Header graphic for print

LimeGreenIP News

DSM Watch: Navigating Article 13 of the Copyright Directive

On 13 February 2019 the Commission, the European Parliament and the Council finally agreed the text of the long-awaited draft Copyright Directive (COM(2016)593) (“Directive“). The next step will be a vote in the EU Parliament on the agreed text on 26 March 2019. Ahead of that decisive vote, DSM Watch takes a deeper dive into the agreed language of the Directive, starting with the much debated Article 13 (This analysis is based upon the text which was presented and provisionally agreed by the Council on 20 February 2019).

What is Article 13?

The Commission’s stated aim of Article 13 is to “reinforce the position of creators and right holders to negotiate [a licence] and get remunerated for the use of their content by certain user-uploaded content services”.

When an online content-sharing service provider gives access to copyright-protected content uploaded by its users, Article 13 provides that it performs an act of communication to the public or an act of making available to the public and those acts must be authorised by the rightholder (e.g. by concluding a licensing agreement). This has been a controversial and heavily debated aspect of the Directive because it makes some online services primarily liable for copyright infringement in relation to the acts of their users.

While the online content sharing services are urged to conclude licensing agreements with right holders or get their authorisation, it is expressly stated that rightholders are free to refuse to grant authorisation. This aspect of Article 13 has been criticised for curtailing the freedom of the internet because if rightholders do not grant a licence for specific works infringement liability cannot be avoided unless the content sharing service can meet the 4-step criteria set out below.

Where authorisation has also been obtained it will cover the acts carried out by a service’s users when they are “not acting on a commercial basis” or when their “activity does not generate significant revenues” It is not clear what “significant” revenues means in this context. Where is the threshold? Would small influencers generating only a couple of hundred Euros per month be covered, or only those who make a living from their activity?

Who is caught?

Article 2(5) defines an “online content sharing service provider” as an online service “whose main or one of the main purposes is to store and give the public access to a large amount of copyright protected works […] uploaded by its users which it organises and promotes for profit-making purposes.” For ease, we shall refer to such a service as a “content sharing service“.

Recital 37b states that the assessment of what amounts to a “large amount” must be made on a case-by-case basis, depending on a non-exhaustive list of criteria (e.g. audience size and amount of copyright-protected files uploaded). Explicitly excluded from the definition are not-for-profit online encyclopedias (e.g. Wikipedia); not-for-profit educational and scientific repositories; open-source software developing and sharing platforms (e.g. GitHub), ISPs, online marketplaces, B2B and personal cloud services. However, discussion forums (hosting comments) or dating platforms (hosting pictures) could arguably be covered by the definition.

Since there is no threshold, it could be argued that any profits made by the platform operator could be sufficient to make it fall within the scope of the definition regardless of the amount. A small platform operated by one person which allows its users to share their pictures and which generates through advertising barely enough revenues to be self-sufficient is treated much the same as the most popular platforms out there. To deal with this, the Directive includes a lighter regime for start-ups (see further below).

Unlicensed Content: the four-step limitation of liability regime Continue Reading

German courts set advertising stage for the 2020 Olympic Games in Tokyo

Although the opening ceremony of the next Olympic Games in Tokyo is still more than a year away, recent decisions of the German courts are already preparing the stage for commercial and advertising activities evolving around them. The courts are defining to which extent non-official advertising partners may use the Olympic designations “Olympiade”, (“Olympics”) “Olympia” (“Olympics”) and “olympisch” (“olympic”) or similar signs in a commercial context.

German Law – OlympSchG

In Germany, the Olympic designations and the Olympic symbol (the five interlocking rings) are protected by a specific law, the “Gesetz zum Schutz des olympischen Emblems und der olympischen Bezeichnungen” (Law on the protection of the Olympic symbol and the Olympic designations – OlympSchG).

