,  So now we're all happy -- and, if none the wiser, at least we're a little better informed [Thanks, Nick Bassil, Kilburn & Strode, for leading the Kats to Ron's link here to how to handle the Court of Justice's notoriously clumsy website].

Lack of credible witnesses and evidence: a recipe for failure

Being a self confessed 'foodie', this Kat has been following the Reggae Reggae Sauce case with interest (see her previous Katpost here). As readers will recall, these proceedings involved (a) a claim by Mr Bailey and Mr Sylvester of an alleged breach of contract on the part of Levi Roots; and, (b), in the alternative, a claim by Mr Bailey of an alleged breach of a duty of confidence that he alleges was owed to him by Mr Roots. In delivering his judgment on Friday, Judge Pelling QC emphasised (at [3]) that 'the legal onus of proving the case they advance rests on the claimants who must prove their case on the balance of probabilities if their claim is to succeed'.

Witness credibility was a major factor during the trial. On this point, the judge concluded (at [15]) that he 'cannot safely rely upon the evidence of either claimant or the first defendant save to the extent that the evidence of each is admitted or corroborated or is against the interest of that witness'. Unfortunately, no contemporaneous documentation was available against which to test the contentions made by the parties and the evidence of their respective witnesses.

The main basis for the case brought by Messrs Bailey (left) and Sylvester was that an oral agreement was concluded between them and Mr Roots in February 2006 by which each would have an equal interest in selling the "Bailey Sauce". Mr Bailey claimed that he first devised this sauce in Jamaica in 1984, the recipe of which he kept so secret by supposedly first writing it down and then memorising it before destroying the paper record when he moved to London. Mr Bailey alleged that, following the making of this agreement, he demonstrated to Mr Roots how to make the Bailey Sauce in the presence of a mutual friend and experienced chef, Carlos Hoffmann.

Mr Roots' version of events is rather different. He claimed that he wanted to show Mr Bailey how he was making his sauce. With that in mind, Mr Roots purchased some ingredients and, in the course of doing so, met Mr Hoffman -- whom he also invited to watch him make his sauce. Mr Roots maintains that Mr Bailey was not interested and left after a few minutes.

Levi Roots
The judge was highly critical of Mr Bailey's version of events. He stated (at [70]) that it was inherently unlikely that Mr Bailey would be prepared to demonstrate an allegedly secret recipe in the presence of a trade rival, Mr Hoffmann. Not merely would that defeat or at least run the risk of defeating the secrecy that Mr Bailey says he had maintained for more than 20 years prior to the events in question, but it would also involve the risk of damaging or destroying the successful launch of the business which, both Mr Bailey and Mr Sylvester asserted, it had been agreed should be run as a joint venture with Mr Roots between them only a few days before. For the judge it was 'quite simply inconceivable' that Mr Bailey would have been prepared to adopt such an approach.

Satisfied that Messrs Bailey and Sylvester had failed to prove their version of the demonstration, the judge added (at [84]) that 'the probability is that if there was any attempted demonstration at all the circumstances are likely to be broadly as described' by Mr Roots (right). For the judge (at [85]), this conclusion tended to support Mr Roots' case that there was never an agreement to the effect alleged by Messrs Bailey and Sylvester to manufacture the Bailey Sauce. As those two gentlemen were unable to discharge their onus to establish the oral agreement for which they contend, their claim failed.

Mr Bailey's claim for breach of confidence arose from his alleged exclusion from the exploitation of the "Bailey Sauce" by Mr Roots. In order to succeed, Mr Bailey had to establish that the recipe for which he claimed confidence was imparted to Mr Roots in circumstances imposing an obligation of confidence. On the basis of his findings that Mr Bailey's case on the alleged demonstration was to be rejected, the judge stated (at [103]) that the breach of confidence action must fail because there was 'no other basis by which it could be alleged that the recipe was supplied to the first defendant in circumstances importing an obligation of confidence'. In any event, he also questioned (at [104]) 'whether the recipe on which reliance was placed ... was sufficiently certain to have the necessary quality of confidence about it to found a claim for breach of confidence'.

The IPKat believes that this case is an excellent example of the necessity of maintaining a paper trail. The onus was on Mr Bailey to prove his claims, and this was always going to be an uphill battle when nothing was written down. Even though Mr Roots was technically the victor in these proceedings, the IPKat also wonders what will happen to his personal reputation and to that of the Reggae Reggae brand after he admitted in court that much of the story behind his Reggae Reggae Sauce and his appearance on Dragon's Den was 'wholly untrue'.

Merpel agrees with Judge Pelling QC (at [105]) that Mr Bailey's recipe was riddled with imprecision. To make 25 litres of sauce, there is definitely going to be a significance difference in taste (and bad breath in humans) in '2-3 lbs of chopped onion'. On this basis alone, Merpel could never try Mr Bailey's recipe, since onions can cause anaemia in cats ...

Wednesday whimsies

Final call for IP publishers and editors.  The Kat now has 40 people for this most enjoyable annual free lunch next Wednesday, 7 December, 12.30pm to 2.30pm, in the High Holborn office of Olswang LLP. Our guest speaker is Wilhem Warth (C.H. Beck). Can anyone else who plans to come -- or who would like to and thinks they are eligible -- please email the IPKat here by not later than this Friday, with the subject line "PubEd lunch", so he can give final figures to the caterer?

This member of the IPKat team is now back in action after a brief trip to Bucharest, Romania, where he had the privilege of participating in a one-day trade mark seminar. He just wants to record the very positive impression he gained of the IP practitioners and administrators whom he met during his trip. There was a genuine buzz of enthusiasm and a good deal of legal knowledge on display, as well as a practical, pro-commerce attitude. Of course, it's not possible to judge a country's commitment to intellectual property protection on the basis of such flimsy evidence -- but, if the bits of the Romanian IP community he hasn't seen are comparable to the bits he has, there's every reason to hope that this relatively new European Union Member State will provide a good environment for future IP investment.

