IP Law

Question 1

Please define what “exhaustion” means in European intellectual property law. (10 points)

Answer 1

doctrine about patent rights

The exhaustion of intellectual property rights constitutes one of the limits of intellectual property (IP) rights.

tension between IP and personal property rights

tension between IPR and free movement
- TFEU quantitative restrictions on imports and all measures having equivalent effect

The use and circulation of a product which has been put on the market by the patentee or a third party acting with the consent of the patentee (e.g. a licensee) cannot be prohibited by the patentee anymore.

This concept of exhaustion is applicable to the entire territory of the EU and EEA, i.e. the common European market.

• freedom of purchaser to deal with personal property as he sees fit
• >
  1. only for the term of the products natural life and
  2. for purposes it was intended

doctrine of exhaustion does not displace patentee’s right to prevent third parties from remaking a product they have purchased

making vs. repairing (allowed)

making and selling vs reselling to third parties

UPC Agreement: prohibits a patentee from invoking her right to prevent a third party from selling a patented product within the EU after the product has been placed with her consent on the market within EU territory
-> unless legitimate grounds for patentee to oppose further commercialisation of the product

Question 2

Please introduce what are the functions of trademark protection. (10 points)

Answer 2

trade mark industry vital component of the whole structure of advertising and marketing that is a key feature of the commercial scene

logos, catchphrases and images all fall within the ambit of the trade mark and form valuable part of goodwill of the business with which they are associated

if trademark registered accordingly it confers on the proprietor of the mark exclusive rights in the mark and the right to bring actions for infringement of the mark

-> mark becomes an item of personal property

effect of registration is to confer these exclusive rights for a period of 10 years (renewable)

mark is an item of property -> proprietors of trade marks want to trade with them

clear provisions exists permitting unrestricted dealing with the trade marks

Regulation permits assignment and licencing of tm

Trademarks play an important role

1st function: indication of trade origin

trademarks allow consumers to distinguish goods/services of a company …
… from those of another company
Thus, they encourage brand owners to produce high-quality goods under a certain sign
This also protects consumers from being misled into buying the wrong product

2nd function: “psychological” message/brand image

Especially in markets where goods are not so differentiated (e.g. clothing) …
… consumers make purchase choices relying also (and mainly) on the “brand image” of the mark

Eg fashion:
… here the brand image is often more important than the product itself
… and consumers often buy them instinctively without paying attention to the product itself
EU law protects both functions of trademarks

investment function”: trademark is also a strategic business tool and can be used to build up a reputation (Google France case)

“advertising function”: trademark can also be used for advertising purposes (Google France case)

L’Oréal v Bellure (2009): also “guaranteeing the quality of the goods or services in question and those of communication, investment or advertising”

Question 3

I. Please summarize what measures, procedures and remedies the IP rightholders might rely
on under the Enforcement Directive (2004/48/EC) of the European Union. (5 points)

Answer 3

Enforcement of IPRs

EU Directive 2004/48: “Enforcement Directive”
First Directive aiming at harmonising all IPRs
Form of horizontal harmonisation
Earlier directives on IP: vertical harmonisation
EU Commission proposal on criminal sanctions for IPRs infringement

Subjects entitled to ask for remedies
Art. 4 Dir: subjects entitled are
(a) the IPR holders
(b) the persons authorised by the said holders (e.g. licensees)
(c) collective rights management bodies
(d) professional defence bodies

Evidence of violation
It is often difficult to gather evidence of IPRs violation
Art. 6.1 Dir: courts may order that an evidence (in control of the opposing party) be presented in court by defendant
Art. 6.2 Dir: in case of infringement committed on a commercial scale, courts may order the defendant to communicate banking/financial/commercial docs under his control
Bank accounts records/invoices/delivery notes/warehouse receipts

Art. 6.2 Dir helps IPRs owners in proving damages
Recital 14 Dir: acts carried out on a commercial scale = acts for direct/indirect commercial advantage
Subject to protection of confidential information

Gathering evidence is not enough
It is also important to preserve evidence
Art. 7 Dir: court may order provisional measures to preserve evidence in respect of the alleged infringement
Application of the injured party
Subject to protection of confidential information

Eg: “description” of the infringing goods
It is carried out by a court bailiff
It is often necessary when it is not possible to buy a sample of the infringing product
… and in case of infringement of process patents (and the violation is not detectable by examining the final product)
Very similar to Anton Piller orders in UK
Another measure for preserving evidence is the seizure of infringing goods

Obtaining information on (i) involvement of third parties and (ii) origin of infringing goods
Art. 8 Dir: info on origin of goods and distribution networks used by defendant
Eg: name/address of producers, distributors, suppliers, wholesalers, retailers, etc.
Eg: information on quantities produced, delivered, received or ordered and on price of goods/services

Subjects required to give information are persons:
(i) found in possession of infringing goods
(ii) found to be using the infringing services on a commercial scale
(iii) indicated by the above persons as being involved in the production and distribution of the goods or the provision of the services
Provision useful to detect distribution channels/original producers infringing goods
… enabling right holders to take action also in different jurisdictions

Provisional measures: to stop infringing activities (Art. 9)
a) Interlocutory injunctions and b) seizures
Interlocutory injunctions prevent any imminent infringement of IPR …
… or forbid the continuation
Orders to do (mandatory) or refrain from doing an act (prohibitory)
These injunctions do not establish a right, just maintain status quo (pre-infringement situation)
Rapid and cheap way of procuring temporary redress

Seizures aims at seizing/delivering up goods suspected of infringing IPR
Purposes:
preventing the entry into channel of commerce of infringing goods
therefore avoiding further circulation of infringing products
Carried out by a court bailiff
Right holders can participate to seizure operations

Art. 9.3 Dir: to obtain injunctions/seizure, right owners must show evidence:

(i) they are right holders
(ii) their IPRs are being infringed (or infringement is imminent)

descriptions/seizures may be ordered inaudita altera parte (without the other party having been heard) …
… where delay is likely to cause irreparable harm to IPR holder (Art. 9.4 Dir)
so-called ex parte orders
After execution of the measure, the parties effected must be given notice …
… and a review (including a right to be heard) should take place …
… to give the respondent a chance to challenge the lawfulness of the injunction/seizure

Provisional/precautionary measures are not “perpetual”
They must be followed by a proceedings on the merits
Art. 9.5 Dir: if applicant does not institute such proceedings (within a specified time), the measures are revoked
What if a provisional measure is revoked (eg after proceedings on the merit)?
Appropriate compensation to the accused party for any injury caused by those measures

Remedies at the end of a proceedings on the merit
“Corrective measures” (Art. 10 Dir):
(i) recall from the channels of commerce of infringing products
(ii) definitive removal from the channels of commerce
(i) destruction
The aim is to “correct” the infringement and eliminate infringing products

Art. 11 Directive
Final injunction:
one of the most important measures obtainable by IPR holders …
… as it prevents the continuation of the infringing activity
Non compliance with injunction orders is subject to penalties …
… with a view to ensuring compliance
Penalties aim at strenghtening the injunction order

Damages are awarded with the decision on the merits of the case
Money damages are the most important
Art. 13.1 Dir: just infringers who knowingly engaged in infringing activities may be ordered by courts to pay damages
Damages can be invoked in case of wilful and/or negligent acts

No punitive damages
Compensation based on objective criteria
Overriding principle: an injured party must be restored to the position it would have been in before its IPR was infringed

When quantifying damages, all factors must be taken into account:

(i) Negative economic consequence which the injured party has suffered
(ii) Any unfair profits made by the infringer
(iii) Reasonable royalty rate
(iv) Moral prejudice caused to IPR holder by the infringement

Negative economic consequence which the injured party has suffered

(a) Damnus emergens: actual loss suffered by the injured party
(b) Lucrum cessans: lost profits suffered by right holder

(ii) Any unfair profits made by the infringer
It is possible that IPR owners has not recorded lost profits
Nonetheless, they are entitled to damages compensation
Art. 13.1: any unfair profits made by the infringer must be taken into consideration

(iii) Reasonable royalty rate
Royalties which would have been due if the infringer had requested authorization to use IPR
Such method may be a successful approach …
… if the right holder shows in court to have granted licences in the past

(iv) Moral prejudice caused to IPR holder by the infringement
Art. 13.1 Dir: also moral damage should be compensated
Such damages are usually requested by companies renowed for quality/reliability of goods/services

Publication of judicial decisions
Art. 15 Dir: courts may order – at the request of applicant and expenses of infringer – appropriate measures for dissemination of information concerning the decision …
… including displaying the decision and publishing it (in full or in part) on newspapers or specialized magazines
It aims at giving a message to trade and avoiding market distortions

22 December 2010 Report from the Commission on the Application of the Enforcement Directive:
it concluded that the Directive has had a substantial and positive effect on protecting IPRs under civil law in Europe
Bad news: the sheer scale of infringement is a terrifying prospect to tackle
… not least because of the unprecedented increase in infringement opportunities offered by the Internet, a challenge which the Directive was not designed to address

Question 4

Please shortly analyze, whether the doctrine of exhaustion is applicable to the situation, where the user has a permission to print and sell the copies of an art work on paper posters; however, the user reproduces and distributes copies of the said work on canvas (that is identical with the original medium of the work).

Answer 4

CJEU: a replacement of the medium …. results in the creation of of a new object incorporating the image of the protected work, whereas the poster itself ceases to exist.

Such an alteration of the copy of the protected work is actually sufficient to constitute a new reproduction of the work, within the meaning of article 2 of directive 2001/29 which is covered by the exclusive right of the author and requires his authorisation.

in these circumstances right holder should have given consent to canvas incorporating the work -> then first sale or transfer of ownership of that new object itself exhausted the distribution right

-> important to exclude products operation in the context of services, including cloud computing and other online services.

Question 5

Introduce the general and special rules on jurisdiction in copyright cases under EU law. Please refer to the case law of the CJEU as well!

Answer 5

Topics harmonized:
 Subject matter (works and non-authorial expressive subject
matters);
 Rightholders (authors and related rightholders);
 Exclusive economic rights (fragmented harmonization);
 Limitations and exceptions (fragmented implementation);
 Enforcement and remedies (covered entirely).
 Topics NOT harmonized (legislative competence for
Member States; but partially limited by CJEU case-law):
 Moral rights;
 Certain economic rights (having no inherent cross-border
nature, f.e. public performance; adaptation);
 Copyright licencing and exploitation of the works.

Ip rights are territorial by nature, in cross-border disputes the venue of the proceedings is, besides applicable law , of special importance

Brussels regulation governs international jurisdiction of the eu ms if the defendant is domiciled within the eu

If defendant outside eu , then national rules on jurisdiction

Persons domiciled in a ms shall, whatever their nationality, be sued in the courts of that ms

• general jurisdiction - defendants play at home

Ex: austrian may be sued in austrian courts even if the copyright infringement occurs in france

Persons domiciled in a ms may only be sued in the courts of another ms by virtue of the rules set out in brussels regulation

• national rules providing for “exorbitant jurisdiction” are not applicable

Special jurisdiction under brussels regulation:

contracts
tort, delict or quasi-delict
jurisdiction over joint defendants

the Shevill doctrine:

the Shevill doctrine restricts an action filed in courts competent on the basis of article 5 of the brussels regulation ( tort, delict or quasi delict) to the damage suffered solely in the state of the court seized

jurisdiction over joint defendants:

a person domiciled in the ms may also be sued

where he is one of a number of defendants, in the courts for the place where any one of them is domiciled, provided that the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments resulting from separate proceedings

Enforcement: judgments in civil and commercial matters rendered by a court in one ms are enforceable across eu

-has to be validated and declared first

Question 6

Explain how the European Patent Convention (EPC) operates.

Answer 6

European Patent Convention (EPC) is a regional patent treaty aiming at avoiding the duplicated work of several national patent offices
Signed at Munich in 1973 and entered into force in 1977
EPC is not a EU Treaty
It allows an applicant to file an application at European Patent Office (EPO) and obtain a basket of national patents
Now it is a very popular route to obtain patents

Centralised procedure of applications
Once granted, “bundle” of national patents
Establishment of EPO, in Munich
It provides opposition proceedings
EPC has the effect of harmonising substantive patent laws of States
However, certain aspects are not harmonised by EPC

EPO has five divisions:
- Receiving Section
- Search Division
- Examining Division
- Opposition Division
- Legal Division 
Two-tier appellate structure
- Technical and Legals Board of Appeal
- Enlarged Board of Appeal
EPO finances itself from applicants’ fees 

Substantive requirements of patentability:

(i) Novelty (not belonging to the state of the art)
(ii) Inventive step (not obvious to a person skilled in the art)
(iii) industrial application (can be used in any kind of industry)

Inventive step (not obvious to a person skilled in the art)
Amazon case (T- 1244/07)
Board of Appeal agreed with the EPO’s original decision that Amazon’s patent application lacked an inventive step

Unpatentable inventions (Art. 52.2 EPC):
(a) discoveries, scientific theories and mathematical methods
(b) aesthetic creations
(c) schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers, and
(d) presentations of information
excluded only “as such”. They are patentable if have a technical feature

Computer-related inventions (software patents)
They may have technical character, if they cause a technical effect when run on a computer
In this case, these computer-related inventions are patentable
Microsoft/Clipboard formats (T-424/03): EPO confirmed patentability
IBM/Computer Programs (T-1173/97): EPO denied patentability
EPO opinion G 3/08 (EBA): legitimate development of case law, not conflicting decisions

Patentability of software: very hot issue at EU level
2002: proposal for a Directive harmonizing patentability of software
Supporters of Directive: Microsoft, HP, EPO
Opponents of Directive: free software associations, open source programmers, small business groups
Proposal rejected on July 2005

Art. 53-c EPC:
(i) methods for treatment of the human and animal body by surgery or therapy; and
(ii) diagnostic methods practiced on the human or animal body
shall not be regarded as inventions which are susceptible of industrial application

Rationale: medical treatment of humans or veterinary treatment of animals should not be hampered by patents
EBA: aim of Art. 53-c) EPC is to free from restraint non-commercial and non industrial medical and veterinary activities
Rationale: policy decision to prevent restrictions on the use of new or improved surgical, diagnostic or therapy methods
Public interest: such methods should be available to all surgeons, doctors, etc.
US case Samuel L. Pallin v Jack A. Singer M.D. and The Hitchcock Clinic (1996)

How to reconcile the above with patentability of drugs?
Difference between surgeons and drug companies:
Surgeons are professionals who are expected to transfer their knowledge to others and do not expect economic recompense
Drug companies operate in a competitive industry and need patents to justify investments in R&D

Art. 53-a) EPC excludes from patentability inventions contrary to ordre public or morality
Aim: to exclude from protection inventions likely to induce riot or public disorder, or to lead to criminal or other offensive behaviour
Eg: “letter bomb”
This exception has been invoked in a few cases

The applicant
Entitlement to patent
Languages in the EPO
English, French German
Priority

Contents of the patent application

(i) indication that a European patent is sought
(ii) designation of one contracting State EPC
(iii) information identifying the applicant

Application must also contain:

(i) description of invention
(ii) claims and abstract
(iii) designation of inventor
(iv) if the applicant is not the inventor, designation of the origin of the applicant’s right to patent

Description of invention:

(i) specify technical field
(ii) indicate background art
(iii) briefly describe figures in the drawings
(iv) describe in detail one way of carrying out the invention
(v) indicate way in which invention is capable of exploitation in industry

Claims: define the protection sought
Extent of protection sought in the application
Protection conferred by the patent
Very important during the application process and litigation

Three requirements for claims:

(i) define the matter for which protection is sought
(ii) be clear and concise
(iii) be supported by the description

The EPO provides for a series of fees to be paid:
(i) filing fee
(ii) search fee
(iii) fee per Designated State
(iv) fee per claim over ten claims
(v) examination fee
(vi) fee for granting/printing
Failure to pay within the time limits: withdrawal of application

Filing of patent application
Preliminary examination of application (by EPO Receiving Section)
Search under EPC (by EPO Search Division)
Search report and opinion (European Extended Search Report – EESR)
Publication of application
Examination of application (by EPO Examining Division)

Grant of patent …
… provided tha applicant has:
(i) approved the text in which the Examining Division is intended to grant the patent
(ii) paid the fee for grant/printing
and complied with other requirements

Opposition proceedings
Possibility of opposing European patents within 9 months from grant
Grounds for opposition:
(i) subject matter not patentable
(ii) patent does not disclose invention in a manner sufficiently clear and complete
(iii) subject matter extends beyond the content of application

Notice of opposition
EPO checks formalities
Substantive examination of opposition
Possible exits:
(i) patent maintained
(ii) patent revoked
(iii) patent mainatained in amended form
Claims cannot be broadened

Appeals
Three appellate bodies:
(i) Technical Board of Appeal
(ii) Legal Board of Appeal
(iii) Enlarged Board of Appeal
Filing of an appeal suspends effect of appealed decision
Who can appeal?

Filing notice of appeal with EPO
Written procedure
New evidence are admissible
Boards of Appeal may reject/allow the appeal
Appeal fees may be reimbursed

Question 7

Discuss the relationship between copyright and fundamental rights in European law.

Answer 7

two fundamental rights instruments - european communities basic values: ECHR & CFR

CFR: rights of authors, rights of individuals and the public in general to respect for private and family life, home and communications, freedom of expression, education etc..

european law of copyright and related rights to ensure a fair balance between competing rights and interests

at the legislative level this can be said to explain the scope of rights conferred to authors and related right holders, the large amount of exceptions and limitations to those rights, and additional rules aiming at facilitating their commercial exploitation in pursuit of general social and economic objectives such as disseminating knowledge and creating a favourable environment for creativity and investment

also CJEUs interpretation of exceptions and limitations to copyright and related rights -> balancing competing rights and interests

-> courts view that all fundamental rights and interests engaged must be considered before deciding

Under European law the purpose of copyright and related rights exceptions and limitations is not merely to protect third party interests and rights, such as freedom of expression, but also to provide a site for ensuring sufficient protection for the rights and interests of owners themselves, including rights and interests other than IP protection

Question 8

Discuss the general conditions of patentability under the European Patent Convention (10
p. / Mylly)

Answer 8

EPC: European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application

Article 53 EPC excludes three categories of subject matter from protection regardless of whether they satisfy the requirements of article 52(1):

1. inventions the commercial exploitation of which would be contrary to ordre public or morality
2. plants and animal varieties, end essentially biological processes for the proceduction of plants and animals
3. methods of surgical, therapeutic, and diagnostic treatment

whether a subject matter is patentable under european law:

a) falls within one of the Article 53 exclusions from patentability
b) is it an invention within the meaning of Article 52(1)
c) is it new, inventive, and susceptible of industrial application within meaning of Article 52 (1)

Exceptions and exclusions
Governed by:
 Two articles: Article 52(2) and (3) and
Article 53 EPC
 An ever-increasing body of case law

Invention: technical character?

Non-inventions under Article 52(2) and (3)

Art. 52(2): The following, in particular, shall not be regarded as
inventions:

 discoveries, scientific theories, mathematical methods
 aesthetic creations
 schemes, rules and methods for performing mental acts
playing games or doing business
 programs for computers
 presentations of information

Excluded only to the extent to which a European patent
application relates to such subject-matter or activities as
such.

Exclusion does not automatically apply just because matter
mentioned in Art.52(2) EPC is detected.
 As such: in order not to be excluded from patentability, the
invention has to comprise a technical character (in contrast to
aesthetic creations, for example).
 Claims with technical subject-matter and abstract or nontechnical
subject-matter are not excluded from patentability
under Art. 52(2).

Article 53 - Exceptions
European patents shall not be granted in respect of:
a) Inventions the commercial exploitation of which would be contrary to
“ordre public” or morality; such exploitation shall not be deemed to be
so contrary merely because it is prohibited by law or regulation in some
or all of the Contracting States;
b) Plant or animal varieties or essentially biological processes for the
production of plants or animals; this provision shall not apply to
microbiological processes or the products thereof;
c) Methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practiced on the human or animal
body; this provision shall not apply to products, in particular substances
or compositions, for use in any of these methods.

New

“An invention shall be considered to be new if it does not form part of the
state of the art.”

What is the "state of the art"?
Everything made available to the public by means of ...
written description
oral description 
by use
or in any other way

… before the
filing date of
the application

Inventive step

“An invention shall be considered as involving an inventive step if,
having regard to the state of the art, it is not obvious to a person
skilled in the art.”

What is the “state of the art”?
Everything made available to the public by means of …

written description
oral description
by use
or in any other way

… before the
filing date of
the application

The person skilled in the art
 is a skilled practitioner in the relevant field
 is possessed of average knowledge and ability
 is aware of what is common general knowledge in a particular
technical field at the relevant date
 has access to everything in the state of the art
 has a normal capacity for routine work, but no inventive skills
 is involved in constant development in his field
 is expected to look for suggestions in neighbouring and general
technical fields or even remote technical fields
 may in some fields be a team rather than an individual person
If the problem prompts the skilled person to seek its solution
in another technical field, the specialist in that other field is the
person qualified to solve the problem

EPO uses Problem/solution approach to inventive step:

a) determining the closest prior art
b) establishing the objective technical problem to be solved and
c) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person

Susceptible of industrial application

EPC article 57: if it can be made or used in any kind of industry, including agriculture.

Question 9

Discuss the exhaustion of trademark rights under EU law. What does the exhaustion mean
and under what conditions exhaustion takes place? (10 p. / Mylly)

Answer 9

Goods that bear a trade mark go beyond the control of the proprietor of the mark once they are put on the market - his rights in them are exhausted once the goods are in circulation and he cannot object to any use of them.

Particular relevance in European context - principle of the single market has obliged EU law to assert that the circulation of goods in any one member state equates to their circulation in all such states, unless any of the standard objections to free movement principles apply

parallel imports - company makes goods bearing a mark in 2 countries, company would prevent goods from cheaper country being imported cheaply to other country -> exhaustion and single market combine to make this impossible

Exhaustion in trade mark directive article 7: removes right to bring an infringement action in relation to goods put on the market anywhere in the european economic area EEA by the proprietor with her consent

“thetrademarkrightshallnotentitletheproprietortoprohibititsuseinrelationtogoods
whichhavebeenputonthemarketinaContractingParty*underthattrademarkbythe
proprietororwithhisconsent”.

Thisarticlemeansthatwhentrademarkedproductsareimportedintoacountryofthe
EuropeanEconomicAreawiththetrademarkowner’sconsent,thetrademarkowner
cannotopposethere‐importationoftheseproductsintoanothercountrypartytothe
AgreementontheEuropeanEconomicAgreement.