This law entered into force in 2004 for two main reasons: Firstly, the German Patent and Trademark Office was reluctant to grant protection to the Olympic designations as trademarks, arguing that they would lack distinctiveness as elements of common parlance. And secondly, the International Olympic Committee (IOC) had made it clear that future Olympic Games would only be awarded to countries in which the Olympic designations and Olympic symbol enjoy specific protection. Leipzig at the time had applied for the Summer Olympics 2012 with the support of the federal legislator, which tried to increase the chances of the bid specifically by enacting a law satisfying the IOC’s condition as follows:

Third party use in trade

Sec. 2 provides that the exclusive right to exploit the Olympic designations as well as the Olympic symbol vests with the IOC and the German National Olympic Committee (NOC). According to Sec. 3 para 1 S. 1, third parties are prohibited from using the Olympic symbol in trade

  • to brand goods or services,
  • in advertisements for goods or services,
  • as company name, special designation of a business or as name of an event,
  • as club emblem or club flag

Sec. 3 para 1 S. 2 states that the same applies to the use of a sign similar to the Olympic symbol, provided that the use leads to the danger of confusion or without due cause takes unfair advantage of, or is detrimental to the repute of the Olympic Games or the Olympic movement.

According to Sec. 3 para 2 S. 1, third parties are prohibited from using the Olympic designations or similar signs in trade;

  • to brand goods or services,
  • in advertisements for goods or services,
  • as company name, special designation of a business or as name of an event,

if the use leads to the danger of confusion or without due cause takes unfair advantage of, or is detrimental to the repute of the Olympic Games or the Olympic movement.

Remedies

Sec. 5 & 6 grant NOC and IOC claims for cease & desist, damages and destruction in case of infringement according to Sec. 3, 4.

The OlympSchG, due to its unique character of protecting a few very specific designations by means of a trademark-like law has been much discussed in Germany, even branded unconstitutional by some voices. These voices have not prevailed though and the OlympSchG is hence widely considered constitutional nowadays.

Earlier landmark case Continue Reading

“IP Fast Action Protocol” facilitates processing of preliminary injunctions at Mobile World Congress 2019

The Mobile World Congress (MWC), whose latest edition  took place in Barcelona from 25 to 28 February 2019, is the largest mobile communications event in the world where new devices, applications and the latest developments in wireless and mobile communications technologies are showcased. This has given rise to a substantial increase in recent years of the IP rights-related conflicts in connection with new product launches at the fair, which are handled by the Barcelona commercial courts and, more specifically, by the Barcelona Patent Tribunal.

In order to avoid, to the extent possible, that preliminary injunctions (PIs) be granted ex parte during the MWC, the Barcelona IP Courts (including the Patent Courts) issued, for the fifth year in a row, a Fast-Acting protocol (the Protocol) committing to handle with priority all IP-related, unfair competition and unlawful advertising claims arising in connection with the MWC. The EU Trademark and Designs Court of Alicante also joined the Protocol this year for the first time.

The Protocol, adopted on 13 December 2018 and in force throughout February 2019, provided that:

  • Urgent PIs related to IP rights in relation to products that will be exhibited at the MWC will be processed with priority;
  • Ex parte PIs will be decided within 48 hours from receipt of the petition by the court. In the case that a hearing be held, a decision will be rendered within a maximum of 10 days, if a protective brief has been filed by the defendant;
  • Protective briefs will be admitted within 24 hours from filing when there is reasonable concern on the part of the defendant of being sued for ex parte PIs;
  • Urgency will be assessed taking into account the plaintiff’s prior behavior and the speed with which it has reacted to the knowledge of infringement; and that
  • The preliminary injunctions and/or urgent measures granted by the EU Trademark and Designs Court of Alicante will be immediately enforced by the Commercial Courts of Barcelona.

According to the figures on cases handled under the protocols in force in previous years, the Protocol has proven to be quite effective in providing the companies involved in the MWC with a quick judicial response. The MWC 2018 report published by the General Council of the Judiciary showed a 40% increase in the cases handled by the Barcelona Courts with respect to the previous year. The MWC 2019 report has now been released, with the following summary of activities of the Barcelona and Alicante Courts: Continue Reading

Brexit: the impact on supplementary protection certificates (SPCs)

On 6 February 2019 the House of Commons and House of Lords approved The Patents (Amendment) (EU Exit) Regulations 2018 (Patent SI), which, if it is signed into law, will come into force on Brexit day (i.e. 29 March 2019 or such later date as agreed as part of an extension). The purpose of the Patent SI is to fix issues relating to the UK patent system, including retained EU law (As defined in section 6(7) of the European Union (Withdrawal) Act 2018), which will occur as a result of Brexit so that the law continues to work effectively. The explanatory memorandum says that the government has aimed to preserve the status quo where possible. Of particular interest is the Patent SI’s approach to the EU Regulations concerning supplementary protection certificates (SPCs) i.e. Regulation 469/2009 for medicinal products and Regulation 1610/96 for plant protection products.