At last, Brennan have
a wrapping that no-one
else is complaining about

 Monday's round-up led with news of the Irish High Court's decision that bakers Brennan had wrapped their bread in a manner that was sufficiently close to that of their competitors McCambridge. The IPKat's friend Gemma O'Farrell has now procured a copy of the court's judgment, which you can read here.  It's an unapproved judgment, she tells the Kats.  The IPKat already guessed that Brennan didn't approve of it, but Merpel reminds him that the judge hasn't approved it either -- so if you want to comb it for signs of typos, grammatical whoopsies, episodes of getting 'plaintiff' and 'defendant' the wrong way round and naughty mis-spellings of 'passing off', now's your chance.

Around the blogs.  Mark Anderson has excelled himself again on IP Draughts with this piece entitled "10 words and phrases you should never use in IP contracts".-- though Merpel suspects that readers of this blog might have one or two more which they'd like to add to Mark's list.  Meanwhile, long-suffering Kingsley Egbuonu's cyber-trek across official African websites takes him to the unpromising e-terrain of Guinea-Bissau.  The jiplp poll, to see whether readers of the Journal of Intellectual Property Law & Practice (JIPLP) still prefer the abbreviation of "Court of Justice of the European Union" to be 'ECJ' rather than 'CJEU', is currently too close to call; on a less trivial note, there's also a great case analysis of the ECJ/CJEU ruling in Interflora from Darren Meale, which you can read here.  Ben Challis, on the 1709 Blog, points to an initiative by German concert promoters to collect licensing fees. Still on copyright, Howard Knopf's Excess Copyright blog lists a total of 12 interveners' 'factums' in copyright fair dealing actions which are currently pending before the Canadian Supreme Court.

Artwork from
This is not strictly speaking blog news, but it is blogger news.  Simone Blakeney (Clifford Chance and, more importantly for us, Captain of the Art & Artifice blogging team) has just been elected Education Secretary of IPSoc, the society for junior IP practitioners of which this Kat is a great supporter and admirer. Great stuff, Simone, and we all wish you the best of luck! Meanwhile, if there are any bright, enthusiastic young IP practitioners around who haven't either joined IPSoc or renewed their membership, this Kat respectfully suggests that perhaps a little more education is in order ...

Virgin Airlines is committed
to comfortable seating on all
its Jumbos ...

All the way from India comes a piece of news about the patent litigation that has taken place over Virgin Airlines' comfy seats (most recently covered by Matt the Kat earlier this year here. Via Sandeep K. Rathod (thanks, Sandeep!) the Kats have discovered the opposition proceedings which Virgin's patent has attracted in the vibrant economic environment of India. For the record, the patent's claims have been upheld, with oppositions based on lack of novelty and inventive step being rejected in this 128-page decision of the Patent Office, Chennai, following six days of hearings. Apart from Virgin's perennial foe Contour, there was also a local opponent, Jet Airways (India) Ltd of Mumbai.

At last, Brennan have
a wrapping that no-one
else is complaining about
 Monday's round-up led with news of the Irish High Court's decision that bakers Brennan had wrapped their bread in a manner that was sufficiently close to that of their competitors McCambridge. The IPKat's friend Gemma O'Farrell has now procured a copy of the court's judgment, which you can read here.  She also informs us that the terms of the injunction will be determined on Thursday. The judgment is an unapproved judgment, she tells the Kats, and on page three there's a reference to French baguettes ...  The IPKat already guessed that Brennan didn't approve of this judgment, but Merpel reminds him that the judge hasn't approved it either -- so if you want to comb it for signs of typos, grammatical whoopsies, episodes of getting 'plaintiff' and 'defendant' the wrong way round and naughty mis-spellings of 'passing off', now's your chance.

Tuesday, 29 November 2011

Gwilym and the thicket collectors, or why life isn't as bad, and is more interesting, than one might think ...

"Thickets please -- there's no
free riding on this technology ..." 
It was only a few short days ago that the UK's Intellectual Property Office (IPO) published on its increasingly informative website, a document called Patent Thickets: an Overview. This document lives in a part of the IPO's website called "Patent Informatics; using patent data to mine, reveal, and inform, for government and for industry", which you can find here: this page houses other interesting documents and information too.

Patent Thickets sprung into public view at the end of last week, just at the moment when the IPKat was busy tying his bootlaces. Since he lacks opposable digits, this process generally takes several days. Accordingly, he was not surprised -- and was actually very pleased -- when his friend Gwilym Roberts (Kilburn & Strode, just down the road from the Old Nick) told him that he had already given Patent Thickets some thought.  This is what Gwilym says:
"As required by the government response to Hargreaves, the IPO through its informatics team has now issued an overview of Patent Thickets. The report frames the questions rather than any answers, but provides a thorough review of the wide range of contributory factors, as well as providing a tour d'horizon [French for 'Cook's tour'] of current issues around "bulk patenting" - thickets, trolls (now "patent assertion entities" -- thank you, America), standards and pools, together with relevant historical context. Three aims are expressed: to develop an appropriate taxonomy [not to be confused with taxidermy, where it's aninals that get stuffed, not industrial competitors ...], to automate thicket detection and to assess the impact; that ordering makes rather good sense.
Arthur never could
decide which patented
razor he should buy
The overview touches on a range of technical areas, from telecoms through graphene to safety razors, and provides a mini-case study of the latter, if only to illustrate that there is no generic answer. And it's a really interesting study - I wouldn't have thought there's room for new players in a densely packed landscape but I'm wrong and, on further analysis, you realise that in this particular area there is 90 years of public domain development against 20 years of residual exclusivity. And even the report suggests that modern safety razor innovation basically only involves adding another blade anyway. The overview also notes that thickets can be in any technology area (and of any level of maturity), shared by few or many players, can include pending patent applications and are not a new phenomenon: the US government had to intervene after the First World War to stop the aeroplane industry being stumped by litigation. 
Perhaps the biggest problem of this overview is the use of the term "thicket" itself: the report says it is descriptive but adopts the definition: "a dense web of overlapping IP rights that a company must hack its way through in order to actually commercialise new technology". This isn't descriptive, it's pejorative, and we don't need an informatics team to tell us such things are bad.
But the report definitely merits a read and is both interesting and ultimately reassuring that the underlying issues are being looked at broadly and with balance, not forgetting history or current stories either. The question is well framed, therefore; the solution, meeting the express aims, trickier. There's a whole thicket of issues to hack through first".
The IPKat wonders how much thought has been given to the impact of patent thickets on the public domain itelf. Presumably the more a field is clogged up and impenetrable on account of a dense web of overlapping rights, the easier it must be to enter that field once the thicket has tumbled into the public domain.

