Friday, 30 July 2010

American spellings -- or English?

A respected contributor to JIPLP, having received his proofs and being a little puzzled by some of the changes made to his submitted text, has written to me today to ask:
“Just as a matter of interest, may I enquire about the reasons for amending words such as characterised to characterized and emphasise to emphasize?”
Naturally, being aware of the leading role played by Oxford University Press in the maintenance of the highest standards of written English, he had taken great care to make sure that, in his spelling of verbs, the English "-ise" form was deployed rather than the American "-ize". Why then had his spellings been changed?

I asked this very question of the same publisher in 2003, when the same words – and others – were changed in the same manner. The response I received was that "-ize", rather than "-ise" was the Oxford University Press house style. When I objected that OUP was an English publisher but that this was an American style, I was curtly informed that it had been the OUP house style before the United States existed and that the publisher saw no reason to change it.

Bananabay or Eis.de — the ‘overlooked' German AdWord referral

Author: Birgit Clark (Boult Wade Tennant)

Eis.de GmbH v BBY Vertriebsgesellschaft mbH, Case C-91/09, Court of Justice of the European Union, 26 March 2010

Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq094

The Court of Justice of the European Union (CJEU) has handed down a court order in the German Bundesgerichtshof's AdWord referral, reaffirming its decision in Google France as to when a keyword advertiser's behaviour may amount to trade mark infringement.

Legal context

Article 5(1)(a) Directive 89/104 defines what constitutes trade mark infringement in cases of so-called double-identity: ‘The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade ... any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.’

Art 104(3) of the Rules of Procedure of the Court of Justice, inter alia, provides that ‘where a question referred to the Court for a preliminary ruling is identical to a question on which the Court has already ruled, or where the answer to such a question may be clearly deduced from existing case-law, the Court may ... at any time give its decision by reasoned order in which reference is made to its previous judgment or to the relevant case-law’.

Facts

Google's AdWord system
Eis.de is another AdWords case, involving the internet search engine provider Google's paid referencing service. Google operates a system called AdWords, which allows advertisements to be displayed under the heading ‘sponsored links’ alongside ‘natural results’ in response to keywords being entered in the search engine. In this article the terms AdWord and keyword are used interchangeably. In contrast to the cases in Google France and Google, Eis.de only deals with the entitlement of trade mark owners to act against advertisers; it does not deal with Google's liability. Google itself was not part of the proceedings.

The German Referral
The German AdWord referral in Eis.de GmbH v BBY Vertriebsgesellschaft mbH was originally called Bananabay in Germany (I ZR 125/07). The claimant, BBY Vertriebsgesellschaft mbH, and the defendant, Eis.de, were both active in the erotic entertainment industry. The claimant, who owned a German trade mark registration for the word BANANABAY, sought to stop Eis.de's use of that trade mark as an ‘AdWord', claiming trade mark infringement and seeking damages. The court of first instance, the Regional Court Braunschweig (9 O 2386/06), and on appeal the Higher Regional Court of Braunschweig (2 U 24/07) both held in favour of BBY. Eis.de appealed to the Bundesgerichtshof, which in turn decided to stay proceedings and referred the following question to the CJEU for a preliminary ruling:
Is there use for the purposes of Article 5(1)(a) of Directive 89/104 where a third party provides as a keyword to a search engine operator a sign which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party's website advertising identical goods or services appears in an advertising block set apart from the list of search results, that link is marked as a sponsored link and the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale?
Analysis

While most spectators believed that the Bundesgerichtshof's question should merit further detailed guidance from the CJEU, the court clearly saw things differently and held that the Bundesgerichtshof's question was ‘almost’ identical to question one in Google France (Joined Cases C-266 to 238/08) of 23 March 2010 which it had already answered. Consequently, the CJEU decided to answer the Bundesgerichtshof's question on AdWord use in a reasoned court under Art 104(3) of the Rules of Procedure of the Court of Justice.