Indeed,TheEuropeanCourtofJusticeruledthat”Article7(1)ofthe..Directive…must
beinterpretedasmeaningthat:
­therightsconferredbythetrademarkareexhaustedonlyiftheproductshavebeenputon
themarketwiththetrademarkowner’sconsentinthecommunitv(intheEEAsincethe
AgreementintheEEAenteredintoforce)andthatprovisiondoesnotleaveitopento
MemberStatestoprovideintheirdomesticlawforexhaustionoftherightsconferredby
thetrademarkinrespectofproductsputonthemarketinnonmembercountries;

“fortheretobeconsentwithinthemeaningofArticle7(1)ofsaidDirective,suchconsent
mustrelatetoeachindividualitemoftheproductsinrespectofwhichexhaustionis
pleaded”.

thisprecedentisapplicableforEuropeanUnionMemberStatesinfavorofany
trademarkownerswhethertheyarenationalsoftheEuropeanUnioncountriesornot,
andwhethertheproductsoriginatefromthesecountriesornot.

Question 10

Discuss how fundamental rights have affected European intellectual property law.

Answer 10

EU Charter of fundamental rights

Article 17 - Right to property

Even prior to the coming into force of the Lisbon Treaty, the relevance of fundamental rights to intellectual property law had been acknowledged by the institutions of the EU.

Fundamental rights have, for example, been advanced as justification for legislative activity on a number of occasions.

In the Information Society Directive, it was claimed that ‘The proposed harmonisation will help to implement the four freedoms of the internal market and relates to compliance with the fundamental principles of law and especially of property, including intellectual property, and freedom of expression and the public interest.’

In patent law, the recitals to the Directive on the legal protection of biotechnological inventions make a similar claim: ‘Whereas pursuant to…the Treaty on European Union, the Union is to respect fundamental rights, as guaranteed by the European convention for the Protection of Human Rights and Fundamental Freedoms signed in Rome on 4 November 1950 and as they result from the constitutional traditions common to the Member States, as general principles of Community law.

The Enforcement Directive is also presented as serving goals grounded in respect for fundamental rights: ‘This Directive respects the fundamental rights and observes the principles recognised in particular by the Charter of Fundamental Rights of the European Union. In particular, this Directive seeks to ensure full respect for intellectual property, in accordance with Article 17(2) of that Charter.

On occasion, such assertions of compatibility with fundamental rights norms have also been tested before the EU courts in the context of intellectual property law. Notably, for example, it was argued in The Netherlands v European Parliament and EU Council14 that the fundamental right to human dignity was infringed by the Directive on biotechnological inventions.

As demonstrated by these two cases, frontal challenges to the compatibility of intellectual property legislation with the norms of fundamental rights law have not been successful in the Court of Justice. Nevertheless, the Court has confirmed that EU legislation must be interpreted in a manner that secures effective protection for fundamental rights

Particular attention has been devoted to a number of specific
issues. These include the impact of the rights to health, medicine and life on patent law,2
the
potential conflict between freedom of expression and the laws of copyright and trade marks3
and the privacy implications of intellectual property remedies and sanctions.4
These issues,
amongst others, have been explored in a range of national and international legal contexts.
However, the role of fundamental rights within European Union (EU) intellectual property
law has not yet been fully explored.5
It is, nevertheless, likely to become a subject of
increasing significance. Following the coming into force of the Lisbon Treaty, EU bodies
have clear obligations to take fundamental rights into consideration in all their activities.

Under Art 6(1) of the Treaty of European Union (TEU), rights granted under the Charter of
Fundamental Rights of the EU (“the EU Charter”)7
have the same legal value as those
established under the foundational treaties. Furthermore, under Art 6(3) TEU:
‘Fundamental rights, as guaranteed by the European Convention for the Protection of
Human Rights and Fundamental Freedoms and as they result from the constitutional
traditions common to the Member States, shall constitute general principles of the
union’s law.’8

In such circumstances, a fundamental rights dimension applies to all areas of law within the
EU’s competence, which clearly includes most areas of intellectual property law. The
obligation to comply with fundamental norms applies not only to the EU legislature, the
Court of Justice of the European Union and other EU b

Question 11

A role of intellectual property rights

Answer 11

Public good problem: information is non-excludable
Without protection those who have made efforts for producing the good cannot prevent others from using the information
Information is also inexhaustible and nonrivalrous:
use by one person does not prevent others from using the same information cf. real property; use by one does not exhaust the property

By IP protection information is made excludable
IP is a negative right: it creates a right to prevent others from using the same information without permission
IP does not necessarily mean that one is entitled to use the protectable subject matter on markets (e.g. patent for medicine) / not a positive right

Question 12

Main justifications for copyright and patent

Answer 12

There are four main justifications for copyright and patent, namely

(1) natural law;
(2) just reward for author or inventor;
(3) incentive for creation and invention; and
(4) public interest.

Justifications: Natural Law

The natural law justification is deontological, as it assumes that intellectual property protection is right in itself and that not granting protection would be wrong.
According to Locke, every man has a property right in his own person and, consequently, the work of his hands belongs to him, too
Under the personality theory, intellectual property is justified because the protected idea or subject matter manifests its creator’s self

Justifications: Reward and incentive

society needs to reward those who have created or invented something, because they have done something useful for the whole society (geniuses; sole inventors)
incentive to create: it is assumed that without government-provided incentives no one would have the motivation to engage in inventive activities
Reward and incentive justifications are mostly economic by their nature

Justifications: Public interest

defined as social requirements or public interest. This stems from the utilitarian argument. The public interest is often assimilated with the incentive to disclose or the dissemination principle. Works should be widely utilized within society

The natural-law theories concentrate on the individual creator and the protection of his or her interests
the public-interest rationale considers the wider interests of society (utilitarian theory). What is useful for the whole society?

Justifications: Cultural differences

All justifications are present in many IP systems, but emphasis is on different justifications
Civil law countries tend to emphasize more natural law rationale (e.g. moral rights in copyright systems: France)
Common law countries more utilitarian
U.S. constitution empowers the United States Congress To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries
Differences are nowadays often downplayed

INCENTIVE AND REWARD in patent system

By intellectual property protection the information good is made excludable.
Without protection there are no incentives for producing information goods.
By giving incentives technological advances take place, which in turn promotes the welfare of consumers.
Without incentives one may assume that innovations decrease for the detriment of consumers.
Protection is nevertheless justified only to the extent incentives and satisfactory reward for innovation is necessary.
If innovation is not depending on this kind of reward, then there is no need for intellectual property protection in the first place

PUBLIC INTEREST / DISSEMINATION in patent system

One way how dissemination of technology takes place is through disclosure of inventions
disclosure helps others to redirect their research activities and by this it is prevented that double-resources are used in the same research
This promotes the efficient use of resources
Others can develop the invention further or go to other areas
After expiration of patent protection, patent information becomes a part of public domain

HOW JUSTIFICATIONS ARE PART OF TRIPS

TRIPS art. 7 objectives of IP
To promote technological innovation and
to promote dissemination of technology
to mutual advances of produces and users of technology
In a manner conductive to social and economic welfare

Article 7 makes it clear that intellectual property protection is not an end itself
Article 7 provides a balancing principle for the agreement
Developing countries are generally the users of technology developed in industrialized countries
Article 7 can be utilized in encouragement for technology transfer in interpretation of the Agreement (articles 66 and 67)

TRIPS Art 8: Members may adopt measures to promote the public interest in sectors of vital importance to their socio-economic and technological development
… provided that the measures are consistent with the provisions of this Agreement
Articles 7 and 8 were drafted by developing countries

Question 13

Key concepts of IP: Territoriality of rights

Answer 13

IP right limited to the territory of the sovereign state granting it
Legal effects of rights restricted to territory of conferring state
Enforcement of rights by courts of conferring state
Protect conferring state/citizens interest at expense of foreigners
No IP is protected by one uniform right applying world-wide

Independent rights
IP rights within a country are independent of any such rights existing in other countries

Question 14

National treatment (NT)

Answer 14

A rule of non-discrimination

Legal definition of national treatment in TRIPS Agreement:

Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection (3) of intellectual property, subject to the exceptions already provided in, respectively, the Paris Convention (1967), the Berne Convention (1971), the Rome Convention or the Treaty on Intellectual Property in Respect of Integrated Circuits.

Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with

No requirement as to domicile or establishment in the country where protection is claimed, may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights

Art 3
Nationals of countries outside the Union who are domiciled or who have real and effective industrial or commercial establishments in the territory of one of the countries of the Union shall be treated in the same manner as nationals of the countries of the Union

Exception:

“The laws of the Member States relating to judicial and administrative procedure and to jurisdiction, designation of an address for service or the appointment of an agent – are reserved”

Procedural requirements imposing special conditions on foreigners for purposes of judicial and administrative procedure may validly be invoked against foreigners
Foreigners to designate an address for services or to appoint a local agent

Advantages:

No Reciprocity requirement
Applies not only to codified law, but to practice of courts
Applies to practice of national Patent Offices
Application of national law does not prevent other nationals from invoking more beneficial rights from Convention

Weakness:

If applicable municipal law is in itself insufficient
Treaty permit MS the right to determine what is patentable
Countries with res communis ideology

Creates a disparate level of protection among countries
No Reciprocity requirement

Does not ensure substantive equivalence

Question 15

Most favoured nation treatment (MFN)

Answer 15

TRIPS

With regard to the protection of intellectual property, any advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members

treating other people equally Under the WTO agreements, countries cannot normally discriminate between their trading partners. Grant someone a special favour (such as a lower customs duty rate for one of their products) and you have to do the same for all other WTO members.

Some exceptions are allowed. For example, countries can set up a free trade agreement that applies only to goods traded within the group — discriminating against goods from outside. Or they can give developing countries special access to their markets. Or a country can raise barriers against products that are considered to be traded unfairly from specific countries.

Question 16

The three-step test

Answer 16

TRIPS and BC

Art 9(2) BC

It shall be a matter for legislation in the countries of the Union to permit the reproduction of copyrighted works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author

Certain special cases
What?
Does not conflict with a normal exploitation of the work
How?
Does not unreasonably prejudice the legitimate interests of the author
How?

Berne Convention only applies to
Right of reproduction of authors

TRIPS Agreement (Art 13)
 Confined to limitations and exceptions to exclusive rights 

Interpretation:

Cumulative
Three-step test under Berne Convention never officially interpreted
Under TRIPS
Officially interpreted once by Dispute Settlement Body
WT/DS160/R (United States – Section 110(5) of the US Copyright Act)
As amended by the Fairness in Music Licensing Act of 1998
Permits, under certain conditions, the playing of radio and television music in public places (bars, shops, restaurants, etc.) without the payment of a royalty fee

Infopaq

Can the copying and reproduction of just 11 words of a news article be copyright infringement?

ECJ answer…Yes!

Question 17

International IP: Parallel importation

Answer 17

Parallel importation refers to a situation where a third party, without the authorisation of the patent holder, imports a foreign manufactured product put on the market abroad by the patent holder, his licensee or in another legitimate manner in competition with imports or locally manufactured products by the patent holder or his licensee

Parallel imports are genuine products, not counterfeits

TRIPS is quiet on parallel imports

Neither the Paris Convention or Berne Convention explicitly prohibit parallel importation.

Question 18

Right of Priority

Answer 18

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed

First application has priority over applications filed by others during the said period of time for the same industrial property
The publication or exploitation of the invention
Putting on sale of copies of the design
Use of the trademark

Ample time to organize with due care steps necessary for securing protection in each Member State
Single date, application number
Which will act as an identifying number for all related patent publications stemming from the initial filing

Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognized as giving rise to the right of priority
E.g., PCT

Question 19

Well Known TMs

Answer 19

Art. 6 bis
Countries are to refuse or cancel the registration and to prohibit the use of a trademark that is liable to create confusion with another trademark already well known in that member country even though it is not registered in that country

The protection results not from its registration, which prevents the registration or use of a conflicting trademark, but from the mere fact of its reputation

Question 20

Inter se Agreements

Answer 20

Art 19
It is understood that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of this Convention

Question 21

What if provisions of the latter treaty contravene provisions of PC?

What if they contravene the provisions of another treaty to which both parties are also members?

Answer 21

Every treaty in force is binding upon the parties to it and must be performed by them in good faith

Subject to Article 103 of the Charter of the United Nations, the rights and obligations of States parties to successive treaties relating to the same subject-matter shall be determined in accordance with the following paragraphs:

When a treaty specifies that it is subject to, or that it is not to be considered as incompatible with, an earlier or later treaty, the provisions of that other treaty prevail

When all the parties to the earlier treaty are parties also to the later treaty but the earlier treaty is not terminated or suspended in operation under article 59, the earlier treaty applies only to the extent that its provisions are compatible with those of the later treaty

When the parties to the later treaty do not include all the parties to the earlier one:
As between States parties to both treaties the same rule applies as in paragraph 3
As between a State party to both treaties and a State party to only one of the treaties, the treaty to which both States are parties governs their mutual rights and obligations

Disputes

Art. 28
First, settle by negotiation
Recourse to the International Court of Justice (ICJ)
Each country may, at the time it signs this Act (PC) or deposits its instrument of ratification or accession, declare that it does not consider itself bound by the provisions above

Question 22

Automatic Protection (BC)

Independence

Limited Exceptions

Country of Origin

Answer 22

Art 5(2)
The enjoyment and the exercise of these rights shall not be subject to any formality
Mandatory use of a © symbol or required registration of copyrighted works
Advisable to follow country specific formalities e.g, US
Registration only required for copyright owners of American works who want to sue for copyright infringement
Special formality justified by the rule of evidence
No formal prerequisite for the exercise of rights

Independence

The enjoyment and exercise of copyright shall be independent of the existence of protection in the country of origin of the work

Limited Exceptions

Apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed
Choice of law rule
Lex loci protectionis

Country of Origin

Protection in the country of origin is governed by domestic law. However, when the author is not a national of the country of origin of the work for which he is protected under this Convention, he shall enjoy in that country the same rights as national authors

The country of origin shall be considered to be:

a) In the case of works first published in a country of the Union, that country; in the case of works published simultaneously in several countries of the Union which grant different terms of protection, the country whose legislation grants the shortest term of protection
b) In the case of works published simultaneously in a country outside the Union and in a country of the Union, the latter country
(c) In the case of unpublished works or of works first published in a country outside the Union, without simultaneous publication in a country of the Union, the country of the Union of which the author is a national

Question 23

Harmonization by the CJEU of the originality criterion

Answer 23

the CJEU has started to harmonize the originality criterion for all works through a creative interpretation of the Information Society Directive
This was first expressed in the Infopaq case
It is explicitly expressed that without harmonization, the differences in national laws would lead to a fragmentation of the internal market and to an inconsistency of the legal system

Infopaq (C-5/08)

computer programs, databases or photographs are protected by copyright only if they are original in the sense that they are their author’s own intellectual creation.

In establishing harmonized framework for copyright, Directive 2001/29 is based on the same principle

Copyright to a subject-matter which is original in the sense that it is its author’s own intellectual creation (paragraphs 35-37

various parts of a work enjoy protection, provided that they contain elements which are the expression of the intellectual creation of the author of the work.

objective is to introduce a high level of protection…for authors to enable them to receive an appropriate reward for the use of their works

choice, sequence and combination of words… author may express his creativity in an original manner and achieve a result which is an intellectual creation

Extract of eleven words may qualify for protection?

Remarks from the case law:

the CJEU is harmonizing through its interpretations of elements of copyright that have not been harmonized through directive implementation.
These changes stem from the aim of coherence in the legal system at EU level (an copyright system generally)
Heavy criticism towards CJEU activism
From U.K. perspective: Rosati claims that originality now refers to civil law (continental European) countries definition: personality requirement

It has been argued that if the aim of the Information Society Directive had been to harmonize the originality criterion for all classes of works, it would have been impossible to enact the Directive in the first place
Yet change of originality have connections to the justifications and legal culture; therefore difficult to change, national courts will follow their traditional reasoning trajectories?

Importance of the idea-expression dichotomy alongside with originality
If technological restrictions limit the availability of choices, then no room for originality
Computer program interfaces are left without protection under idea-expression dichotomy see SAS case.

Question 24

Signs of which a trademark may consist

Answer 24

Art. 2 Dir. and Art. 4 Reg.: two requirements for a sign being capable to be considered a trademark

a) the sign must be capable of being represented graphically
b) the sign must be capable of distinguishing the goods or services of one trader from those of another

Signs of which a trademark may consist (graphic representation)

a) Signs capable of graphic representation
Words and numbers are surely capable of graphic representation
What about smells, colours and sounds?
They are abstractly registrable …
… yet EU judges (OHMI, General Court and CJEU) are very restrictive in granting registration

Sieckmann 2002 (CJEU)
Sieckman requirements:
Graphical representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”
CJEU denied registrability:
few people would recognize in a chemical formula the smell in question

Case R 156/1998-2 “the smell of freshly cut grass” was registered
OHMI allowed registration:
“The smell of freshly cut grass is a distinct smell which everyone immediately recognizes from experience. The description complies with the requirement for graphical representation”

What about colours?
Libertel case 2003 (CJEU)
CJEU reiterated the Sieckman requirements …
and refused registration
CJEU said however that a description of the colour together with a sample is registrable provided conditions are met
internationally recognised colour classification system (eg Pantone) is important (as also held in Heidelberger Bauchemie, 2004)

Colour trademarks have been granted (yet, strict approach for just 1 colour, as held in Libertel)
Eg: lilac colour for Milka chocolate products was granted

Signs of which a trademark may consist (capable of distinguishing)

b) the 2nd requirement for a sign being capable to be considered as a trademark:
sign must be capable of distinguish goods/services
CJEU often said that this incorporates the essential function of trademarks

Question 25

Absolute grounds of refusal (trademark)

Answer 25

Art. 3 Dir. and Art. 7 Reg.
Sec. 3 Trade Marks Act 1994
They regard inherent registrability of the sign
Public policy plays an important part
i) signs which do not comply with the definition of trademark
ii) objection on lack of distinctiveness
iii) shape marks
iv) sign contrary to public policy or to accepted principles of morality
v) inherently deceptive marks
vi) heraldic symbols, flags and other signs
vii) registration in bad faith

b) Prohibited the registration of signs “devoid of any distinctive character

Eg: “shoes” for shoes is not distinctive and not registrable

What about shape of products?
If shapes are distinctive, they are registrable

c) Shape which results from the nature of the goods themselves
Shape of goods which is necessary to obtain a technical result
Shape which gives substantial value to the goods
These shapes are not registrable as trademarks

d) Trademarks contrary to public policy or accepted principles of morality
It is the intrinsic qualities of the mark that is relevant and not whether its use would be unlawful (Sportwetten, 2005)
“Clitoris allsorts”, “Bin Ladin”, “Mafia”, “Castro”, “Fuck of the year”, “Rassismus”, “Opium”, “Iparretarak Records”, “Bollox and Balle”, “Dick and fanny”
English cases “Tiny Penis” (2002), “Jesus” (2006)
German case: “F*cken” (2011

e) Inherently deceptive marks:
marks which are of such nature as to deceive the public, eg as to nature, quality or geographical origin of goods
eg: mark indicating an item is made of wool when it is in fact made of polyester

f) Heraldic symbols

g) Registration in bad faith:
- lack of intention to use the mark
- attempting to register a mark, knowing that another person/company is entitled
- ex distributor

Question 26

Relative grounds of refusal (trademark)

Answer 26

Art. 4 Dir. - Art. 8 Reg.
grounds for refusing registration (or invalidating registered trademarks) …
if their use conflicts with earlier rights
Generally the owner of the earlier right must oppose the application
It is rare that a TM Office will by itself oppose the application on relative grounds

a) Trademark identical for identical goods/services
b) Trademark similar for similar goods/services and likelihood of confusion
c) Trademark similar or identical with a well-known trademark, and (i) unfair advantage and (ii) detrimental for distinctive character / reputation
d) Use of trademark infringes unregistered trademark rights/other IPRs

a) identical trademarks/goods

No need to prove confusion amongst consumers re origin of goods
There is a presumption of confusion
If I start selling shoes bearing a sign identical to a previous one
consumers no doubt will be confused
Owner of the earlier trademark must not prove confusion (it’s presumed)

b) similarity goods/confusion

Prohibited the registration of a trademark if …
because of its identity or similarity to the earlier trademark …
and because of the identity or similarity of the goods concerned …
there exists likelihood of confusion on the part of the public as regards trade origin of goods

Therefore, three sub-conditions for this provision to apply:

• similarity of trademarks
• similarity of goods or services
• risk of confusion

Risk of confusion
confusion as trade origin of goods
Risk of confusion includes risk of association:
- when the public makes a connection between the trademark owner and the infringer
- eg consumers believe that the two companies are (economically or contractually) linked (through a licence agreement)
Puma v Sabel clarified that risk of association is still a risk of confusion

Factors relevant to determining confusion:

(i) eyes of the average consumer
(ii) visual/aural/conceptual similarities
(iii) greater likelihood of confusion when the earlier trademark is highly distinctive (ex: apple)
(iv) confusion as to trade of origin

c) well-known trademarks

A trademark shall not be registered (or, if registered, shall be declared invalid), if it is identical or similar to a well-know earlier trademark
Requirements: use of later trademark
(i) takes unfair advantage of the earlier trademark, without due cause; or
(ii) is detrimental to the distinctive character or reputation of the earlier trademark

When is a trademark well known?
General Motors v Yplon (1999) ECJ:
the degree of knowledge is reached …
… when the trademark is known by a significant part of the public concerned by the products
It is not necessary that the sign is famous to all consumers …
… but only to the sector of the public concerned by that particular product

For having a famous trademark infringed:
likelihood of confusion is not required
just the existence of a “link” is required
Adidas v Fitnessworld (2003) ECJ

What is really meant by a “link”?
Is it sufficient that the later trademark merely calls to mind the earlier mark?
Any kind of mental association is sufficient?
Intel v CPM (2008) ECJ:
the link between the two signs must have an effect on the economic behaviour of consumers

Unfair advantage

d) earlier rights

Art. 4.4(b)(c) Dir: Member States can prohibit registration of marks, if the sign conflicts with:
an earlier non registered mark
a right to a name
a right of personal portrayal
an earlier copyright
an earlier design right
an other earlier IPR (eg domain name)

Infringement:

Provisions on infringement (Art. 5 Dir, Art. 9 Reg) mirror provisions on registrability
… if I cannot obtain a registration because my trademark is identical with your earlier sign
… at the same time, if I use such trademark, I infringe your trademark rights
There is symmetry between registrability requirements and grounds of infringement