Thicket here; thinnet here

The Advocate General's opinion in the IP TRANSLATOR case - clear and precise?

Advocate General Bot, the second. Fresh today - and again from busy AG Bot - comes the eagerly awaited opinion in a case, in which the IPKat has taken a special interest: Case C-307/10 Chartered Institute of Patent Attorneys aka the "IP TRANSLATOR" case (click here for some background and links to earlier IPKat posts). In a nutshell, the case concerns the question whether the words "IP TRANSLATOR" are registrable as a UK trade mark for "education; providing of training; entertainment; sporting and cultural activities" in Class 41, given that none of those words is remotely connected with IP translation but that those same words are the class heading for services which include "translation".

This preliminary reference to the ECJ by The Appointed Person asked the following questions:

"Is it:
(1) necessary for the various goods or services covered by a trade mark application to be identified with any and if so what particular degree of clarity and precision?

(2) permissible to use the general words of the Class Headings of the International Classification of Goods and Services established under the Nice Agreement ... for the purpose of identifying the various goods or services covered by a trade mark application?

(3) necessary or permissible for such use of the general words of the Class Headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication No. 4/03 of the President of the Office for Harmonisation in the Internal Market of 16 June 2003 (OJ OHIM 2003 p.1647)?".
In a 98 paragraphs long opinion the Advocate General Bot today answered these questions as follows (highlighting by the IPKat):
(1) (a) Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks and Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark are to be interpreted as meaning that the identification of the goods or services for which the applicant seeks protection must satisfy requirements of clarity and precision which are sufficient to enable the competent authorities and the economic operators to determine accurately the scope of the protection conferred by the trade mark.

(b) Those requirements may be satisfied by a specific list of each of the goods and services for which the applicant seeks protection. They may also be fulfilled by identification of the basic goods or services enabling the competent authorities and economic operators to determine the essential characteristics and objective properties of the goods and services concerned. [IPKat: this is further clarified in paragraphs 71 - 78 , with paragraph 78 stating "the clarity and precision required must be assessed on a case-by-case basis, according to the goods or services for which the applicant seeks protection, whether it is a national or a Community trade mark."]

(2) Directive 2008/95 and Regulation No 207/2009 are to be interpreted as not precluding the applicant from identifying the goods or services for which he seeks protection by using the general indications of the class headings of the common classification of goods and services for which a mark is registered, provided that that identification satisfies the necessary requirements of clarity and precision.

(3) Communication No 4/03 of the President of the Office for Harmonisation in the Internal Market (Trade marks and designs) (OHIM) of 16 June 2003 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, by which the President indicates that OHIM does not object to the use of any of the general indications and class headings as being too vague or indefinite and that the use of those indications constitutes a claim to all the goods or services falling within the class concerned, does not guarantee the clarity and precision required for the purposes of the registration of a trade mark, whether a national or a Community trade mark.

Interesting are paragraphs 91 to 96 of the opinion insofar as they include some 'policy' considerations:
95. "… although the interpretation adopted by OHIM [IPKat: ‘“class-heading-covers-all” approach’] appears, on the face of it, to facilitate the registration of trade marks in the public registers, it leads ultimately to an increase in the total number of trade marks registered and protected in the Union and, accordingly, in the number of conflicts which arise between them. Far from ensuring sound administration, it also does not guarantee undistorted competition in the market.

96. "… [OHIM's] interpretation does not guarantee legal certainty. As pointed out inter alia by the United Kingdom, German, Irish and French Governments in their observations, the Nice Classification is an evolving instrument. The tenth edition of that classification, which will come into force on 1 January 2012, includes, under unchanged class headings, new goods and services. Now, we cannot limit the substantive scope of the trade mark to a text which may be amended at the whim of an evolving market." [Merpel nods, 'sounds good but how will it work in practice?']
At first reading, this Kat thinks that AG's Bot opinion will please some but it might make others worry whether they should adopt a different trade mark specification strategy sooner rather than later. The CJEU's final decision, should it follow the AG's guidance, could potentially change the interpretation of about 25% of trade mark specifications in the EU and could also mean the end - or at least a substantial change to 'OHIM's "class-heading-covers-all" approach'.

Merpel, who has so far only had a very quick glance at the opinion is a little confused: "case by case" basis is not as clear and precise as she would have liked, even though she half expected such a statement. Hopefully, the Court of Justice will provide some further guidance on this point...?

The AG's opinion can be retrieved by clicking here.

To read about a "Meowlingual Cat Translation Device ", please click here

Advocate General says forget the functionality, look at the code

Advocate General Bot has this morning issued his opinion in Case C-406/10, SAS Institute Inc. v World Programming Ltd. In brief, he suggests that the Court of Justice (CJEU) should hold that under copyright law it is legitimate to copy a program’s functionality and/or a programming language, provided that in reproducing the functionality, the alleged infringer has not reproduced a substantial part of the elements of the original program which are the expression of the author’s own intellectual creation.

The background to the dispute is that SAS has an integrated suite of programs widely used for data processing and statistical analysis. Customers using this software have to write scripts in the SAS Language and must acquire a licence for all of the necessary components of the SAS system. World Programming Ltd (WPL) saw that there was a market for alternative software to emulate the functionality of the SAS system and to run customers’ programs using their data stored in the SAS format.

So the WPL program provided interoperability with the SAS software and provided the same functionality, but it was not suggested that they had access to or copied the source code. SAS took an action in the High Court of England and Wales alleging that WPL had infringed their copyright. Since much of their complaint was directed to copying of functionality and of the SAS language, rather than to straightforward coping of code, Mr Justice Arnold sought a preliminary ruling from the CJEU on the interpretation of the Computer Program Directive (Directives 91/250/EEC, and 2009/24/EC) and the Information Society Directive (Directive 2001/29/EC).

