Top 10 recent European/UK IP developments – in one hour Members of the Intellectual Property & IT Group, London 28 June 2012 Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe-Brussels LLP both limited liability partnerships established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions. Today’s speakers Sarah Byrt Partner Oliver Yaros Senior Associate Mark Prinsley Partner Jonathan Radcliffe Partner Kelly Rossiter Trainee Solicitor Mahisha Rupan Associate 2 Agenda 1. Where does digital infringement take place when your servers are offshore? The Football Dataco case 2. UK courts grant injunctions against ISPs over Newzbin2 and Pirate Bay websites 3. Can you get a pan-European injunction for trade mark infringement? 4. The TV decoder cards case - Murphy v Premier League 5. The latest news from Europe on software copyright. The SAS case 6. Brand owners versus eBay in Europe 7. Developments in copyright – how much can you take without infringing? The Meltwater and Infopaq cases 8. Breach of confidence – recent UK guidance on compensation 9. An update on the single European patent court 10. Copyright reform in the UK – where are we now? 3 1. Liability for offshore servers– the CJEU Football Dataco case General principles • The general rule: IP is defined territorially - acts committed outside national boundaries cannot be infringements. • The English approach: mere access to material on a foreign server does not constitute infringement unless that material is directed at England and English consumers. The Football Dataco Ltd v. Sportradar GmbH case • This issue is at the heart of the dispute in this case concerning the internet transmission of sports data for gambling, and what was the correct test for internet infringement. 4 1. Liability for offshore servers– the CJEU Football Dataco case • The theoretical tests: – Transmission theory: internet provision of data involves both the acts of hosting the website (in Austria and Holland in this case) and of the English user in accessing it. There is no transmission unless and until it is received + there must be both a "transmittor" and a "transmittee". – Emission theory: the relevant acts occur only in the place from which the data emanates (i.e. the main server in Austria and/or the back-up server in Holland). • English Court in Football Dataco held that the "better view" was that the emission theory was the correct test. 5 1. Liability for offshore servers– the CJEU Football Dataco case The CJEU Advocate-General’s Opinion • In the context of the internet, the usefulness of the transmission and emission theories, taken analogously from broadcasting, is “highly questionable”. • Instead, the key idea is that of the intended target of the information. • Conclusion: the “place” of infringement is therefore each and every country in which the relevant underlying factual matrix took place. – the infringing re-utilisation was “making available” the data in England from the Austrian server, so liability in both countries. Mayer Brown alert here 6 2. UK courts grant injunctions against ISPs over Newzbin2 and Pirate Bay websites • Twentieth Century Fox Film Corporation v British Telecommunications Plc (2011) • Dramatico Entertainment Ltd v British Sky Broadcasting Ltd (2012) • Key points: – Newzbin2 is a members only site that indexes links to illegally copied films, TV programmes, music and games on the internet. Pirate Bay allows users to search for and download copies of music and films from each other – Both have been successfully sued in the English High Court for infringement of copyright – Section 97A of the CDPA gives UK courts the power to grant an injunction against an ISP if it has actual knowledge that someone has used its service to infringe copyright 7 3. Can you get a pan-European injunction for trade mark infringement? • Community Trade Mark Regulation 207/2009 • DHL Express France SAS v Chronopost SA Case C-235/09, 12 April 2011 • Key points: – Chronopost sued DHL, for infringement of its French trade mark and CTM for WEBSHIPPING when DHL used mark for its express mail management service – Trial court found no infringement of the CTM. Paris Court of Appeal found infringement of both the French and Community trade marks and injuncted DHL from using them in France – Chronopost appealed, arguing that the injunction should cover the entire EU – CJEU confirmed that an injunction issued by a court in relation to a CTM must extend to the entire EU and other member states must recognise and enforce the judgment to give it a cross-border effect to ensure the uniform character of a CTM throughout the EU 8 4. The TV decoder cards case • FA Premier League v Karen Murphy and others Mayer Brown alert here 9 4. The TV decoder cards case • Were the pubs infringing the Premier League's copyright by showing the football matches? • CJEU said "yes", by "communicating to the public" – a new public in a different EU country • BUT English Court of Appeal said "no" in relation to films of matches because of exception of showing film to an audience who had not paid for admission • And (CJEU and Court of Appeal): absolute ban on selling decoder cards outside Greece was anti-competitive and so void 10 5. Update on the scope of copyright protection for computer programs - SAS Institute Inc v World Programming Ltd • Program functionality, program language and format of data files are not protected by copyright • A licensee is entitled to observe, study or test the functioning of software in order to determine the ideas and principles behind it, provided that the copyright owner’s exclusive rights are not infringed • Reproduction of particular elements described in a user manual may constitute copyright infringement if the material reproduced constitutes an expression of the author’s creation 11 5. Software systems – what is protected by copyright? Yes No Code (i.e. literal copying infringes copyright) Logic, algorithms and programming languages, where these are just ideas and principles Design, aka “structure, sequence and organisation” – how the functionality is expressed in the code General business logic / functionality – but confidentiality may help here GUI screen displays, icons, graphics, manuals, specifications Ideas underlying programme elements and interfaces Data stored on system – may be protected by copyright or database right Ad hoc languages such as user command interfaces 12 6. Brand owners vs. eBay in Europe • L'Oréal SA and others v eBay International AG and others, 12 July 2011 (CJEU) • Key points – “In the course of trade”’; – Use of L'Oréal’s trade marks as keywords on eBay; – Use of L'Oréal’s trade marks on eBay website; – Scope of the “hosting defence” under Article 14 E-commerce Directive; – Trade mark exhaustion; and – Injunctions against online marketplaces. 