European IP Bulletin, Issue 31, May 2006
May 2006
Full Printable Version in PDF Format(Adobe Acrobat Reader required, available for free download here)
Hot Topics (click the header at left to view all of the Hot Topics case notes)
1. Copyright Protection of Historical Works: The Da Vinci Code Case
In Baigent and Leigh v The Random House Group, the Court applied the principles of non-literal copyright infringement to a work which was largely historical and factual in nature. In doing so, the Court considered the idea/expression dichotomy in the context of the highly popular novel, The Da Vinci Code.
2. EU Proposes Criminal Sanctions for Counterfeiters
The European Commission is to unveil plans which set the minimum criminal sanctions for people found guilty of producing fake goods. Under the plans, counterfeiters would face minimum four year jail terms if they were found to have ties to organised crime or if their crime threatens health and safety. The Commission is also considering fines for intellectual property law infringements.
3. Met Police Set Up a Special Unit to Target Film Piracy
The UK’s increasingly rampant film piracy spurred the Metropolitan Police to jointly established the Film Piracy Unit with the Federation Against Copyright Theft. The new Metropolitan Police Film Piracy Unit, believed to be the first of its kind in the world, will target the organised criminal networks involved in the manufacture and distribution of counterfeit film products.
Copyright (click the header at left to view all of the Copyright case notes)
4. Pubs Win the Right to Show Football on Saturday Afternoon
A landmark Crown Court judgment has now allowed pubs to screen football matches on Saturday afternoons if they have legally acquired a foreign satellite subscription in defiance of the ban imposed by The Union of European Football Associations.
5. Technological Protection Measures and Private Copy Exception: The French Perspective
The French Court de Cassation, by reversing the judgment handed down by the Court of Appeal, established that the use of technological protection measures that prevent users from benefiting from the private copy exception are actually legal.
Patents (click the header at left to view all of the Patent case notes)
6. In Re Macrossan: Patents for Business Methods
The decision of Mann J In re Macrossan, concerned the patenting of business method patents and software patents. The judgment clarified that the business method exclusion does not apply to “partial methods” of doing business. Where a patentee can differentiate his invention as a tool for doing business or merely a facility for doing business as opposed to the abstract nature of exclusion, he may be entitled to a patent.
Trademarks (click the header at left to view all of the Trademark case notes)
7. When Shape Doesn't Count
On 15 March 2006 the EU Court of First Instance handed down a decision in the case Develey Holding GmbH & Co. Beteiligungs KG v Office for the Harmonization in the Internal Market (OHIM) which concerned OHIM’s refusal to register an already nationally registered three-dimensional mark.
8. Competition Law as a Valid Defence
The Court of Appeal in Sportswear SpA & Four Marketing Ltd v Stonestyle Ltd has held that an allegation of a breach of Art 81 of the EC Treaty could constitute a defence to a claim for trade mark infringement and in particular that the allegation would be relevant to the issue of the trade mark proprietor's reliance on s12(2) Trade Marks Act 1994.
9. What’s in a Name? No Claim on Name
In Elizabeth Florence Emanuel v Continental Shelf 128 Ltd., the European Court of Justice interpreted Article 3(1)(g) from the consumer protection perspective for the first time by holding that even if the average consumer might be influenced by the trade mark of the goods while purchasing them by imagining that a particular person no longer connected with the goods was involved in their making, the registration of the mark may not be refused on the ground that it will deceive the public under Article 3(1)(g) of the Trade Mark Directive. In addition it may not be revoked under Article 12(2)(b) on the ground that that mark would mislead the public.
Designs (click the header at left to view all of the Designs case notes)
10. Spare Parts and the "Risky Statute"
In Dyson Ltd v Qualtex (UK) Ltd, Dyson sought to protect 14 spare parts for its vacuum cleaners under the unregistered design right as governed by the Copyright, Designs and Patents Act 1988. The trial court had held that there were valid design rights subsisting in the 14 spare parts, and these rights had been infringed. On appeal, the Court of Appeal concurred with the trial Court, holding that navigating “this crude statute is a risky business.”
Media (click the header at left to view all of the Media case notes)
11. HRH The Prince of Wales v Associated Newspapers Ltd.
On 17 March 2006, the Chancery Division of the High Court of Justice delivered a judgment in HRH The Prince of Wales v Associated Newspapers Ltd. In this case, the Prince of Wales was granted summary judgment against Associated Newspapers Limited for breach of confidence and infringement of copyright in relation to the publication of a series of articles based upon a journal written by Prince Charles.
Acknowledgements
McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Dr. Uma Suthersanen, Ayan Roy Chowdhury, Luca Escoffier, Maria Mercedes Frabboni, Afe Komolafe, Marisella Ouma, Rajesh Sagar, Ilanah Simon, Ken Shao, Pekka Valo and Daphne Zografos, from the Queen Mary Intellectual Property Research Institute, University of London.