Must the allegedly infringing sign be used as a trademark?
Art. 5.1 Dir requires to prove that the sign used by the defendant is used “in relation to goods or services”

Question 27

Defences to infringement (trademarks)

Answer 27

a) Use of names and address
b) Use of the trademark to indicate characteristics of goods/services
c) Use necessary to indicate the intended purpose of a product/service, ie as spare part or accessory
d) local “prior right” use
e) acquiescence
f) exhaustion

a) Use of names and address

b) Use of the trademark to indicate characteristics of goods/services
It allows descriptive use of registered trademarks

c) Use necessary to indicate the intended purpose of a product/service, ie as spare part or accessory
in accordance with honest commercial practices

In the Gillette case (2005) the ECJ said that there is no use of trademark according to honest practices:
(i) use of trademark is done in such a manner as to give the impression there is commercial connection between the third party and the trademark owner
(ii) use of infringing trademark affects the value of the trademark (unfair advantage …)
(iii) use of infringing trademark discredits the mark
Other factors:
(a) overall impression of the product marketed by the third party
(b) efforts made by the third party to ensure consumers distinguish its products

d) local “prior right” use:
Registration does not entitle owners to prevent a 3rd party …
from using in the course of trade an earlier identical or similar sign which is (pre)used in a local territory

e) acquiescence:
if the owner of an earlier registered mark has tolerated for 5 years the use of a later trademark being aware of such use …
the owner of the earlier trademark is not entitled to obtain the invalidity of the later trademark …
nor to oppose its use
Rationale: preventing that a trademark owner waits maliciously several years before requesting revocation …
… and therefore benefit of the investments made on the later trademark

f) Art. 7 Dir. And Art. 13 Reg.: a trademark does not entitle the owner to prohibit its use in relation to goods marketed in the EU by the owner or with his consent
Doctrine of exhaustion, developed by the ECJ in the 70’s (Artt. 28-30 EC Treaty) (now Artt. 34-36 TFEU)
Parallel imports, Community-wide exhaustion and “Fortresse Europe”
Silhouette case (1998) ECJ

Question 28

Grounds for revocation (trademark)

Answer 28

Trademarks can be revoked for:

a) non use
b) trademark has become generic
c) trademark is liable to mislead the public

a) non use of trademark for 5 years within registration (or 5 consecutive years) …
the trademark shall be subject to revocation
So, trademark owner is not under a positive obligation to use its trademark …
however, if he does not use it within the above time limits …
he can lose his rights

The provisions in question refer to “genuine use”
What is the meaning of “genuine use”

CJEU: the territorial borders of the Member States should be disregarded in the assessment of whether a trade mark has been put to ‘genuine use in the Community

Trademarks are not revoked for non use if there are “proper reasons” for non use
“Reasons” which are abnormal and not mere business difficulties
Eg: a delay caused by some unavoidable regulatory requirement (such as the approval of a drug) falls in this provision
Eg: normal delays found in marketing the product are matters within businessman’s own control and therefore do not fall in this provision

Use of a trademark in a form slightly different from the registered trademark is sufficient to avoid revocation
Partial revocation:
Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered …
revocation shall relate to those goods or services only

b) Mark has become generic, ie common name of product
… due to (i) activity or (ii) inactivity of the trademark owner
Eg: the trademark himself owner uses the sign in a generic way …
or where the owner fails to enforce its trademark against third parties’ use of the sign in a generic way
Trademark owner must react promptly to avoid revocation

“aspirin”

There is an instrument to try avoiding a trademark from becoming generic:
Art. 27 Reg. allows a CTM owner to counter possible revocation: preventing descriptive use in dictionaries

c) revocation if the trademark – in consequence of the use made by its owner - is liable to mislead public as to the nature, quality or geographical origin of goods/services

Question 29

Designs / Models Mandatory requirements regist.

Answer 29

(i) the application must be for a “design” according to the meaning of the Directive
(ii) the design must be novel
(iii) the design must have an individual character
(iv) the design must not consist of features dictated by their technical function

v) the design must not be a mechanical interface
(vi) the design must not be contrary to public policy or morality
(vii) who applies for obtaining the registration of a design must be entitled to it

i) Design within the meaning of the Dir/Reg
Design: the appearance of the whole or a part of a product resulting from the features of the (a) lines, (b) contours, (c) colours, (d) shape, (e) texture, (f) materials of the product itself and/or its ornamentation
Thus, it is designs rather than product which should be registered:
design which is incorporated in a product
Both three-dimensional and bi-dimensional designs are included in the definition
Design can overlap with trademark/copyright

Design: the appearance of the whole or a part of a product
It allows registration of any visible parts during normal use of the complex product
Cars: bonnet, bumper, wheels, doors, wing mirror, steering wheel, gear stick
Yet oil filters and engine components (as they are not visible) cannot be registered

(ii) Novelty:
A design is not considered novel …
if an identical design has been made available to the public before the filing date
Designs are considered identical …
if their features only differ in irrelevant details

(iii) Individual character:
if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design previously made available to the public
Concept of informed user:
the view of an expert of the field concerned
it is not the opinion of everyday public

Case T‑337/12
overall impression produced by the design on the informed user is no different from that produced by the earlier design
… in light of similarities of shape, position and relative size of the various features of the corkscrew

iv) The technical function exclusion
Designs cannot be protected if their appearance is solely determined by their technical function
solely: that means that – if the form of the product has also ornamental features (in addition to technical function) – those features can be registered

v) “Interface” exception
also called “must-fit” exception
“the features of appearance of a product which must necessarily be reproduced in their exact form and dimensions, in order to permit the product in which it is applied to be mechanically corrected to or placed in, around or against another product so that either product may perform its function, cannot be protected as a design”
Purpose of exception: to prevent a designer to stop others making parts which fit his article
and thus to guarantee competition

v) “Interface” exception
also called “must-fit” exception
eg: vacuum cleaners
remember: this exception only regards mechanical and not electrical connections

Exception to must-fit exception
in case of modular systems:
Products whose main feature is about the ability to interchange or assemble its components
It applies to “Lego”, which is entirely based on the interchange/assemble of its little bricks
“Lego” clause
Consequence: designs of these products can be registered as design

(vi) Public policy or morality:
eg: certain designs concerning explicit sex-related products
Concepts of public policy and morality may vary from country to country
Very few cases
UK case Masterman’s Design (1991) RPC 89
German case Key-Ring Design (2004)
(vii) Entitlement to apply for design (under national laws)

Other grounds for refusal/invalidity: existence of prior IPRs, e.g.:

• prior designs
• prior trademarks
• prior copyright

Question 30

Geographical Indications

Answer 30

A geographical indication (GI) is a sign assuring consumers …
that the product comes from a particular region known for the quality
“Champagne”
“Scotch Whisky”
“Bordeaux”
“Parma Ham”

GIs very important in modern economy
Regulation 2081/92 on GIs for agricultural products and foodstuff (except wines/spirit), repealed by Reg. 510/2006 and then Reg. 1151/2012

Reg. 479/2008 (GIs for wines) and Reg. 110/2008 (GIs for spirits)

Reg. 1151/2012: distinction between:

(i) Protected Designations of Origin (PDO)
(ii) Protected Geographical Indications (PGI)

Designation of origin:
the name of a region or a specific place may be used to describe an agricultural product or a foodstuff, subject to three cumulative conditions:
(i) the product must originate in that geographical area;
(ii) the quality or characteristics of the product must be essentially or exclusively due to a particular geographical environment with its inherent natural and human factors;
(iii) production, processing and preparation of the product must take place in the defined geographical area

Geographical indications:
the name of a region or a specific place that is used to describe an agricultural product or a foodstuff, subject to three cumulative conditions:
(i) the product must originate in that geographical area;
(ii) a specific quality, reputation or other characteristics must be attributable to that geographical origin;
(iii) the production and/or processing and/or preparation of the product concerned must take place in the defined geographical area

Differences between PDOs and PGIs

(i) link between quality and place
(ii) reputation / verifiable fact
(iii) PGIs registration less onerous

Scope of protection. Art. 13 Reg. prohibits:

(i) any direct or indirect commercial use of the protected name
(ii) any misuse, imitation or evocation of the protected GI
- even if the true origin of the product is indicated
- even if the protected name is translated
- even if the protected name is accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation” or similar

(iii) any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product (on the inner or outer packaging, advertising material or document relating to the product concerned and the packaging of the product in a container liable to convey a false impression as to its origin)
(iv) any other practice liable to mislead the public as to the true origin of the product

Question 31

Biotech patents

Answer 31

Only inventions can be patented
“discoveries” are not patentable
INVENTIONS v DISCOVERIES
Inventions: “original solutions of technical problems”
EPO: invention must be technical to be patentable, meaning as “having technical character”
An invention is something which is created by the inventor

Making a discovery is revealing something which already exists in nature, but which has not yet been discovered
No inventive activities in required
Einstein could have never patented the law E=mc2
Newton could have never patented the law of gravitation
US Supreme Court Diamond v Chakrabarty (1980): such discoveries “are manifestations of … nature, free to all men and reserved exclusively to none”

Are biotech products/processes (eg genes?DNA sequences) inventions or discoveries?
1st school of thought: they are just discoveries
2nd school of thought: in certain cases they can be inventions

Art. 3.2 EC Directive: “biological material which is isolated from its natural environment or produced by means of a technical process may be the subject of an invention even if it previously occurred in nature”

Two examples for understanding
“Product of nature” doctrine:
products of nature as such are not patentable, but products derived from nature are

Art. 4(1) Directive
The following shall not be patentable:
(a) plant and animal varieties;
(b) essentially biological processes for the production of plants or animals
Identical provision is Art. 53(b) EPC
… Interpreted by the EBA in the tomatoes and broccoli case

Thus, biotech-related matter can be patented
Biotech inventions and patentability requirements
Art. 3.1 EC Dir:
inventions which are (a) new, (b) involve an inventive step and (c) are susceptible of industrial application shall be patentable, even if they concern (i) a product consisting of, or containing, biological material or (ii) a process by means of which biological material is produced, processed or used

Application of traditional patent rules on patentability requirements raises issues
Novelty requirement: are biotech products/processes new?
1st school of thought: no
2nd school of thought: yes (EPO in the Relaxin case)

Inventive step: are biotech products/processes original?
1st school of thought: no
2nd school of thought: yes (eg Recital 2 EC Dir.)

Industrial application: are biotech products/processes capable of industrial application?
Eg: bio-engineered seeds
It is doubtful

Biotech products have unique features, which makes it difficult to use the usual patterns of interpretation
In order to consider them patentable, traditional patent rules must be interpreted in a farfetched (and more indulgent) way
Someone says it is “easier” to patent biotech

Why do biotech products have a sui generis status?
Two reasons:
(i) Biotech relate to living matters
(ii) Biotech is one of the most R&D-intensive areas, especially in pharmaceuticals …
… it is necessary to invest more than in other sectors …
… legislators and patent offices apply patent rules in a different (and more indulgent) way

Scope of patent rights
Also here: reassessment of traditional patent rules
Giving biotech investors/inventors a more favourable legal treatment
Is patentee’s right limited to the first generation of the “product”
… or should such right be extended also to its “sons” as a result of reproduction?

Art. 8 Dir: protection extends to any biological material derived from that biological material through propagation or multiplication
Art. 9 Dir: protection extends to all material in which the product is incorporated and in which the genetic information is contained and performs its function

Question 32

Designs and models(spare parts)

Answer 32

The issue of “spare parts”
Ex: body panels
On the one hand: original part manufacturers
On the other hand: independent replacement parts manufacturers

This was the most debated issue before Directive 98/71 (which has harmonized EU countries’ national laws)
Directive leaves EU states to provide what they want
UK law provides must-match exemption (Sec. 7(A)(5) Reg. Des. Act)
Art. 110 EC Reg. 2002/6 includes must-match exception
2004 EU Commission proposal. Report of EU Parliament

v) “Interface” exception
also called “must-fit” exception
“the features of appearance of a product which must necessarily be reproduced in their exact form and dimensions, in order to permit the product in which it is applied to be mechanically corrected to or placed in, around or against another product so that either product may perform its function, cannot be protected as a design” -lego

Purpose of exception: to prevent a designer to stop others making parts which fit his article
and thus to guarantee competition

Question 33

Territoriality of IP rights

Answer 33

Territoriality of IP rights

• Principle of territoriality: IP rights are only granted for a
certain territory and they only provide protection within that
territory.
• Reasons:
– Patent offices are national → no “world” patent office
– IPRs as tools of economic policy
• Territoriality v universality in copyright law

Territoriality is a given – but it causes problems:
– Difference of laws may result in lower standards and
discrimination based on nationality
– Administrative inconvenience: need for multiple applications
– Territorially restricted rights might clash on the internet

Question 34

Conflict of laws and conflict of rights

Answer 34

Conflict of laws and conflict of rights

• Territoriality → IPRs limited to one territory
– Owner either has right in one country only or a bundle of rights
– IPRs can have different owners in different states
– This can even happen within one territory → situation after German
unification

• Applicable law → in international disputes the applicable law must be
determined
– Lex loci protectionis: right of country for which protection is sought
– But lex contractus applicable to licencing contracts.
– Art 8 (1) Rome II Regulation: “The law applicable to a non-contractual
obligation arising from an infringement of an intellectual property right shall
be the law of the country for which protection is claimed.”
• Often both principle go hand in hand, but occasionally they may differ →
example of situation after German unification.

Question 35

Must fit – must match

Answer 35

Must fit – must match

• “must fit” = features which must be reproduced in
order to allow mechanical connection → no design
protection

• “must match” = features which must be reproduced
to make a complex product look as it did before
– Design protection very controversial
– Economic background: interests of car manufacturers v.
free competition in spare parts market
– Art 110 CDR: “repair clause” = no protection for parts
which are used for repair purposes in order to restore
the original appearance
– Art 14 DD: “freeze plus” = member states may only
keep their law or liberalise it

Question 36

Unitary patent regulation

UPC agreement

Answer 36

The European patent with unitary effect (EPUE), more commonly known as the unitary patent, is a new type of European patent in advanced stage of adoption which would be valid in participating member states of the European Union.[notes 1] Unitary effect can be registered for a European patent upon grant, replacing validation of the European patent in the individual countries concerned. The unitary effect means a single renewal fee, a single ownership, a single object of property, a single court (the Unified Patent Court) and uniform protection—which means that revocation as well as infringement proceedings are to be decided for the unitary patent as a whole rather than for each country individually. Licensing is however to remain possible for part of the unitary territory.

Formal agreement on the two EU regulations[1][2] that made the unitary patent possible through enhanced cooperation at EU level was reached between the European Council and European Parliament on 17 December 2012. The legality of the two regulations was however challenged by Spain and Italy, who filed in total four actions for annulment, two of which were rejected, and two of which are currently pending before the European Court of Justice.[3] All EU member states except Spain and Croatia participate in the enhanced cooperation. Unitary effect of newly granted European patents can be requested, from the date the related Unified Patent Court Agreement enters into force for the first group of ratifiers,[notes 2] and will extend to those participating member states for which the UPC Agreement had entered into force upon the registration of unitary effect.

The negotiations which resulted in the unitary patent can be traced back to various initiatives dating to the 1970s. At different times, the project, or very similar projects, have been referred to as the “European Union patent” (the name used in the EU treaties, which serve as the legal basis for EU competency), “EU patent”, “Community patent”, “European Community Patent”, “EC patent”[4] and “COMPAT”.[5]

By not requiring translations into a language of each contracting state, and by requiring the payment of only a single renewal fee for the group of contracting states, the unitary patent aims to be cheaper than European patents. Instead, unitary patents will be accepted in English, French, or German with no further translation required after grant.[notes 3] Machine translations will be provided, but will be, in the words of the regulation, “for information purposes only and should not have any legal effect”.[6] The maintenance fees, with a single fee for the whole area, are also expected to be lower compared to renewal fees for the whole area but the fees have yet to be announced.

The proposed unitary patent will be a particular type of European patent, granted under the European Patent Convention. A European patent, once granted, becomes a “bundle of nationally enforceable patents”, in the states which are designated by the applicant, and the unitary effect would effectively create a single enforceable region in a subgroup of those 38 states, which may coexist with nationally enforceable patents (“classical” patents) in the remaining states.[notes 4] “Classical”, non-unitary European patents hold exclusively for single countries and require the filing of a translation in some contracting states, in accordance with Article 65 EPC.[notes 5]

Role of the European Patent Office

Some administrative tasks relating to the European patents with unitary effect will be performed by the European Patent Office.[61] These tasks include the collection of renewal fees and registration of unitary effect upon grant, exclusive licenses and statements that licenses are available to any person. Decisions of the European Patent Office regarding the unitary patent are open to appeal to the Unified Patent Court, rather than to the EPO Boards of Appeal.[62]

Unitary patent as an object of property[edit]

Article 7 of Regulation 1257/2012 provides that, as an object of property, a European patent with unitary effect will be treated “in its entirety and in all participating Member States as a national patent of the participating Member State in which that patent has unitary effect and in which the applicant had her/his residence or principal place of business or, by default, had a place of business on the date of filing the application for the European patent.”[65] When the applicant had no domicile in a participating Member State, German law will apply.[65] Ullrich has the criticized the system, which is similar to the Community Trademark and the Community Design, as being “in conflict with both the purpose of the creation of unitary patent protection and with primary EU law.”[65]

Agreement on a Unified Patent Court

The Agreement on a Unified Patent Court provides the legal basis for the Unified Patent Court: a patent court for European patents (with and without unitary effect), with jurisdiction in those countries where the Agreement is in effect. In addition to regulations regarding the court structure, it also contains substantive provisions relating to the right to prevent use of an invention and allowed use by non patent proprietors (e.g. for private non-commercial use), preliminary and permanent injunctions.

Jurisdiction[edit]

The Unified Patent Court will have exclusive jurisdiction in infringement and revocation proceedings involving European patents with unitary effect, and during a transition period non-exclusive jurisdiction (that the patent holder can be opt out from) regarding European patents without unitary effect in the states where the Agreement applies.[76] It furthermore has jurisdiction to hear cases against decisions of the European Patent Office regarding unitary patents. As a court of several member states of the European Union it may (Court of First Instance) or must (Court of Appeal) ask prejudicial questions to the European Court of Justice when the interpretation of EU law (including the two unitary patent regulations, but excluding the UPC Agreement) is not obvious.

Organization[edit]

The court would have two divisions: a court of first instance and a court of appeal. The court of appeal and the registry would have their seats in Luxembourg, while the central division of the court of first instance would have its seat in Paris. The central division would have thematic branches in London and Munich.[30][77] The court of first instance may further have local and regional divisions in all member states that wish to set up such divisions.

Question 37

TurkuAir, a brand new air company is going to launch its first flights between Turku and multiple European cities within the Schengen area on January 1, 2015. Besides offering sweet Fazer chocolate on the aircrafts, TurkuAir’s most innovative plan is to offer on-board personal entertainment for the clients. The clients can register to TurkuAir’s website and can directly check-in to the purchased flights there. After check-in clients will be able to download TurkuAir’s On-Board Entertainment App (TOBE-App) from TurkuAir’s website. Clients will be allowed to connect to the TOBE website (www.tobe.fi) with the help of the TOBE-App via TurkuAir’s on-board Wi-Fi system. The App works on the TurkuAir’s aircrafts between takeoff and landing. Travelers might stream (watch and listen to) movies, episodes of TV-shows, sound recordings and online radio programs that are hosted on the TOBE website. The servers of the TOBE website are located in Turku, Finland.
Please analyze, whether TurkuAir needs any permission for such service, and discuss which country’s law applies in this case. When answering the question, please refer to the relevant case law of CJEU.

Answer 37

InfoSoc Directive [2001/29/EC]:
 Exclusive rights:
 Direct or indirect, temporary or permanent
reproduction by any means and in any
form, in whole or in part (Art. 2.):
 (a) for authors, of their works;
 (b) for performers, of fixations of their
performances;
 (c) for phonogram producers, of their phonograms;
 (d) for the producers of the first fixations of films, in respect of
the original and copies of their films;
 (e) for broadcasting organisations, of fixations of their
broadcasts, whether those broadcasts are transmitted by wire
or over the air, including by cable or satellite.

Exclusive rights:

Communication to the public and making
available to the public for authors [Art. 3(1)];

Making available to the public [Art. 3(2)]:
 (a) for performers, of fixations of their performances;
 (b) for phonogram producers, of their phonograms;
 (c) for the producers of the first fixations of films, of the original
and copies of their films;
 (d) for broadcasting organisations, of fixations of their broadcasts,
whether these broadcasts are transmitted by wire or over the air,
including by cable or satellite.

Exclusive rights: communication to the public
 SGAE v. Rafael Hoteles [Case C-306/05]:
 the directive does not define the meaning
of „communication to the public” (Para. 33);
 interpretation: meaning, context, objectives
+ international obligations = broad meaning! (Para. 34-
36);
 public = „indeterminate number of potential television
viewers” + „successive publicity” in hotel rooms (Para. 37-
38);
 the communication was made by a broadcasting
organization other than the original one = communication
was made to a „new public”

ITV Broadcasting v. TVCathup [Case C-607/11]:
 „the transmission of works included in a terrestrial broadcast
and the making available of those works over the internet (…)
must be authorised individually and separately by the authors
concerned given that each is made under specific
technical conditions, using a different means of
transmission for the protected works, and each is
intended for a public.” (Para. 39) [Compare to Svensson!];
 „a profit-making nature does not determine conclusively
whether a retransmission, such as that at issue in the main
proceedings, is to be categorised as a ‘communication’ within
the meaning of Article 3(1) of Directive 2001/29” (Para. 43).

