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European IP Bulletin, Issue 32, June 2006 - Media

PATENTS

9. Champions League On the Internet is Off-Side, Says UEFA

Union des Associations Europeennes de Football (Union of Football Associations) & Ors v Briscomb & Ors [2006] EWITC 1268 (Ch) concerned the broadcasting of the Champions League Football tournament over the internet.  The claimants, included Union des Associations Europeenees de Football, commonly known as UEFA, the organiser of the European Champions League and the legitimate right owner of the broadcasts. By showing live Champions League games over their website www.sportingstreams.com for subscribers to view, the defendants infringed the copyright in those live broadcasts and ancillary works owned by the claimants.

UEFA, together with broadcasters that hold the right to broadcast the matches live on television, moved for summary judgment in an action for infringement of copyright subsisting in the matches and in other ancillary works related to the tournament, such as the theme tunes created for use with the Champions League television programmes, uniform branding and the UEFA logo.

The claimants provided evidence that live matches were copied and subsequently included in a programme that was transmitted over the internet. This was recognised to be against s. 20, Copyright, Designs and Patents Act (CPDA) which concerns infringement by broadcasting or inclusion in a cable programme service, and s. 17 of the CDPA concerning infringement by creating unauthorised copies.

Justice Lindsay accepted that defendants had no real prospect of successfully defending the claims brought before the court. A permanent injunction was issued, restraining the broadcasting of UEFA Champions League matches over the internet.  The judgment also included an order for the confiscation of all equipment used in the pirating process as well as damages relating to the substantial costs of the claim.

The decision does not leave room for doubt over the illegality of unauthorised copying and streaming over the internet. However, it remains to be proven whether the approach taken by UEFA in this case will be a deterrent against future infringements, and whether it will help develop a common understanding that reproduction and retransmission of a broadcast through the internet does constitute an unlawful action.

10. Phones4U Wins Passing Off Appeal Against Online Seller Phone4U

(1) Phones 4U Ltd (2) Caudwell Holdings Ltd v (1) Phone4U.co.il Internet Ltd (2) Abdul Heykali (3) New World Communications (Southern Divisions) Ltd (2006) involved the domain name phone4u.co.uk, registered by one of the defendants, Mr Abdul Heykali in August 1999. His website initially promoted the services available at his shop in London and only later in 2001 started selling mobile phones online. He says that at the time he registered the domain name he did not know of Phones4U. The name Phones4U had been used since 1995 and the domain name phones4u.co.uk was registered in 1997. The claimants failed to show in the High Court last year that they had acquired the goodwill in expression ‘phones 4u’ at the time when the domain name was registered. Although there was confusion, there was not the required deception for the claim for passing off to succeed. The trade mark infringement claimed also failed because the registered mark was limited to the combination of red, white and blue colours.

The Court of Appeal held that the trial judge had erred in applying the test of distinctiveness to passing off which is required for registration of trade marks. It was enough that very large numbers of people knew the name. The threshold for establishing goodwill in August 1999, at the time of the defendants’ domain name registration, was easily achieved. Following that conclusion the Court continued that although the defendants’ mark was created innocently, there could not be any realistic use of the domain name without causing deception. One of the defendants, Mr Heykali had actually commenced using it for trade about the same time or even after he knew about the Phones4U High Street shops. Although the defendants’ website included a disclaimer, that was not enough to ‘undeceive’ the potential customers. From email correspondence of the defendant Mr Heykali it was clear that he had sought to take advantage of the initial deception. Moreover, he had later tried to sell the domain name, which was further evidence of the deception. In respect of trade mark infringement, the Court of Appeal held that Phones4U had accepted the limitation to its mark. It had sought and was granted a mark only in colour.

This case offers a clear example of the different approach applied to trade mark infringement and on the other hand passing off. While the protection of a registered mark might be very formally limited, in passing off the wrongful appropriation of someone else’s goodwill may be protected when deceitful intention is established along with actual confusion of customers.

 

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