Date of filing of Community trade mark application
Génesis Seguros Generales, Sociedad Anónima de Seguros y Reaseguros (“Génesis”) v Boys Toys SA (“Boys Toys”) and Administración del Estado (CJ (First Chamber); Case C-190/10; 22.03.12)
The CJ held that the date of filing of a Community trade mark application, as defined in Article 27 of the Regulation, precluded taking into account the hour and minute of that filing in addition to the day of filing such application with OHIM, for the purposes of establishing that trade mark’s priority over a national trade mark filed on the same day, even if national legislation did hold that the hour and minute of filing national trade mark applications was relevant.
Génesis had applied electronically for registration of two CTMs, RIZO and RIZO, EL ERIZO with OHIM on 12 December 2003 at 11.52 AM and 12.13 PM respectively. On the same date at 5.45 PM, Boys Toys had applied to the Spanish Patents and Trade Marks Office (the “OEPM”) for registration of the mark RIZO’S.
Génesis’ opposition against Boys Toys’ mark and appeals were dismissed, by the OEPM and the Tribunal Supremo de Justicia de Madrid. The Spanish Courts held that the date of filing of the Community trade marks was in fact a later date on which Génesis filed the accompanying documents. Génesis challenged the Tribunal Supremo’s interpretation of Articles 26 and 27 and alleged that the Madrid Court had breached provisions of Spanish law which does take the hour and minute of trade mark filings into account in failing to recognise priority of the CTMs.
Article 27 stated that the date of filing of a CTM application was the date on which documents containing the required information listed in Article 26(1) were filed with the OHIM. The Spanish Court referred the question to the CJEU as to whether Article 27 could be interpreted to take account of the time of filing of the CTM application for the purpose of establishing temporal priority over a national trade mark application, where the time of filing was relevant under national legislation.
The CJ agreed with the opinion of the AG and held that Article 27 must be interpreted as precluding account being taken of the hour and minute of the CTM filing. The CJ highlighted the fact that that the protection of trade marks was characterised within the EU by the coexistence of several systems of protection and that in the preamble to the Directive it was noted that it was not necessary to undertake a full-scale approximation to the trade mark laws of Member States, only harmonisation in relation to substantive rules of central importance. Moreover, Member States remained free to fix the provisions of procedure concerning the registration of trade marks and to decide whether earlier rights should be invoked in the registration process.
The ordinary meaning of “date” of filing designated the day of the month and year when an event has taken place. However, an obligation to state the date or day did not imply a requirement to state the hour and, a fortiori, the minute. The wording of Article 27 and Rule 5 of the Implementing Regulation only required the “date” of receipt of an application to be recorded, not the hour, minute or other temporal value. The mere fact that OHIM’s website de facto certified the date and time of a filing was irrelevant. Although Article 10(2) of Decision EX-11-3 of the President of OHIM concerning electronic communication required the date and hour of receipt to be issued to the sender, it also stated that the receipt would be considered as the filing “date” and no reference was made to the hour of receipt in that regard.
The CTM regime was an autonomous system with its own rules for the determination of the date of filing of an application for a CTM. In a situation where a CTM was invoked in an opposition against a national mark, if the date of filing of a CTM application was to be established by accounting for national law provisions, it would effectively undermine the uniform nature of the protection of a CTM.
Patents County Court considers the factors governing transfer to the High Court
Comic Enterprises Ltd (“CEL”) v Twentieth Century Fox Film Corporation (“TCF”)* (Judge Birss;  EWPCC 13; 22.03.12)
Judge Birss agreed to transfer proceedings for trade mark and passing off to the High Court, subject to TCF undertaking not to seek an order for security for costs in excess of £50,000, and subject to the parties exchanging costs estimates. The Judge was critical of both parties’ conduct in the proceedings to date.
CEL ran comedy venues in England called “The Glee Club”/“Glee” and/or “The Glee Comedy Club”. TCF was the world famous film and television company which produced a very popular television programme entitled “Glee”, about an American high school glee club. TCF applied to transfer the case to the High Court. CEL resisted TCF’s application for transfer.