 REHA Training v. GEMA [Case C-117/15]:
 The concept of „communication to the public” regulated by
Rental/Related Rights Directive & InfoSoc Directive shall be
assessed in accordance with the same criteria:
 act of communication: „any transmission of the protected works,
irrespective of the technical means or process used” + „every
transmission or retransmission of a work which uses a specific
technical means must, as a rule, be individually authorised by
the author of the work in question” (para. 38-39);
 public: „indeterminate number of potential recipients and
implies, moreover, a fairly large number of persons” (para. 41);

 REHA Training v. GEMA [Case C-117/15]:
 The concept of „communication to the public” regulated by
Rental/Related Rights Directive & InfoSoc Directive shall be
assessed in accordance with the same criteria:
 new public: „the operators of a café-restaurant, a hotel or a spa
establishment are such users and make a communication to the
public if they intentionally broadcast protected works to their
clientele, by intentionally distributing a signal by means of
television or radio sets that they have installed in their
establishment” (para. 47);
 the for-profit nature „does not determine conclusively whether a
transmission is to be categorised as a ‘communication to the
public’ (…), it is not however irrelevant” (para. 49.)

choise of law: emission theory

Question 38

IV. Space Kaapeli (SpaceCable), a Finnish cable television company, has contracted Throughcom, a Finnish TV channel owner to transmit the audiovisual contents of the television channel via cable television to its subscribers. The contract was validly formed in 2005 and it covers only the transmission of television signals within the borders of Finland.
Space Kaapeli decided in 2011 to publish a new application (SCableTV) for tablet computers that subscribers of Space Kaapeli can download at no price. With the help of SCableTV users can stream audiovisual contents on their tablet computers for no extra fee. Space Kaapeli also published a second application (SCableTV+) with which subscribers can also download (reproduce) the television programs of Throughcom. Subscribers can choose from two payment models, when downloading SCableTV+. Subscribers either opt to pay a monthly lump sum of €9.99 for an unlimited number of downloads, or €0.39 per each downloads. (Each program, including episodes of TV shows, movies, news report etc., is deemed to be one separate download.)
Throughcom is looking for some legal guidance from you. Under the original contract between Throughcom and Space Kaapeli any digital transmission of the copyrighted and non-copyrighted programs of Throughcom by Space Kaapeli shall be deemed legal as long as the transmitted signals are received within the home of the subscribers, irrespectively of the type of receiver of the transmitted signals (including, but not limited to, televisions, personal computers). Throughcom asks for your guidance on the possible infringements of its copyrights on the television programs committed by Space Kaapeli and the respective subscribers.
You should also summarize your opinion on the legal solution of the above hypothetical under the European Union’s legislation and case law. (15 points)

Answer 38

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Question 39

Candy has dual nationality: she holds the nationality of Armanada, which is a member of the Paris Convention, and Nimada, which is not a member of the Paris Convention. However, there is a bilateral trade agreement between Armanada and Nimada. Candy invents a modern electric wheelchair that is environmentally friendly, able to encode user’s voice or read user’s mind for help, speak to user to alert him/her about danger ahead or give directions. It also records and keeps user’s data about movements and possible accidents.

Candy first files for patent protection in Armanada. 8 months later, she simultaneously files for patent protection in Cacadia, a member of the Paris Convention, and in Nimada claiming right of priority. However, she faces two challenges: Prior to her filings in Cacadia and Nimada, but not before her first application in Armanada, a citizen of Cacadia (Namdy) had invented a similar wheelchair and had filed for patent protection in Cacadia. Upon hearing of Candy’s application, Namdy files a pre-grant opposition at the Cacadian Patent Office claiming he first filed for patent protection in Cacadia and so Candy’s patent application should be invalidated.

Meanwhile, in Nimada, a third party had fallen on Candy’s idea to create similar facility for sale on the market. The Nimadian patent office rejected Candy’s application for patent protection claiming she enjoys no right of priority in Nimada and that the invention is already in the public domain.

Advise Candy of her rights and also, of the limits to her rights if any.

Answer 39

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Question 40

A prof. of Chemistry from a non-Berne Convention country (Ruritania) gains scholarship to go on a research visit to Finland for one year. Whilst in Finland, he creates an original database sponsored by his host University (University of Turku). In the memoranda of understanding to invest in the development of the database, the University of Turku and
the prof. did not agree/indicate who owns the copyright. Upon returning to Ruritania, the prof. is approached by a private entity (Biotame PLC) to obtain license to use his database. The University of Turku files an injunction in Ruritania to prevent the prof. from issuing a license to Biotame PLC claiming ownership over copyright. Meanwhile, Ruritanian copyright law requires that copyrighted works arising from the labour of University employees are shared between the University and employee. The prof. received salary from Ruritania whilst visiting Finland. However, he also received research allowances from the funding of the University of Turku.

Who owns the copyright? Which law should apply?

Answer 40

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Question 41

Compare copyright and patent protection of computer programs

Answer 41

On the European level, Directive 2009/24 seeks to harmonise Member States’ legislation in the field of legal protection of computer programs by defining a minimum level of protection. Member States protect computer software as such by copyright, by analogy to the protection given to literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works.

To enjoy copyright protection, no registration or other formality concerning software is required. Copyright protection is granted from the sole fact of the creation of the computer program.

Copyright protection extends to any element of expression of the creativity of its author but not to the ideas behind it, procedures, methods of operation, or mathematical concepts as such.

In other words, an algorithm is not eligible for copyright protection, because it will be considered to be of a factual nature, and therefore not an expression of the creativity of its author.

Following the aforementioned, copyright will protect only the computer program in the form written by a programmer i.e. its source code. Neither the functionality of a computer program, nor the programming language nor the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program, and thus are not protected by copyright.

Article 52 of the European Patent Convention excludes software from patentability to the extent that a patent application relates to a computer program as such. A distinction shall, however, be made between “software patents” which are excluded according to Article 52 EPC and so-called computer-implemented inventions which are accepted at the European Patent Office. In this respect, “computer-implemented inventions” can be defined as inventions whose implementation involves the use of a computer, a computer network or other programmable apparatus, having one or more features realised by means of a computer program. It seems, therefore, that patentability must not be denied merely because a computer program is involved. You could seek a patent protection, provided that the subject matter of your invention as a whole, i.e. a machine with related software, has a technical character - this technical character must be present in all variants covered by the patent claim.

If your new program managing your hardware device fulfils the above-mentioned requirements of technical character and inventive step, and additionally is new and undisclosed, you may try to obtain a patent protection on a national, regional or international level.

Question 42

Explain the following concepts / phenomena:

b) Compulsory licensing of patents,
c) Doctrine of equivalents,
d) Sui generis database right, and
e) Well-known marks?

Answer 42

b) Compulsory licensing of patents,

A compulsory license provides that the owner of a patent or copyright licenses the use of their rights against payment either set by law or determined through some form of adjudication or arbitration. In essence, under a compulsory license, an individual or company seeking to use another’s intellectual property can do so without seeking the rights holder’s consent, and pays the rights holder a set fee for the license. This is an exception to the general rule under intellectual property laws that the intellectual property owner enjoys exclusive rights that it may license – or decline to license – to others.

Some examples of situations in which a compulsory license may be granted include lack of working over an extended period in the territory of the patent, inventions funded by the government, failure or inability of a patentee to meet a demand for a patented product and where the refusal to grant a license leads to the inability to exploit an important technological advance, or to exploit a further patent

c) Doctrine of equivalents,

The doctrine of equivalents is a legal rule in many (but not all) of the world’s patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. U.S. judge Learned Hand has described its purpose as being “to temper unsparing logic and prevent an infringer from stealing the benefit of the invention”.[1]

Article 2
Equivalents

For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.

d) Sui generis database right

A sui generis database right is considered to be a property right, comparable to but distinct from copyright, that exists to recognise the investment that is made in compiling a database, even when this does not involve the “creative” aspect that is reflected by copyright.[1]

Each time a database is substantially modified, however, a new set of rights are created for that database. An owner has the right to object to the copying of substantial parts of their database, even if data is extracted and reconstructed piecemeal. Database rights under the EU are created automatically, vested in the employers of creators (when the action of creation was part of employment), and do not have to be registered to have effect.

Database rights are independent of copyright: The arrangement, selection, and presentation of the data may be protected by copyright, while the database as a whole can be protected by database right.[4]

e) Well-known marks?

When is a trademark well known?
General Motors v Yplon (1999) ECJ:
the degree of knowledge is reached …
… when the trademark is known by a significant part of the public concerned by the products
It is not necessary that the sign is famous to all consumers …
… but only to the sector of the public concerned by that particular product

Art. 6 bis
Countries are to refuse or cancel the registration and to prohibit the use of a trademark that is liable to create confusion with another trademark already well known in that member country even though it is not registered in that country

The protection results not from its registration, which prevents the registration or use of a conflicting trademark, but from the mere fact of its reputation

Question 43

Please introduce the types of private copying exceptions that the InfoSoc-Directive regulates. (5 points)

Answer 43

What is the private copying exception?

As readers will be aware, copyright gives rights holders certain exclusive rights (e.g. copying, communicating to the public), but also provides certain permitted acts (or exceptions) in relation to a copyright work which do not require the rights holder’s permission.

In essence, the private copying exception permits a ‘natural person’ to make copies of lawfully acquired copyright works for private (non-commercial) use such as for:

format-shifting (e.g. from a CD onto your MP3 player)

time-shifting (e.g. saving Downton Abbey onto your Personal Video Recorder or PVR) or

making back-up copies.

Its legislative basis is found in Article 5(2)(b) of the Information Society Directive 2001/29. The exception is subject to the Berne ‘three-step test’, namely that it should not conflict with the normal exploitation of the work or unreasonably prejudice the legitimate interests of the rights holder.

Importantly, the exception permits the creation of a copy of the work in certain circumstances (i.e. it is a permitted act in relation to the reproduction right); it does not therefore extend to other uses of the work such as communicating or distributing the work to the public.

What is a private copying levy?

Under the InfoSoc Directive, the private copying exception is provided on the condition that the rights holder receives “fair compensation”, which is “recompense for the harm suffered by the author” (Case C-467/08 Padawan).

The majority of Member States provide for “fair compensation” through a system of levies to compensate rights holders for the “harm” caused by private copying – i.e. via a private copying levy.

In general, private copying levies were implemented on purchases of blank media (e.g. CDs, DVDs) and on recording equipment (e.g. MP3 players, PCs, printers), with collected revenues then redistributed to rights holders by collecting societies.

It is also worth noting that Recital (35) to the InfoSoc Directive provides that “in circumstances where the prejudice to the rightholder would be minimal, no obligation for payment may arise”. In other words, where there is minimal or de minimis harm, no fair compensation is required.

Question 44

Mr. Selective is a young, freshly graduated director of audiovisual works. He wrote a screenplay for his first movie, which is about a love story of a man and a woman. The story includes the first meeting, the first kiss, the first sexual intercourse and the wedding of the couple, the pregnancy of the lady, the birth, education, graduation, wedding of their child, and finally the age of retirement of the couple. (Hereinafter: the Movie.) The most notable feature of the Movie is that Mr. Selective took pieces of pre-existing audiovisual works, cut out the necessary elements of the works that fitted the screenplay, and edited them into a new audiovisual work. This means that Mr. Selective did not record any new scenes, did not hire any actors, indeed, he “borrowed” each and every picture from previous movies. This way the main characters are performed by hundreds of actors. The Movie includes approximately 300 different edited pieces from around 100 different audiovisual works (from five different continents). The Movie lists all the audiovisual works that are used as a source for the final work.
Mr. Selective gets into contact with the CEO of Art Movie Distribute, Inc., a company specialized in the marketing of art movies within Europe. The CEO asks for your help to decide, whether Mr. Selective’s new work has any potential infringing nature. (10 points)

Answer 44

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Question 45

Discuss exceptions and limitations to copyright rights. What exclusive rights does the copyright owner enjoy?

Answer 45

Several exclusive rights typically attach to the holder of a copyright:

to produce copies or reproductions of the work and to sell those copies (including, typically, electronic copies)

to import or export the work

to create derivative works (works that adapt the original work)

to perform or display the work publicly

to sell or cede these rights to others

to transmit or display by radio or video.[35]

The phrase “exclusive right” means that only the copyright holder is free to exercise those rights, and others are prohibited from using the work without the holder’s permission. Copyright is sometimes called a “negative right”, as it serves to prohibit certain people (e.g., readers, viewers, or listeners, and primarily publishers and would be publishers) from doing something they would otherwise be able to do, rather than permitting people (e.g., authors) to do something they would otherwise be unable to do

Question 46

What constitutes traditional knowledge and how does protection relate to biodiversity, plant variety and patent protection? (Weckström)

Answer 46

Traditional knowledge refers to the knowledge, innovations and practices of indigenous and local communities around the world. Developed from experience gained over the centuries and adapted to the local culture and environment, traditional knowledge is transmitted orally from generation to generation. It tends to be collectively owned and takes the form of stories, songs, folklore, proverbs, cultural values, beliefs, rituals, community laws, local language, and agricultural practices, including the development of plant species and animal breeds

When community members innovate within the traditional knowledge framework, they may use the patent system to protect their innovations. However, traditional knowledge as such - knowledge that has ancient roots and is often informal and oral - is not protected by conventional intellectual property systems. This has prompted some countries to develop their own sui generis (specific, special) systems for protecting traditional knowledge.

Application of traditional patent rules on patentability requirements raises issues
Novelty requirement: are biotech products/processes new?
1st school of thought: no
2nd school of thought: yes (EPO in the Relaxin case)

Inventive step: are biotech products/processes original?
1st school of thought: no
2nd school of thought: yes (eg Recital 2 EC Dir.)

Industrial application: are biotech products/processes capable of industrial application?
Eg: bio-engineered seeds
It is doubtful

Biotech products have unique features, which makes it difficult to use the usual patterns of interpretation
In order to consider them patentable, traditional patent rules must be interpreted in a farfetched (and more indulgent) way
Someone says it is “easier” to patent biotech

Why do biotech products have a sui generis status?
Two reasons:
(i) Biotech relate to living matters
(ii) Biotech is one of the most R&D-intensive areas, especially in pharmaceuticals …
… it is necessary to invest more than in other sectors …
… legislators and patent offices apply patent rules in a different (and more indulgent) way

Scope of patent rights
Also here: reassessment of traditional patent rules
Giving biotech investors/inventors a more favourable legal treatment
Is patentee’s right limited to the first generation of the “product”
… or should such right be extended also to its “sons” as a result of reproduction?

Art. 8 Dir: protection extends to any biological material derived from that biological material through propagation or multiplication
Art. 9 Dir: protection extends to all material in which the product is incorporated and in which the genetic information is contained and performs its function

Question 47

Copyright and patent protection of computer programs in European law?

Answer 47

Computer-related inventions (software patents)
They may have technical character, if they cause a technical effect when run on a computer
In this case, these computer-related inventions are patentable
Microsoft/Clipboard formats (T-424/03): EPO confirmed patentability
IBM/Computer Programs (T-1173/97): EPO denied patentability
EPO opinion G 3/08 (EBA): legitimate development of case law, not conflicting decisions

computer programs, databases or photographs are protected by copyright only if they are original in the sense that they are their author’s own intellectual creation.

On the European level, Directive 2009/24 seeks to harmonise Member States’ legislation in the field of legal protection of computer programs by defining a minimum level of protection. Member States protect computer software as such by copyright, by analogy to the protection given to literary works within the meaning of the Berne Convention for the Protection of Literary and Artistic Works.

To enjoy copyright protection, no registration or other formality concerning software is required. Copyright protection is granted from the sole fact of the creation of the computer program.

Copyright protection extends to any element of expression of the creativity of its author but not to the ideas behind it, procedures, methods of operation, or mathematical concepts as such.

In other words, an algorithm is not eligible for copyright protection, because it will be considered to be of a factual nature, and therefore not an expression of the creativity of its author.

Following the aforementioned, copyright will protect only the computer program in the form written by a programmer i.e. its source code. Neither the functionality of a computer program, nor the programming language nor the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program, and thus are not protected by copyright.

Article 52 of the European Patent Convention excludes software from patentability to the extent that a patent application relates to a computer program as such. A distinction shall, however, be made between “software patents” which are excluded according to Article 52 EPC and so-called computer-implemented inventions which are accepted at the European Patent Office. In this respect, “computer-implemented inventions” can be defined as inventions whose implementation involves the use of a computer, a computer network or other programmable apparatus, having one or more features realised by means of a computer program. It seems, therefore, that patentability must not be denied merely because a computer program is involved. You could seek a patent protection, provided that the subject matter of your invention as a whole, i.e. a machine with related software, has a technical character - this technical character must be present in all variants covered by the patent claim.

If your new program managing your hardware device fulfils the above-mentioned requirements of technical character and inventive step, and additionally is new and undisclosed, you may try to obtain a patent protection on a national, regional or international level.

Question 48

Explain the following concepts: a) inventive step; b) exhaustion of rights; c) creative commons; d) technical protection and e) reverse engineering.

Answer 48

a) inventive step;

Inventive step

“An invention shall be considered as involving an inventive step if,
having regard to the state of the art, it is not obvious to a person
skilled in the art.”

What is the “state of the art”?
Everything made available to the public by means of …

written description
oral description
by use
or in any other way

… before the
filing date of
the application

The person skilled in the art
 is a skilled practitioner in the relevant field
 is possessed of average knowledge and ability
 is aware of what is common general knowledge in a particular
technical field at the relevant date
 has access to everything in the state of the art
 has a normal capacity for routine work, but no inventive skills
 is involved in constant development in his field
 is expected to look for suggestions in neighbouring and general
technical fields or even remote technical fields
 may in some fields be a team rather than an individual person
If the problem prompts the skilled person to seek its solution
in another technical field, the specialist in that other field is the
person qualified to solve the problem

EPO uses Problem/solution approach to inventive step:

a) determining the closest prior art
b) establishing the objective technical problem to be solved and
c) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person

b) exhaustion of rights;

The exhaustion of intellectual property rights constitutes one of the limits of intellectual property (IP) rights. Once a given product has been sold under the authorization of the IP owner, the reselling, rental, lending and other third party commercial uses of IP-protected goods in domestic and international markets is governed by the principle.[1]

After a product covered by an IP right, such as by a patent right, has been sold by the IP right owner or by others with the consent of the owner, the IP right is said to be exhausted. It can no longer be exercised by the owner

c) creative commons;

A Creative Commons (CC) license is one of several public copyright licenses that enable the free distribution of an otherwise copyrighted work. A CC license is used when an author wants to give people the right to share, use, and build upon a work that they have created.

d) technical protection and

invention must be technical to be patentable, meaning as “having technical character

Computer-related inventions (software patents)
They may have technical character, if they cause a technical effect when run on a computer
In this case, these computer-related inventions are patentable

e) reverse engineering.

Reverse engineering, also called back engineering, is the processes of extracting knowledge or design information from anything man-made and re-producing it or re-producing anything based on the extracted information.[1]:3 The process often involves disassembling something (a mechanical device, electronic component, computer program, or biological, chemical, or organic matter) and analyzing its components and workings in detail.

The reasons and goals for obtaining such information vary widely from everyday or socially beneficial actions, to criminal actions, depending upon the situation. Often no intellectual property rights are breached, such as when a person or business cannot recollect how something was done, or what something does, and needs to reverse engineer it to work it out for themselves.

Question 49

Describe the protection of geographical indications under the TRIPS –Agreement? (Katja Weckström)

Answer 49

TRIPS agreement builds on the foundations of the Paris Convention and Lisbon agreement but goes further and the main strenght of TRIPS agreement is that it expands the geographical cover of the system massively

number of states bound by trips is much higher than number of states signed up to lisbon agreement

Trips: indications which identify a good as originating in the territory of a member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin

papragraph 2 adds a clearly defined level of protection. member states are to provide interested parties under their national laws with the legal means to prevent:

the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good

+ in addition they should also provide the legal means to prevent any use of a geographical indication that constitutes an act of unfair competition within the meaning of article 10 Paris convention.

• any false attributation is therefore actionable

Question 50

The idea/expression dichotomy in copyright law?

Answer 50

TRIPS: copyright protection shall extend to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such

permitting copyrigt holders to prevent third parties from reproducing a works ideas - would offend the public interest and infringe third party freedom of expression rights

limited support in EU legislation and case law

strongest support derives from decision such as Infopaq that copyright subsists in and only in selections and arrangements of words or other expressive elements

Question 51

What significance do the objectives and principles stated in the TRIPS Agreement (Art. 7 and 8) have for international intellectual property negotiations today? (Katja Weckström)

Answer 51

-

Question 52

Exclusions from patentability under the TRIPS and the European Patent Convention (EPC) (Ulla-Maija Mylly)

Answer 52

Unpatentable inventions (Art. 52.2 EPC):
(a) discoveries, scientific theories and mathematical methods
(b) aesthetic creations
(c) schemes, rules and methods for performing mental acts, playing games or doing business and programs for computers, and
(d) presentations of information
excluded only “as such”. They are patentable if have a technical feature

Computer-related inventions (software patents)
They may have technical character, if they cause a technical effect when run on a computer
In this case, these computer-related inventions are patentable
Microsoft/Clipboard formats (T-424/03): EPO confirmed patentability
IBM/Computer Programs (T-1173/97): EPO denied patentability
EPO opinion G 3/08 (EBA): legitimate development of case law, not conflicting decisions

Patentability of software: very hot issue at EU level
2002: proposal for a Directive harmonizing patentability of software
Supporters of Directive: Microsoft, HP, EPO
Opponents of Directive: free software associations, open source programmers, small business groups
Proposal rejected on July 2005

Art. 53-c EPC:
(i) methods for treatment of the human and animal body by surgery or therapy; and
(ii) diagnostic methods practiced on the human or animal body
shall not be regarded as inventions which are susceptible of industrial application

Rationale: medical treatment of humans or veterinary treatment of animals should not be hampered by patents
EBA: aim of Art. 53-c) EPC is to free from restraint non-commercial and non industrial medical and veterinary activities
Rationale: policy decision to prevent restrictions on the use of new or improved surgical, diagnostic or therapy methods
Public interest: such methods should be available to all surgeons, doctors, etc.
US case Samuel L. Pallin v Jack A. Singer M.D. and The Hitchcock Clinic (1996)

How to reconcile the above with patentability of drugs?
Difference between surgeons and drug companies:
Surgeons are professionals who are expected to transfer their knowledge to others and do not expect economic recompense
Drug companies operate in a competitive industry and need patents to justify investments in R&D

Art. 53-a) EPC excludes from patentability inventions contrary to ordre public or morality
Aim: to exclude from protection inventions likely to induce riot or public disorder, or to lead to criminal or other offensive behaviour
Eg: “letter bomb”
This exception has been invoked in a few cases

Question 53

Explain the novelty requirement for patentability and priority date under the Paris Convention.

Answer 53

(i) Novelty (not belonging to the state of the art)

New

“An invention shall be considered to be new if it does not form part of the
state of the art.”

What is the "state of the art"?
Everything made available to the public by means of ...
written description
oral description 
by use
or in any other way

… before the
filing date of
the application

What is Meant by Priority Date?

