Category Archives: European Union

One Step Closer to a European Unitary Patent System

Currently, patents granted by the European Patents Office (EPO) must be validated in the individual countries where protection is sought.  This is a costly and time consuming process typically involving full translation of the patent concerned.  However, agreement as to the location of the seat of the Central Division of the Court of First Instance of the Unified Patent Court was reached on Friday.  

Some readers may wonder what the fuss is about, given that the European Patent Office has been granting patents since the late 1970s – this was the last obstacle to finalising the introduction of a unitary patent which may be introduced as early as 2014. The new unitary patent will be effective throughout Europe (though see note below on the position taken by Spain and Italy) in the official language in which it is filed.

A ‘Historic Decision’

The President of the European Patent Office, Benoit Battistelli, praising the agreement as a historic decision, commented:

‘Thanks to this long awaited step forwards for the completion of the European patent system, Europe has demonstrated its conviction that boosting innovation and strengthening the competitiveness of its industry is the best way of countering the current economic uncertainties. The simplification of the existing patent system will bring particular benefits to small and medium-sized enterprises and to innovators and research centres’

Positives and Negatives

Some estimate that EU citizens can currently face costs upwards of €30,000 for a patent, compared to €1,850 in the US, a state of affairs which is surely detrimental to small companies, who contribute significantly to innovation.  A welcome result for SMEs then? Perhaps, but the unitary patent is not without its critics. On the one hand, a centralised system may mean a cheaper, and simpler mechanism for applicants applying for patent protection, while on the other there are concerns that high renewal fees will actually be problematic for small businesses who might opt for much narrower protection under the current regime.

There also remains the question of enforcement.  Earlier in the year one inventor burnt a patent in protest at the costs of standing up to infringement by larger businesses, and others have said of the patent system: “It is expensive, distracting and time consuming to get them in the first place and then you need 10 times the money to defend them”.

An Effective Solution?

Despite the clear progress which has been made, questions remain as to how effective a solution the system will be. Spain and Italy have so far refused to join the scheme, as their national languages have not been adopted, so it is uncertain whether the unitary patent will in fact do what it says on the tin.

While Paris is the agreed seat of the Central Division of the Court, specialised ‘thematic clusters’ will also be established in London (dealing with, for example, pharmaceuticals) and Munich (covering mechanical engineering).  According to a report by Science|Business, there are concerns that this fragmentation will fail to address the practice of ‘forum shopping’ whereby litigants choose a court where they are likely to be treated favourably, and some note the risk of inconsistent decisions.

The S|B report cites Chris Mercer, President of the Chartered Institute of Patent Attorneys as commenting that: ‘in order to avoid forum shopping and to assure that there are consistent decisions, there should be a single, central court’. The same article also questions whether the new institutions will ‘cost so much to administer that the promised economic benefits will prove illusory.’

We have a long wait before the unitary patent sees the light of day, and such a sweeping change in an area as important as this is bound to lead to continuing debate and controversy, but this nonetheless seems like a significant step in the right direction.

New cookie law no longer an issue following an ICO backtrack?

Many people breathed a sigh of relief following the Guardian’s take on last week’s ‘watering down’ of  EU regulations by the ICO which impact on the use of cookies by UK websites.  Unfortunately, perhaps as a result of Chinese whispers, the growing consensus seems to be that the European rules don’t apply and sites no longer need to take action.

The previous version of the guidance, seemingly no longer available from the ICO following a quick search, provided, at page 6, that:

“general awareness of the functions and uses of cookies is simply not high enough for websites to look to rely entirely in the first instance on implied consent.  As consumer awareness increases over the next few years it may well be easier for organisations to rely on that shared understanding to a greater degree”

The same paragraph suggested that the shared understanding necessary to rely on implied consent is more likely to be achieved ‘if websites make a real effort to ensure information about cookies is made clearly available to their users’.  Notably, the guidance indicated that mentioning cookies in a privacy policy would not be sufficient.

What some people appear to have taken away from the revised note, which elaborates on the above, is that the ‘watered down’ guidance means no action is necessary, because implied consent is suddenly an option.  However, implied consent (as opposed to requiring a visitor to subscribe, to check a box, or to click a button), was already envisaged by the ICO.  In particular, page 16 of the previous guidance explained that, if a notice is displayed asking for permission and the user does not explicitly give it by clicking ‘accept’, instead navigating to another part of the website, then “you might decide that you could set a cookie and infer consent from the fact that the user has seen a clear notice and actively indicated that they are comfortable with cookies by clicking through and using the site”.