Judge Birss observed that the present case was one in which access to justice for SME’s was raised squarely. However, while access to justice for SMEs was a decisive factor, a small claimant did not have an unfettered right to stay in the PCC regardless of the nature of the case any more than a large defendant had an unfettered right to demand that it be sued in the High Court. Nor was it the case that the PCC could not hear cases which were expected to last more than 2 days.
Although a main concern of CEL was that a costs order made against it in the High Court would be devastating for its business, Judge Birss held that applications to transfer were not the place to conduct minute analyses of the finances of a party. Unless a statement by one party as to its financial position could be shown to be plainly wrong, an application to transfer should not descend into the sort of “evidential warfare” apparent in this case.
Although CEL would be severely affected by an adverse costs order in the High Court, this had to be set against the nature of the case itself and its value. The decisive factor was that it was apparent that CEL had not sought to trim down its case to focus on the essentials and was running the case as if it was a piece of full scale High Court litigation, with a claim for an injunction with catastrophic consequences for TCF, but covered by a costs cap of £50,000. CEL was trying to have its cake and eat it. An SME wishing to take on a large defendant in a case of high value in the PCC had to approach the matter in a realistic manner. Given the claim that CEL wished to advance, the correct forum to do so was the High Court.
Judge Birss transferred the case to the High Court on the basis of an undertaking from TCF that it would not seek an order for security for costs exceeding £50,000, and that the parties exchanged costs estimates which would facilitate an application for a High Court costs cap if appropriate. The Judge included a further term in the order for transfer that costs incurred in the present proceedings prior to transfer would be assessed in accordance with the PCC scale in any event. Although such an order would not be appropriate in every case, it was fair here because TCF had failed to apply for transfer immediately after being served with the Particulars of Claim.
Patents County Court gives preliminary non-binding opinion on the merits
Weight Watchers (UK) Ltd & Ots v Love Bites Ltd & Ots* (Judge Birss;  EWPCC 11; 21.02.12)
In the course of a case management conference in a trade mark dispute, Judge Birss gave a preliminary and non-binding opinion as to the merits of the case. The Judge indicated that in an appropriate case it may well be a useful procedure.
Weight Watchers organised classes designed to help people lose weight. It also licensed its WEIGHT WATCHERS brand for use in relation to weight loss products. The defendants were using the brand WAIST WATCHERS to sell sandwiches, and had applied for and obtained registered trade marks for WAIST WATCHERS. Weight Watchers complained that the defendants were infringing its WEIGHT WATCHERS trade mark under Sections 10(2) and 10(3).
Judge Birss, having indicated that it was a procedure which would only be embarked upon when both sides agreed that it should be done, issued a preliminary and non-binding opinion as to the merits of the case. The Judge found that there was a strong case that the defendants would be found to have infringed the claimants’ marks under both Section 10(2) and 10(3), and that the defendants’ WAIST WATCHERS marks were probably invalid.
Nigel Woolley & Anr v Ultimate Products Ltd & Anr* (Robert Englehart QC;  EWHC 339 (Ch); 01.03.12)
Robert Englehart QC (sitting as a Deputy Judge of the Chancery Division) found that the defendants had passed off their watches as those of the claimants, but not their jewellery or bags.
Mr Woolley was the managing director of the second claimant, Timesource Ltd, which had become a successful business in the sale of watches. Timesource marketed watches under the brand name HENLEY, and had recently expanded its operations to jewellery and bags. The second defendant, Henley’s Clothing Ltd (“HCL”), was a clothing company which had in recent years expanded into the accessories market. HCL’s products were marketed under the name HENLEYS. The first defendant, Ultimate, sold under licence from HCL watches and jewellery under the HENLEYS name.
Applying the principles laid down by the House of Lords in Reckitt & Colman Products Ltd v Borden Inc & Ots  UKHL 12, the Judge was entirely satisfied that Timesource had established substantial goodwill in at least its respective core business of watches. No clear cut distinction could be made between goodwill restricted to traders rather than the public at large. Although there was no direct evidence of public perception, that was not uncommon in passing off cases and was not fatal when considering items like watches destined for ordinary consumers. However, any discrete goodwill in HENLEY jewellery or bags was found to be minimal.