It often happens that many people are working at the same time to find solution(s) to a particular technical problem. However, only one of them can be granted a patent for the same invention and most countries follow the so-called first-to-file-system in granting that patent to the one who filed the application first. When you are seeking patent protection for the same invention in several countries, the principle of priority is very useful since you do not have to file your application in several countries at the same time. The Paris Convention for the Protection of Industrial Property provides that once you file an application in one country party to the Convention, you are entitled to claim priority for a period of twelve months and the filing date of that first application is considered the “priority date.” Therefore, when you apply for protection in other member countries (of the Paris Convention) during those twelve months, the filing date of your first application is considered to have “priority” over other applications filed after that date. In such a case, you still succeed in being the first-to-file in other member countries, even if there are other applications filed before the filing date of your application in those countries.

Question 54

How is the scope of a patent determined? Explain also differencies in underlying ideologies.

Answer 54

The scope of a patent is defined by the claims. These list all the essential elements of the invention. Only if a product has all these elements does it infringe the patent. The validity of a patent is judged by comparing the claims against the prior art.

A patent gives its owner certain exclusive rights with respect to an invention. In return for these rights, the patent must describe how to construct the invention and how to use it. This way, once the patent rights run out, everyone can use the invention and so more knowledge becomes available to society.

The rights conferred by a patent need to be defined well, so that it is clear to everyone what is and is not covered by the patent. To this end, every patent contains one or more so-called “claims”, which provide a definition of what is covered by the patent. Only things that meet the definition of the claims infringe on the patent

Claims: define the protection sought
Extent of protection sought in the application
Protection conferred by the patent
Very important during the application process and litigation

Three requirements for claims:

(i) define the matter for which protection is sought
(ii) be clear and concise
(iii) be supported by the description

The claims (typically found at the end of a patent document) provide a definition of what the patent protects. Terms used in a claim may be defined by the whole document, but ultimately only what is described in the claims is protected.

To infringe, each and every element of a claim must be present in the infringing product. If even a single element is missing, the product does not infringe. It doesn’t matter if the patent document says that that single element is optional: if it’s in the claim, it is required.

The claims are used in a very similar manner when judging the validity of a patent (or application). When prior art is found, it must be compared against the claims to determine if the patent is new and nonobvious. Even if the “spirit of the invention” or the “general idea” is the same as in the prior art, if the claims contain one feature that is not mentioned in the prior art, the invention is new. If the one new feature is not obvious, then the claim is patentable.

Question 55

Cacadia and Tuobimia are both Member States of WIPO and its administered Treaty: the Madrid Agreement Concerning the International Registration of Marks (Madrid Agreement). Mr Osei is a citizen of Cacadia. He holds trademarks in Cacadia over his products and services brand known as “Oseikrom Accessories and Services”. Among his products and services are locally made bamboo watches, ribbons, necklaces, transport, tourism and camping etc, all of which come from, and centre around the traditional bamboo plant and sites where they are found. Mr Osei filed for an international registration of his trademark covering six countries (including Tuobimia) which was granted by WIPO. When the application was sent down to the Tuobimian Patent and Trademark Office to be processed, the Tuobimian authorities refused protection of the trademark based on the claim that the type of products and services covered by Mr Osei’s application are not distinctive and might mislead the Tuobimian public as there are similar products and services already on the Tuobimian market.

Mr Osei wishes to appeal this decision. What legal advice would you give to him?

Answer 55

-

Question 56

Ruritania is a member of the Berne Convention and the TRIPS Agreement. In formulating its domestic copyright law, Ruritania has employed the philosophy that “to steal a book is not an elegant offence”. Thus, it has raised the threshold for
infringements to copyrighted works to 50 pieces of private copying (whatever form). Copyright owners and legal experts in Ruritania have complained that Ruritania is violating the Berne Convention’s Article 9 (the three step test).

Do you agree/disagree with this claim? Advance reasons for your answer.

Answer 56

-

Question 57

2. What is a well-known mark? What are the conditions under international law for refusing the registration of a mark that is well known? What are the advantages and disadvantages for protecting well-known marks?

Answer 57

When is a trademark well known?
General Motors v Yplon (1999) ECJ:
the degree of knowledge is reached …
… when the trademark is known by a significant part of the public concerned by the products
It is not necessary that the sign is famous to all consumers …
… but only to the sector of the public concerned by that particular product

Well-known trade and service marks enjoy in most countries protection against signs which are considered a reproduction, imitation or translation of that mark provided that they are likely to cause confusion in the relevant sector of the public. Well-known marks are usually protected, irrespective of whether they are registered or not, in respect of goods and services which are identical with, or similar to, those for which they have gained their reputation. In many countries, they are also, under certain conditions protected for dissimilar goods and services. It should be noted that, while there is no commonly agreed detailed definition of what constitutes a “well-known mark,” countries may take advantage of the WIPO Joint Recommendations on the Protection of Well-Known Marks

Many countries protect unregistered well-known marks in accordance with their international obligations under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement). Consequently, not only big companies but also SMEs may have a good chance of establishing enough goodwill with customers so that their marks may be recognized as well-known marks and acquire protection without registration. It is, nevertheless, advisable to seek registration, taking into account that many countries provide for an extended protection of registered well-known marks against dilution (Art. 16.3 TRIPS), i.e., the reputation of the mark being weakened by the unauthorized use of that mark by others.

Question 58

conflict of laws - laws applicable to a dispute

Answer 58

Lex fori - the law of the forum where the dispute is litigated

Lex loci delicti - the law if the place of infringement

Lex loci protectionis - the law of the forum where protection is sought

Lex originis - the law of the country or origin of the work, mark etc.

Patents and trademark (registration) are governed by the law of the jurisdiction of the Office that granted the patent or registered the mark

In copyright cases, the Berne Convention mandates the application of the lex loci protectionis, which is often but not always the lex fori.

-> usually the law the jurisdiction IN WHICH protection is claimed, it is in fact the law of the jurisdiction FOR WHICH protection is claimed

Question 59

The Unitary Patent Package

Answer 59

Basics of the Unitary Patent Package

• EPUE an alternarnative for national & EPC patents.
• Also unifies the substantive, procedural and
institutional law of trad. European bundle patents for
the participating EU Member States (UPCA).
• Instead of establishing a new EU patent agency, the
EPUE is based on the existing structure of the
European Patent Office (the EPO).
• Whereas the unitary EU trademark and design regimes
build on general national courts for infringement
actions and invalidity counterclaims, the EPUE
litigation takes place exclusively before the created
Unified Patent Court (the UPC).

Institutional Structure

EPUE
EPUE

General about the sources of law

• The nature of the sources of law in the unitary
patent package defines their effects and the
extent to which the CJEU assumes competence to
interpret them or declare them invalid.
• The CJEU possesses an authoritative competence
to interpret, where the norms in question are
classified as Union law.
• CJEU competence to declare unitary patent
package norms invalid is restricted to secondary
EU norms, in particular the two EPUE
Regulations.

General about the sources of law (2)

• Major parts of the unitary patent package, regulating most key
quesDons of patent law, fall outside EU norms.
– The EPC will determine the validity grounds (Arts 138 and 139.2), the
protective effect of patent applicaDons and patent applications as
objects of property (ArDcle 67, 71-74), scope of protecDon (ArDcle 69),
the right to a European patent (Art 60) and revocation (ArDcle 138)

– Exclusive rights and most limitations fall under the UPC Agreement.

• As the EU is not a contracting party to either international
agreement, the CJEU cannot provide authoritative interpretations
concerning these aspects of unitary patents.

• While the existence of unitary patent protection thus largely falls
outside the competence of the CJEU, it has competence to rule on
uniform protection and exhaustion, regulated in ArDcles 5 and 6 of
the EPUE Regulation.

General about the sources of law (3)

• Article 5 of the EPUE Reg. is nothing more than an
abstract reference to the requirement of uniformity of
protection, to be accomplished by the application of
one national law to the patent in question throughout
the EPUE territory, selected in accordance with the
choice of law norms in ArDcle 7 of the EPUE
Regulation.

• The issue of exhaustion of patents was already before
the EPUE Regulation defined by Union law

• The EPUE Regulation does not introduce any new
substantive patent law concepts capable of
constituting Union law concepts.

General about the sources of law (4)

• The fact that the registration of unitary effect requires a
European patent granted under the rules of the EPC, makes
the unitary patent a unique construct under EU law, as the
unitary effect is grantable only on the basis of a right
conferred under an internaDonal treaty.

• The unitary patent remains subject to the grant and
conDnued existence of the underlying European patent.

• The CJEU approved that the unitary patent is not an
independent EU right, but dependent on the fate of the
underlying European patent and the interpretation and
application of the EPC.

– entirely different creature than unitary EU trade mark and
design rights, which are independent sui generis rights.

Primacy of Union law

• ArDcle 20 of the UPC Agreement states that the UPC “shall apply Union
law in its enDrety and shall respect its primacy”.

– This general obligation flows already from the fact that the UPC is a court
common to the participaDng Member States.

• More generally, the EU law obligations of the UPC, included in Chapter IV
of the UPC Agreement, are mainly informative in nature. They must be
interpreted in conformity with CJEU case law.

• Rule 1(2) of Rules (Decision of the Select Commi^ee of the AdministraDve
Council of 15 December 2015 adopDng the Rules relaDng to Unitary
Patent ProtecDon, SC/D1/15) states that in case of conflict between the
Rules and Union law, the provisions of Union law, including the two EPUE
RegulaDons, will prevail. As the EPO will according to Rule 1(1) be bound
by the decisions of the UPC in acDons brought under ArDcle 32(1)(i) of the
UPC Agreement, the EPO will also for this reason be bound by and must
give priority to Union norms when administering unitary effect.

• Yet substantive patent law covered by non-EU norms (UPCA & EPC).

Where are the substantive patent
norms located?

• Almost all substantive patent law provisions are now in
the internaDonal measures, the UPCA and the EPC.

• The transfer of these norms from the EPUE Regulation
was motivated by the whish of European patent
experts to escape the jurisdiction of the CJEU to
interpret the patent norms, especially with respect to
direct and indirect patent infringement.

• the EPUE Regulation in its Article 5(3) refers to them
only indirectly via national law of a participating
Member State!

Where are the substantive patent
norms located? (2)

• The applicable national law becomes selected
through the choice of law norms included in
ArDcle 7 of the EPUE Regulation. The selected law
becomes applied to the unitary patent in
question throughout the EPUE territory.

• The reason for this technique was the same as for
removing the norms to the UPC Agreement in the
first place – the draqsmen of the unitary patent
package wished to avoid the jurisdiction of the
CJEU to interpret substantive patent norms.

Where are the substantive patent
norms located? (3)

• The noDon of national law in the EPUE Regulation is
thus a Trojan Horse, hiding inside it the provisions of
the EPC and UPC Agreement applicable to unitary
patents.

• The later instruments define in practice the exclusive
rights, scope of protection and the most important
exceptions thereto in a uniform manner throughout
the UPC Agreement Member States.

• National law becomes applicable only where the EPC
and UPC Agreement do not provide an answer, or
explicitly refer an issue to be decided by national law.

– Article 24 UPCA defines the actual scope of national law.

Moving the norms from one nest
(EPUE Reg.)
..to another nest

(UPCA, MS laws)

The position of national law

• Not all aspects of patent infringement are covered by
the norms of the UPC Agreement or the EPC.

– For example, issues like joint torseasorship, responsibility
of instigators and accessories, the position of unjustified
warnings, limitations under equity and civil law are not
covered directly by the UPC Agreement or the EPC.

• National law — selected through the choice of law
rules in ArDcle 7 of the EPUE Regulation — could thus
become applicable with regard to these and other
aspects of responsibility not covered by the UPC
Agreement or EPC.

The position of national law (2)

• The EPUE Regulation and the UPC Agreement expressly
refer 3 major issues to be decided by national law: the
position of a unitary patent as an object of property (Article
7 of the EPUE Regulation), the right based on prior use of
the invention (Article 28 of the UPC Agreement) and
compulsory licensing (Recital 10 of the EPUE Regulation).

• In practice, recourse to German law to define the property
aspects of protection will be very common. Where no
applicant had his residence or place of business in a
participating Member State, German law will be applied. By
interpreting the connecting factors of residence and
principal place of business in Article 7 of the EPUE
Regulation narrowly, the UPC and the CJEU could increase
the application of German law, and vice versa.

The position of national law (3)

• Compulsory licensing and prior use rights
were included in the former proposals for EU
patent. Now the law of the participating
Member State where such user rights are
considered would apply. The compulsory
license or prior use right would be restricted
to that Member State. The UPC will have
exclusive competence with respect to prior
use rights but not with compulsory licensing

How Unitary Effect Will Be
“Granted”?

EPO	grant	of	a	European	Patent	
Request	for	Unitary	Effect	(within	one	
month	after 	publication)	
EPO	Registration	of	Unitary	Effect	
when	condiDons	fulfilled	
"Automatic"	Unitary	Effect	based	on	
direct	effect	of	the	EPUE	Reg.	

The Nature of the EPUE

• Unitary Effect has an accessory nature
– Merely an ancillary feature attached to a granted
European patent (EPUE Reg.)
– The EPUE would not be an independent Union
right, but wholly dependent on the fate of the
underlying European patent and the
interpretation and application of the EPC
– Would differ in this respect from the unitary EU
trademark and design rights, which are
independent sui generis rights.
Measure mostly outside EU Law?
UPCA + EPC
Unitary
patent
regulation
Sui Generis EU Right?
EU Right
UPCA
EPC
The Nature of the EPUE (2)
• Paradoxically unitary effect must be “uniform
and equal” in all parDcipaDng Member States
– Unitary character, uniform protection and equal
effect of the EPUE as its overarching objectives?
– Could only be achieved by an integrative,
teleological approach according to which the
relevant parts of the EPC, UPCA and domestic
laws of the participating Member States are seen
as integral parts of the Union law-based EPUE?
Duck or rabbit?
Could and Should the CJEU Unionise
the Unitary Patent Package?
• The CJEU can check the conformity of the
relevant UPCA norms against existing Union
norms (Union law priority if conflicts).
• Some provisions of the UPCA constitute
blueprints of EU norms and thus provide the
CJEU competence to interpret them
– For example the Bolar Exemption and remedies as
regulated in the IPR Enforcement Directive.
Could and Should the CJEU Unionise
the Unitary Patent Package? (2)
• Through EU fundamental rights?
• Through EU competition law?
• Through general principles of EU law, for
example abuse of rights?
• Through teleological interpretation
(uniformity)?
• Through the TRIPS Agreement?
• Through Article 5(3) of the EPUE Reg.?

Question 60

The role of the CJEU in the development of EU

copyright law:

Answer 60

The role of the CJEU in the development of EU
copyright law:

 TFEU Art. 267: preliminary rulings, where the CJEU might
 reformulate the questions;
 comment on the implications of its answers.
 CJEU case law is binding on domestic courts that shall
interpret
 domestic law consistently with directives; and
 each directive purposively, systematically and teleologically.
 „The result is to limit further the scope for national discretion
in the interpretation and application of domestic copyright
and related rights law, and to support the penetration of that
law and its underpinning policy into the copyright and related
rights system of individual Member States.” (Pila-Torremans,
p. 252.)

Question 61

Computer Programs Directive [91/250/EEC,

repealed by 2009/24/EC]:

Answer 61

Computer Programs Directive [91/250/EEC,
repealed by 2009/24/EC]:

 Adopted with priority; implementation date was 1/1/93;
 Basic policy: „fundamental importance
for the Community’s industrial
development” (Recital 3); differing
protection is present in Member
States (if any) (Recital 4);

Member States shall protect computer programs, by
copyright, as literary works” [Art. 1(1)];
 „A computer program shall be protected if it is original
in the sense that it is the author’s own intellectual
creation. No other criteria shall be applied to
determine its eligibility for protection.” [Art. 1(3)]
 Expressions are protected, rather than ideas and
principles [Art. 1(2)] = the originality threshold is
low!

What is a computer program? No definition is provided
by the directive;
 „A set of instructions (…), which clearly specify the ways
to carry out a specific task”;
 Later: TRIPS Art. 10 („whether in source or object
code”), WCT Art. 4 („whatever may be the mode or form
of their expression”);
 Source code: human-readable form, which enables the
programmer to study and develop the program („the
means”);
 Object code: computer readable form,
which orders the execution of the
specified instructions („the result”);

 SAS v. World Programming [Case C-406/10]:
 „To accept that the functionality of a computer program
can be protected by copyright would amount to making it
possible to monopolize ideas, to the detriment of
technological progress and industrial development. (…)
Neither the functionality of a computer program nor the
programming language and the format of data files
used in a computer program in order to exploit certain of
its functions constitute a form of expression of that
program and, as such, are not
protected by copyright in computer
programs for the purposes of that
directive.” (Para. 40 & 46)

What about other subject matter
incorporated into a computer program?
 Nintendo v. PC Box [Case C-355/12]:
 „Directive 2009/24 constitutes a lex specialis in relation to
Directive 2001/29 (…). In accordance with Article 1(1) thereof, the
protection offered by Directive 2009/24 is limited to computer
programs. (…) Videogames, (…) constitute complex matter
comprising not only a computer program but also graphic and
sound elements, which, although encrypted in computer language,
have a unique creative value which cannot be reduced to that
encryption. In so far as the parts of a videogame (…) the
graphic and sound elements, are part of its originality, they
are protected, together with the entire work, by copyright
in the context of the system established by Directive
2001/29.” (Para. 23.)

Computer Programs Directive [91/250/EEC,
repealed by 2009/24/EC]:
 Authorship: natural person or group of natural persons who
has created the program or legal persons designated as
rightholders [Art. 2(1)]; further: collective works; joint
works; works made by employees [Art. 2(2)-(3)];
 Ownership (beneficiaries): national law applies [Art. 3.];
 Exclusive rights (do, authorize or prohibit) [Art. 4(1)(a)-(c),
Art. 7.]:
 permanent or temporary reproduction;
 translation, adaptation, arrangement and any other alteration;
 distribution, including rental;
 prohibit possession and putting into circulation of infringing copies;
 „beta version” of TPM/DRM;
 No moral rights are granted;

Exceptions: exhaustion of distribution right
 UsedSoft v. Oracle [Case C-128/11]
 software producer;
 85% of Oracle software are downloaded from the web;
 software license keys are individually sold and purchased;
 concludes „use contracts” (licenses) with clients:
 „With the payment for services you receive, exclusively for your internal business
purposes, for an unlimited period a non-exclusive non-transferable user right free of
charge for everything that Oracle develops and makes available to you on the basis
of this agreement.”
 sells volume licenses for massive users (25 licence keys);
 markets used software licenses;
 Oracle software remain subject to download from
the original website or the original data carrier
is transferred to the purchaser

 Art. 4(2) of the Software Directive says:
 „the first sale in the Community of a copy of a program by the
rightholder or with his consent shall exhaust the distribution right
within the Community of that copy, with the exception of the right to
control further rental of the program or a copy thereof.”
 First sale is „an agreement by which a person, in return for
payment, transfers to another person his rights of ownership in
an item of tangible or intangible property belonging to him.”
 The license is valid for an indefinite term and allows a
permanent use „in return for payment of a fee designed to
enable the copyright holder to obtain a remuneration
corresponding to the economic value of the copy of the work of
which it is the proprietor” = SALE.

 „The existence of a transfer of ownership changes an ‘act
of communication to the public’ (…) into an act of
distribution (…) which (…) [can] give rise to exhaustion of the
distribution right.”
 Art. 4(2) of the Software Directive makes no difference in
respect of the form of the software that is first sold by the
rightholder. Consequently the rule of exhaustion „concerns
both tangible and intangible copies of a computer program,
and hence also copies of programs which, on the occasion of
their first sale, have been downloaded from the internet onto
the first acquirer’s computer.”
 „The on-line transmission method is the functional
equivalent of the supply of a material medium.

Recitals (28)-(29) and Art. 4(2) of the InfoSoc Directive –
implementing WCT – stress the application of the rule of
exhaustion only in respect of tangible copies.
 Art. 1(2)(a) of the InfoSoc Directive states, however, that it
„shall leave intact and shall in no way affect existing
Community provisions relating to (…) the legal protection of
computer programs”.
 The Software Directive – especially its Art. 4(2) – is finally
classified as lex specialis.

 The CJEU evades answering the question, whether a copy
created on the new user’s computer is a „new” copy
(reproduction) of the software or not:
 „since the copyright holder cannot object to the resale of a copy of
a computer program for which that rightholder’s distribution
right is exhausted (…) a second acquirer of that copy and any
subsequent acquirer are ‘lawful acquirers’”;
 „the new acquirer will be able (…) to download onto his
computer the copy sold to him by the first acquirer.”

intrusion into Member States’ freedom to regulate their
own property system (TFEU Art. 345) + ‘distribution by sale or
otherwise’ „should be interpreted in accordance with [WCT and
WPPT] as a form of distribution which entails a transfer of
ownership” (Peek & Cloppenburg, Case C-456/06, para. 33);
 the theory of functional equivalence in unworkable to
other protected subject matter;
 Software Directive is NOT lex specialis in respect of the
doctrine of exhaustion.

„In the absence of specific contractual provisions” necessary
uses to run the computer program and to correct errors
[Art. 5(1)];
 Back-up copy by a lawful user cannot be prevented by
contract „in so far as it is necessary” for that use
[Art. 5(2)];
 „Observe, study or test the functioning of the program [by
lawful users] in order to determine the ideas and
principles” [Art. 5(3)] – cannot be prevented contractually;
 Decompilation to permit interoperability of an
independently created computer program with other
programs; cannot be prevented contractually, however,
subject to the three-step test [Art. 6].

Enforcement provisions [Art. 7(1)-(2)]:
 appropriate remedies against a person who
 (a) is putting into circulation a copy of a computer program
knowing, or having reason to believe, that it is an infringing
copy;
 (b) possesses, for commercial purposes, of a copy of a computer
program knowing, or having reason to believe, that it is an
infringing copy;
 (c) is putting into circulation or possesses for commercial
purposes any means the sole intended purpose of which is to
facilitate the unauthorised removal or circumvention of any
technical device which may have been applied to protect a
computer program.
 seizure in accordance with the national legislation.