While the revised guidance offers some further clarity on this point, and arguably relaxes the language somewhat such that implied consent seems a more viable option, it has not done away with the new requirements.  Specifically, rather than simply allowing users to opt-out of the use of cookies, websites now need opt-in consent.  To infer implied consent, you ought to be sure that visitors actually know you intend to use cookies, and why.  The Guardian, the BBC, BT and a host of other sites have been updated to do this with notices of varying size and prominence which could serve as inspiration for your own site.

If you only mention cookies in your privacy policy, or you have a link to “cookies” in your footer, it is likely that you are not doing enough to educate visitors to an extent adequate to infer consent. That doesn’t mean you need to drop everything and get your web developers on the line right away.  Although the grace period for non-enforcement by the ICO has ended it is perfectly clear the Commissioner does not intend to adopt a heavy handed approach.  However, you should also not ignore the changes, and it is important to take note that, where the new guidance refers to implied consent, it also mentions more than once how “explicit consent might allow for regulatory certainty”.  There are also international considerations to bear in mind, as mentioned in our earlier post.

What is important is to begin working towards compliance.  If you are a small business with scarce resources, then rather than dragging your heels, why not take some time to identify straightforward steps you can action now.  There are WordPress plugins, downloadable Javascripts and a range of other offerings that can help you to quickly demonstrate that you care about keeping your visitors in the loop, and complying with your legal obligations.

APP STORE – Trade Mark Challenge Spreads to EU

We have been keeping an eye on developments in the dispute over the APP STORE mark.  A new chapter in this interesting saga has begun.

The challenge against Apple is bringing in more supporters and expanding to other jurisdictions. To recap, in our first blog we explained how Microsoft applied to the US Patent and Trade mark Office to oppose Apple’s trade mark for APP STORE on the grounds that it is a generic term.  In our second post we explored that Apple was on the offensive against Amazon for using the term APPSTORE for their software download store (to date Amazon have already filed their defence).

These actions both are taking place in the US.

Now the challenge to APP STORE has extended to Europe, where Apple has CTMs registered for APP STORE and APPSTORE since 2009.

As part of Amazon’s overall strategic defence to the lawsuit filed by Apple, they applied on 15 April to cancel Apple’s CTM trade mark registrations.

Microsoft have now followed suit by filing a declaration of invalidity of these EU marks.

What is interesting here is that Microsoft has pursued this challenge with the support of 3 other phone manufacturers: HTC, Sony Ecrisson and Nokia.

After issuing an invalidity application Microsoft released the following statement saying they were “seeking to invalidate Apple’s trademark registration for APP STORE and APPSTORE because [they] believe that [the trade marks] should not have been granted because they both lack distinctiveness. The undisputed facts establish that ‘app store’ means exactly what it says, a store offering apps, and is generic for the services that the registrations cover.”

This is not going to be the last we will hear in this ongoing dispute. The interest in this trade mark is growing and one wonders who else is going to join the bandwagon? Also, there is sufficient interest in the outcome of the EU trade mark proceedings, to see any decision made by OHIM being appealed up the steps to the Court of Justice of the European Union.

Aggressive Protection of IP, and the High Court ruling on the Digital Economy Act

The IPKat, reporting from the Fordham IP Conference, recently noted the upbeat tone of the keynote delivered by Victoria Espinel, White House IP Enforcement Coordinator.  While new technology may have rendered effective copyright enforcement a daunting prospect, and in the minds of some a losing battle, Espinel’s keynote at the conference, and the Obama Administration’s recent White Paper strike a different chord.  Indicative of the new low-tolerance approach to IP infringement, are the words of Preet Bhara, U.S. Attorney for the Southern District of New York:

Aggressive protection of intellectual property is essential to America’s current economic prosperity and future success

Proposals aimed at clamping down on IP offences by the Obama Administration in the White Paper on Intellectual Property Enforcement Legislative Recommendations are varied and far reaching, recommending a raft of changes including:

  1. The use of wiretaps in cases of copyright and trademark infringements
  2. Clarification that unlawful streaming of copyright material is a felony
  3. More serious penalties for repeat IP offenders
  4. The creation of a new US right of public performance for works broadcast over-the-air

These are just some of the proposed reforms aimed at tackling what some consider to be an increasingly relaxed public attitude towards piracy and IP infringement.  The problem of how to enforce copyright online is significant to businesses in a wide range of fields, and a proper understanding of the relevant issues can be a considerable advantage when deciding if, and how to distribute content.  This is the motivation behind an upcoming webinar to be delivered by Azrights: Controlling Copyright in the Cloud.