The questions referred, in synopsis
Mr Justice Arnold’s questions were set out in full by the IPKat here. There were nine questions, many of which were multi-part (giving 26 questions in total for the CJEU to decide). The A-G has summarised the questions in the following terms:

2.         In particular, the High Court […] asks, in substance, whether the functionalities of a computer program and the programming language are protected by copyright under Article 1(2) of Directive 91/250. That provision stipulates that such protection is to apply to the expression in any form of a computer program and points out that ideas and principles which underlie any element of a computer program are not protected under that directive.

3.         The Court is also asked to give a ruling on whether Articles1(2) and 6 of Directive 91/250 are to be interpreted as meaning that it is not regarded as an act subject to authorisation for a licensee to reproduce a code or to translate the form of the code of a data file format so as to be able to write, in his own computer program, a source code which reads and writes that file format.

4.            Moreover, the referring court asks the Court to define the scope of the exception to the author’s exclusive copyright in a computer program, provided for in Article 5(3) of Directive 91/250, which states that a person having a right to use a copy of a computer program is to be entitled, without the authorisation of the rightholder, to observe, study or test the functioning of the program in order to determine the ideas and principles which underlie any element of the program if he does so while performing any of the acts of loading, displaying, running, transmitting or storing the program which he is entitled to do.

5.         Finally, the Court is invited to consider the scope of the protection provided for in Article 2(a) of Directive 2001/29, which grants authors the exclusive right to authorise or prohibit direct or indirect, temporary or permanent, reproduction by any means and in any form, in whole or in part, of their works. More specifically, the question is whether the reproduction, in a computer program or a user manual, of certain elements described in the user manual for another computer program constitutes, under that provision, an infringement of the copyright in the latter manual.

A-G Bot's Opinion, also in synopsis
The Press Release summarises, with a liberal sprinkling of bold type, how the A-G tackled these questions as follows:

In his Opinion delivered today, Advocate General Bot recalls, as a preliminary point, that the protection conferred by Directive 91/250/EEC applies to the expression in any form of a computer program and not to the ideas and principles which underlie any element of a computer program. Thus, the Advocate General takes the view that the protection of a computer program covers the literal elements of that program, that is to say, the source code and the object code, and also any other element expressing the creativity of its author. [A footnote indicates that this includes preparatory design documents such as flowcharts.]

In the first place, with regard to the functionality of a computer program, the Advocate General defines it as the set of possibilities offered by a computer system – in other words, the service which the user expects from it.

Starting from that premiss [sic], the Advocate General considers that the functionalities of a computer program are not eligible, as such, for copyright protection. The functionalities of a computer program are in fact dictated by a specific and limited purpose. In this, they are similar to ideas. That is why there may be a number of computer programs offering the same functionalities. Thus, if it were accepted that a functionality of a computer program can be protected as such, that would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.

By contrast, the means for achieving the concrete expression of the functionalities of a program may be protected by copyright. Creativity, skill and inventiveness are expressed in the way in which the program is drawn up, in its writing. Thus, the way in which formulae and algorithms are arranged [but not the formulae and algorithms themselves, the IPKat notes, which the A-G likened to the words used by an author] – like the style in which the computer program is written – will be likely to reflect the author’s own intellectual creation and therefore be eligible for protection

The Advocate General therefore takes the view that, as is the case with other works that may be protected by copyright, the fact of reproducing a substantial part of the expression of the functionalities of a computer program may constitute an infringement of copyright. In the present case, he concludes that the national court will have to consider whether, in reproducing the functionalities of the SAS System in its computer program, WPL reproduced a substantial part of the elements of the SAS System which are the expression of SAS Institute’s own intellectual creation.

Turning finally to the Advocate-General's Opinion, this concludes that the Court’s answer to Mr Justice Arnold’s questions should be in the following form:

(1)     Article 1(2) of Council Directive 91/250/EEC … is to be interpreted as meaning that the functionalities of a computer program and the programming language are not eligible, as such, for copyright protection. It will be for the national court to examine whether, in reproducing these functionalities in its computer program, the author of the program has reproduced a substantial part of the elements of the first program which are the expression of the author’s own intellectual creation.

(2)     Articles 1(2) and 6 of Directive 91/250 are to be interpreted as meaning that it is not regarded as an act subject to authorisation for a licensee to reproduce a code or to translate the form of the code of a data file format so as to be able to write, in his own computer program, a source code which reads and writes that file format, provided that that act is absolutely indispensable for the purposes of obtaining the information necessary to achieve interoperability between the elements of different programs. That act must not have the effect of enabling the licensee to recopy the code of the computer program in his own program, a question which will be for the national court to determine.

(3)     Article 5(3) of Directive 91/250, read in conjunction with Articles 4(a) and (b) and 5(1) thereof, is to be interpreted as meaning that the expression ‘any of the acts of loading, displaying, running, transmitting or storing the computer program [which the person having the right] is entitled to do’ relates to the acts for which that person has obtained authorisation from the rightholder and to the acts of loading and running necessary in order to use the computer program in accordance with its intended purpose. Acts of observing, studying or testing the functioning of a computer program which are performed in accordance with that provision must not have the effect of enabling the person having a right to use a copy of the program to access information which is protected by copyright, such as the source code or the object code.

(4)     Article 2(a) of Directive 2001/29/EC … is to be interpreted as meaning that the reproduction, in a computer program or a user manual, of certain elements described in the manual for another computer program may constitute an infringement of the copyright in the latter manual if – a question which will be for the national court to determine – the elements reproduced in this way are the expression of their author’s own intellectual creation.

On first reading, the IPKat thinks the A-G has done a pretty good job of providing answers to a complex set of questions. It remains to be seen whether these answers (if followed by the Court of Justice) will provide sufficient detail for the dispute to be resolved in the High Court.