The relevant marketing authorisation

The grant of an SPC is contingent on the existence of a granted marketing authorisation. One change under the Patent SI is that Article 3(b) requires that there must exist a granted UK marketing authorisation before an SPC can be granted in the UK. So where the company has gone down the centralised procedure route, the granted EEA marketing authorisation (with effect in an EEA state according to Directives 2001/83/EC or 2001/82/EC) will no longer count for the purposes of Article 3 because the UK will no longer be part of that scheme.

However, for the purposes of calculating the duration of an SPC under Article 13, the relevant marketing authorisation on which to base the calculation is defined as: “the first authorisation to place the product on the market in the area comprising the European Economic Area and the United Kingdom.” Therefore, an EEA marketing authorisation would count as the first authorisation for this purpose. That could be to the detriment of the SPC holder if the relevant product is authorised earlier in the EEA than it is in the UK because the effective on-market exclusivity period would be reduced where the SPC period starts from the date of the earlier EEA marketing authorisation rather than from the date of the later UK marketing authorisation when the product can actually be placed on the UK market.

Paediatric extensions

A 6 month paediatric extension can be added to an SPC when an agreed paediatric investigation plan is complied with. That extension is currently granted under Article 36 of EU Regulation 1901/2006 which will no longer apply in the UK after Brexit. The explanatory memorandum for the Patent PI states that the Government intends to revoke and restate EU Regulation 1901/2006 through amendments to the Human Medicines Regulations 2012 which will be done by way of a statutory instrument (Article 36 SI). The changes proposed in the Patent SI are therefore consequential upon the Article 36 SI being approved (which happened on 11 March 2019) and the Government has indicated that the Patent SI will not be made (i.e. signed by a minister) until after the Article 36 SI has been made.

Challenging existing SPCs

SPCs granted in the UK before Brexit will remain in force. Under Article 15, the grounds for challenging the validity of an SPC remain the same. However, post-Brexit the challenge should be brought before “the comptroller or the court“. The “comptroller” means the Comptroller-General of Patents, Designs and Trade Marks. The “court” is defined as being: (i) the Unified Patent Court (UPC) if the basic patent is subject to the UPC’s jurisdiction by Schedule A4 to the Patents Act 1977 or; (ii) the High Court (England & Wales), Court of Session (Scotland) or High Court in Northern Ireland.

Given that the UPC’s jurisdiction is supposed to be exclusive for SPCs based on unitary patents or European patents that have not been opted out, it is curious that the Patent SI seems to contemplate that the comptroller also has jurisdiction to hear such challenges. However, this will only become relevant in practice if there is a “no deal” Brexit on 29 March and the UPC comes into force with the UK as a member.

Life Sciences and Health Care Horizons 2019 publication: IP in the mix

Innovation in the life sciences and health care industries is occurring at a dizzying pace. Five years ago, anti-PD-1 antibodies from Merck and BMS had yet to be approved, CAR-T therapies were still in small-scale clinical trials, and digital health was seen as electronic step counters and little else. Today, cures are being found for diseases and conditions once considered life threatening or permanently debilitating.

In the 2019 edition of our Life Sciences and Health Care Horizons publication, our global team identifies a number of current and evolving trends that are shaping the future of the industry. From regional coverage including Asian, European, Latin American and U.S. markets, to specific legal challenges around intellectual property and changing regulatory environments, to the prospects of future discovery driven by artificial intelligence and big data, our team reports on the extraordinary progress and opportunities in the sector around the world. IP related developments in this publication include;

  • Biosimilars patent licensing,
  • Artificial intelligence in drug design,
  • Pricing & reimbursement of medicinal products in the EU, and
  • Collaboration considerations in personal medicine.

In addition to this publication, our Life Sciences and Health Care Horizons – Global event series will span three continents and feature cutting-edge analysis, engaging panel discussions, and featured keynote speakers. Save these dates:

30 April: Boston
16 May: London
27 June: Paris
30 Oct.: Tokyo
6 Nov.: Shanghai
13 Nov.: Northern California


Helping make the world healthier: With 500 life sciences and health care lawyers across the globe, we understand the issues clients face in the countries they do business in, helping them to stay ahead of the curve – Learn more.