Question 62

Rental, Lending and Related Rights Directive

[92/100/EEC, repealed by 2006/115/EC]:

Answer 62

Rental, Lending and Related Rights Directive
[92/100/EEC, repealed by 2006/115/EC]:
 Adopted with priority; implementation date was
1/7/94;
 Basic policy: fight against piracy (Recital 2);
broadening of authors’ rights and harmonization of
rights of related rightholders (not every Member
States has acceeded to the Rome Convention yet)
(Recital 3); adaptation to new forms of exploitation
(Recital 4);

Chapter I.: rental and lending right:
 „(a) ‘rental’ means making available for use, for a
limited period of time and for direct or indirect
economic or commercial advantage;
 (b) ‘lending’ means making available for use, for a limited
period of time and not for direct or indirect economic or
commercial advantage, when it is made through
establishments which are accessible to the public” [Art. 2(1)];
 No exhaustion applies [Art. 1(2)];

Metronome Musik v. Hokamp [Case C-200/96]:
 „the release into circulation of a sound recording cannot
therefore, by definition, render lawful other forms of exploitation
of the protected work, such as rental, which are of a different
nature from sale or any other lawful form of distribution.
(…) Thus, the distinction drawn in the Directive between the
effects of the specific rental and lending right (…) and those of
the distribution right (…) is justified. The former is not
exhausted by the sale or any other act of distribution of the
object, whereas the latter may be exhausted, but only and
specifically upon the first sale in the Community by the
rightholder or with his consent. The introduction by the
Community legislation of an exclusive rental right cannot
therefore constitute any breach of the principle of
exhaustion of the distribution right, the purpose and scope of
which are different.” (Para. 18-20.)

„the inclusion (…) of phonogram producers among the
beneficiaries of the exclusive rental right appears justified by
the protection of the extremely high and risky investments
which are required for the production of phonograms and are
essential if authors are to go on creating new works. (…) (T)he
grant of an exclusive right to producers certainly
constitutes the most effective form of protection, having
regard in particular to the development of new technologies and
the increasing threat of piracy, which is favoured by the extreme
ease with which recordings can be copied. In the absence of such
a right, it is likely that the remuneration of those who invest in
the creation of those products would cease to be properly
guaranteed, with inevitable repercussions for the creation of new
works.” (Para. 24.)

Chapter I.: rental and lending right:
 Rightholders and subject matter [Art. 3(1)]:
 (a) the author in respect of the original and copies of his work;
 (b) the performer in respect of fixations of his performance;
 (c) the phonogram producer in respect of his phonograms;
 (d) the producer of the first fixation of a film in respect of the
original and copies of his film.
 Rights might be transferred, assigned or
licenced [Art. 3(3)-(5)];
 Unwaivable equitable remuneration for
authors [incl. principal director of films] and performers in
case rental right was transferred or assigned to
phonogram or film producers in respect of phonograms or
films [Art. 5];

Derogation from the exclusive public lending right in
exchange a remuneration [Art. 6(1)-(2)];
 VEWA v. Belgium [Case C-271/10]:
 „lending does not have a direct or indirect economic or commercial
character. In those circumstances, the use of a protected work in
the event of public lending cannot be assessed in the light of its
value in trade. (…) The remuneration to be fixed must (…) be
capable of allowing authors to receive an adequate income.”
(Para. 33-34);
 Elements to take into account: number of registered users;
number of works made available to the public (Para. 37-42);
 „Article 5(1) [currently Art. 6(1)] precludes legislation (…) which
establishes a system under which the remuneration payable to
authors in the event of public lending is calculated exclusively
according to the number of borrowers registered with public
establishments, on the basis of a flat-rate amount fixed per
borrower and per year.” (Para. 43)

Certain categories of institutions might be exempted from
the payment of remuneration [Art. 6];
 Commission vs. different Member States on the derogation
rule of public lending right [Case C-36/05; Case C-53/05;
Case C-175/05]: the beneficiaries of the derogation shall not
consist of the majority of relevant institutions;

Chapter II.: related rights:
 Performers [Art. 7(1); 8(1)-(2); 9(1)(a)]: fixation;
broadcasting and communication to the public;
a single equitable remuneration (shared with
phonogram producers) for the secondary uses of
phonograms via broadcasting or communication
to the public; distribution;
 Broadcasting organisations [Art. 7(2); 8(3); 9(1)(d)]: fixation;
rebroadcasting and communication to the public; distribution;
 Phonogram producers [Art. 8(2); 9(1)(b)]: a single equitable
remuneration (shared with performers) for the secondary uses of
phonograms via broadcasting or communication to the public;
distribution;
 Producers of first fixations of films [Art. 9(1)(c)]: distribution;
 Distribution right might be transferred, assigned,
licenced [Art. 9(4)].

 Chapter II.: related rights: communication to the
public
 Phonographic Performance (Ireland) Limited v Ireland
and Attorney General [Case C-162/10]:
 providing television and/or radios or other apparatus
in hotel rooms capable to play broadcast phonograms in
physical or digital form results in communication to the
public under Directive 2006/115:
 „a hotel operator is making a ‘communication to the public’ within
the meaning of Article 8(2) of Directive 2006/115” (para. 46);
 „when a hotel operator communicates a broadcast phonogram in
its guest bedrooms, it is using that phonogram in an autonomous
way and transmitting it to a public which is distinct from and
additional to the one targeted by the original act of
communication” (para. 51).

Chapter II.: related rights: communication to the
public free-of-charge?
 SCF v. Del Corso [Case C-135/10]:
 „The concept of ‘communication to the public’ for the purposes
of Article 8(2) of Directive 92/100 must be interpreted as
meaning that it does not cover the broadcasting, free of
charge, of phonograms within private dental practices
engaged in professional economic activity, such as the
one at issue in the main proceedings, for the benefit of
patients of those practices and enjoyed by them
without any active choice on their part. Therefore such
an act of transmission does not entitle the phonogram
producers to the payment of remuneration.”

Chapter II.: related rights: equitable remuneration
 SENA v. NOS [Case C-245/00]:
 „The concept of equitable remuneration (…) must be
interpreted uniformly in all the Member States and
applied by each Member State; it is for each Member State
to determine, in its own territory, the most appropriate
criteria for assuring, within the limits imposed by
Community law and Directive 92/100 in particular, adherence
to that Community concept” (Para. 38);

SENA v. NOS [Case C-245/00]:
 „Article 8(2) of Directive 92/100 does not preclude a model for calculating
what constitutes equitable remuneration for performing artists and
phonogram producers that operates by reference to variable and fixed
factors, such as the number of hours of phonograms broadcast, the
viewing and listening densities achieved by the radio and television
broadcasters represented by the broadcast organisation, the tariffs fixed
by agreement in the field of performance rights and broadcast rights in
respect of musical works protected by copyright, the tariffs set by the
public broadcast organisations in the Member States bordering on the
Member State concerned, and the amounts paid by commercial stations,
provided that that model is such as to enable a proper balance to be
achieved between the interests of performing artists and producers in
obtaining remuneration for the broadcast of a particular phonogram, and
the interests of third parties in being able to broadcast the phonogram on
terms that are reasonable, and that it does not contravene any
principle of Community law.” (Para. 46)

Chapter II.: limitations to related rights:
 Community-wide exhaustion applies to the right
of distribution [Art. 9(2)];
 Private use [Art. 10(1)(a)];
 Use of short excerpts in connection with the
reporting of current events [Art. 10(1)(b)];
 Ephemeral fixation by a broadcasting organisation by means of its
own facilities and for its own broadcasts [Art. 10(1)(c)];
 Use solely for the purposes of teaching
or scientific research [Art. 10(1)(d)];
 Anything else provided in connection
with copyright law [Art. 10(2)];
 Three-step test applies to limitations
covered by Art. 10 [Art. 10(3)].

Question 63

Satellite and Cable Directive [93/83/EEC]:

Answer 63

Satellite and Cable Directive [93/83/EEC]:

 Adopted after a lengthy preparation; implementation
date was 1/1/95;
 Basic policy: satellite broadcasting and cable
retransmission is an important way to pursue the
establishment of a common market and an area
without internal frontiers and abolition of obstacles
to free movement of services (Recital 3); differing
national rules and legal uncertainties hinder to reach
these goals (Recital 5); single audiovisual area shall
be supplemented with reference to copyright (Recital
12);

Which law should apply? Lex loci domicili? Bogschtheory?
Emission theory? [Footprint v. uplink countries?]
 Art. 1(2)(b) favoured the latter. [Compare to Art.
1(2)(d)(ii) as well.]

Communication to the public by satellite:
 Exclusive authorization right for authors [Art. 2];
 Extended collective rights management might be introduced
[Art. 3(2)-(3)];
 Rights of performers, phonogram producers and
broadcasting organizations shall be protected „in
accordance with Directive 92/100/EEC” [Art. 4];
 Minimum rights granted [Art. 6.];

Cable retransmission:
 „When programmes from other Member States are
retransmitted by cable in their territory the applicable
copyright and related rights are observed and that such
retransmission takes place on the basis of individual
or collective contractual agreements between
copyright owners, holders of related rights and cable
operators” [Art. 8(1)];
 Exercised only through a collecting society [Art. 9(1)];
extended collective rights management is acceptable
[Art. 9(2)];

Pan-European audiovisual space” is hard to achieve –
the directive is not functioning properly in practice;
 Contracts concluded by broadcasting organizations have
territorial scope and prescribing the application of
encryption technologies that ultimately allow for
subscription models.
 FAPL v. QC Leisure [Joined Cases C-403/08 and 429/08]:
 „the clauses of an exclusive licence agreement concluded between a
holder of intellectual property rights and a broadcaster constitute
a restriction on competition prohibited by Article 101 TFEU where
they oblige the broadcaster not to supply
decoding devices enabling access to that right
holder’s protected subject-matter with a view
to their use outside the territory covered by
that licence agreement.” (Para. 146)

Question 64

Term Directive [93/98/EEC, repealed by

2006/116/EC, amended by 2011/77/EU]:

Answer 64

Term Directive [93/98/EEC, repealed by
2006/116/EC, amended by 2011/77/EU]:

 Adopted after/in light of the EMI v. Patricia
case [Case C-341/87]:
 „Articles 30 and 36 of the Treaty must be interpreted as not
precluding the application of a Member State’s legislation
which allows a producer of sound recordings in that Member
State to rely on the exclusive rights to reproduce and distribute
certain musical works of which he is the owner in order to
prohibit the sale, in the territory of that Member State, of sound
recordings of the same musical works when those recordings are
imported from another Member State in which they were
lawfully marketed without the consent of the aforesaid owner or
his licensee and in which the producer of those recordings had
enjoyed protection which has in the mean time expired”
(Para. 14.)
 Implementation date was 1/7/95;

Basic policy:
 The Berne Convention and the Rome Convention „lay down only
minimum terms of protection of the rights they refer to, leaving
the Contracting States free to grant longer terms. Certain
Member States have exercised this entitlement. In addition, some
Member States have not yet become party to the Rome
Convention” (Recital 2);
 „There are consequently differences between the national
laws governing the terms of protection of copyright and related
rights, which are liable to impede the free movement of
goods and freedom to provide services and to distort
competition in the common market” (Recital 3);
 „The level of protection of copyright and related rights
should be high, since those rights are fundamental to
intellectual creation. Their protection ensures the maintenance
and development of creativity in the interest of authors, cultural
industries, consumers and society as a whole.” (Recital 11)

Authors/joint authors: pma 70 years [Art. 1(1)-(2)];
 Anonymous or pseudonymous works: 70 years from the
making available to the public [Art. 1(2)];
 Unpublished works: 70 years [Art. 1(6)];
 Cinematographic works: 70 years after the death of the
last surviving author (the principal director;
screenwriter; composer) [Art. 2];
 Performers: 50 years after the date of performance,
publication or communication to the public [Art. 3(1)];
 Producers of phonograms: 50 years after the date of
fixation, publication or communication to the public
[Art. 3(2)];
 Film producers: 50 years after the date of fixation,
publication or communication to the public [Art. 3(3)];

Broadcasting organizations: 50 years after the first
transmission of the broadcast [Art. 3(4)];
 Protection of previously unpublished works: 25 years after the
first lawful publication/communication to the public of public
domain materials [Art. 4];
 Critical and scientific publications: 30 years for public domain
works after the first lawful publication [Art. 5];
 Photographs: in accordance with Art. 1 [Art. 6.];
 Protection of vis-à-vis third countries: „the term of protection
shall expire on the date of expiry of the protection granted in
the country of origin of the work, but may not exceed the term
laid down in Article 1” („rule of the shorter term”) [Art. 7(1)];
 The term of protection of moral rights remains a domestic
issue [Art. 9].

Substantive protection of photographs:
 „A photographic work within the meaning of the Berne
Convention is to be considered original if it is the author’s own
intellectual creation reflecting his personality, no other
criteria such as merit or purpose being taken into account.”
(Recital 16)
 Painer v. Standard Verlags GmbH [Case C-145/10]:
 „In the preparation phase, the photographer can choose the
background, the subject’s pose and the lighting. When taking a
portrait photograph, he can choose the framing, the angle of view and
the atmosphere created. Finally, when selecting the snapshot, the
photographer may choose from a variety of developing techniques the
one he wishes to adopt or, where appropriate, use computer software.
By making those various choices, the author of a portrait photograph
can stamp the work created with his ‘personal touch’.” (Para. 91-92)

Revival of rights [Art. 10(2)-(3)]:
 the terms of protection shall apply to all works and
subject matter which were protected in at least one
Member State on 1/7/95;
 shall be without prejudice to any (lawful) acts of
exploitation performed before the above date;

Butterfly Music v. Carosello Edizioni Musicali e Discografiche
Srl (CEMED) [Case C-60/98]:
 „National legislation (…), which permits persons, who were
reproducing and marketing sound-recording media in
respect of which the rights of use had expired under the
previous legislation, to distribute those media for a limited
period from its entry into force, meets the requirements of the
Directive. First, such legislation satisfies the obligation imposed
on the Member States to adopt measures to protect acquired rights
of third parties. It is true that Law No 52/96, as amended, allowed
only a limited period of three months for the distribution of
sound-recording media. However, such a period may be considered
to be reasonable having regard to the objective pursued (…).
Second, such legislation, by limiting in that way the protection of
acquired rights of third parties with regard to the distribution of
sound-recording media, meets the need to circumscribe a provision
of that kind, which must necessarily be transitional in order not to
prevent the application of the new terms of protection of copyright
and related rights on the date laid down by the Directive, that
being the Directive’s principal objective. (Para. 26-28)

 Basic policy to amend the directive: performers deserve
higher level of protection (the 50 years term does not
provide adequate protection for their whole life) (Recital
4-5); the right of fixation shall be exercised by the
performer, should a producer fail to exercise that right
(Recital 8); performers sometimes transfer their rights
to producers in exchange of non-recurring remuneration
(Recital 9), consequently they deserve an annual
supplementary remuneration after the elapse of the
original 50 years of protection;
 Implementation date was 1/11/13;

 Musical compositions with words: 70 years after
the death of the last surviving author (author of
lyrics or composer) [new Art. 1(7)];
 Performers and phonogram producers: 70 years
of protection [new Art. 3(1)-(2)];
 Performers’ unwaivable right to terminate the transfer
or assignment of rights should the phonogram producer
fail to exercise these rights properly [new Art. 2a];
 Performers’ right to claim an annual supplementary
remuneration (20% of producers’ revenue) for uses
following the elapse of the original 50 years term, in
case the performers received a non-recurring
remuneration for the transfer/assignment of their rights
[new Art. 2b-c].

Question 65

Database Directive [96/9/EC]:

Answer 65

Database Directive [96/9/EC]:

 Adopted in light of the Green Paper 1988’s proposal;
implementation date was 1/1/98;
 Berne Convention: compilations of data is protected, as
long as the selection and arrangement of the content
shows originality [Art. 2(5)]; „sweat-of-the-brow”
does not suffice! [Similar provisions in TRIPS and WCT.]
 Basic policy: protection databases by Member States
showed differences, if there was any protection at all
(Recital 1); „such unharmonized intellectual property
rights can have the effect of preventing the free
movement of goods or services within the
Community” (Recital 4); „databases are a vital tool in
the development of an information market within
the Community” (Recital 9);

Database as compilation protected under copyright law:
 „a collection of independent works, data or other materials
arranged in a systematic or methodical way and
individually accessible by electronic or other means”
[Art. 1(2)];

Database as compilation protected under copyright law:
 Fixture Marketing v. OPAP [Case C-444/02]:
 „[C]lassification as a database is dependent (…) on the existence of a
collection of ‘independent’ materials, that is to say, materials which
are separable from one another without their informative,
literary, artistic, musical or other value being affected. On that
basis, a recording of an audiovisual, cinematographic, literary or musical
work as such does not fall within the scope of the directive (…).
Classification of a collection as a database then requires that the
independent materials making up that collection be systematically or
methodically arranged and individually accessible in one way or
another. While it is not necessary for the systematic or methodical
arrangement to be physically apparent (…) that condition implies that
the collection should be contained in a fixed base, of some sort, and
include technical means such as electronic, electromagnetic or electrooptical
processes (…) or other means, such as an index, a table of contents,
or a particular plan or method of classification, to allow the retrieval of
any independent material contained within it.” [Paras. 29-30.]

Database as compilation protected under copyright law:
 Freistaat Bayern v. Verlag Esterbauer [Case C-490/14]:
 “Article 1(2) of Directive 96/9 does not (…)
preclude [the ‘geographical coordinates
point’, that is to say, the numbered code
corresponding to a certain coordinates point
of the two-dimensional grid network and, on
the other, the ‘signature’, that is to say, the
numbered code used by the map producer to designate a unique
feature, such as a church] or a greater combination of
information, such as the geographical information about tracks
appropriate for cyclists, mountain bikers and inline skaters, from
being held to be ‘independent material’ within the meaning of that
provision, provided however that the extraction of that information
from the topographic map concerned does not affect the value of
their informative content as indicated in the case-law referred to in
paragraph 17 of this judgment.” (para. 21)

 „databases which, by reason of the selection or arrangement
of their contents, constitute the author’s own intellectual
creation shall be protected as such by copyright”
[Art. 3(1), Recital 15-16]

Database as compilation protected under copyright law:
 Football Dataco v. Yahoo! UK [Case C-604/10]:
 The „criterion of originality is satisfied when, through the
selection or arrangement of the data which it contains, its
author expresses his creative ability in an original
manner by making free and creative choices (…) and thus
stamps his ‘personal touch’. By contrast, that criterion is
not satisfied when the setting up of the database is
dictated by technical considerations, rules or
constraints which leave no room for creative freedom.”
(Para. 38-39)

 Football Dataco v. Yahoo! UK [Case C-604/10]:
 „[I]t is irrelevant for the purpose of assessing the eligibility
of the database for the copyright protection provided for by
Directive 96/9 whether or not that selection or
arrangement includes ‘adding important significance’
to that data (…). On the other hand, the fact that the
setting up of the database required, irrespective of the
creation of the data which it contains, significant labour
and skill of its author (…) cannot as such justify the
protection of it by copyright under Directive 96/9, if that
labour and that skill do not express any originality in the
selection or arrangement of that data.” (Para. 41-42)

Database as compilation protected under copyright law:
 Non-electronic databases are equally covered (Recital 14);
the form/carrier of the database is irrelevant [Recital 22;
Art. 1(1)];
 Protection does not extend to the content [Art. 3(2)];
 Author: the natural person, who created the work [Art. 4];
 Rights [Art. 5]:
 reproduction;
 translation, adaptation, arrangement, alteration;
 distribution;
 communication, display or performance to the public

Exceptions:
 exhaustion [Art. 5(c)], except to databases offered on-line as a
service (Recital 33);
 normal use by a lawful user [Art. 6(1)];
 private reproduction of non-electronic database [Art. 6(2)(a)];
 illustration for teaching/scientific research [Art. 6(2)(b)];
 public security, administrative/judicial procedure [Art. 6(2)(c)];
 „grandfather clause” [Art. 6(2)(d)];
 three-step test applies [Art. 6(3)];
 Term: in accordance with the Term Directive.

Sui generis right for the makers of databases:
 „Right for the maker of a database which shows that there
has been qualitatively and/or quantitatively a substantial
investment in either the obtaining, verification or
presentation of the contents to prevent extraction and/or reutilization
of the whole or of a substantial part, evaluated
qualitatively and/or quantitatively, of the contents of that
database” [Art. 7(1)];
 Elements:
 (1) qualitatively and/or quantitatively substantial investment;
 (2) obtaining, verification or presentation of the contents;
 (3) right to prevent extraction and/or re-utilization.

Sui generis right for the makers of databases:
 British Horseracing Board Ltd. v. William Hill
Organisation Ltd. [Case C-203/02]:
 substantial part, evaluated quantitatively: „the volume of
data extracted from the database and/or re-utilised, and must
be assessed in relation to the volume of the contents of the
whole of that database” (Para. 70);
 substantial part, evaluated qualitatively: „the scale of the
investment in the obtaining, verification or presentation of the
contents of the subject of the act of extraction and/or reutilisation,
regardless of whether that subject represents a
quantitatively substantial part of the general contents of the
protected database” (Para. 71);
 insubstantial part of a database: any part which does not
fulfill the definition of a substantial part, evaluated both
quantitatively and qualitatively (Para. 73).

Sui generis right for the makers of databases:
 British Horseracing Board Ltd. v. William Hill
Organisation Ltd. [Case C-203/02]:
 „The expression ‘investment in … the obtaining … of the
contents’ of a database refer[s] to the resources used to
seek out existing independent materials and collect
them in the database, and not to the resources used
for the creation as such of independent materials.
The purpose of the protection by the sui generis right (…)
is to promote the establishment of storage and processing
systems for existing information and not the creation of
materials capable of being collected subsequently in a
database.” (Para. 31)

Sui generis right for the makers of databases:
 „Extraction”: the permanent or temporary transfer of all or
a substantial part of the contents of a database to another
medium by any means or in any form;
 „Re-utilization”: any form of making available to the
public all or a substantial part of the contents of a database
by the distribution of copies, by renting, by on-line or other
forms of transmission. [Art. 7(2)(a)-(b)

Sui generis right for the makers of databases:
 British Horseracing Board Ltd. v. William Hill
Organisation Ltd. [Case C-203/02]:
 „The use of expressions such as ‘by any means or in any
form’ and ‘any form of making available to the public’
indicates that the Community legislature intended to give
the concepts of extraction and re-utilisation a wide
definition. In the light of the objective pursued by the
directive, those terms must therefore be interpreted as
referring to any act of appropriating and making
available to the public, without the consent of the maker
of the database, the results of his investment, thus
depriving him of revenue which should have enabled him
to redeem the cost of the investment.” (Para. 51)

Sui generis right for the makers of databases:
 Directmedia v. Albert Ludwigs-Universität Freiburg
[Case C-304/07]:
 „the transfer of material from a protected database to
another database following an on-screen consultation of
the first database and an individual assessment of
the material contained in that first database is capable of
constituting an ‘extraction’ (…) to the extent that (…) that
operation amounts to the transfer of a substantial part,
evaluated qualitatively or quantitatively, of the contents of
the protected database, or to transfers of insubstantial
parts which, by their repeated or systematic nature, would
have resulted in the reconstruction of a substantial part of
those contents.” (Para. 60.)