Digital Economy Act Update

Meanwhile, the UK High Court recently rendered its opinion following the application by BT and TalkTalk for judicial review of the DEA and Copyright (Initial Obligations) (Sharing of Costs) Order 2011.  You might recall that our earlier post touched on the compatibility of the Act with European law, now the results are in (the case report is available here).

Of the objections raised by the Telecoms providers, only one was accepted by Justice Kenneth Parker, while four claims were dismissed confirming the courts view that the law is consistent with European legislation. The successful claim concerned an obligation on ISPs to bear a proportion of the costs involved in implementing the new legislation, and a number of parties have expressed dissatisfaction not only at the rejection of the remaining issues but at the degree of success that this claim enjoyed.  While elements of the charges to be borne by ISPs relating to Ofcom’s setting up, monitoring and enforcement of the rules were found to be unlawful, the judge maintained that they would remain liable for a significant proportion of the costs of operating the system and the appeals process – a burden likely to lead to higher prices for consumers, possibly to the extent that tens of thousands of people may be excluded from faster broadband access.

Data Protection

Of particular interest to this writer, is that the Judge makes the case for the classification of IP addresses as personal information.  The reasoning behind this is that, despite the IP address only identifying an internet connection (or an internet subscriber) rather than a particular user, it may still constitute personal data because:

the subscriber, who can be identified through the dynamic IP address, is inevitably linked to the data … as the person who, in a broad sense, has facilitated the infringement.

The suggestion here is that IP addresses, coupled with information about the time particular material was accessed by a subscriber assigned that address, may themselves be protected under Data Protection law.

Image courtesy of opensourceway, click the image for their page on Flickr

This ruling is a significant blow to opponents of the Act, but the AG’s opinion in Scarlet v. SABAM, continuing efforts by the Open Rights Group, and the possibility of appeal by BT and TalkTalk mean that the future of the Act is far from certain.  The Initial Obligations Code, which sets out in more detail the operation of the Act, has yet to be published, and the Costs Order will now need to be reviewed in light of the decision.  So, it is likely to still be some time before we can expect to see the full impact of the law.

AG’s Opinion in Scarlet v. SABAM: Impact on Digital Economy Act

The debate over file sharing is increasingly being presented as a stand off between property rights and civic rights, as the new opinion from the Advocate General, adviser to the Court of Justice of the European Union (CJEU), now demonstrates. All the while countries rush ahead with innovative measures to clampdown on infringement. Getting a court order to reveal an alleged infringer’s identity was never going to be the most economical and effective way to address mass infringements. Understandably, rights holders want to take it further by obliging ISPs to filter and block sites that facilitate infringement. But the nature of the internet, as a complex communications hub, is such that any limitation of its functions immediately can be seen as affecting an individual’s right to freedom of expression.

Freedom of Expression
This right is deeply entrenched in law with the European Convention of Human rights (in the UK with the Human Rights Act) and now the EU’s version the Charter of Fundamental Rights.

That is not to say it is an absolute right, rather, it is expected that countries are able to encroach on this when needed.
However the Convention and Charter regulate how this is done and for how long.

One of the main controls is to ensure any encroachment has a solid legal basis (see article 52 (1) ).

Another consideration is that the inroad into an individual’s freedom of expression should be proportionate to the outcome sought (don’t use a sledge hammer to crack a nut).

Practically speaking, with the onset of the Lisbon treaty the CJEU must now consider the Charter to have the same validity as any other EU treaties, meaning when they address a problem, which affects the single market for example and the application of EU laws, they must also consider the effect on the Charter.

It is precisely within this frame that the AG last week considered a measure taken by a Court in Belgium to address illegal file sharing.

Scarlet v SABAM
The SABAM is the Belgian equivalent of PRS, a royalty collecting agency representing music artists.

They successfully applied to the lower court of Bruxelles for an injunction against an ISP named Scarlet.

The scope of the injunction was to monitor, identify, filter and block communications where illegal file sharing was taking place, the duration of the injunction was indefinite and the cost of managing this was to be borne by the ISP entirely.