Finding that there was a misrepresentation on the part of the defendants, the Judge referred to the following: (i) the virtual similarity of the brand names in question, the addition of the letter “S” being of little or no significance; (ii) the similar presentation of the brand names on the dials of the watches, in a frequently similar typeface; (iii) the overlap in the way in which the respective watches were marketed to the public, the approximate retail selling prices and the outlets through which they were sold. Although the Judge accepted that the HENLEYS brand had goodwill and was known as a leading fashion brand, he did not accept that the brand would be known to buyers of watches generally, or that purchases would buy without regard to the reputation of the watches themselves. However, there had been no deception in relation to jewellery or bags.
The Judge found no evidence of any actual damage, but considered that there was likely to be a loss of sales of HENLEY watches. This was not a case where Timesource could complain of dilution of the Henley brand. Nor was there any sound basis for a finding that the HENLEY reputation could be affected by the way HCL carried on business.
Accordingly, the Judge found passing off in relation to watches, but dismissed the claim insofar as it concerned jewellery and bags.
CJ confirms that database protection extends to the structure and not the content of the database
Football Dataco Limited and Ots v Yahoo! UK Limited and Ots (CJ (Third Chamber); C-604/10; 01.03.12)
The CJ clarified the circumstances in which a database may be protected by copyright under Article 3 of Directive 96/09 (the Database Directive). The purpose of the Database Directive was to stimulate the creation of data storage and processing systems that would contribute to the development of the information market and not to protect the creation of the data that populated the databases.
FDL was responsible for the creation of the annual fixtures lists for the English and Scottish football leagues. Yahoo! and the other defendants had used the fixture lists without paying licence fees. The process of creating the fixtures lists was carried out over a number of stages and the English High Court held that this required very significant labour, judgment and skill in order to satisfy the multitude of competing requirements while respecting the applicable rules as far as possible. At first instance the High Court held that the fixtures list constituted a database that was eligible for protection under Article 3 of the Database Directive but not under the “sui generis” right pursuant Article 7 or under English intellectual property law. The Court of Appeal confirmed the finding in respect of the ineligibility of the database under Article 7 and English law but referred a number of questions in relation to protection under Article 3.
The Court of Appeal asked the CJ to clarify whether under Article 3(1) the intellectual effort and skill of creating the data should be excluded, whether the selection or arrangement of the contents includes adding important significance to a pre-existing item of data and whether the notion of an author’s own intellectual creation requires more than significant labour and skill from the author.
The CJ observed that the rights under Article 3 and Article 7 amount to two independent rights whose object and conditions of application were different. The right under Article 3 concerned the protection of the structure of the database and not the contents or elements constituting its contents. Therefore the concept of selection and arrangements referred to the selection and arrangement of data through which the author of the database gives the database its structure not the creation of the data within the database. On that basis, the intellectual effort and skill of creating data are not relevant in order to assess the eligibility of the database that contains that data for copyright protection under the Database Directive.
The notion of the author’s own intellectual creation refers to the criterion of originality and within the context of setting up a database this is satisfied by the selection or arrangement of the data in the database where the author expresses his creative ability in an original manner by making free and creative choices. This criterion is not met when setting up a database has been dictated by technical considerations, rules or constraints which left not room for creative freedom. On that basis, the CJ held that provided that the selection or arrangement of the data was an original expression of the creativity of the author of the database, it was irrelevant whether or not that included “adding important significance” to that data. On the other hand the mere fact that the setting up of the database required significant labour and skill did not justify the protection of the database if the originality requirement had not been met.
The Court of Appeal had also referred a question asking in summary whether the Database Directive precluded national legislation granting different protection to databases falling within the definition of a database protected under the Database Directive. The CJ observed that the Database Directive was intended to remove differences in national legislation that concerned the protection of databases and therefore Article 3 harmonised the criteria for determination of whether a database was to be protected by copyright. Although there were transitional provisions for databases in existence and protected by national copyright legislation when the Database Directive came into force, Article 3 precluded national legislation that granted protection to databases that fell within the Database Directive under conditions that differed to those set out in Article 3.
