European IP Bulletin, Issue 39

Overview


In Depth

Hot Topics

Pot Luck – the difficulty of proving copyright infringement in computer programs

On 14 March 2007, the Court of Appeal in, Nova Productions Ltd v Mazooma Games Ltd [2007] EWCA Civ 219, upheld the decision of Mr Justice Kitchin dismissing claims of copyright infringement in the software and graphics for a pool based video game, Pocket Money. Rohan Massey, an associate in our London office, outlines the decision.

Fortress Europe and exhaustion of rights – Mastercigars Direct Limited v Hunters & Frankau Limited & ors

For the first time since the European Court of Justice set out its strict requirements for consent to parallel importing from outside the EU in its 2001 decision in Davidoff, the English Court of Appeal has ruled that a trade mark owner did give implicit unequivocal consent to the parallel import of its goods into the UK from Cuba. In the article below, Duncan Curley and Shona Harper, from our London Office, examine the facts and reasoning behind this important decision for both trade mark owners and parallel importers alike.

Copyright & Technology

WOW – Online CD retailer was caught by test purchases

The High Court found that the Hong Kong-based online music retailer CD-Wow was in substantial breach of a 2004 court agreement whereby the company had undertaken to cease importing and selling albums in the UK through its website, in particular albums which had not yet entered the European Economic Area. The court rejected the defence that these “alleged” breaches were just human errors.

The Da Vinci Code and dichotomy of copyright

The Court of Appeal upheld the High Court’s decision in The Da Vinci Code case confirming the fundamental idea-expression dichotomy within copyright law in the context of non-literal copying. The Court also refused to allow monopolisation of materials of historical research or knowledge which may prevent legitimate use of such material

English Court of Appeal Narrows the Meaning of ‘Processing’ in the Context of the Data Protection Act 1998

On 28 March 2007, the English Court of Appeal handed down a far-reaching decision significantly narrowing the meaning of data processing. The majority of the Court of Appeal found that the processing complained of was the manual selection of data, which was done by a human being and not a computer and hence, that it fell outside the scope of the Data Protection Act 1998.

Patents

Let me patent my algorithms!

On 13 March 2007, the High Court of Justice handed down a decision in a case concerning two appeals lodged by Mr Pablo Cappellini and Bloomberg LP against the refusal by the Comptroller-General of their patent applications. This is another case concerning the patentability of inventions that fall within the realm of methods for performing mental acts, doing business or programs for computers as such.

Owning Duties in Derivatives

On 15 March 2007, the Court of Appeal in Liffe Administration and Management v Pinkava [2007] EWCA handed down further useful guidance on the interpretation of patent ownership rules contained the Patents Act 1977.

Trademarks & Domain Names

Microsoft and Motorola: Being Proactive is the way forward in cybersquatting

Microsoft recently made an announcement that it would expand its global effort to combat cybersquatting through a number of lawsuits around the world. In contrast, Motorola, another major trade mark owner, has just lost the dispute for motorazr.com at World Intellectual Property Organisation Dispute Resolution Centre. These two incidents highlight the importance of managing a trade mark portfolio in sync with a company’s domain name strategy.

WWW.WHO-IS-DIDDY.COM

On 28 February 2007, in Richard Dearlove v Sean Combs, the English High Court gave useful guidance on whether the use of a mark on the internet can constitute use of that mark in a particular territory.

European Court of Justice ignores time limits for “essential facts”

The European Court of Justice gave an important decision stating that the Board of Appeal of Office of Harmonisation for the Internal Market has a discretion to admit submissions of new facts and evidence, which have not previously been submitted to the opposition division. The Court emphasised the need to use this discretionary power in a positive manner.

Sports & Entertainment

Lonsdale brand owners’ hands tied by acceptance of royalties

On 8 March 2007, the English High Court, in Leofelis SA and Leeside SA vLonsdale Sports Ltd, Trade Mark Licensing Company Limited and Sports World International Limited, held that intellectual property licensing is a contractual matter. As such, principles and cases which are relevant in other types of contractual licensing, like landlord and tenant, may be relevant in intellectual property licences, despite the different types of relationships involved.

Italian gambling provisions at odds with rules of the EC Treaty: ECJ raises the chances of liberalisation

A decision by the European Court of Justice reaffirms that provisions of national law laying down the limit for a company to engage in gambling activities must respect Articles 43 and 49 of the EC Treaty and the principle of proportionality. It is for the Italian national court to ascertain, in the specific circumstances, the compatibility of national rules in Italy with the standard set by the ECJ.

Procedure & Cross-Border Measures

PCT applications in UK: when late declarations on priority can be accepted?

Mr Justice Lewison in the case of In the matter of Abaco Machines (Australasia) PTY LTD’s Application [2007] EWHC 247 (Pat), has held that where a request for extension of time under s 5 of the Patents Act 1977, relates to PCT applications, it can only be considered in the cases where the PCT application has actually been filed and entered into the national phase. It can not apply to a PCT application per se that is still under the international phase.

TaiwanUnder CD-R Scrutiny

A Taiwan based CD-R manufacturer obtained a compulsory licence for essential CD-R technology owned by Philips, which lead to Philips’ patent rights and licensing strategy being undermined, Phillips therefore asked the European Commission to take action under the TRIPs Agreement.

News

  • IViR study on the implementation of the InfoSoc Directive
  • Public consultation on WIPO
  • Broadcasting Treaty New Patents Rules under Consideration
  • Re-christening of UK Patent Office

Legislative News

  • Family entertainment gaming machine – permit fees
  • Prize gaming – permit fees
  • Minor amendments to the Patent Rules