Scarlet appealed against the legality of this injunction to the Court of Appeal of Bruxelles, who deferred the question to the CJEU.

The particular question put to the CJEU was whether the domestic law relied upon by the judge, set in the context of the Charter and other EU laws including data protection, could legitimise granting such a far-reaching remedy.

Important to note here the lower Court relied upon a domestic law, which allows it to give an order to cease copyright infringement. But even more interesting was that this law was in itself a transposition of EU law (article 8(3) of directive 2001/29 and article 11 of directive 2004/48).

So the question essentially touched on not only whether Belgian law could warrant such an injunction but also whether the underpinning EU law could support this type of action.

The AG’s Opinion
The AG thought not (see in particular section E  of Opinion; currently the opinion is only available in French but can be auto translated by Google Translate ) For the AG, under the Charter, the quality of any law should be sufficiently precise that others can be certain of its effects and adjust their behaviour accordingly. Using the words of the European Court of Human Rights the AG said the law should be “formulated with sufficient precision […]  to foresee […] the consequences which a given action may entail” (para 94)

To expand further on this notion, the AG referred to a Turkish case brought to the European Court of Human Rights where the law in question gave the power to chief prison officers to intercept and retain prisoner correspondence if the officer thought the contents were “embarrassing” (Footnote 85 of the Opinion). It was thought such a law did not indicate with sufficient clarity the scope and conditions for the exercise of this power by those authorities.

So details are crucial if a law is to be in line with the Charter, primarily, so people can foresee the consequences.

In this case, from the point of view of Scarlet, the adoption by the lower court of this injunction was an extraordinary measure, both difficult to foresee and due to the serious economic consequences smacked more of being arbitrary.

The ISP was demanded to achieve the result of blocking illegal file sharing but the solution of how this could be done was completely innovative.

Also the injunction gave no guarantee of how subscribers’ personal data would be protected. Nor did it provide any recourse for appeal by affected subscribers.

On this basis, the AG concluded the national law and by implication EU law could not have given authorisation for such a measure. Essentially there was no solid basis in law for this remedy when read in light of the Charter.

Digital Economy Act
If the Court decides to follow this Opinion then other EU countries who are rolling out new laws to combat internet copyright infringement may take more time to stamp out the details of their laws rather than handing over general powers to the judiciary or executive.

How may this affect the UK and the Digital Economy Act?

The UK is obliged to check compatibility with the Human Rights Act (HRA) when passing any new law.

Lord Mandelson okayed the Digital Economy Bill in the Commons but when the bill reached the House of Lords Joint Committee of Human Rights, concerns were raised about so-called ‘skeletal measures’ where powers are granted under the Act and the detail worked out in secondary legislation.

In fact, the Joint Committee said it was “impossible [to] assess fully” whether the Bill is compatible with the HRA due to the lack of detail. Not a good sign. (see in particular 1.28).

One such example of a ‘skeletal measure’ is Article 18 of the Act which allows for the secretary of state to introduce ‘technical measures’ to limit access to the internet for alleged infringing subscribers.

This particular measure is currently under judicial review by the high court but this SABAM Opinion could be the tipping point for a declaration of incompatibility with the Human Rights Act, or maybe there is a referral to the CJEU in the waiting.

Luckily for the government a referral to the CJEU would not see the Digital Economy Act being scrutinised in the same way as Belgium law has been under the Charter. The UK added a few provisos when giving the Charter the force of law with the Lisbon treaty, one of those was to preclude the CJEU from judging whether a UK law violates the Charter (see article 1 of protocol 7).

Interestingly the Telegraph have noted that the Government are circumventing the need to even rely upon article 18 Digital Economy Act by opening “talks between ISPs and the music industry to encourage a voluntary agreement on a list of websites that would be blocked”.

In conclusion, in the UK, it is understandable for the government to grant some general powers rather than type out every possible detail in the law when addressing copyright infringement. This is particularly true in the field of technology and the internet, where flexibility is needed to adapt to this ever changing environment. But at the same, it is equally important in light of the essence of the SABAM opinion to ensure sufficient precision in the law to ensure its validity when placed under European human rights scrutiny.

Data Retention Law in France Raises Privacy Concerns

PrivacyLarge technology businesses including Google, Facebook and eBay are fighting a new law in France (Google translation) that would require internet companies to keep user data for a year. The French Association of Internet Community Services (ASIC) is to challenge the law infront of the State Council.