Monday, 28 November 2011

Katonomics 4: Where to look for an IP-oriented economist

Hector saw something twitching in the tall grass ahead:
"it might just be an economist", he thought to himself ...
It would be a conceit to suggest that the term 'Katonomics' needs no explanation -- but at least it's starting to throw up a decent score when you feed the word into a search engine. Anyway, as regular readers are probably fed up with being reminded, it's the title of a mini-series on IP economics for IPKat readers, the vast majority of whom are not (yet) economists.

This series is brought to you by the IPKat's own Katonomist, Nicola Searle, who gives economic theory a break this week and turns to a fresh topic. The question is "Where do you look for economists?" and the answer is "Right where they can do the most damage good -- in Intellectual :Property Offices!".

Nicola starts with a disclaimer. This piece is not written entirely by her, having been co-authored by an economist at an IP office who, for the sake of his professional reputation -- if  not his personal safety -- prefers to remain anonymous. They write:
"They’re here … Economists in IP Offices

With the USPTO appointing its first Chief Economist only last year, WIPO publishing its first-ever economics paper, and the expansion of economic teams elsewhere, it looks like IP economics offices are in vogue. Given the push for evidence-based policy an increase in economists, analysts and statisticians in government IP offices would seem logical. For this post, we’re taking a look at economists in IP offices throughout the world.

While these economic teams are part of public institutions, their growth and nature isn’t obvious, so I recruited an unnamed IP office economist to help [actually, says Merpel, the economist does have a name, but took it out of commission-- a bit like Prince].  This is not an exhaustive overview, but we found 10 Chief Economist Offices and 10 offices with an interest in economics: and we’re sure we have missed some, so please feel free to add to this in the comments or email the IPKat here with the subject line "Missing Economists".

The actual count of economists is tricky as many economic research functions are performed by a combination of economists, statisticians and analysts. The economic work falls into two general categories: internal evaluations and policy research. Internal evaluations include managing performance of the office and forecasting demand for services such as patent applications. Policy research includes the evidence-based analysis we discussed last week. The use of commissioned, external researchers to conduct policy research is common. As a rough indicator, Europe and Latin America have six offices, each with a dedicated economics or analytical team, North America has three (out of three possibles), Asia has three and Austral-Asia has one.

Chief Economists 
The EPO was perhaps the first to open a Chief Economist office back in 2004, then headed by Dominique Guellec for two years, but he has since returned to the OECD. He was followed by Bruno van Pottelsberghe from 2005 to 2007, and more lately by Nikolaus Thumm -- who joined the EPO from the Swiss Patent Office (it looks like Nikolaus is due for a Wikipedia entry). As of January 2012, the EPO will have a new Economic and Scientific Advisory Board which will also look at economic issues. EPO economics work tends to be outsourced and the Chief Economist is the only active economist in the organisation.

The Canadian IPO was probably second to launch an office, transforming its performance management office into a Chief Economist office in 2006. At the time, the office was managed by Elias Collette who continues as the Chief Economist at the Canadian IP Office. His team of about five people is responsible for economics and performance management.

The UK IPO was likely third when it opened a chief economist office in 2008 but, due to there being only one economist, the work did not gain much traction. In October 2009, the IPO re-launched an economics unit by recruiting Tony Clayton, previously Director of Economic Analysis at the Office of National Statistics, and Benjamin Mitra-Kahn. The economics unit has since expanded to about ten members. The unit is very active, with a large research brief for both commissioned and in-house work.

Other recent economics teams include WIPO where Carsten Fink's Office of Chief Economist was created in 2010 and now has a team of about eight. The economics team is responsible for all of WIPO’s statistical reporting, economic research and performance management. The majority of its work is in-house, but commissioned research is used to create reports. WIPO has also hosted a regular meeting of IP office economists since May 2010; list of participants here.

The USPTO opened its office by hiring Stuart Graham in March 2010. The Chief Economist’s office has three full-time members and relies on exchanges with universities and various internal departments to complement its staff.

In France, Laurence Joly has been the economist with the National Institute of Industrial Property since 2007. Her offices commission research projects and manages the “Observatoire de la propriete intellectuelle”.

OHIM announced the opening of their chief economists office in May 2011, appointing Nathan Wajsman -- who is responsible for Economics and performance statistics, with a team of four people.

In Brazil, the director of Institutional Partnership and Technological Information at the National Institute of Industrial Property (INPI), Sergio Paulino de Carvalho, is the lead economist at the office. INPI has a research academy, which includes economists, and also does a range of commissioned work.

The Chilean National Institute of Industrial Property (INAPI) has Luciano Cuervo Moraga, an economic advisor responsible for IP. The institute recently launched a one-year research programme with WIPO and Brazil which has added a second economist focusing on IP issues.

Switzerland opened its economics team in the mid 2000s, with Nikolaus Thumm as the Senior Economic Counsellor (now of the EPO) and Hansueli Stamm is now in that role.

Other offices

Australia is an interesting case where there is a Business Development Section with an economist interest in Directory of Strategy, Research & Ministerial Support, Geoff Sadlier. His team also has the responsibility to report performance management and support both a research institute which focuses on economics of IP and an advisory council.

The Chinese Patent Office (SIPO) has a statistics section which has done work on firm performance, and hosted a WIPO economics seminar back in 2009. Unfortunately, not much else was available on its current activities.

The Danish Patent Office has expanded its analytical unit in the last year but, like SIPO, the majority of its work is not in English, which may be good for some, but bad for our digestion.

Japan has a statistical section which is interested in performance management and statistics. The section tends to do most of its economics through a selection of Japanese academics and an external advisory board.

Like Japan, Korea has a small statistics function in the IP office and no economic capacity at the moment.

Some other names with economic interests

Argentina has Miguel Fralmenti, Head of the International Relations Unit, National Institute of Industrial Property (INPI).

Colombia has Laura Buendia Grigoriu, Head, Regulation Group, Superintendence of Industry and Commerce.

Mexico has Antonio Camacho Vargas, Director of Promotion and Technical Information Services, Mexican Institute of Industrial Property (IMPI).

Peru has Santiago Dávila Phillipon, Manager of Economic Studies, National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI).

