IP news

The Svensson case finally arrived C-466/12

Retriever Sverige vs Göteborgs-Posten 

In a nutshell, the applicants in the main proceedings were all journalists writing press articles that were published in the Göteborgs-Posten  newspaper and on the Göteborgs-Posten website, were they were freely accessible (very important point).

Retriever Sverige operates a website that provides its clients, according to their needs, with lists of clickable internet links to articles published by other websites such as Göteborgs-Posten.

The Göteborgs-Posten journalists claimed that Retriever Sverige had made use, without their authorisation, of certain articles writen and published by them, by making them available (clickable) to its clients.

The main question to the Court is then as follows:

If I'm not the copyright holder of a certain work and I supply a clickable link to the work on my website, does that constitute communication to the public within the meaning of Article 3(1) 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 concept of communication to the public must to be interpreted broadly as the Court previously held on 4 October 2011 (Football Association Premier league; C-403/08) and on 7 March 2013 (ITV Broadcasting; C-607/11). It includes two cumulative criteria:

• An ‘act of communication’ of a work and,
• The communication of that work to a ‘public’.
  

In the specific case of Svensson, the creation of an hyperlink is considered as an act of communication to the public within the meaning of article 3, paragraph 1, of Directive 2001/29, in the case that the communication is directed to a new public.

According to the Court, "in order to be covered by the concept of ‘communication to the public’, within the meaning of Article 3(1) of Directive 2001/29, a communication, such as that at issue in the main proceedings, concerning the same works as those covered by the initial communication and made, as in the case of the initial communication, on the Internet, and therefore by the same technical means, must also be directed at a new public, that is to say, at a public that was not taken into account by the copyright holders when they authorised the initial communication to the public."

The Court concluded that Article 3(1) of Directive 2001/29 cannot be construed as allowing Member States to give wider protection to copyright holders by laying down that the concept of communication to the public includes a wider range of activities than those referred to in that provision.

Le 26 février 2014, le Sénat a adopté définitivement la proposition de loi visant à renforcer la lutte contre la contrefaçon, par un vote à l'unanimité.

Le texte modifie le code de la propriété intellectuelle, le code des douanes, le code de la sécurité intérieure ainsi que le code des postes et des communications électroniques, afin de renforcer l'arsenal juridique français de lutte contre la contrefaçon.

Parmi les dispositions importantes :

• le renforcement des dédommagements civils accordés aux victimes de contrefaçons ;
• l'alignement de la procédure de saisie-contrefaçon applicable en droit d'auteur sur celle en vigueur en propriété intellectuelle ; 
• l'extension de la compétence des douanes en matière d'infiltration ainsi qu'en matière de "coups d'achat" à l'ensemble des marchandises contrefaisantes ; 
• l'alignement de l'ensemble des délais de prescription du code de la propriété intellectuelle sur le délai quinquennal de droit commun.

Consulter le texte

While the UK Consumer Rights Bill is still in its Parliamentary progress, the final text of the French Consumer Rights Bill called "projet de loi relatif à la consommation" has finally been approved yesterday, thursday 13th of February 2014.

The bill is aimed to enhance the protection of consumers on various aspects. It also contains amendments to the French Intellectual Property Code, as far as geographical indications are concerned.

This bill creates a new possibility for consumers to bring "a French class action". It will allow consumers to gather their individual material damage claims in order to bring a single action to justice. Nevertheless, this system is not comparable with the US class action. New Art. L. 423-1 of the French code de la consommation foresees that only state authorized consumer associations are entitled to bring this group action.

A professional may be targeted by a class action for the breach of its legal or contractual obligations only in two specific cases:

• whether in the context of the sale of goods or the provision of services, or
• for damages resulting from antitrust practices as defined in title II Book IV of the French commercial code or articles 101 and 102 of the TFUE.

The text clearly excludes losses resulting from bodily or moral injury. As a consequence, it will not be possible to sue some companies such as the pharmaceutical and cosmetic industries or toys manufacturers if one of their products causes bodily harm.

The financial services sector and the industries providing services and intangible goods such as telephony services, electricity, gas and water will probably be the sectors most targeted by these new proceedings.

We can also imagine, regarding counterfeit goods, that consumers who bought fake products which present a trademark or logo that is identical to or substantially indistinguishable from the trademark of another, could bring an action against the seller of these products in order to obtain compensation for the material loss notably due to the destruction of these goods.

The bill establishes two kind of procedures: the normal one and a simplified procedure.

In the common procedure, the judge will follow a step by step reasoning and will:

•  determine whether the conditions required to launch a class action are met and then, if necessary, will rule on the liability of the professional;

• define the group of consumers effected by the professional's liability;
• set the ticonditions for becoming a member of the group and obtaining compensation for the loss (i.e., opt-in); and
• determine the amount of the losses or all the elements required to assess them.

Regarding the simplified procedure, the text provides that "when the identity and the number of injured consumers are known and when these consumers have suffered a loss of the same amount or of an identical amount over a period of reference, the court, after having ruled on the company's liability, may order such company to indemnify them directly and individually, within the time and conditions it deems appropriate".

A decree should intervene in order to define the conditions of this procedure. 

This is the story of  Mr Blomqvist, a private citizen of Denmark who bought, for his own use, a faxe Rolex watch via Internet, on a chinese e-commerce website.

In November 2011, the Danish Maritime and Commercial Court held that the import of such a fake watch was violating the trademarks rights of Rolex and as a consequence, that Danish Customs were able to detain the good and to destroy it, without compensation.

As M. Blomqvist could not accept the fact that he had to buy another - genuine - watch, he appealed against this decision.

On September 18, 2012, the Danish Supreme Court decided to submit a preliminary question to the European Court of Justice (ECJ). 

In a nutshell, the Supreme Court wished the ECJ to clarify:

- whether "distribution to the public" (as mentioned in Directive 2001/29/EC) covers the situation in which a private person buys a product via a non-EU online store or implies that the seller - apart from the fact that an agreement on sale has been made and that the seller has effectuated the shipment - has aimed its advertisement towards the public in the member state of the buyer?

- whether, under the Customs Regulation (1383/2003), goods infringing IP rights sold to a person residing in the territory of a Member State through an online sales website in a non-member country, enjoy the protection afforded by the regulation at the moment they enter the territory of that Member State. In other words, The ECJ was requested to say if that sale must be considered, in that member state, as constituting "use in the course of trade".

These two questions have to be seen in the light of recent ECJ judgments in L'Oreal and Philips-Nokia.

On February 6 2014, th ECJ ruled as follows:

"Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights must be interpreted as meaning that the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State."

Trademarks holders should be very satisfied! Mr. Blomqvist not that much...

Please find hereby the link to the ruling in the Rolex case:

http://curia.europa.eu/juris/document/document.jsf?text=&docid=147506&pageIndex=0&doclang=EN&mode=req&dir=&occ=first&part=1&cid=494380

Welcome!

As I have the opportunity to be involved in the small world of IP in Brussels as a Bluebook trainee (you know, the European Commission parasits also called stagiaires...), I decided to create this blog in order to provide independent news, features and analysis on International and European IP Law!

After studying International and European business law in France and then in UK and Chile, I decided to specialize in Intellectual Property and Economic Law in 2010. Since October 2013, I graduated from the Paris Bar School.

I would be delighted to discuss IP/IT related issues with you!

Do not hesitate to email me : ipipiphurrah@gmail.com

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