European IP Bulletin, Issue 33

Overview


Hot Topics

1. Human Embryonic Stem Cell Research and the European Patent Conundrum

Although the EU Competitiveness Council has decided to allow European funding for human embryonic stem cell research, the patent situation remains inconsistent and unclear. This is especially pronounced when reviewing the patent history in the area as well as the divergences between the UK Patent Office and the EU Patent Office.

2. Creative Commons Licence Upheld by Dutch Court

On 9th March 2006, the District Court of Amsterdam decided in the first known court decision involving a Creative Commons licence that a magazine’s republication of photos taken from a photo-sharing site, and used for commercial purposes, violates the terms of the applicable Creative Commons licence.

Copyright

3. New French Copyright Law

The French legislators recently approved the controversial copyright law that will force Apple to make songs purchased from its online music store iTunes compatible with other music players made by rival companies. The new law, which could be effective within a month of its passing, is meant to deter a company from dominating the music download market.

4. Collective Management of Cable Retransmission Rights

In Uradex SCRL v Union Professionnelle de la Radio et de la Télédistribution (RTD) and Société Intercommunale pour la Diffusion de la Télévision (Brutele) the European Court of Justice considered Article 9(2) of the cable retransmission directive. The court clarified the scope of the powers of collecting societies in managing the right of artists even where there has not been any transfer of these rights by the artist to the collecting societies. The scope has been defined as not limited to the financial aspects but also to the management of cable retransmission rights on behalf of the artists.

5. TV Adverts Infringe Moral Rights in Film

A Swedish Court of Appeal has decided that a TV channel breached the moral rights of the directors and the scriptwriters of two films when the presentations were interrupted by commercial breaks without the authors’ permission.

Patents

6. Under Hand and Overhead? Patent Co-Ownership Explained

The UK Court of Appeal recently ruled on an appeal of a decision of the Patent Office Comptroller which granted a patent licence from one co-owner to a third party against the wishes of the other co-owner. The Comptroller used a power under section 37 of the Patent Act 1977 despite the rule contained in section 36 that co-owners may not grant licences to third parties without the consent of the other co-owners.

7. Ranbaxy Loses in Court of Appeal on Lipitor

The Court of Appeal in Ranbaxy UK Ltd v Warner-Lambert [2006] clarified the law relating to the interpretation of claims covering enantiomers and racemates. The decision is a major set back to Ranbaxy, who has long aimed to launch a generic version of Lipitor in the UK and other countries.

8. Patent Injunctions in the US and UK

In ebay Inc et al v MercExchange the US Supreme Court issued guidance on granting permanent injunctions in cases of alleged patent infringement. Although on the face of it the decision appears to mirror the position in the UK, important differences with regard to the consideration of damages and public interest remain.

Trademarks

9. Louis Vuitton Defeats Google in France

On 28 June 2006 the Paris Court of Appeals handed down its decision in the case Louis Vuitton Malletier v Google Inc. upholding the lower court decision of 4 February 2005, which had previously ruled against Google and its French subsidiary, Google France.

10. Easynet Group PLC V Eastygroup IP Licensing LTD

The High Court held that a trade mark, which is composed of two descriptive elements, will fall foul of the Trade Marks Act 1994 s.3(1)(c) unless it can be shown that the mark overall is merely descriptive or whether as a whole it adds something more than its parts. Such an overall assessment is not qualified by concepts such as unusualness or out-of-the-ordinary.


Acknowledgements

McDermott Will & Emery would like to acknowledge the invaluable contribution to the Bulletin made by Dr. Uma Suthersanen, Angel Adrian, James Mitchiner, Lois Muraguri, Marisella Ouma, Rajesh Sagar, Pekka Valo, Luca Escoffier, Ayan Roy Chowdhury Ke Shao, from the Queen Mary Intellectual Property Research Institute, University of London.