13 7. Developments in copyright – how much can you take without infringing? Infopaq v. Dankse Dagblades (CJEU) • Originality "Copyright … is liable to apply only in relation to a subject-matter which is original in the sense that it is its author’s own intellectual creation. … the various parts of a work [should be treated in the same way as the work as a whole and] thus enjoy protection under Article 2(a) … , provided that they contain elements which are the expression of the intellectual creation of the author of the work. …” •How much is too much? “The reproduction of an extract of a protected work … is such as [to infringe copyright] if that extract contains an element of the work which … expresses the author's own intellectual creation". 14 7. Developments in copyright – how much can you take without infringing? Newspaper Licensing Agency v. Meltwater • English High Court applies Infopaq re how much is too much: "There is no reference to "substantial part" in [the Copyright Directive]; the ECJ makes it clear that originality rather than substantiality is the test to be applied to the part extracted. … This is now the only real test.” • English Court of Appeal then looks at originality and says: the ECJ has not changed the traditional test i.e. you still do not require novelty or merit for copyright to exist. 15 8. Breach of confidence – recent UK guidance on compensation Where the Claimant... It can recover for... Exploits the information by making and selling products for a profit Its loss of profit Exploits the information by granting licences Its lost licensing revenue Would have “sold” rather than The lost market value licensed the information Has not suffered any of the above financial losses “Negotiating damages” i.e. the price it could reasonably have demanded for agreeing to release its rights 16 Vercoe v Rutland Fund Management (2010) Key points: Account of defendant’s profits unlikely unless the breach of confidence involves: •Fiduciary relationship; or •Something like a secret process 17 Force India Formula One Team v 1 Malaysia Racing Team (2012) Key points: Be realistic about what has been misused Be realistic about its value 18 9. The single European patent court Problem Drawbacks of the current nationally-based patent litigation regime – jurisdictional challenge of multiple litigations – the risk of conflicting decisions on identical cases – high legal costs overall, and uneven quality of experience Solution Have a single unified patent court with pan-European jurisdiction to make litigation cheaper and more predictable – very ambitious in scope; it will regulate both European and the future Community patents – significant political capital has been expended on this 19 9. The single European patent court Overview • Regional Divisions for the Courts of First Instance (circuit style) with a single Court of Appeal, all with specialist judges – jurisdiction based on seat of the defendant – default Central Division for non-EU parties – official languages: English, French and German • The principal attraction is a pan-European injunction from a single court • But the whole project is caught up in European politics – languages and rules are a vexed issue; doubts over the legality of the proposal from both the EU and the EPO perspectives – where next? 20 10. Copyright reform in the UK – where are we now? • Hargreaves Review May 2011 → IPO Consultation • Digital Copyright Exchange Phase 2 “Seeking Solutions” due to report July 2012 Prof Ian Hargreaves Richard Hooper 21 10. Copyright reform in the UK – where are we now? – the UKIPO's Copyright Consultation • Parody, caricature and pastiche "Copying should be lawful where it is for private purposes, or does not damage the underlying aims of copyright". • Use of works for education • Copyright exceptions for people with disabilities • Orphan works • Use of works for quotation and reporting current events • Collecting societies • Private copying • Use of works for public administration and reporting • Preservation by libraries and archives • Other exceptions • Research and private study • Protecting copyright exceptions from override by contract • Text and data mining for research • Copyright “notices” 22 For more information, please contact: Sarah Byrt Partner, London +44 (0)20 3130 3832 [email protected] Mark Prinsley Partner, London +44 (0)20 3130 3900 [email protected] Jonathan Radcliffe Partner, London +44 (0)20 3130 3230 [email protected] 23 Thank you. 24 Top 10 recent European/UK IP developments – in one hour Members of the Intellectual Property & IT Group, London 28 June 2012 Mayer Brown is a global legal services provider comprising legal practices that are separate entities (the "Mayer Brown Practices"). The Mayer Brown Practices are: Mayer Brown LLP and Mayer Brown Europe-Brussels LLP both limited liability partnerships established in Illinois USA; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales (authorized and regulated by the Solicitors Regulation Authority and registered in England and Wales number OC 303359); Mayer Brown, a SELAS established in France; Mayer Brown JSM, a Hong Kong partnership and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.