Last, but not least, Uruguay has Alberto Gestal, National Director, National Directorate of Industrial Property (DNPI).

So, it looks like these days you can’t swing a Kat in an IP office without hitting an economist. However, I’m sure there are offices and people we’ve missed and would appreciate additions or corrections in the comments below".

Monday miscellany

Well bread. In May the IPKat reported that the Irish Battle of the Breads, between bakers McCambridge and Brennan, was to be fast-tracked and that a July trial date had been fixed. Well, he's not too sure whether July has come a bit late this year or whether a July fast-track hearing was followed by a slow-track judgment -- but it does appear that McCambridge has won its action and secured injunctive relief against Brennan's continued use of what was found to be a confusingly similar packaging.  Merpel's just a little sad that this litigation didn't take place in England and Wales, where an appeal might just be heard by a man most knowledgeable in the field of intellectual property, Lord Neuberger of Abbotsbury, the Master of the Rolls. The IPKat thanks his friend Gemma O'Farrell for the link to this news item.

The IPKat's French friend Asim Singh brings fresh news from Paris concerning the ever-popular pastime of les Françaises -- litigating Google AdWords. Reports Asim:
"In a decision handed down on 14 November 2011 the Tribunal de Grande Instance de Paris addressed Google’s role in respect of its (in)famous AdWords program. At issue was whether Google ought to be characterized as a mere hosting entity with respect to the text of a sponsored link for Prisma Press’s gossip website (which, the Court held, violated the plaintiff’s right of privacy under Article 9 of the French Civil Code). 
Applying the principles laid down by the Court of Justice of the European Union in Google France, the Court found that Google was not entitled to the safe-harbour protection afforded to mere hosting providers because its role was not purely technical, automatic and passive such that it had neither knowledge nor control over the hosted information. The Court reached this conclusion after careful analysis of the service’s Terms of Use. It stated: “in light of the proven knowledge by the person in charge of AdWords of the contents of the message and the key words, as well as the editorial control which it exercises contractually, it must be held that it cannot be characterized as a hosting provider and benefit from the corresponding liability exemptions”. 
The Court identified the following elements, in particular, from the Terms of Use as indicative of Google’s active role:
- Google was entitled to demand that its client (the advertiser) show it the advertising message at least 3 days before the scheduled start date;
- Google was entitled to determine the advertisement’s position in its discretion;
- Google was entitled to inform the client that it had 72 hours to correct or modify the key words;
- Google was entitled to reject or withdraw any advertising for any reason; and
- Google was entitled to evaluate the relevance of the advertising. 
Referring to the Court of Justice's finding that the fact that Google provided general information to its clients was not sufficient to deprive it of the status as hosting provider, the Court stated that the provisions of the Terms of Use went much further and gave the editorial rules a contractually binding character which evidenced Google’s active role in drafting the ads. 
Accordingly, the Court found in favour of the plaintiff and held Google and the advertiser jointly and severally liable for the harm suffered as a result of the violation of plaintiff’s right of privacy and ordered them to pay €1,500 in damages and €3,000 in court costs. 
The decision is a first-instance judgment and is subject to appeal".

Browsing through the website of the UK's Intellectual Property Office the other day, one of the IPKat's most dedicated and mischievous readers chanced to find this interesting little application, filed last month, to register the word AVIDITY for goods and services in Classes 9, 16, 38 and 41.  The applicant is named as Avidity IP which, it unsurprisingly transpires, is a firm of European patent and trade mark attorneys (here). Noting that the dictionary meanings of 'avidity' include 'greed' and avarice', the Kat's correspondent cheekily suggests that the choice of such a word might be unsuitable or, worse, descriptive. The Kat doesn't think there's a problem here and he does quite like the brightly coloured, eye-catching logo (right). But what's exercising his mind at the moment is the small print underneath it: "satisfaction is not enough". He's wondering what else might be in store, in addition to satisfaction.  Readers' suggestions, especially from Avidity IP (among whose people he has spotted some friendly names), are most welcome.

The IPKat's friend Robert Watson (President, FICPI-UK) writes to tell him that FICPI-UK is attempting to carry out a survey of qualified patent and trade mark attorneys in private practice in the UK to answer some of the points raised in the Hargreaves Review, in particular about small and medium-sized enterprise (SME) access to the IP system. The aim is to generate some evidence of the efforts our profession makes to assist SMEs in understanding the IP system and in obtaining and enforcing IP rights. He has emailed FCUK FICPI UK members as follows:
"Please spare 10 minutes to answer this e-survey from FICPI-UK regarding services for SMEs in the UK – it only has 10 questions! Please pass it on to as many qualified patent and trade mark attorneys in your firms as possible, as the more answers we get the better. However, we are only looking for answers from those in private practice.

We are gathering evidence to submit to the UKIPO in relation to the Hargreaves Review, which concluded that "current service provision is not configured as well as it could be to help SMEs understand and protect their IP or realise value from it. There are three main issues which serve to impede SMEs in obtaining the support they need: the complexity of available offerings; a lack of broad based, strategic business advice; and the substantial costs involved in IP management.”
The attached document explains in more detail the background to this survey, and what we will do with your answers. 
We would like your answers by 19 December 2011".

The IPKat's excellent and scholarly friend Norman Siebrasse tells him that he has recently become aware of a recent Canadian decision, Nazerali v. Mitchell, 2011 BCSC 1581, granting an interim injunction in a defamation action, inter alia "enjoining the defendants Google Inc. and Google Canada Corporation from permitting the or search engines from returning any search result from"  Says Norman:
 "It occurs to me that this may be of general interest. I have never seen an injunction of this nature before, though I have to admit that I do not follow defamation law closely. I wonder if similar injunctions have been granted in other jurisdictions. It does seem to me that this kind of injunction might be invoked in respect of illegal downloading and other forms of pirating, and not just in defamation. It is similar to the injunction discussed by the Court of Justice of the European Union in Case C-70/10 Scarlet Extended [noted by the IPKat here], but it is more specific and so, from what I understand from your report, would not be directly prohibited by that decision. I'm not even sure how difficult it will be for Google to comply".
Readers' comments are earnestly requested.