Sui generis right for the makers of databases:
 Innoweb v. Wegener ICT Media [Case C-202/12]:
 „the concept of ‘re-utilisation’ (…) must be construed as
referring to any act of making available to the
public, without the consent of the database maker,
the results of his investment, thus depriving him of
revenue which should have enabled him to redeem
the cost of the investment. (…) The nature and form
of the process used are of no relevance in this respect.”
(Para. 60.)

Sui generis right for the makers of databases:
 Beneficiaries: nationals of any member state of who have
their habitual residence (registered office) in a member state
[Art. 11(1)-(2)];
 Sui generis right applies irrespectively of the question of
originality of the database or the protectability of the content
of the database [Art. 7(4)];

Sui generis right for the makers of databases:
 „The repeated and systematic extraction and/or reutilization
of insubstantial parts of the contents of the
database implying acts which conflict with a normal
exploitation of that database or which unreasonably
prejudice the legitimate interests of the maker of the
database shall not be permitted.” [Art. 7(5)] = THREESTEP
TEST.

Sui generis right for the makers of databases:
 Exceptions:
 normal use (extraction/re-utilization) of insubstantial parts of
the database by a lawful user [Art. 8(1)]; three-step-test
applies [Art. 8(2)];
 Private reproduction of non-electronic database [Art. 9(a)];
 Illustration for teaching/scientific research [Art. 9(b)];
 Public security, administrative/judicial procedure [Art. 9(c)];
 Term: 15 years from the completion of the database [Art.
10(1)]; renewal of term after any substantial changes to
the content of the database [Art. 10(3)] = perpetual
protection?

Sui generis right for the makers of databases:
 „In 2002, the World Intellectual Property Organization
(WIPO) published a study identifying five concerns with
the sui generis approach to database protection: that it
could remove information from the public domain; create
perpetual monopolies; harm the free flow of information;
stifle the development of software and information
systems; and hamper access to intellectual property in the
developing world.”

Question 66

Resale Right (Droit de Suite) Royalty Directive
[2001/84/EC]:

Answer 66

Resale Right (Droit de Suite) Royalty Directive
[2001/84/EC]:

 Implementation date was 1/1/06; transitional period for countries
that did not regulate the droit de suite before: 1/1/10;
 Basic source: Berne Convention’s facultative rule on resale royalty
right (Art 14ter) [French origins];
 Basic policy: „redress the balance
between the economic situation of
authors of graphic and plastic works
of art and that of other creators who
benefit from successive exploitations
of their works” (Recital 3-4); differing
domestic regulations have „a significant impact on the
competitive environment within the internal market” (Recital
9-10) and „lead to unequal treatment between artists” (Recital
14);

Authors of original works of art are granted an inalienable right
that applies after the first sale of the work of art, where the
resale involves sellers, buyers or intermediaries art market
professionals, and where the original sale occurred more than
three years before the resale and involved a minimum of 10.000€
purchase price [Art. 1(1)-(4)];
 Original work of art: „works of graphic or plastic art such as
pictures, collages, paintings, drawings, engravings, prints,
lithographs, sculptures, tapestries, ceramics, glassware and
photographs, provided they are made by the artist himself or are
copies considered to be original works of art” [Art. 2(1)];
 Beneficiaries: nationals of Member States + reciprocal protection
of foreigners (Recital 29, Art. 6-7 – compare to Art. 14bis of Berne
Convention: optional rule!);

Threshold: set by Member States, minimum 3.000€ [Art. 3(1)-(2)];
 Tapering scale of rates [Art. 4(1) and (3)]:
 „(a) 4 % for the portion of the sale price up to EUR 50000;
 (b) 3 % for the portion of the sale price from EUR 50000,01 to EUR 200000;
 (c) 1 % for the portion of the sale price from EUR 200000,01 to EUR 350000;
 (d) 0,5 % for the portion of the sale price from EUR 350000,01 to EUR
500000;
 (e) 0,25 % for the portion of the sale price exceeding EUR 500000.
 However, the total amount of the royalty may not exceed EUR 12500.”
 „If the minimum sale price set should be lower than EUR 3000, the Member
State shall also determine the rate applicable to the portion of the sale price
up to EUR 3000; this rate may not be lower than 4 %.”
 Calculation basis: sale price, net of tax.
 Term of protection: equals with the general copyright term (Art. 8).

 Resale Right (Droit de Suite) Royalty Directive
[2001/84/EC]:
 Dali case [VEGAP v. ADAGP and Others] [Case C-518/08]:
 Is the resale right royalty due to the heirs of Dali or a foundation as
legatee trusted by the painter to manage his rights?
 No guidance by the Directive on the concept of
„those entitled” as provided by Art. 6(1) (para. 26);
 Main purposes of the directive:
 (1) ensure that authors share in the benefits of the
economic success of their works;
 (2) put an end to the distortions of competition law
(para. 27);
 Solutions:
 (1) inalienable and unwaivable remuneration granted to authors;
 (2) harmonization concerning works of art and sales affected by the
resale right as well as the basis for and rate of the royalty (para. 28-
30);

Resale Right (Droit de Suite) Royalty Directive
[2001/84/EC]:
 Dali case [VEGAP v. ADAGP and Others] [Case C-518/08]:
 Apart from the above harmonization „as is apparent
from recitals 13 and 15 in the preamble to that
directive, there is no need to eliminate differences
between national laws which cannot be expected to
affect the functioning of the internal market and, in
order to leave as much scope for national decision as
possible, it is sufficient to limit the harmonisation
exercise to those domestic provisions that have the
most direct impact on the functioning of the internal
market.” (Para. 31);
 „[I]t is permissible for Member States to make
their own legislative choice in determining the
categories of persons capable of benefiting from the resale right
after the death of the author of a work of art.” (Para. 33)

Christie’s v. SNA [Case C-41/14]:
 Who shall pay the resale royalty?
 „States must be considered responsible for
ensuring that such a royalty is actually paid”
(…) „if such a level of protection is to be ensured, that indeed
presupposes that it is the Member States alone which should designate,
in their law, the person by whom the royalty is payable” (para. 18 and
20);
 the Directive „is silent about the identity of the person who
must definitively bear the cost of the royalty due to the author in
respect of the resale right” (para. 27);
 „it is necessary that provision be made as to the person liable for
payment of the royalty vis-à-vis the author and as to the rules for
establishing the amount of the royalty. However, such provision is not
necessary with regard to the question as to who, definitively, will bear
the cost of the royalty.” (para. 30)

Christie’s v. SNA [Case C-41/14]:
 Who shall pay the resale royalty?
 „(…) the last-mentioned question may to some
extent have a distorting effect on the functioning
of the internal market. However, such an effect is, in any event, only
indirect, since it arises as a result of contractual arrangements that are
independent of the payment of the royalty to the author, for which the
person by whom the royalty is payable remains liable. Consequently, in a
situation where a Member State adopts legislation which provides that the
seller or an art market professional involved in the transaction is to be the
person by whom the royalty is payable, Directive 2001/84 does not
preclude those persons from agreeing, on the occasion of a resale, with any
other person, including the buyer, that that other person will
definitively bear the cost of the resale royalty due to the author,
provided that a contractual arrangement of that kind does not affect the
obligations and liability which the person by whom the royalty is payable
has towards the author.” (Para. 31-32)

Question 67

InfoSoc Directive [2001/29/EC]:

Answer 67

InfoSoc Directive [2001/29/EC]:

 Adopted after a lengthy preparation (Green Paper 1988
already noted the importance of the harmonization of
substantive rights); implementation date was 22/12/02;
 Basic policy: implement the four freedoms of the internal
market and balance between fundamental rights (Recital
1, 3, 6-7, 31); foster the development and compliance with
the information society (Recital 2, 5, 8); high level of
protection (broad definition of rights and tight
interpretation of limitations and exceptions) (Recital 4, 9,
21-24); implement WCT/WPPT (Recital 15);
 Content:
 Scope: „without prejudice” to the preexisting directives;
 Horizontal legislation: rights (except moral rights; compare to
Recital 19), including TPM and RMI, limitations & exceptions,
law enforcement.

InfoSoc Directive [2001/29/EC]:
 Exclusive rights:
 Direct or indirect, temporary or permanent
reproduction by any means and in any
form, in whole or in part (Art. 2.):
 (a) for authors, of their works;
 (b) for performers, of fixations of their
performances;
 (c) for phonogram producers, of their phonograms;
 (d) for the producers of the first fixations of films, in respect of
the original and copies of their films;
 (e) for broadcasting organisations, of fixations of their
broadcasts, whether those broadcasts are transmitted by wire
or over the air, including by cable or satellite.

Exclusive rights: right of reproduction
 FAPL v. QC Leisure [Joined Cases C-403/08 and
429/08]:
 „various parts of a work enjoy protection under that
provision, provided that they contain elements which are
the expression of the intellectual creation of the
author of the work (…) The unit composed of the fragments
reproduced simultaneously – and therefore existing at a
given moment – should be examined in order to determine
whether it contains such elements. If it does, it must be
classified as partial reproduction.” (para. 156)

Exclusive rights: right of reproduction
Martin Luksan v. Petrus van der Let [Case C-277/10]:
 Who shall exploit the rights over a cinematographic work?
 EU law allows for the principal director to exploit those rights;
 Berne Convention Art. 14bis authorizes (but not obliges)
signatories to grant those rights to the producer of the work
alone;
 „Accordingly, the question arises whether the provisions of
Directives 93/83 and 2001/29 (…) must be interpreted, in the
light of Article 1(4) of the WIPO Copyright Treaty, as meaning
that a Member State may in its national legislation, on the
basis of Article 14bis of the Berne Convention and in reliance
upon the power which that convention article is said to accord to
it, deny the principal director the rights to exploit a
cinematographic work that are at issue in the main
proceedings.” (Para. 60)

Exclusive rights: right of reproduction
Martin Luksan v. Petrus van der Let [Case C-277/10]:
 Who shall exploit the rights over a cinematographic work?
 „when such an agreement allows, but does not require, a
Member State to adopt a measure which appears to be contrary to
European Union law, the Member State must refrain from
adopting such a measure. (…) [T]he Member State concerned
cannot rely on that agreement in order to exempt itself from the
obligations that have arisen subsequently from European Union
law. In providing that the principal director of a cinematographic
work is to be considered its author or one of its authors, the
European Union legislature exercised the competence of the
European Union in the field of intellectual property. In those
circumstances, the Member States are no longer competent to
adopt provisions compromising that European Union
legislation. Accordingly, they can no longer rely on the power
granted by Article 14bis of the Berne Convention.” (Para. 62-64)

Exclusive rights: right of reproduction
 Soulier and Doke [Case C-301/15]:
 Is the French „out-of-commerce” (OOC) regulation in line
with the InfoSoc-Directive?
 French Law: the commercial reproduction, distribution and
communication to the public of OOC books published before
2001 might be authorized by a collective rights management
association;
 original rightholders might object against re-publication
before authorization or any time after publication = opt-out.

Exclusive rights: right of reproduction
 Soulier and Doke [Case C-301/15]:
 Is the French „out-of-commerce” (OOC) regulation in line
with the InfoSoc-Directive? AG Wathelet: NO.
 Prior express consent of the author to the use of the book
is an essential prerogative. (Irrespectively of the fact that
the author might object against the use and that the author
is remunerated for the use.)
 French CRM runs counter to exclusive rights of authors:
prior permission of authors to manage copyrights is
required.

COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights:
 Communication to the public and making
available to the public for authors [Art. 3(1)];
 Making available to the public [Art. 3(2)]:
 (a) for performers, of fixations of their performances;
 (b) for phonogram producers, of their phonograms;
 (c) for the producers of the first fixations of films, of the original
and copies of their films;
 (d) for broadcasting organisations, of fixations of their broadcasts,
whether these broadcasts are transmitted by wire or over the air,
including by cable or satellite.
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 SGAE v. Rafael Hoteles [Case C-306/05]:
 the directive does not define the meaning
of „communication to the public” (Para. 33);
 interpretation: meaning, context, objectives
+ international obligations = broad meaning! (Para. 34-
36);
 public = „indeterminate number of potential television
viewers” + „successive publicity” in hotel rooms (Para. 37-
38);
 the communication was made by a broadcasting
organization other than the original one = communication
was made to a „new public” (Para. 40-42) [correct
interpretation? – compare to Svensson case];
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 SGAE v. Rafael Hoteles [Case C-306/05]:
 „it is not decisive (…) that costumers who
have not switched on the television have
not actually had access to the works”
(Para. 43) + „while the mere provision of physical facilities
(…) does not constitute, as such, a communication within
the meaning of Directive 2001/29, the installation of such
facilities may nevertheless make public access to broadcast
works technically possible” (Para. 46);
 „additional service performed with the aim of obtaining
some benefit” (Para. 44) [correct interpretation? – compare to
TVCatchup and Del Corso cases];
 „the private or public nature of the place where the
communication takes place is immaterial” (Para. 50).
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 FAPL v. QC Leisure [Joined Cases C-403/08 and 429/08]:
 „the proprietor of a public house effects a communication
when he intentionally transmits broadcast works, via a
television screen and speakers, to the customers present in
that establishment” (Para. 196);
 Circul Globus Bucuresti [Case C-283/10]:
 Art. 3(1) of the Directive 2001/29 refers „only to
communication to a public which is not present at the
place where the communication originates, to the
exclusion of any communication of a work which is carried out
directly in a place open to the public using any means of public
performance or direct presentation of the work” (Para. 41);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 OSA case [Case C-351/12]:
 the exclusion of authors’ exclusive right to authorize
communication to the public of works via television / radio sets
in rooms of clients of SPAs is against the directive.
 Sociedade Portuguesa de Autores CRL v. Ministério Público
[Case C-151/15]:
 the playing by a bar of radio broadcasts to its costumers
means communication to the public.
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 ITV Broadcasting v. TVCathup [Case C-607/11]:
 „the transmission of works included in a terrestrial broadcast
and the making available of those works over the internet (…)
must be authorised individually and separately by the authors
concerned given that each is made under specific
technical conditions, using a different means of
transmission for the protected works, and each is
intended for a public.” (Para. 39) [Compare to Svensson!];
 „a profit-making nature does not determine conclusively
whether a retransmission, such as that at issue in the main
proceedings, is to be categorised as a ‘communication’ within
the meaning of Article 3(1) of Directive 2001/29” (Para. 43).
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 REHA Training v. GEMA [Case C-117/15]:
 The concept of „communication to the public” regulated by
Rental/Related Rights Directive & InfoSoc Directive shall be
assessed in accordance with the same criteria:
 act of communication: „any transmission of the protected works,
irrespective of the technical means or process used” + „every
transmission or retransmission of a work which uses a specific
technical means must, as a rule, be individually authorised by
the author of the work in question” (para. 38-39);
 public: „indeterminate number of potential recipients and
implies, moreover, a fairly large number of persons” (para. 41);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 REHA Training v. GEMA [Case C-117/15]:
 The concept of „communication to the public” regulated by
Rental/Related Rights Directive & InfoSoc Directive shall be
assessed in accordance with the same criteria:
 new public: „the operators of a café-restaurant, a hotel or a spa
establishment are such users and make a communication to the
public if they intentionally broadcast protected works to their
clientele, by intentionally distributing a signal by means of
television or radio sets that they have installed in their
establishment” (para. 47);
 the for-profit nature „does not determine conclusively whether a
transmission is to be categorised as a ‘communication to the
public’ (…), it is not however irrelevant” (para. 49.)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 Svensson v. Retriever Sverige AB [Case C-466/12]:
 Is linking communication to the public? Is it decisive that
the source material is publicly accessible?
 Transmission shall be interpreted broadly and takes place if
members of the community have the ability to access the
transmitted content. Linking is therefore a way of
transmission.
 Transmission to the public needs to target a new audience. If
the content behind the link is publicly accessible, transmission of
a link to the subscribers does not reach a new audience.
 Should linking lead to the circumvention of any
DRM/TPM, it leads to an infringement as well, since the
audience targeted by the secondary service provider is new.
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 BestWater International v. Mebes & Potsch
(Case C-348/13):
 ∏: involved in water filtration business; producer of a
two minutes long advertisement;
 ∆: retailers of a competing company’s system; embedded
plaintiff’s video from YouTube on their own website.
 Transmission to the public needs to target a new
audience (compare to the Svensson ruling) and needs
to be done with a technology that is different from the
original method of transmission (compare to
TVCatchup).
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 GS Media v. Sanoma Media (Case C-160/15):
 Does hyperlinking to protected subject matter which has
been made available to the public without the authorization
of the rightholder constitute communication to the public? Is
it important whether the ‘hyperlinker’ is or ought to be
aware of the lack of consent by the rightholder for the
placement of the work on the third party’s website?
 NOT FOR PROFIT USE: not infringement, if the hyperlinker
„does not know and cannot reasonably know,
that that work had been published on the
internet without the consent of the
copyright holder.” (para. 47)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: communication to the public
 GS Media v. Sanoma Media (Case C-160/15):
 Does hyperlinking to protected subject matter which has
been made available to the public without the authorization
of the rightholder constitute communication to the public? Is
it important whether the ‘hyperlinker’ is or ought to be
aware of the lack of consent by the rightholder for the
placement of the work on the third party’s website?
 FOR-PROFIT USE: „it can be expected that the person who
posted such a link carries out the necessary checks to ensure
that the work concerned is not illegally published on the
website to which those hyperlinks lead, so that it must be
presumed that that posting has occurred with the full
knowledge of the protected nature of that work and the
possible lack of consent to publication on the internet by the
copyright holder.” (para. 51)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights:
 Distribution right for authors [Art. 4(1)];
 Principle of exhaustion [Art. 4(2)]: general principle!
 services are excluded (rental, lending, leasing, display,
performance, transmission, broadcasting, making available to
the public);
 EEC-wide exhaustion: a lawful sale within the EEC
boundaries exhaust the distribution right, but a first sale
outside of the boundaries of the EEC does not lead to
exhaustion;
 tangible copies;
 droit de suite is a limit to the application of the doctrine.
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: right of distribution
 Peek & Cloppenburg v. Cassina
(„Le Corbusier”) [Case C-456/06]:
 the right of distribution shall be
interpreted in accordance with the
rules of WCT/WPPT (Para. 29-32);
 distribution entails a transfer of ownership (Para. 33);
 „the information provided by the referring court shows that
that clearly does not apply to the acts at issue in the main
proceedings” (Para. 36);
 „it is not for the Court to create, for authors’ benefit, new rights
which have not been provided for by Directive 2001/29 and by
so doing to widen the scope of the concept of distribution of the
original of a work or a copy thereof beyond that envisaged by
the Community legislature” (Para. 38).
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: right of distribution
 Blomquist v. Rolex [Case C-98/13]:
 „European Union law requires that the sale be considered, in
the territory of a Member State, to be a form of distribution to
the public within the meaning of the copyright directive (…).
Such distribution to the public must be considered proven
where a contract of sale and dispatch has been
concluded” (Para. 29);
 „goods coming from a non-member State which are (…) copies
of goods protected in the European Union by copyright (…) can
be classified as (…) ‘pirated goods’ where it is proven that
they are intended to be put on sale in the European
Union, such proof being provided, inter alia, where it turns
out that the goods have been sold to a costumer in the
European Union or offered for sale or advertised to costumers
in the European Union” (Para. 33);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: right of distribution
 Blomquist v. Rolex [Case C-98/13]:
 „the mere fact that the sale was made from an online sales
website in a non-member country cannot have the effect
of depriving the holder of an intellectual property right
over the goods which were the subject of sale of the protection
afforded by the customs regulation, without it being necessary
to verify whether such goods were, in addition, prior to that
sale, the subject of an offer for sale or advertising targeting
European Union consumers.” (Para. 34)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: right of distribution
 Dimensione Direct Sales v. Knoll International SpA
(Case C-516/13)
 „an infringement of the distribution right can be
observed where consumers located in the territory of
the Member State in which that work is protected are
invited, by targeted
advertising, to acquire
ownership of the original
or a copy of that work.”
(para. 33)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: principle of exhaustion
 Laserdisken v. Kulturministeriet
[Case C-479/04]:
 „it follows from the clear wording of Article 4(2) of Directive
2001/29, in conjunction with the twenty-eighth recital in the
preamble to that directive, that the provision does not leave it
open to the Member States to provide for a rule of exhaustion
other than the Community-wide exhaustion rule” (Para. 24);
 „this, moreover, is the only interpretation which is fully
consistent with the purpose of Directive 2001/29 which,
according to the first recital in the preamble thereto, is to
ensure the functioning of the internal market. A situation in
which some Member States will be able to provide for
international exhaustion of distribution rights will inevitably
give rise to barriers to the free movement of goods and the
freedom to provide services” (Para. 26);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Exclusive rights: principle of exhaustion
 Art & Allposters International
(Case C-419/13)
 „[A] replacement of the medium (…) results in the
creation of a new object incorporating the image of the
protected work, whereas the poster itself ceases to exist.
Such an alteration of the copy
of the protected work (…) is
actually sufficient to constitute
a new reproduction of the work
(…), which is covered by the
exclusive right of the author
and requires his authorization.”
(para. 43)
COPYRIGHT LAW OF THE EUROPEAN UNION
 Is an e-book a good or a service?
 European Commission v. France [Case C-479/13]:
 “The supply of electronic books is an ‘electronically
supplied service’ within the meaning of the second
subparagraph of Article 98(2). First, under Article
24(1) of the VAT Directive, a ‘supply of services’
means any transaction which does not constitute
a supply of goods, whereas, under Article 14(1) of
that directive, a ‘supply of goods’ means the
transfer of the right to dispose of tangible
property as owner. Contrary to what the French
Republic argues, the supply of electronic books
cannot be regarded as a ‘supply of goods’ within the meaning of that provision, since
an electronic book cannot qualify as tangible property. (…) The physical support
enabling an electronic book to be read, which could qualify as ‘tangible property’, is
not part of that supply. (…) Second, according to Article 7(1) of Implementing
Regulation No 282/2011, electronically supplied services, within the meaning of
the VAT Directive, are to include ‘services which are delivered over the
Internet or an electronic network and the nature of which renders their
supply essentially automated and involving minimal human intervention,
and impossible to ensure in the absence of information technology’. The
supply of electronic books clearly meets that definition.” (Para. 34-36.)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions:
 Exhaustive list of L&Es (Recital 32);
 But what is a limitation and what is an exception?
Confusing, shady answers from the CJEU:
 „that exclusive right may, depending on the circumstances, be
either, as an exception, totally excluded, or merely limited. It is
conceivable that such a limitation may include, depending on
the particular situations that it governs, in part an exclusion, a
restriction, or even the retention of that right.” (Kyocera case,
para. 34)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions:
 Compulsory L&E: temporary acts of reproduction:
 Cumulative conditions:
(1) transient or incidental,
(2) integral and essential part of a technological
process,
(3) sole purpose is to enable:
 (a) a transmission in a network between third parties by
an intermediary, or
 (b) a lawful use
of a work or other subject-matter to be made,
(4) no independent economic significance. [Art. 5(1)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: temporary acts of reproduction:
 Infopaq International A/S v. Danske Dagblades Forening
[Case C-5/08 – Infopaq I]:
 Data capture process (para. 16-24):
 relevant publications are registered manually by Infopaq employees;
 publications are scanned and formatted into TIFF („tagged image
file format”); TIFF files are transferred to an OCR („optical character
recognition”) server;
 the OCR server translates the TIFF file into data that can be
processed digitally; the OCR process is completed by deleting the
TIFF file;
 the text file is processed to find a search word; after matches data is
generated (publication, section, page number + value [0-100]); five
words before and after the search term are captured; finally the text
file is deleted;
 cover sheet is printed out in respect of all the pages where the
relevant search word was found.
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: temporary acts of reproduction:
 Infopaq International A/S v. Danske Dagblades Forening
[Case C-5/08 – Infopaq I]:
 originality is the prerequisite to copyright protection under
the Software Directive [Art. 1(3)]; Database Directive [Art. 3(1)]
and Copyright Term Directive [Art. 6] (para. 35);
 consequently the same applies to the InfoSoc Directive
(para. 36-37); [really?]
 parts of the whole work deserve the same level of protection
as long as they evidence originality (para. 38-39);
 11 consecutive words constitutes reproduction in part, if the
extract contains an element of the work which expresses the
author’s own intellectual creation; it is for the national
court to make this determination (para. 48);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: temporary acts of reproduction:
 Infopaq International A/S v. Danske Dagblades Forening
[Case C-5/08 – Infopaq I]:
 „the temporary and transient act of reproduction is integral, if
it is intended to enable the completion of a technological process
of which it forms an integral and essential part” (para. 61);
 the act of reproduction is transient, „if its duration is limited
to what is necessary for the proper completion of the
technological process, and the process deletes the act
automatically , without human intervention, once its function of
enabling the completion of such a process has come to an end”
(para. 64);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: temporary acts of reproduction:
 Infopaq International A/S v. Danske Dagblades Forening
[Case C-302/10 – Infopaq II]:
 „the temporary acts of reproduction to be carried out entirely in
the context of the implementation of the technological process”
(Para. 30-32);
 „the technological process in question could not function correctly
and efficiently without the acts of reproduction concerned. That
technological process aims at identifying predefined key words in
newspaper articles and extracting them on a digital medium.
Such electronic research thus requires a transformation of those
articles, from a paper-based medium, into digital data, since that
transformation is necessary in order to recognise that data, to
identify the key words and to extract those key words.” (Para. 37)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: temporary acts of reproduction:
 Infopaq International A/S v. Danske Dagblades Forening
[Case C-302/10 – Infopaq II]:
 „a use should be considered lawful where it is authorised by the
right holder or where it is not restricted by the applicable
legislation” (Para. 42);
 „it is not disputed that the drafting of a summary of
newspaper articles is not, in the present case, authorised by the
holders of the copyright over these articles. However, it should be
noted that such an activity is not restricted by European
Union legislation. Furthermore, it is apparent from the
statements of both Infopaq and the DDF that the drafting of that
summary is not an activity which is restricted by Danish
legislation. In those circumstances, that use cannot be considered
to be unlawful.” (Para. 44-45);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: temporary acts of reproduction:
 Infopaq International A/S v. Danske Dagblades Forening
[Case C-302/10 – Infopaq II]:
 „the economic advantage derived from their implementation
must not be either distinct or separable from the economic
advantage derived from the lawful use of the work
concerned and it must not generate an additional
economic advantage going beyond that derived from that
use of the protected work. The efficiency gains resulting from
the implementation of the acts of temporary reproduction, such
as those in issue in the main proceedings, have no such
independent economic significance, inasmuch as the economic
advantages derived from their application only materialise
during the use of the reproduced subject matter, so that they are
neither distinct nor separable from the advantages derived from
its use.” (Para 50-51)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: temporary acts of reproduction:
 Infopaq International A/S v. Danske Dagblades Forening
[Case C-302/10 – Infopaq II]:
 „(…) an advantage derived from an act of temporary
reproduction is distinct and separable if the author of that
act is likely to make a profit due to the economic
exploitation of the temporary reproductions
themselves. The same is true if the acts of temporary
reproduction lead to a change in the subject matter
reproduced, as it exists when the technological process
concerned is initiated, because those acts no longer aim to
facilitate its use, but the use of a different subject matter.”
(Para. 52-53)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions:
 Optional L&Es:
 In respect of the right of reproduction [Art. 5(2)a)-e)]:
 Reprography (paper or any similar medium);
 Private copying on any medium (except paper);
 Reproduction by libraries;
 Ephemeral recordings by broadcasting organizations;
 Reproduction of broadcasts made by social institutions;
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 Padawan v. SGAE [Case C-467/08]
 Stichting de Thuiskopie v. Opus [Case C-462/09]
 Amazon.com [Case C-521/11]
 ACI Adam v. Stichting de Thuiskopie [Case C-435/12]
 Copydan Båndkopi v. Nokia [Case C-463/12]
 EGEDA [Case C-470/14]
 Nokia Italia and Others [Case C-110/15]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 Fair compensation: autonomous concept of the
European Union law which must be interpreted
uniformly. [Padawan, para. (37)]
 Notion and level of fair compensation are linked to
the harm resulting from the reproduction for
private use of the protected work without the author’s
authorization. [Padawan, para. (40)-(42)]
 The final user must be regarded responsible for
paying the fair compensation [Padawan, para. (45) +
Opus, para. (29)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 Practical difficulties to identify the final user and the
harm which may arise from each private use may be
minimal  fair compensation might be chargeable
to those who have the digital reproduction
equipment, devices and media and who make that
equipment available to private users or who
provide copying services for them; they are able to
pass on the amount of that levy in the price paid by the
final user for that service [Padawan, para. (46)-(48) +
Opus, para. (29)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 Indiscriminate application of the private copying
levy to all types of digital reproduction media,
including those that are acquired by persons other than
natural persons for purposes clearly unrelated to private
copying does not comply with the Directive.
[Padawan, para. (52)-(53)]  This distinction shall be
respected even if the fair compensation is financed from
the General State Budget, unless there is a definite
allocation of revenues. [EGEDA, para. (39)-(41)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 The fact that devices are able to make copies is
sufficient in itself to justify the application of the
private copying levy [Padawan, para. (56)-(57)]  It is
irrelevant whether a medium is unifunctional or
multifunctional or whether the copying function is
ancillary to other functions, however, those features may
affect the amount of fair compensation payable.
[Copydan, para. (26)-(41)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 Member States have an obligation to achieve a certain
result and they must guarantee the effective recovery of
fair compensation [Opus, para. (34)]  Even in the case of
distance selling agreements where the seller is established
in another Member State as the final users [Opus, para.
(40)], the fact that the levy has already been paid in one
Member State cannot be relied on to exclude the payment in
the other Member State. [Amazon.com, para. (64)] 
However, indiscriminate application of private
copying levy together with a right to
reimbursement (effective and does not make excessively
difficult to repay the levy paid) is consistent with the
directive. [Amazon.com, para. (31)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 It is discriminative…
 to apply an exemption solely to those professional users who
are registered with the organisation responsible for
administering the private copying levy; [Copydan, para. (51)]
 if a legislation does not contain any generally applicable
provision exempting from payment of the private copying levy
producers and importers who show that the devices and media
were acquired by persons other than natural persons, for
purposes clearly unrelated to private copying; [Nokia Italia,
para. (47)]
 if the right to reimbursement is not open to natural persons,
even where they acquire devices and media for purposes
clearly unrelated to private copying. [Nokia Italia, para. (55)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: private copying
 Extensive case law from the CJEU:
 Use of private copying levy by the means of cultural
and social establishments complies with the
Directive if those establishments actually benefits the
rightholders entitled to private copying levy and the
operation of those establishments is not discriminatory.
[Amazon.com, para. (53)]
 Copying from unlawful source does not comply with
the Directive. [ACI Adam, para. (31)-(37)]
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: reprography
 Kyocera et al. v. VG Wort [Joined Cases C-457/11 to
C-460/11]:
 „all non-analogue mediums of reproduction, namely, in
particular, digital mediums, must be excluded from the scope of
Article 5(2)(a) of Directive 2001/29, since (…) in order to be similar
to paper as a medium for reproduction, a substrate must be
capable of bearing a physical representation capable of
perception by human senses. Next, as regards the means by
which a reproduction on paper or similar support may be made,
the wording of Article 5(2)(a) of Directive 2001/29 refers not only
to photographic technique but also to ‘some other process
having similar effects’, namely any other means allowing for a
similar result to that obtained by a photographic technique to be
achieved, that is to say the analogue representation of a protected
work or other subject-matter.” (Para. 67-68)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: reprography
 Kyocera et al. v. VG Wort [Joined Cases C-457/11 to
C-460/11]:
 Scanning is a process having similar effects to
photocopying, capable to result in a reproduction on
paper (via a PC and a printer);
 „As long as that result is ensured, the number of operations
or the nature of the technique or techniques used during
the reproduction process at issue does not matter, on
condition, however, that the various elements or nonautonomous
stages of that single process act or are carried
out under the control of the same person and are all
intended to reproduce the protected work or other subjectmatter
on paper or a similar medium.” (Para. 70)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: reprography
 Kyocera et al. v. VG Wort [Joined Cases C-457/11 to
C-460/11]:
 Who should pay the fair compensation?