Data must be retained so that it can be handed over to the authorities on demand, and must be kept for at least one year, so that it can be used by the authorities if necessary. The data that the law will require the sites to retain includes personal information such as customer names, addresses, telephone numbers and even passwords.

However, Google and over 20 other companies want to reverse the new legislation. The ASIC argues, “It doesn’t make sense to have different requirements in France than what we have in Spain and England. Also we do not feel comfortable turning our customers’ passwords over to the police”

The new law raises a number of concerns over privacy, something for which Google and Facebook have already faced criticism as a result of their collection and retention of personal information. In fact Google has been the target of legal action brought by France itself, and was last month fined $142,000 after collecting data through wireless access points around the world.  On a related note, Facebook has found it necessary to change is privacy settings in light of concerns over access to user information.

With a number of the companies affected by the legislation having suffered damage to their reputation themselves following the efforts of privacy advocates, it is no surprise that they are objecting to a new law which will now require them to retain, and release on demand, their users’ personal data.

The new law could be could prove particularly problematic in cases where security is breached. If companies are bound to retain a broader range of user data, including passwords which might be used with a variety of services, it is more likely that an attacker would be able to gain complete access to millions of Internet users’ accounts across not only social networking sites, but email, intranets and possibly even online banking.

The head of ASIC, Benoit Tabaka, has highlighted a range of problems with the new law. One issue he raises is that ‘there was no consultation with the European Commission.’ He goes on to explain that, ‘Our companies are based in several European countries. Our activities target many national markets, so it is clear that we need a common approach’. And he claims that collecting and retaining passwords is a ‘shocking measure’.

In light of the increasing concern over privacy online it is not surprising that the new law has caused a stir. Especially among those companies which have come under attack as a result of their collecting personal information.  Furthermore, is this yet another burden for new IT business to bear, as touched on previously in our post covering Regulation and Start Up Britain, and could it lead to a less competitive marketplace here if similar measures are adopted in the UK?

Start Up Britain and Regulation: A Balancing Act?

270,000 businesses start up in Britain every year, and the new Start Up Britain intitiative hopes to promote entrepreneurship by offering reading material, business resources, discounts and a variety of other assistance.  Some legal resources are also available, to help new businesses steer a clear path through swathes of regulation, manage risk, and to offer some rudimentary assistance in protecting their intellectual property.  That these resources form part of a Government backed initiative to encourage entrepreneurship is telling.  Getting the legal advice necessary to manage risk, and ensure compliance, is an important and often expensive precursor to launching a successful business; one area of regulation we have written about before is data protection.

Proposed reforms to data protection law in Europe, including the right to be forgotten online, and changes to laws which affect when cookies may be stored and accessed by websites, are aimed at developing a “comprehensive set of existing and new rules to better cope with privacy risks online”.  However, while entrepreneurship is hailed as a means for economic recovery, over regulation would certainly represent a significant obstacle  to start ups.  While the barriers for entry to the online marketplace have traditionally been very low, and while web based businesses have been relatively free to design their systems and user experiences as they wish, these freedoms are increasingly weighed against the privacy of users.

Regular scandals serve to highlight the importance of more effective safeguards on the use of personal information, for example the loss of address, bank, and national insurance details for 25 million people in 2007; a BP laptop going missing with personal data for thousands of oil spill victims on board last month; and the exposure of names and email addresses following a cyber attack aimed at Epsilon, who provide e-mail services to several high profile businesses.  There is good reason for concern over the safety of information we provide online, but notably, in each of the cases mentioned here, the exposure of personal details was not necessarily attributable to a lack of consent or misuse of data, but to a breach of security.

Freedom to do business online must be balanced with controls on the use of data, especially as the growth of social media sees more and more interaction taking place on the web. However, if the scales are tipped too far one way or the other, regulation may have a severe negative impact on businesses, or the privacy of web users.

Following the increase last year in the maximum fine which can be levied by the ICO from £5000 to £500,000 and calls for the law to provide mechanisms for enforcement against global companies, the growing reach and impact of data protection law means a steadily increasing burden on website operators to obtain consent for the collection of visitor data, to control its use, and to control access to it.  While compliant businesses are likely to develop trust, and while stricter rules may give web users greater peace of mind, it might be argued that education could play a more significant part in preventing breaches of privacy online, and reduce the need for regulation.  It will be interesting to see whether the reforms strike the right balance, and allow entrepreneurship to thrive, or whether they eventually raise the bar to entry such that only larger players have access to the market.

