Posts Tagged: "CJEU"

It’s the time of year to reflect upon the cases and trends that have shaped IP over the past 12 months. Here are our picks for the top five in patents from Europe. First, it’s been a year of ups and downs for the EU’s attempt to create a Unitary Project and Unified Patent Court. (UPC) In March, Germany’s Federal Constitutional Court said that the Act of Approval of the UPC Agreement in the country was void as not enough members were present at the vote. Following the UK government’s decision that it would withdraw from the project, the Court’s decision was seen as potentially a terminal blow.

On June 11, the Fifth Chamber of the Court of Justice of the European Union (CJEU) issued a decision in Brompton Bicycle Ltd. v. Chedech/Get2Get in which the EU’s highest court held that European copyright law extends protection to product shapes producing a technical result when the shape is an original work resulting from the author’s intellectual creation. The decision is notable both for the CJEU’s departure from the advocate general’s opinion in the case as well as its sharp contrast to U.S. copyright law, where copyright protection is expressly prohibited for product designs that have utilitarian, functional aspects.

On April 2, the Court of Justice of the European Union (CJEU) issued a ruling absolving e-commerce giant Amazon.com of trademark infringement allegations brought by a German perfume distributor seeking redress for Amazon’s storage and distribution of brand-infringing perfume products sold by third-party sellers. The decision, issued by the CJEU’s Fifth Chamber, holds that Amazon’s mere storage of infringing goods in the context of its online marketplace does not constitute an infringement of trademark rights by Amazon.

The Court of Justice of the European Union has provided reassurance to European trademark owners in its judgment today in the SkyKick case. (Case C?371/18 Sky plc, Sky International AG, Sky UK Limited v SkyKick UK Limited, SkyKick Inc.) The case involves questions referred from the UK in a dispute over SkyKick’s alleged infringement of five of Sky’s EU and UK national trademarks. Sky is a well-known broadcaster and telecoms services provider, and SkyKick is a cloud services provider. The Court stated that “a lack of clarity and precision of the terms designating the goods or services covered by a trade mark registration cannot be considered contrary to public policy, within the meaning of those provisions” and that therefore the lack of clarity and precision in a specification is not a ground for invalidity: “a Community trade mark or a national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision.”

The Grand Chamber of the Court of Justice of the European Union (CJEU) has ruled that supply to the public by downloading, for permanent use, of an e-book is covered by the concept of “communication to the public” rather than “distribution to the public.” Under Article 3(3) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (Infosoc Directive), the communication to the public right is not exhausted by any communication to the public or making available to the public. The dispute in this case was between two associations representing copyright holders on one hand and Tom Kabinet, which operates a website with a virtual market of second-hand e-books offered via a reading club, on the other hand. The associations argued that Tom Kabinet was making an unauthorized communication to the public.

On September 24, the Court of Justice of the European Union (CJEU) delivered its decision in case C-507/17, Google v. CNIL regarding the territorial scope of the “right to be forgotten”. Google Inc. had filed an appeal with the French Council of State (FCS), the Highest Administrative Court in France, requesting the annulment of a decision by the French Data Protection Authority (CNIL), which imposed a penalty of EUR 100,000 (approximately USD 110,300) on Google. The case arises from a request to Google by a natural person for deletion of certain links from the list of results displayed following a search of his name (“request for de-referencing”). In response, Google refused to remove certain content from all versions of the domain name of its search engine (i.e., worldwide), leading to the penalty imposed by the CNIL. The FCS then made a request for preliminary reference to the CJEU for guidance on the interpretation of the “right of de-referencing”, popularly known as the “right to be forgotten”.

The Court of Justice of the European Union (CJEU) has ruled that host providers, such as Facebook, can be required to take down illegal content, including identical or equivalent variations, worldwide once they are made aware of it. The Court was ruling on the interpretation of the E-Commerce Directive (Directive 2000/31/EC) in a defamation case brought by an Austrian politician. (Eva Glawischnig-Piesczek v. Facebook Ireland Limited, Case C-18/18 [ECLI:EU:C:2019:821].) The politician, Eva Glawischnig-Piesczek of the Green party, asked Facebook Ireland (which operates Facebook outside of the U.S. and Canada) to delete a news clipping and associated comment, which she claimed insulted and defamed her. Following court proceedings in Austria, Facebook Ireland disabled access in Austria to the specific content published. However, the case raised the following questions: could Facebook Ireland additionally be ordered to remove posts with identical or equivalent content to that already found to be illegal, and should it disable access to the illegal content worldwide?

The Court of Justice of the European Union (CJEU) has ruled that a phonogram producer can prevent another person from taking a sample, even if it is very short, and including it in another phonogram, “unless that sample is included in a modified form unrecognisable to the ear.” The Court was interpreting certain provisions of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (the 2001 Directive) in the light of the rights enshrined in the Charter of Fundamental Rights of the European Union. See Pelham GmbH, Moses Pelham, Martin Haas v. Ralf Hütter, Florian Schneider?Esleben (Case C-476/17, July 29 2019). The case concerned a two-second sample of the Kraftwerk track Metall auf Metall, which was used in the song Nur mir, composed by Pelham and Haas. Hütter and Schneider?Esleben, members of Kraftwerk, brought an action for copyright infringement in the German courts, and the Bundesgerichtshof (Federal Court of Germany) referred six questions to the CJEU.

Happy 4th! This week Barks & Bites comes early, starting with a bite: The Federal Circuit denies rehearing of Athena Diagnostics v. Mayo Collaborative Services, shattering the hopes of many amici and diagnostic companies; Huawei warns against politicization of IP law after the Trump Administration rolls back part of its ban against Huawei’s U.S. suppliers; Chinese President Xi Jinping talks IP theft compensation at G20 summit; USPTO announces new rule for attorneys representing foreign-domiciled trademark applicants and amends its software acquisition plan; the University of California earns a seventh patent covering CRISPR-Cas9 gene editing; Toshiba registers the UK’s first motion trademark; major U.S. tech firms plan to move production away from China; and Ed Sheeran’s copyright case is stayed until the “Stairway to Heaven” case is resolved at the Ninth Circuit.

The decision creates significant uncertainty for organizations who rely on Safe Harbor either for their own, internal data transfers, or because they use a service provider which, in turn, relies on Safe Harbor to provide adequacy for its transfers to the US. Alternative methods of addressing data transfers will be needed – such as implementing EU Commission approved data transfer agreements, or obtaining individual consent. Although the decision has invalidated Safe Harbor – with immediate effect – organizations will need to look to the reactions of national data protection authorities to determine how urgently to implement alternative data transfer solutions.

Most people are familiar with the four-finger KitKat bar which has been produced by Nestlé in the UK since 1935. In 2010 Nestlé decided to apply to register the four-finger shape of the KitKat bar as a trade mark. Cadbury, fearing Nestlé would be able to establish a monopoly on four-fingered chocolate products, raised an objection to the application. Nestlé were initially successful in their application but, following Cadbury’s legal challenge, the case escalated to the High Court and the CJEU where the shape was subjected to further scrutiny and ultimately rejected as a trademark.