„the person who has caused the harm, namely the person
who makes a copy of the protected work without seeking
prior authorisation from the rightholder, to make good the
harm suffered by financing the compensation which will be
paid to the rightholder.” (Para. 75)
 „Member States are free, given the practical difficulties
encountered, to put in place, where appropriate, a levy
chargeable to the persons in possession of the equipment on
which the reproduction has been made.” (Para. 77)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: reprography
 Kyocera et al. v. VG Wort [Joined Cases C-457/11 to
C-460/11]:
 „Where the reproductions at issue have been made by means of a
single process, with the use of a chain of devices, it is likewise
open to the Member States to go back to the stages before the
copying stage and put in place, where appropriate, a system in
which fair compensation is paid by the persons in possession of a
device forming part of that chain which contributes to that
process in a non-autonomous manner, in so far as those persons
have the possibility of passing on the cost of the levy to their
customers. Nevertheless, the overall amount of fair
compensation owed as recompense for the harm suffered
by the rightholders at the end of that single process must
not be substantially different from the amount fixed for a
reproduction obtained by means of a single device.”
(Para. 78)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: fair compensation is
 due under: Art. 5(2) a)-b) and e);
 „the Member States may provide for fair compensation
for rightholders also when applying the optional
provisions on exceptions or limitations which do not
require such compensation.” (Recital 36);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: fair compensation
 ACI Adam v. Stichting de Thuiskopie [Case C-435/12]:
 Whether the fair compensation is due, if the private copy
was made of an illegal source?
 „A private copying levy system (…) which does not, as regards the
calculation of the fair compensation payable to its recipients, distinguish
the situation in which the source from which a reproduction for private
use has been made is lawful from that in which that source is unlawful,
does not respect the fair balance. (…) All the users who purchase such
equipment, devices and media are indirectly penalised since, by
bearing the burden of the levy which is determined regardless of the
lawful or unlawful nature of the source from which such reproductions
are made, they inevitably contribute towards the compensation for the
harm caused by reproductions for private use made from an unlawful
source, which are not permitted by Directive 2001/29, and are thus led to
assume an additional, non-negligible cost in order to be able to make the
private copies covered by the exception provided for by Article 5(2)(b) of
that directive.” (Para. 54., 56)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions:
 In respect of the right of reproduction, communication to
the public and making available to the public [Art. 5(3)a)-
o)]:
 illustration for teaching or scientific research;
 uses for the benefit of people with disabilities;
 reporting on current economic, political or religious topics;
 quotations;
 use for the purposes of public security, administrative, parliamentary
or judicial procedures;
 use of political speeches;
 use during religious celebrations;
 use of publicly erected works;
 incidental inclusion of works in other materials;
 use for the purpose of advertising the sale of artistic works;
 caricature, parody, pastiche;
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions:
 In respect of the right of reproduction, communication to
the public and making available to the public [Art. 5(3)a)-
o)]:
 use in connection with the demonstration or repair of equipment;
 use of the artistic work in the form of a building for the purpose of
reconstructing the building;
 communication to the public of works by libraries for the purposes of
private study or research;
 „grandfather clause”: other uses of minor importance.
 „Where the Member States may provide for an exception or
limitation to the right of reproduction pursuant to paragraphs 2
and 3, they may provide similarly for an exception or limitation
to the right of distribution as referred to in Article 4 to the
extent justified by the purpose of the authorised act of
reproduction.” [Art. 5(4)];
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: parody
 Deckmyn v. Vandersteen [Case C-201/13]:
 „The Court has consistently held that it follows from the need for
uniform application of EU law and from the principle of equality that
the terms of a provision of EU law which makes no express
reference to the law of the Member States for the purpose of
determining its meaning and scope must normally be given an
autonomous and uniform interpretation throughout the
European Union, having regard to the context of the provision and the
objective pursued by the legislation in question.” (Para. 14)
 „Since Directive 2001/29 gives no definition at all of the concept of
parody, the meaning and scope of that term must, as the Court has
consistently held, be determined by considering its
(1) usual meaning in everyday language,
while also taking into account the (2) context in
which it occurs and the (3) purposes of the rules
of which it is part.” (Para. 19)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: parody
 Deckmyn v. Vandersteen [Case C-201/13]:
 „the ESSENTIAL CHARACTERISTICS OF PARODY ARE, first, to evoke
an existing work while being noticeably different from it, and,
secondly, to constitute an expression of humour or mockery. It
is not apparent either from the usual meaning of the term ‘parody’ in
everyday language, or (…) from the wording of Article 5(3)(k) of
Directive 2001/29, that the concept is subject to the conditions set out
by the referring court in its second question, namely: that the parody
should display an original character of its own, other than that of
displaying noticeable differences with respect to the original parodied
work; could reasonably be attributed to a person other than the
author of the original work itself; should relate to
the original work itself or mention the source of
the parodied work.” (Para. 20-21)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: parody
 Deckmyn v. Vandersteen [Case C-201/13]:
 „The interpretation of the CONCEPT of parody must, in any event,
enable the effectiveness of the exception thereby established to
be safeguarded and its purpose to be observed. (…) The fact that
Article 5(3)(k) of Directive 2001/29 is an exception does
therefore not lead to the scope of that provision being restricted
by conditions, such as those set out in paragraph 21 above,
which emerge neither from the usual meaning of ‘parody’ in
everyday language nor from the wording of that provision.”
(Para. 23-24)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Limitations & exceptions: parody
 Deckmyn v. Vandersteen [Case C-201/13]:
 PURPOSES OF THE RULES:
 Recital 3: InfoSoc Directive aimed to implement the four freedoms →
fundamental principles of law → property/intellectual property +
freedom of expression → „parody is an appropriate way to
express an opinion” (Para. 25);
 Recital 31: InfoSoc Directive – consequently parody as well – aimed
to reach a „fair balance” between rightholders and users (Para. 26-
27).
 „attention should be drawn to the principle of nondiscrimination
based on race, colour and
ethnic origin (…) holders of rights (…) have,
in principle, a legitimate interest in ensuring
that the work protected by copyright is not
associated with such a message.” (Para. 30-31)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]
 All L&Es are subject to the three-step test;
 “The exceptions and limitations (…) shall only be applied in
certain special cases which do not conflict with a normal
exploitation of the work or other subject-matter and do not
unreasonably prejudice the legitimate interests of the right
holder.” [InfoSoc Directive, Art. 5(5)]
 The provision of the InfoSoc Directive was based on the text of
the pre-existing international documents:
 Berne Union Convention, Art. 9(2);
 TRIPS Agreement, Art. 13;
 WIPO Copyright Treaty, Art. 10(1).
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 The interpretation of the three-step test: ACI Adam v.
Stichting de Thuiskopie [Case C-435/12]:
 „Article 5(5) of th[e InfoSoc] Directive does not therefore define
the substantive content of the different exceptions and
limitations, (…) but takes effect only at the time when they
are applied by the Member States” (Para. 25);
 „to accept that such reproductions may be made from an
unlawful source would encourage the circulation of counterfeited
or pirated works, thus inevitably reducing the volume of
sales or of other lawful transactions relating to the
protected works, with the result that a normal exploitation of
those works would be adversely affected. (…) the application of
such national legislation may (…) unreasonably prejudice
copyright holders. Article 5(2)(b) of Directive 2001/29 must be
interpreted as not covering the case of private copies made from
an unlawful source.” (Para. 39-41)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 The interpretation of the three-step test: Public Relations
v. NLA [Case C-360/13]:
 1
st factor: „since the on-screen copies and the cached copies are
created only for the purpose of viewing websites, they constitute,
on that basis, a special case.” (para. 55)
 2
nd factor: „although the copies make it possible, in principle, for
internet users to access works displayed on websites without the
authorisation of the copyright holders, the copies do not
unreasonably prejudice the legitimate interests of those
rights holders.” (para. 56)
 3
rd factor: „the viewing of websites by means of the technological
process at issue represents a normal exploitation of the works
which makes it possible for internet users to avail themselves of
the communication to the public made by the publisher of the
website concerned. Given that the creation of the copies in
question forms part of such viewing, it cannot operate to the
detriment of such an exploitation of the works.” (para. 61)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Technological protection measures:
 Follows the WIPO’s Internet Treaties’ standards;
 Attempts a compromise:
 For the benefit of rightholders:
 harmonized legal protection is needed (Recital 47);
 it shall be effective, shall not prevent the normal operation of
electronic equipment, shall respect proportionality and shall not
hinder research into cryptography (Recital 48);
 For the benefit of the society:
 shall not prejudice L&Es related to computer programs (Recital
50);
 shall not prejudice public security; Member States should
promote voluntary agreements between rightholders and
beneficiaries of L&Es (Recital 51);
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Technological protection measures [Art. 6(1)-(2)]:
 „(1) Member States shall provide adequate legal protection against
the circumvention of any effective technological measures, which
the person concerned carries out in the knowledge, or with
reasonable grounds to know, that he or she is pursuing that objective.
 (2) Member States shall provide adequate legal protection against the
manufacture, import, distribution, sale, rental, advertisement
for sale or rental, or possession for commercial purposes of
devices, products or components or the provision of services which:
 (a) are promoted, advertised or marketed for the purpose of
circumvention of, or
 (b) have only a limited commercially significant purpose or use
other than to circumvent, or
 (c) are primarily designed, produced, adapted or performed for the
purpose of enabling or facilitating the circumvention of,
any effective technological measures.”
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Technological protection measures [Art. 6(1)-(2)]:
 Nintendo v. PC Box [Case C-355/12]:
 Whether the TPM built into Nintendo’s DS and Wii consoles
to prevent the use of lawful, but non-Nintendo programs
exceeds what is provided for that purpose by the directive?
 „there is nothing in that directive to suggest that Article 6(3)
thereof does not refer to technological measures such as
those at issue in the main proceedings, which are partly
incorporated in the physical housing systems of games and
partly in consoles which requires interaction between them.
(…) The concept of ‘effective technological measures’ is
defined broadly and includes application of an access
control or protection process, such as encryption,
scrambling or other transformation of the work or
other subject-matter or a copy control mechanism.”
(Para. 26-27)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Technological protection measures [Art. 6(1)-(2)]:
 Nintendo v. PC Box [Case C-355/12]:
 Whether the TPM built into Nintendo’s DS and Wii consoles to
prevent the use of lawful, but non-Nintendo programs exceeds
what is provided for that purpose by the directive?
 „that provision requires the Member States to provide adequate legal
protection against those devices, products or components which
have the purpose of circumventing that protection of effective
technological measures which have only a limited commercially
significant purpose or use other than to circumvent that
protection, or are primarily designed, produced, adapted or
performed for the purpose of enabling or facilitating that
circumvention. (…) The referring court may, in particular,
examine how often PC Box’s devices are in fact used in order
to allow unauthorised copies of Nintendo and Nintendolicensed
games to be used on Nintendo consoles and how often that
equipment is used for purposes which do not infringe copyright in
Nintendo and Nintendo-licensed games.” (Para. 35-36)
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Law enforcement [Art. 8(1)-(3)]:
 „(1) Member States shall provide appropriate sanctions and
remedies in respect of infringements of the rights and obligations set
out in this Directive and shall take all the measures necessary
to ensure that those sanctions and remedies are applied. The
sanctions thus provided for shall be effective, proportionate and
dissuasive.
 (2) Each Member State shall take the measures necessary to
ensure that rightholders whose interests are affected by an
infringing activity carried out on its territory can bring an action
for damages and/or apply for an injunction and, where
appropriate, for the seizure of infringing material as well as of
devices, products or components referred to in Article 6(2).
 (3) Member States shall ensure that rightholders are in a position
to apply for an injunction against intermediaries whose services
are used by a third party to infringe a copyright or related right.”
COPYRIGHT LAW OF THE EUROPEAN UNION
 InfoSoc Directive [2001/29/EC]:
 Law enforcement: Erfolgsverbot?
 UPC Telekabel Wien v. Constantin Film Verleih & Wega
[Case C-314/12]:
 „the fundamental rights recognised by EU law must be interpreted as not
precluding a court injunction prohibiting an internet service provider from
allowing its customers access to a website placing protected subject-matter
online without the agreement of the rightholders when that injunction
does not specify the measures which that access provider must take
and when that access provider can avoid incurring coercive penalties
for breach of that injunction by showing that it has taken all
reasonable measures, provided that (i) the measures taken do not
unnecessarily deprive internet users of the possibility of lawfully accessing
the information available and (ii) that those measures have the effect of
preventing unauthorised access to the protected subject-matter or, at least,
of making it difficult to achieve and of seriously discouraging internet
users who are using the services of the addressee of that injunction from
accessing the subject-matter that has been made available to them in
breach of the intellectual property right” (Para. 64).