Norwich Pharmacal orders against ISPs
Golden Eye (International) Ltd & Ots v Telefónica UK Ltd; Consumer Focus* (Arnold J;  EWHC 723 (Ch); 26.03.12)
Arnold J made a Norwich Pharmacal order in favour of Golden Eye and the second claimant, Ben Dover Productions, but declined to make any order in favour of the other twelve claimants.
The fourteen claimants were owners of copyrights in pornographic films. Ben Dover Productions had granted Golden Eye a royalty free worldwide exclusive licence of all copyrights and rights in its copyright works. The third to fourteenth claimants had entered into an agreement with Golden Eye under which Golden Eye was granted the exclusive right to act for them in relation to any alleged breaches of copyright arising out of peer-to-peer copying of material across the internet. The claimants sought a Norwich Pharmacal order against Telefónica, which traded as “O2”, and was one of the six largest ISPs in the UK. The object of the claim was to obtain disclosure of the names and addresses of customers of O2 who were alleged to have committed infringements of copyright through peer-to-peer filesharing using the BitTorrent protocol. Golden Eye intended to send letters to alleged infringers, threatening to take legal action against them unless they paid £700 in compensation. Consumer Focus (the trading name of the National Council of England, Wales and Scotland) was granted permission to intervene in the proceedings on behalf of the intended defendants. The Judge noted that the claim raised fundamental questions as to the operation of the Norwich Pharmacal regime, the legitimacy of ‘speculative invoicing’ and how to balance the rights of copyright owners and consumers.
Goldeneye had previously obtained similar orders against two other large ISPs, and O2 did not oppose the claimants’ application. Arnold J accepted that there were similarities and differences between the present claim and those made in Media CAT v Adams  EWPCC 6, but considered that the present case should be considered on its own merits.
Applying a six-part test approved by the Court of Appeal in Rugby Football Union v Viagogo  EWCA Civ 1585, the Judge held as follows:
(i) Had arguable wrongs been committed against claimants?
Consumer Focus accepted that Ben Dover Production’s agreement with Golden Eye fulfilled the requirements for an exclusive licence under Section 92(1) CDPA, so as to give Golden Eye title to sue the intended defendants. The Judge reluctantly concluded that the agreements between Golden Eye and the other defendants were not champertous as they were not likely to jeopardise the proper administration of justice; they were commercial arrangements under which Golden Eye undertook the effort, cost and risk of applying for Norwich Pharmacal orders and making claims against alleged infringers, in return for a share of the proceeds. The claimants’ evidence was sufficient to establish a good arguable case that (i) P2P filesharing of the claimants’ copyright works took place via the IP addresses and at the dates and times it had identified; and (ii) many, but not all, of the subscribers to whom those IP addresses were allocated by O2 at those dates and times were the persons engaged in such filesharing.
(ii) Was O2 mixed up in those arguable wrongs?
Consumer Focus did not dispute that O2 was mixed up in the infringements.
(iii) Were the claimants intending to try to seek redress for those wrongs?
The Judge rejected the contention that the claimants were not genuinely intending to try to seek redress. There was no requirement for a claimant to commit himself to bringing proceedings if redress could not be obtained consensually, and it was for the second to fourteenth claimants to be the judge of their own commercial best interests by agreeing a division of revenues with Golden Eye.
(iv) Was disclosure of the information which the claimants required necessary for them to pursue that redress?
The Judge found that to the extent that the claimants’ copyrights had been infringed, it was plainly necessary for the information sought to be disclosed for the claimants to be able to protect those rights by seeking redress.
(v) Was the order sought proportionate?
It was necessary to have regard to the precise terms of the order; it was important that the intended defendants would not be given the wrong impression about what the court had decided or why, and that the order should not cause the intended defendants unnecessary anxiety or distress. The Judge concluded that the interests of Golden Eye and Ben Dover Productions in enforcing their copyrights outweighed the intended defendants’ interest in protecting their own privacy and data protection rights, provided the draft order was amended to address the Judge’s concerns.