Privacy 2.0

The Data Protection Act (DPA), which is the backdrop for privacy protection in Europe, was born in the pre- web2.0 era; before the innovation of social media. New challenges are being posed by new technologies and one study (by RAND) commissioned by the Information Commissioner’s Office (ICO) last year concluded that, “in an increasingly global, networked environment, the Directive [which the DPA is based on] will not suffice in the long term.”

In this respect, last week the EU Commissioner announced that privacy reform was back on the top of the agenda for this year.
She mentioned the changes envisaged will be based on the pillars of transparency; privacy as default; protection regardless of data location and the right to be forgotten.

Pillars of reform
Transparency or the ‘openness principle’ is a pre-requisite to building trust on the internet and is an agreed necessity voiced by data protection commissioners (see chapter 10 ).   According to the RAND report “where and how personal information is stored and used is becoming increasingly opaque due to technological advances”.

The ‘Privacy as Default’ approach described by the Commissioner aims to make it easier for individuals’ to configure their privacy settings on social networking sites – a possible reaction to the controversy last year surrounding Facebook’s settings (see previous post)

The Commissioner considers the same principle of ‘Privacy as Default’ could also be used to control the collection of data by software applications. This view is consistent with the proposed changes to cookies law due to be implemented where the starting principle is that consent is required every time a cookie is used (although there are exceptions).

The EU Commissioner wants EU citizens to be protected regardless of where their data is processed: “Any company operating in the EU market or any online product that is targeted at EU consumers must comply with EU rules.” Currently companies ‘established’ in the EU are subject to the Act. It is not clear, short of an international treaty, how the EU intends to protect EU citizens outside of its jurisdiction. From looking at the report of the Commission in November 2010, they seem undecided yet how this will happen in practice.

Lastly and more intriguingly is the so-called ‘right to be forgotten’.

The EU Commissioner refers to the ambition behind this right as being “a comprehensive set of existing and new rules to better cope with privacy risks online”. Individuals will be given the “right – and not only the “possibility” – to withdraw their consent to data processing.”

Although it is not yet clear what the scope of this right will entail, there have already been some doubts surrounding its practicability. The New Scientist have commented “Once you put something online it can easily be copied and widely distributed, and deleting the original will do nothing to stop people finding a copy elsewhere ”.

Also, an interesting consideration is what would happen when a right to be forgotten implicates third parties. Say for instance, I take an unflattering photo of you at a party upload it on Facebook and tag you. As I am tagging you with the photo this become personal data which Facebook is processing.

If, under this new right to be forgotten, you decide to withdraw your consent to have your data processed will Facebook have to remove it from my photo album? If this is the case then immediately social media sites will be drawn into mediating between people exercising the right to be forgotten and the rights of others who are affected by that right.
Although the principles announced by the Commissioner seem to be reasonable and needed, it remains to be seen what exactly is being proposed and how they intend to deal with the practical issues raised.

Premier League loses first round over cheaper TV football

The Premier League is the world’s most watched and most lucrative football league in terms of revenue.  So, revenue from television rights is vitally important to it.

The Football Association Premier League ltd. (FAPL) sells its rights in the broadcast of matches individually on a territory by territory basis. In order to access the service one needs a territorial decoder card from a licensee such as Sky. This is enforced by contractual provisions prohibiting the licensee from providing decoders and decoder cards outside the licensed territory.

This approach was challenged by intermediaries who have been offering decoders and decoder cards in the UK that had been obtained abroad, but not directly from the licensees. The rates were lower than those of the official UK licensee. This has now led to various prosecutions. Two test cases which are still pending could have far-reaching ramifications for sport, broadcasting and consumers.

Background

Karen Murphy (the landlord of the Red White & Blue in Southsea) was taken to court by Media Protection Services Ltd over her decision to import a Greek decoder to show the league games to her customers rather than using a Sky decoder, despite the fact that Sky holds the licence rights to show these games in UK.

The UK courts held that Murphy committed a criminal copyright infringement by circumventing the exclusive rights of the Premier League’s authorised domestic broadcasters (Sky). Karen Murphy thought this unjust and took her case to the highest European Court claiming that the prohibition against foreign decoders in the UK violates the European competition and free movement of goods legislation.