The IPKat's WIPO-based friend Sacha Wunsch-Vincent has kindly drawn his attention to The World Intellectual Property Report 2011- The Changing Face of Innovation. This exciting new WIPO publication describes how ownership of intellectual property rights has become central to the strategies of innovating firms worldwide. With global demand for patents rising from 800,000 applications in the early 1980s to 1.8 million in 2009, the Report concludes that growing investments in innovation and the globalization of economic activities are key drivers of this trend. For those who like stuff which is evidence-based [on which see the excellent post by Dr Nicola Searle in her Katonomics series here], there are lots of real facts and figures. Thanks, Sacha, for letting us know.

Saturday, 26 November 2011

Auditors slice into Commission management of GI scheme

Geographical indications (GIs) have been a familiar feature of this blog: in recent times we have discussed the virtue or otherwise of Darjeeling Tea and Lea Valley Cucumbers and all manner of culinary delights in between (see Katposts here and here). One topic which has not be canvassed in such detail is whether or not the European Commission effectively manages the current GI scheme.

Earlier this month, the European Court of Auditors (ECA) completed a performance audit and published a report. Three criteria were used: (a) the robustness of the control system defined; (b) the attractiveness of the scheme to potential applicants; and, (c) consumers’ awareness of it.

The overall conclusions and recommendations were stated in a press release:
"The audit concluded that overall, clarification is needed on a number of issues concerning the control system for the GI scheme and there is no clear strategy for promoting and raising awareness of the scheme amongst both producers and consumers: 
• the legal provisions do not lay down minimum requirements for Member States’ checks on product specifications;

• the regulation does not clearly define the Member States’ obligation to carry out
checks to prevent and detect disallowed practices;

• with the result that most of the national authorities audited do not carry out regular checks in view of detecting and suppressing these practices;

• the Commission does not monitor closely the implementation of the GI scheme in the Member States. No audits on the GI scheme have been carried out so far;

• the potential applicants are often not aware of the scheme or are discouraged by the lengthy application procedures;

• consumer recognition of the scheme and its symbols is very low.

The ECA makes a series of recommendations to improve the effectiveness of the GI scheme. The Commission should set out minimum requirements concerning checks on product specifications and lay down clear rules for a control system that provides for regular checks to detect and suppress disallowed practices. The Commission should also develop a strategy for raising awareness of the GI scheme among potential applicants and consumers and for exploring more effective means of promoting the GI scheme to them".
The IPKat is interested to know if the harsh criticisms expressed by the ECA accurately reflect the experiences of readers in using the GI scheme.

Merpel, liking the finer things in life, believes that effective management in most contexts can be determined according to whether there is a constant supply of high quality Champagne and Parma Ham canapes ...

Thanks go to Miguel Angel Medina (Elzaburu, Spain) for alerting the IPKat's attention to this item.

Friday, 25 November 2011

Friday fantasies

Bones of contention: Ali
Hendrick's mark in Case
Request for information. The decisions of Judge Colin Birss QC in the Patents County Court earlier this year in Dame Vivienne Westwood v Anthony Knight (noted by the IPKat here and here) made fascinating reading. Even more fascinating, for those who browse the UK Intellectual Property Office website in search of excitement and possible decisions for inclusion in the European Trade Mark Reports, is a decision of David Landau, for the Comptroller, in Case O-307/11 which shows that, quite undaunted by his lack of success against Dame Viv, the same Mr K is up to not inconsiderable mischief again.  This Kat was wondering whether there might be purr-chance, among his many readers, anyone else who is in dispute with this gentleman.  If so, he would be curious to hear from them by email here.

While the UK's Intellectual Property Office is in the Kat's sights, he wants to remind readers that today is the very last day on which they can -- if they so wish -- vote for the Office since it is the only IP contender in this year's Social Media Awards 2011. The IPO has been nominated for "Best use of social media in public sector for Digital Engagement - Independent Review of IP & Growth". Further details can be found here.  Says Merpel, please support the IPO, whatever you may personally think of the Hargreaves Review, in relation to which the IPO's case is based.

IPO officials are easy
to spot on Twitter ...
Still with the same Office, the IPO is taking its reputation in its hands and preparing for a real twitterthon next week. There's an event, 'Branding in the Modern Economy 2', coming up next Tuesday, 29 November, at which the cream of the UK's intellectual property administrative elite will be live-tweeting.  Says a spokesman for the Office,
"Remember to look out for and use the hashtag #BrandsIP11 to follow the event, or to post us a comment. You will find us on Twitter as @The_IPO ("

The IPKat's annual IP Publishers' and Editors' lunch takes place on Wednesday 7 December, 12.30pm till 2.30pm, in the lovely London office of Olswang LLP, 90 High Holborn. This year's guest speaker is Wilhelm Warth (C. H. Beck, Germany) and a good time will be had by all. There is no charge. So far, we have 36 folk signed up but there's room for more.  Some naughty people haven't responded to their invitations yet, so they are asked politely to do so.  If you think you should have been invited because you are involved in some aspect of IP publishing or editing, please email the IPKat here and let him know.

At the MARQUES Conference in Baveno this year,
a genuine IPKat shares a quiet moment with a furry fake 
The IPKat's friend and fellow blogger Howard ("Excess Copyright") Knopf has drawn his attention to the alarming news of allegations that real furs are being passed off as faux fur (here) and that the Humane Society of the United States has filed a legal petition with the Federal Trade Commission, alleging that eleven retailers have falsely labelled or advertised genuine fur fashions as being “faux fur” (here). This causes the IPKat to pause for reflection on the fact that, in England and Wales, the names given to certain commodities (in the most recent case in point, "vodka", and, in previous cases, terms such as "advocaat" and "Swiss chocolate") can be protected by an action for extended passing off even though no one trader has an exclusive right to the term, since traders who use a term have a shared goodwill in it which is damaged by its wrongful and unjustified use.  But would the use of "faux fur" by sellers of real fur be vulnerable to such an action? Here, it's the real product which is passing itself off as the fake, rather than the other way round.