The Judge held that had the other claimants themselves been making claims for Norwich Pharmacal relief, without the involvement of Golden Eye, he would certainly have reached the same conclusion. However, it did not follow that it was appropriate to make an order which endorsed their arrangement with Golden Eye. To do so would be tantamount to the court sanctioning the sale of the intended defendants’ privacy and data protection rights to the highest bidder. To make such an order would not proportionately and fairly balance the competing interests involved.
(vi) Should the court exercise its discretion in favour of granting relief?
The Judge confirmed that he was exercising his discretion to make an order in favour of Golden Eye and Ben Dover Productions, but declined to exercise his discretion in favour of the other claimants.
Pirate Bay operators and users found to infringe record companies’ copyright
Dramatico Entertainment Ltd & Ots v British Sky Broadcasting Ltd & Ots* (Arnold J;  EWHC 268 (Ch); 20.02.12)
At a preliminary issue hearing, Arnold J held that both users and the operators of the peer-to-peer file sharing website, The Pirate Bay, had infringed and continued to infringe the claimants’ copyright in sound recordings of musical works.
The claimants were record companies and the defendants were internet service providers which had a market share of 94% of UK internet users. The claimants were seeking an injunction pursuant to Section 97A CDPA requiring the defendants to take measures to block or at least impede access by their customers to the peer-to-peer file-sharing website, The Pirate Bay. A trial was ordered of two preliminary issues, namely whether (i) users and (ii) the operators of The Pirate Bay infringed the claimants’ copyright in the UK.
Arnold J held that UK users of The Pirate Bay who had accounts with the defendants infringed the claimants’ copyright under Section 17 by copying the claimants’ sound recordings on a large scale. The Judge noted that the claim differed from that in Twentieth Century Fox Film Corp v Newzbin Ltd  EWHC 608 (Ch) in that, there, the claimants had not contended that the users had communicated the works to the public. In the present case, Arnold J, applying the test laid down in C-306/05 SGAE v Rafael, Joined Cases C-403/08 and C-429/08 FA v QC Leisure and C-431/09 Airfield v SABAM, went on to find that the users also infringed the claimants’ copyright by communicating sound recordings to the public within Section 20. The Judge noted that the present case was, in this respect, indistinguishable from Twentieth Century Fox v Newsbin.
Arnold J found that the operators of The Pirate Bay were responsible for authorising its users’ infringing acts. They were also responsible for inducing, inciting or persuading users to commit infringements of copyright, and acting in common design with the users to infringe, and were therefore jointly liable.
Internet Service Providers lose appeal on Digital Economy Act challenge
British Telecommunications Plc & Anr v Secretary of State for Culture, Olympics, Media & Sport; BPI (British Recorded Music Industry) Ltd & Ots* (Arden, Richards and Patten LJJ;  EWCA Civ 232; 06.03.12)
The Court of Appeal dismissed BT and TalkTalk’s appeal regarding the judicial review of certain contested provisions in the Digital Economy Act (the “DEA”) designed to reduce online copyright infringement with the exception of one provision in relation to costs.
The DEA created ‘initial obligations’, which included the requirement for ISPs to notify subscribers if their IP address was listed in copyright infringement reports (“CIRs”) prepared by copyright owners and to provide copyright owners with copyright infringement lists detailing the subscribers’ IP addresses which had exceeded a certain number of CIRs. The DEA also allowed for the making of an initial obligations code (the “Code”) which included provisions about payment of contributions towards costs incurred. These costs provisions were included in the draft Copyright (Initial Obligations) (Sharing of Costs) Order 2011 (the “draft Costs Order”).
The four grounds of appeal were, whether the contested provisions:
- should have been notified to the EU Commission, in draft form, pursuant to Directive 98/34 (Technical Standards Directive);
- were incompatible with the provisions of Directive 2000/31 (E-Commerce Directive);
- were incompatible with the provisions of Directive 95/46 (Data Protection Directive) and Directive 2002/58 (Privacy and Electronic Communications Directive); and
- were incompatible with the provisions of Directive 2002/20 (Authorisation Directive).