WIPO: Be aware of generic terms in domain name dispute resolution

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of a domain name because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name.

Background

The Complainant was Pharming Group N.V. of Leiden, Netherlands, a company founded in 1988.  The Complainant was a bio-pharmaceutical company dedicated to developing innovative products for the treatment of unmet medical needs with a website at “www.pharming.com”.  It owned a European trade mark PHARMING for use in connection with pharmaceutical and medical materials and services.

The Respondent, who replied to the Complainant’s contentions, was Hu Zhe, Bei Jing Rui Cheng Hai Hui Jian Kang Ke Ji You Xian Gong Si of Beijing, China.  The Respondent was a company specialized in plant molecular medicine technology research and product development.

The disputed Domain Name was <cc-pharming.com>.  At the time of the Panel’s decision, the Domain Name was resolving to the Respondent’s website which provided information on its plant molecular medicine technology research and development products and services.

Decision: Legitimate interests & bad faith

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a): Continue Reading

Webinar: From homes to stadiums – Brand presence in esports

On 27 and 28 March, our global IP team will take a look at some of the emerging opportunities and risks for brand owners exploring opportunities in the esports market: from innovative advertising and marketing activities during tournaments and within games, sponsorship of tournaments or teams, to merchandise and fan items (see our earlier post here).

Esports refers to competitive video gaming at a professional level, with competitors playing matches in arenas with huge live and online audiences, accompanied by match commentators. The buzz and spectacle accompanying those matches, as well as their audience reach, easily reach Olympic spheres, and outshine most traditional sports events.

The numbers speak for themselves: esports have generated over US$900 million in revenues in 2018, with revenues expected to grow to US$1.4 billion by 2020. Today, it is lined up to be the next billion dollar industry, reaching broad global audiences and attracting heavy investment and endorsement from major brands across all sectors. Meanwhile, many questions around right ownership and regulatory implications in this dynamic multi-stakeholder industry are still uncharted territory.

This webinar will cover:

  • Latest trends in the esports market: Where is it headed and why is it attractive for brands across all industries?
  • Who owns the rights in what? Software, game formats, real-world representations, personality rights, and more.
  • What should my company bear in mind when cooperating with event organizers, software companies and broadcasters?
  • How might the new draft EU Digital Single Market Directive impact esports broadcasting?

We’re holding two sessions which cover the same content but will run for different time zones – here are the details: Continue Reading

Brexit’s impact on European TLDs not limited to .EU

In our February post, we wrote about the impact that Brexit would have on UK-based .EU domain name holders and registrants to be affected by Britain’s looming departure from the EU – including not only native Brits, but also European nationals resident in the UK.  Moreover, such registrants risk seeing their registrations cancelled, not only in .EU, but also in other European Top Level Domains (TLDs), if they do not take steps to comply with the relevant registration requirements.

It seems that the effects of Brexit are already being felt in the .EU TLD, which recently announced its lowest “domains under management” figure since 2012 in its Q4 2018 Progress Report.  This report revealed that there was a total of 3,684,750 domain names under management at the end of 2018, a figure that is down 63,129 on the numbers at the end of September 2018.

EURid has been particularly proactive in advising .EU registrants as to the practical implications of Brexit, hence perhaps the drop off in registration numbers; however, it is not solely the .EU TLD that will be impacted.  The rights of UK residents to hold domain names in all of the following countries will also be affected post-Brexit:

.FR (France)
.HU (Hungary)
.IT (Italy)
.RE (Reunion Island)
.YT (Mayotte)
.PM (Saint Pierre and Miquelon)
.WF (Wallis and Futuna Islands)
.TF (French Southern and Antarctic Territories)

This is because all of the above TLDs generally require a registrant located in the EU (or in the territory of Iceland, Liechtenstein, Norway and Switzerland).  In light of the above, UK-based residents who hold domain names in any of the above TLDs should rapidly take the measures necessary to ensure compliance with EU presence requirements after Brexit.


This post is selected from our Anchovy News publication: Anchovy® is our comprehensive and centralised online brand protection service for global domain name strategy, including new gTLDs together with portfolio management and global enforcement using a unique and exclusive online platform developed in-house. 

