European IP Bulletin, Issue 25

Overview


Hot Topics

1. The Beginning of the End for P2P Technology?

On 5 September 2005, the Australian Federal Court handed down its much anticipated decision in case of Universal Music Australia Pty Ltd v Sharman Networks and ors [2005] FCA 1242). This decision followed closely in the wake of the United States Supreme Court decision in Metro-Goldwyn-Mayer Studios Inc v Grokster (545 US (2005)). Simone Blakeney of McDermott Will & Emery’s London Office examines these recent US and Australian decisions on the liability of the developers and owners of peer-to-peer file sharing systems and the development of the law of copyright infringement by “authorisation” in England and abroad, and speculates upon the future course of the law in England.

IP Rights

2. US Removes Ukraine Trade Sanctions in Recognition of Improvements Made to Protect Intellectual Property Rights

On 31 August 2005, US Trade Representative Rob Portman announced that the Bush Administration has lifted 100% tariff sanctions that had been imposed since 2002 on $75 million worth of exports from the Ukraine. In July 2005, the Ukraine’s approval of a package of amendments to the Laser-Readable Disk Law improved the Ukraine’s licensing regime preventing the manufacture of pirate CDs.

3. Ghost of Rover Haunted By Intellectual Property Disputes

The Shanghai Automotive Industry Corporation (SAIC), which spent £67 million buying Rover’s intellectual property rights, has threatened Nanjing Automotive, the successful bidder of Rover, with intellectual property court action. It is SAIC’s contention that Nanjing cannot produce any cars without its permission. However, Nanjing claims that SAIC holds very few of Rover’s intellectual property rights.

Copyright

4. Google’s Online Books Project Under Attack

Despite Google’s announcement that it is postponing its plans to scan the texts of millions of books and place them online, the Authors Guild, America’s largest and oldest society of published authors, has sued Google for copyright infringement.

5. A Hectic Time for Developments in Copyright Collective Management

The Santiago Agreement may now fail now that two of the collecting societies, BUMA and SABAM, have decided to reject one of its driving principles, that of maintaining territorial exclusivity for the national collecting societies. This will contribute to the changes that the European Commission and the stakeholders involved are likely to promote in the field of collective management of rights.

6. Moral Rights for Performers in the UK

The United Kingdom Patent Office has published the guidance on moral rights of the performers. These are meant to explain in simple terms, the intended effect of the Regulations seeking to introduce the moral rights of the performers into the Copyright, Designs and Patents Act 1988. The Regulations are expected to come into force on 1 February 2006. They will, for the first time, provide a basis for the moral rights of the performers in the United Kingdom.

Patents

7. Euro Notes in the Midst of Patent Infringement

A US company has sued the European Central bank claiming that every euro banknote in circulation infringes its anti-counterfeiting patent. In its suit before the European Court of First Instance, Document Security Systems Inc has sought to recover damages “at the rate of a reasonable royalty” from the European Central Bank in Frankfurt, Germany.

8. OSDL Announces Patents Common Project

The Open Source Development Labs (OSDL), a global consortium dedicated to accelerating the adoption of Linux, announced on 9 August at LinuxWorld, that it would be creating a patent commons project designed to provide a central location where software patents and patent pledges will be housed for the benefit of the open source development community and industry.

9. One More Avenue for a Reduced Disclosure Closed

One criticism of the patent system has been that whilst a sufficient disclosure is required to support claims to a patent the patentee is able to restrict the amount of information he provides for example in disclosing his know-how surrounding the invention. The Patents Court recently moved to close off the incorporation of documents obliquely referred to in disclosure where there is a lack of the requisite full explanation.

Trademarks

10. Kabushiki Kaisha Sony Computer Entertainment V Nuplayer

On 14 July 2005, the Chancery Division of the England & Wales High Court of Justice delivered a judgement in Kabushiki Kaisha Sony Computer Entertainment and another v Nuplayer Ltd, a case that concerned the question whether a trade mark owner can prevent internet sales in the United Kingdom of parallel imports from outside the European Economic Area.

11. Laboratories Goemar V La Mer Technology

On 29 July 2005, the Court of Appeal (Civil Division) delivered its judgment in Laboratoires Goëmar SA v La Mer Technology Inc. [2005] EWCA Civ. 978. This appeal is about the application of the “genuine use” provisions in articles 10 and 12 of the Trade Marks Directive EEC/89/104, which were implemented in section 46 of the Trade Marks Act 1994. The Court of Appeal, allowing the appeal, set aside an order for revocation of the registered trade mark on the ground of non-use of the mark for a period of five years. The fact that the use in question was limited to importation into the UK and that it had not reached end-users and consumers did not preclude it from being “genuine use”.

12. English High Court Confirms the Scope of Trade Mark Disclaimers

In General Cigar Co Inc v Partagas y Cia SA [2005] EWHC 1729 (Ch), Lawrence Collins J ruled on the scope of disclaimers of rights in non-distinctive elements of trade marks. In particular, he had to adjudicate on whether such disclaimers could only be taken into account in registrability cases or if they were also relevant in infringement cases. The court also considered the correct approach to be taken when the Trade Marks Registry subsequently alters its practice on what it considers distinctive once a mark has been registered subject to a disclaimer.


Acknowledgements

McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Professor Michael Blakeney, Angel Adrian, Claudio Chiarolla, Maria Mercedes Frabboni, Afe Komolafe, Malcolm Langley, Tina Loverdou, 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.