The appeal was dismissed entirely under points 1, 2 and 3 above. In relation to point 2, the provisions did not cut across those in the E-Commerce Directive by making ISPs liable for the information transmitted, nor did it amount to a restriction on the freedom to provide information society services from other Member States. In relation to point 3, the exceptions to the prohibition against processing special categories of data (e.g. those which reveal racial and ethnic origin, religious and ethical beliefs or data concerning health and sex life) under the Data Protection Directive applied. Therefore, the contested provisions did not conflict with this Directive either.
Under point 4 of the appeal, the Court held that the contested provisions did not have to be included in the General Conditions on Entitlement which replaced the individual licensing arrangements in the UK for electronic communication services following the implementation of the Authorisation Directive. However, the Court of Appeal allowed the appeal on the draft Costs Order in part, finding that the ISPs could claim the “case fees” charged by the proposed appeals body in respect of each appeal by a subscriber. The result was that ISPs would only have to pay the “relevant costs”, which would be the internal running costs of complying with the contested provisions.
CJ confirms the rules on first ownership of copyright in cinematographic works and the right to fair compensation
Martin Luksan v Petrus van der Let (CJ (Third Chamber); C-277/10; 09.02.12)
The CJ held that EU law requires that Member States ensure that their national law gives the principal director the right to exploit a cinematographic work first and the right to fair compensation for private copying.
The parties entered a “directing and authorship agreement” in relation to the documentary film entitled “Photos from the Front”, which constituted a cinematographic work. The agreement provided that Mr Luksan would act as the scriptwriter and principal director of the film and Mr van der Let would produce and exploit the film. Mr Luksan assigned to Mr van der Let all copyright and/or related rights held by him in the film, however, the rights to make available to the public on digital networks, television broadcasting by closed-circuit TV and pay TV were expressly excluded from the assignment. The contract did not have any express provision as to statutory rights to remuneration.
Mr van der Let made the film available online and assigned the rights for this purpose to Movieurope.com which allowed viewers to download it by means of video on demand, made the trailer for the film available on the internet through YouTube and assigned the pay TV rights to Scandinavia.tv.
Mr Luksan consequently brought proceedings for breach of copyright and contract. Mr van der Let argued that based on Austrian Copyright law all exclusive exploitation rights in the film vested in the film producer pursuant to a statutory assignment and that therefore the provision in the agreement to the contrary was void. He also contended that as producer he was entitled in full to the statutory rights to remuneration, in particular the “blank cassette remuneration”.
The Austrian Court considered that the provisions of Austrian law were not compatible with EU law and that agreements departing from the principle of direct and original allocation of the rights to the director were void. It therefore referred a number of questions to the CJ for a preliminary ruling.
The CJ agreed with the position held by the Austrian Court and held that Articles 1(5) and 2 of Directive 93/83, Article 2(1) of Directive 2006/116, in conjunction with Articles 2 and 3 of Directive 2001/29 were to be interpreted as meaning that the principal director was the author of the cinematographic work and was therefore entitled in principle to the exclusive exploitation rights in respect of reproduction, satellite broadcasting and other communication to the public through the making available to the public. This precluded national legislation that provided for the exploitation rights to be allocated to the producer of the work. This was the case even where the national legislation had been adopted in accordance with an earlier international agreement which because of a development in EU law was now contrary to EU law. In such circumstances the Member State could not rely on the international agreement to exempt itself from the obligations that had arisen subsequently in EU law.
EU law provided Member States with the power to lay down a rule pursuant to which the exclusive exploitation rights originate with the producer of the cinematographic work, provided that such presumption of transfer provisions is not irrebuttable one precluding the principal director from agreeing otherwise. Under the “private copying” exception pursuant to Article 5(2)(b) of Directive 2001/29, the principal director as an author of the cinematographic work must be granted the right to fair compensation.
With regard to the right to the fair compensation payable to authors under the private copying exception, no provision of Directive 2001/29 allows for the possibility of that right being waived by the person entitled to it. Therefore where Member States have introduced the private copying exception, those States must ensure that the fair compensation is actually recoverable and this obligation is irreconcilable with the possibility of a right holder to waive that fair compensation. On that basis, a Member State could not permit a presumption of transfer of the right to fair compensation from the director in favour of the producer of the cinematographic work, whether that presumption was rebuttable or not.