The second case focuses on the companies which supply publicans such as Karen Murphy with the decoder cards that enable them receive and view foreign broadcasts. The Football Association Premier League ltd. brought an action against QC Leisure & ors claiming that QC’s supply of decoder cards in the UK would infringe its copyright. The central point of the legal dispute was whether FAPL could enforce its licence terms to protect its copyright in the broadcasts. This case is now pending on the EU’s highest court as well.

Pubs win first round

According to the advice of the general Advocate of the European Court of Justice Juliane Kokott Karen Murphy as well as QC Leisure & ors will win the court battle over cheaper TV football. She held that the FAPL’s territorial exclusivity agreements of Premier League football matches are contrary to European Union law, because it is a “serious impairment of freedom to provide services”.  She added that the “economic exploitation of the [broadcast] rights is not undermined by the use of foreign decoder cards as the corresponding charges have been paid for those cards”.

However, this opinion is not binding. It remains to be seen if the court follows her advice.  Generally, in 80% of cases they do.

These cases are of huge significance for the Premier League and any incumbent UK broadcaster and could change the European landscape for the way right holders sell their rights. The cases underline how even well established businesses are facing new challenges through technology developments and changes in the legislation in connection with the protection and exploitation of their intellectual property rights.

Registrability of Trade Marks – WIENER WERKSTATTE

A trade mark can be refused where it is descriptive of the goods and services it covers. This could be where the mark ‘designates the kind, quality, quantity, intended purpose, value or geographical origin’ of the goods or service or other characteristic. For example, ‘GOOD BOOKS’ would be a descriptive trade mark in a class for printed materials and books. But what if I wanted to register a trade mark in the UK or as a CTM for a term which is descriptive of the products sold but in another language? For example ‘BON LIVRES’ or ‘BUENOS LIBROS’ for books.

A recent judgment from the General Court of Justice has confirmed an important distinction when registering foreign language trade marks in separate EU countries and when using the CTM system.  Essentially it seems far riskier to register a CTM when the word, in any one of the 23 official languages in the EU, is descriptive of the registered goods.

National registrations in the EU
The resounding principle in EU law is that descriptive foreign language trade marks can be registered where the relevant consumers in the country where registration is sought can not identify the clear meaning of the term.

So if I register the word ‘TABELA’ (‘table’ in Portuguese) in the UK for furniture the question is whether British consumers would identify that ‘TABELA’ actually means ‘table’. If not then the registration would be accepted. This principle was established in the MATRATZEN case where the word MATRATZEN, which means ‘mattress’ in Germany, was successfully registered in Spain as a trade mark for beds.

This is significant as the level of knowledge of German is seen from the perspective of the Spanish consumer.

CTM registrations
However what is the position of registering foreign language CTMs where the foreign language happens to be one of the official 23 languages?

Here the relevant territory would be that of the whole of the EU. And the relevant public, regardless of where the products are predominately being sold, is the consumer of the product in the particular language of the mark. So a CTM application for ‘TABELA’ would be assessed from the point of view of Portuguese speakers in Portugal, even though I may never sell a product there.
This has been confirmed in the recent ‘WIENER WERKSTATTE’ case. Here the applicants applied to register a CTM for WIENER WERKSTATTE, which translates to VIENNESE WORKSHOP from German to English and refers to a style of product design of the early 20th century.  All of the products registered were for a variety of objects from frames to lights to vases.

What is interesting with this case is that the Court’s approach seems to look at the language of the sign and decide whether consumers, where that language is spoken in the EU, would find the term to be descriptive (see para 20 of judgement).  The Court thought as German speakers would perceive the descriptiveness of the term Wiener Werkstätte, this was sufficient to have the trade mark refused in the whole of the EU.

In a previous ruling, the Swedish owner of the brand ELLOS applied for a CTM in various classes including class 25 for clothing. The word ELLOS is the third personal male plural pronoun in Spanish. On appeal to the General Court the latter found that, from the perspective of Spanish consumers, the mark ELLOS would denote that the goods concerned were intended for men. The result of the case was to remove the class 25 clothing description from the application (see here).

The impact of the WIENER WERKSTATTE judgment is to confirm that, strategically, a national approach to trade mark registration in the EU could be safer approach where the term in question happens to be one of the official languages of the EU and is descriptive of the products sold in that language.