European IP Bulletin, Issue 24


Hot Topics

1. P2P In Light of the Supreme Court Decision in Grokster

Last month, on the last day of the judicial term, the US Supreme Court issued its opinion in Grokster v MGM. The Supreme Court was asked to rule on the liability of peer-to-peer software providers for the infringements of those who use their networks. In doing so, the Court commented more generally on the scope of US secondary infringement of copyright works. This article discusses the Grokster decision and contrasts the decision with developments relating to file sharing in Europe.

2. Software Patents Remain Available in Europe

On 6 July 2005, European technology industries sighed with relief as the European Parliament voted, overwhelmingly, to reject the draft Directive on patent protection for computer-implemented inventions. Justin Hill, Director of Prosecution in our London Office, outlines what this means for patent prosecution in Europe.


3. Olympic Struggle

The essence of the issue of appropriation of personality is simply, a person (X, here, Lord Coe) uses in a commercial context the name, voice or likeness of another person (Y, Bob Beamon) without his consent. To what extent does Y have a remedy to prevent such an unauthorised exploitation?

4. AOL and Google: Search For Video-On-Demand

The provision of video-on-demand services has recently been integrated into the business portfolio of America Online, which comes shortly after the launch of Google Video. Both services enable internet users to search a comprehensive archive of televised content. These developments show that internet-based companies are continuing to assimilate most of the commercially valuable activities related to the entertainment industry.


5. Patents and Design Rights in Ultraframe v Eurocell

In Ultraframe v Eurocell, the English Court of Appeal provided guidance as to how one can undertake the contextual reading of a claim in a patent to determine a patentee’s monopoly, as per the test laid down by Lord Hoffmann in Kirin Amgen. The judgment also discussed issues relating to licences of right for unregistered design rights arising from the application of s239 of the Copyright, Designs and Patents Act 1988.

6. Glasgow University in Legal Battle Over Spin-out Technology Patents

The central issue in this matter is the ownership of the patents for a sleep monitor, aepEX, which was developed by one of the University of Glasgow’s spin out companies. This company subsequently transferred the patents to a third party. The University contends that it is still the owner of the patents as its spin out company had only been granted a licence.

7. The European Commission Fines Astrazeneca €60 million For Misusing Patent System to Delay Generic Drug Competition

The European Commission fined AstraZeneca for misusing its dominant market position and delaying generic competition by misusing the patent system and procedures for marketing pharmaceuticals, a violation of Article 82 and EEA Article 54. This case is the first time that European competition law has been used to combat patent misuse.


8. The UK’s Logo for the EU Presidency Under Attack

The UK’s logo for the presidency of the European Union is under attack from the Euroseptic Bruges Group, which is threatening legal action for copyright infringement to stop the logo being used.

9. Directive 2005/29/ec: the ‘Unfair Commercial Practices Directive’

Directive 2005/29/EC on Unfair Commercial Practices was signed by the European Parliament and the Council on 11 May 2005. The Directive aims to clarify consumers’ rights and harmonise rules on business-to-consumer commercial practices within the European Union (“EU”) by defining and banning “sharp practices”. Although the main objective of the Directive is consumer protection, it also aims to indirectly protect legitimate businesses from competitors who do not play by the rules. Some of the prohibited activities have implications for the protection of intellectual property, especially trade marks.

10. Eurocermex Three-Dimensional Trade Mark Finally Defeated By the ECJ

The European Court of Justice (“ECJ”) announced on 30 June 2005 that it had dismissed the appeal of the Community trade mark applicant in Eurocermex SA v OHIM, whereby the ambitious effort seeking to register a bottle-shaped three-dimensional trade mark finally failed.


McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney, Angel Adrian, Maria Mercedes Frabboni, Jerry Hsiao, Afe Komolafe, Malcolm Langley, James Mitchiner, Marisella Ouma, Rajesh Sagar, Ken Shao, Ilanah Simon, Pekka Valo and Daphne Zografos from the Queen Mary Intellectual Property Research Institute, University of London.