Birds, cats .. and Massimo.  Still on the subject of cats, the IPKat has been perusing the list of winners in Italy's  TOPLEGAL Awards 2011.  He congratulates Bird & Bird on being voted top IP firm  -- but there's literally a cat or two among the pigeons since Top Lawyer of the Year is Francesco Gatti of d'Urso > Gatti e Bianchi [Explanation for readers whose linguistic talents are not as wide as those of the IPKat and Merpel: the Italian word for cat is "gatto"; the plural is "gatti"]. Best news of all for this Kat is that top Italian IP Lawyer for 2011 is the charming, erudite Massimo Sterpi (Jacobacci Sterpi Francetti Regoli de Haas & Associates, left), who has contributed so much to the international IP community over the years the Kat has known him.

Note for readers: the IPKat has run out of time to post all the items he'd wanted -- and promised -- to. He still cherishes the hope that he'll be able to get the rest up before the end of the weekend.

Thursday, 24 November 2011

A study in Scarlet: today's Court of Justice ruling

The decision of the Court of Justice of the European Union in Case C‑70/10Scarlet Extended SA v Société belge des auteurs, compositeurs et éditeurs SCRL (SABAM); Belgian Entertainment Association Video ASBL (BEA Video), Belgian Entertainment Association Music ASBL (BEA Music) and Internet Service Provider Association ASBL (ISPA) intervening came out at the same time as the two rulings on supplementary protection certificates for patents, which the IPKat was busily flapping over (here and here). But now it's time to leave patents and attend to copyright.

Today's media release from Curia gives a handy summary:
"EU law precludes the imposition of an injunction by a national court which requires an internet service provider to install a filtering system with a view to preventing theillegal downloading of files
Such an injunction does not comply with the prohibition on imposing a general monitoring obligation on such a provider, or with the requirement to strike a fair balance between, on the one hand, the right to intellectual property, and, on the other, the freedom to conduct business, the right to protection of personal data and the freedom to receive or impart information 
This case has its origin in a dispute between Scarlet Extended SA, an internet service provider, and SABAM, a Belgian management company which is responsible for authorising the use by third parties of the musical works of authors, composers and editors.

In 2004, SABAM established that users of Scarlet's services were downloading works in SABAM’s catalogue from the internet, without authorisation and without paying royalties, by means of peer-to-peer networks (a transparent method of file sharing which is independent, decentralised and features advanced search and download functions).

Upon application by SABAM, the President of the Tribunal de première instance de Bruxelles (Brussels Court of First Instance, Belgium) ordered Scarlet, in its capacity as an internet service provider, on pain of a periodic penalty, to bring those copyright infringements to an end by making it impossible for its customers to send or receive in any way electronic files containing a musical work in SABAM's repertoire by means of peer-to-peer software.

Scarlet appealed to the Cour d'appel de Bruxelles (Brussels Court of Appeal), claiming that the injunction failed to comply with EU law because it imposed on Scarlet, de facto, a general obligation to monitor communications on its network, something which was incompatible with the Directive on electronic commerce and with fundamental rights. In that context, the Cour d'appel asks the Court of Justice whether EU law permits Member States to authorise a national court to order an internet service provider to install, on a general basis, as a preventive measure, exclusively at its expense and for an unlimited period, a system for filtering all electronic communications in order to identify illegal file downloads.

In its judgment delivered today, the Court points out, first of all, that holders of intellectual-property rights may apply for an injunction against intermediaries, such as internet service providers, whose services are being used by a third party to infringe their rights. The rules for the operation of injunctions are a matter for national law. However, those national rules must respect the limitations arising from European Union law, such as, in particular, the prohibition laid down in the E-Commerce Directive on electronic commerce under which national authorities must not adopt measures which would require an internet service provider to carry out general monitoring of the information that it transmits on its network In this regard, the Court finds that the injunction in question would require Scarlet to actively monitor all the data relating to each of its customers in order to prevent any infringement of intellectual-property rights. It follows that the injunction would impose general monitoring, something which is incompatible with the E-Commerce Directive. Moreover, such an injunction would not respect the applicable fundamental rights.

It is true that the protection of the right to intellectual property is enshrined in the Charter of Fundamental Rights of the EU. There is, however, nothing whatsoever in the wording of the Charter or in the Court's case-law to suggest that that right is inviolable and must for that reason be absolutely protected.

In the present case, the injunction requiring the installation of a filtering system involves monitoring, in the interests of copyright holders, all electronic communications made through the network of the internet service provider concerned. That monitoring, moreover, is not limited in time. Such an injunction would thus result in a serious infringement of Scarlet's freedom to conduct its business as it would require Scarlet to install a complicated, costly, permanent computer system at its own expense.

What is more, the effects of the injunction would not be limited to Scarlet, as the filtering system would also be liable to infringe the fundamental rights of its customers, namely their right to protection of their personal data and their right to receive or impart information, which are rights safeguarded by the Charter of Fundamental Rights of the EU. It is common ground, first, that the injunction would involve a systematic analysis of all content and the collection and identification of users' IP addresses from which unlawful content on the network is sent. Those addresses are protected personal data. Secondly, the injunction could potentially undermine freedom of information since that system might not distinguish adequately between unlawful content and lawful content, with the result that its introduction could lead to the blocking of lawful communications.

Consequently, the Court finds that, in adopting the injunction requiring Scarlet to install such a filtering system, the national court would not be respecting the requirement that a fair balance be struck between the right to intellectual property, on the one hand, and the freedom to conduct business, the right to protection of personal data and the right to receive or impart information, on the other.

Accordingly, the Court’s reply is that EU law precludes an injunction made against an internet service provider requiring it to install a system for filtering all electronic communications passing via its services which applies indiscriminately to all its customers, as a preventive measure, exclusively at its expense, and for an unlimited period".
In this Kat's post on this case in the 1709 Blog (here), he observed that the careful way in which the Court of Justice phrased its ruling rather suggests that the door remains open for the making of less drastic and more balanced orders. He also invites readers to contrast the treatment of the issue of relief in this case with that of the High Court, England and Wales, on which this blog recently commented in Newzbin 2.

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