Should you require assistance in meeting the post-Brexit registration requirements for any of the above TLDs, or require more information please contact anchovynews@hoganlovells.com 

U.S. Supreme Court adopts “registration approach” for copyright infringement actions

The U.S. Supreme Court has announced in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC that copyright owners must wait for the Copyright Office to formally grant, or refuse to grant, a copyright registration before filing an infringement lawsuit. This decision settles a longstanding circuit split over when copyright owners can bring suit, with some circuits following the “registration approach,” now confirmed by the Supreme Court, and others following the “application approach;” allowing infringement suits to proceed upon the copyright owner’s filing of an application to register a copyright with the Copyright Office.

Writing for the unanimous Court, Justice Ruth Bader Ginsburg stated that while the “the statutory scheme has not worked as Congress likely envisioned,” the registration approach adopted by the Court “reflects the only satisfactory reading” of the Copyright Act. In the decision, the Court eschewed concerns that in some instances the Copyright Office’s delay may be so long that the statute of limitations for filing an infringement action may expire before the registration is issued by the Copyright Office. The Court pointed out that the average time for the Copyright Office to issue a registration is only around seven months, and that copyright owners can still recover certain infringement damages incurred before the registration of their work.

News of the Supreme Court’s opinion was met with mixed views. Many major copyright owners chastised the decision as restricting a copyright owner’s ability to protect a work. Others lauded the Supreme Court’s decision, arguing that the requirement that a work be registered before copyright can be asserted in an infringement action can prevent unfounded and frivolous lawsuits.

Practical consequences of the Supreme Court’s decision

The key takeaway from the Supreme Court’s decision is to obtain copyright registrations as early as possible to avoid a delay in being able to assert the copyrights.   The processing times involved in obtaining that registration will surely impact any ability to seek a temporary restraining order or preliminary injunction against a copyright infringer.

In cases where the normal processing time is intolerable, there is some concern that the Copyright Office’s “special handling” service will be overwhelmed. That service is designed to be an expedited system that can grant a registration within five (5) working days. However, a large influx of expedited requests inspired by the Court’s ruling seems likely to substantially delay that processing unless additional resources are committed.

What’s next for copyright owners and the Copyright Office?

As the Supreme Court lamented in its decision, the predictable delays copyright owners will face before bringing infringement actions are not a “factor [that would] allow [the Supreme Court] to revise [the] congressionally composed text” of the Copyright Act. Speaking after the decision issued, Fourth Estate has called on Congress to “remedy the long delays currently experienced by copyright owners.”

Of course, possible solutions Congress could implement to remedy this delay include increased funding for the Copyright Office to handle the anticipated influx of new copyright applications, or amending the Copyright Act to allow copyright owners to bring an infringement lawsuit prior to receiving a registration from the Copyright Office.


For more information, please visit the U.S. Copyright section of LimeGreen IP, our free knowhow resource.

China: Would a rose by any other word taste as sweet? Blocking rose-shaped chocolate monopoly in a complex trademark & OEM dispute

Our China team and Hogan Lovells Fidelity have recently secured an important victory for WAWI Xiamen (Chinese subsidiary of the leading German chocolate manufacturer Wawi Group), successfully defending it from a 3D trademark infringement claim before a Chinese court. The case involves cutting-edge IP issues such as the distinctiveness and infringement assessment for 3D-trademarks, and the non-infringement defence for Original Equipment Manufacturing (“OEM”).

Background

Wawi Xiamen, a chocolate manufacturer based in China, regularly receives orders from one of its US clients to manufacture rose-shaped chocolates, bearing the US client’s word mark, produced exclusively for export to the US market (i.e. Original Equipment Manufacturing, or “OEM”). A local chocolate company (“the Plaintiff”) owning a PRC 3D trademark registration for a rose shape, covering, inter alia, chocolates, alleged that the production of the chocolates in the PRC by Wawi Xiamen infringed its 3D rose shape trademark. It therefore requested China Customs to seize Wawi Xiamen’s shipments to its US client. Subsequently, the Plaintiff also brought a trademark infringement case against Wawi before the Xiamen Intermediate People’s Court (“the Court”).

Key issues

The key issues involved in this civil case are (1) whether the 3D rose shape applied on chocolates can serve as a source identifier; and (2) the applicability of the non-infringement defence for OEM production, when some elements for a clear-cut application of such defence are lacking.

In its very recent judgement the Court essentially followed our argumentation, holding that: Continue Reading