Citing Google France, the CJEU reaffirmed that purchasing a third party's trade mark as a keyword constituted ‘use in the course of trade’ even where the sign purchased as keyword did not appear in the advertiser's ad itself. However, a trade mark proprietor could not oppose use of a keyword which was identical to its mark unless all the conditions set out in Article 5 and in the court's precedents relating to Article 5 were met. In other words, what was decisive was whether the advertiser's use of the keyword was use that was ‘liable to have an adverse effect on one of the functions of the mark’. Referring again to Google France, the CJEU reiterated that the functions of a trade mark not only included the ‘function of indicating origin’ but also other functions. As regards to keyword use, however, the relevant functions to be examined were the function of indicating origin and the function of advertising. Further, ‘AdWord’ use was not liable to have an adverse effect on the advertising function. Consequently Eis.de's use of BBY's trade mark as AdWord was not liable to have an adverse effect on the advertising function of BBY's mark. The CJEU again stressed that where a keyword purchased by a third party was identical to a competitor's trade mark, the ‘adverse effect’ had to relate to detriment caused to the ‘function of indicating origin’. Once more referring to its decisions in Google France, the CJEU reiterated that a trade mark owner should be entitled to prevent use of its trade mark as a keyword by an advertiser if the advertisement was so ‘vague’ that it did not enable ‘normally informed and reasonably attentive internet users’ to determine whether the goods or services referred to in the advertisement originated from the trade mark proprietor or an undertaking economically connected to it. Whether there was an adverse effect on the function of indicating origin, or a likelihood of such an adverse effect, had to be assessed by the national courts on a case-by-case basis. An adverse affect—and consequently trade mark infringement—would have to be assumed in two circumstances:
(i) where a third party's ad suggests that there is an economic link between that third party and the trade mark proprietor; or
(ii) where an ad is so vague concerning the origin of the goods or services that a normally informed and reasonably attentive internet user is unable to determine, on the basis of the advertising link and the commercial message attached to it, whether the advertiser is an unrelated third party or economically linked to that trade mark proprietor.
In light of the above the CJEU then answered the BGH's referral as follows:
Article 5(1)(a) ... must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party.
Practical significance

The CJEU's answer to the Bundesgerichtshof's question did not come as too much of a surprise and has not really added anything new to the discussion on AdWord use. What was more of a surprise was that the CJEU took the view that the German referral could be answered by way of a mere reasoned order.

Nonetheless, the CJEU's views on AdWords for the most part appear to be a logical extension of the Bundesgerichtshof's advertising and technology friendly precedents in pcb (I ZR 139/07), Beta-Layout (I ZR 30/07) and Bananabay. This author has little doubt that the Bundesgerichtshof will decide that the origin function is not adversely affected bearing in mind that the Bundesgerichtshof already argued in Bananabay and Beta-Layout that it would be a far-flung thought to assume that internet users would make a mental connection between a search term entered and a sponsored link displayed (provided that the sponsored link was visually separated from the ordinary search results and displayed next to these in a special advertising block) or to assume, on the basis of such an advertisement, an indication in relation to the origin of the goods or services advertised. Applying this approach, most AdWord cases will not amount to trade mark infringement as long as the ad is also phrased clearly enough not to fall foul of the CJEU's ‘vague’ criteria and provided that the advertiser sticks to advertising its own goods and services.

The Bundesgerichtshof must now decide whether it wishes to take the opportunity to establish more detailed guidance relating to AdWord use. For the eternally optimistic, there is also still some hope that the CJEU might further clarify some of the open points in response to the outstanding AdWord referral from the Dutch Hoge Raad der Nederlanden (Portakabin, C-558/08) and Arnold J's elegantly precise questions in the AdWord referral from the High Court of England and Wales in Interflora (C-323/09).

Thursday, 29 July 2010

Manuscript Central: the pleasure and the pain ...

Manuscript Central is the grand name given to the online system which manages the submission, peer-reviewing, amendment and processing for publication of all articles, Current Intelligence features, reviews and other JIPLP content. The system has been developed by ScholarOne and belongs to fellow publishers Thomson Reuters, from whom JIPLP's publisher Oxford University Press has a licence.

Its advantages are as follows:
* a clear state-of-play record is kept in respect of all materials offered for publication;

* this record is conveniently accessible by authors, reviewers, editors and members of the production team on a 24/7 basis and irrespective of their time zone or geographical location;

* no editorial material can become "lost in the system" since it can be tracked wherever it is and the system generates automatic reminders where content stays in the same place for too long.
There are also some downsides. Thus
* the initial uploading of an article requires the person submitting it to register as a user of Manuscript Central, and can be a little fiddly -- with the system occasionally "rejecting" material offered to it by not enabling it to be uploaded;

* some of the letters and messages generated by the system read as if they have been drafted by machine, and lack the friendly, personal touch (though non-automatically generated correspondence such as letters of acceptance or requests for rewrites can be personalised).
We'd love to hear from users of the system, so we can measure our perceptions against their own experiences. Does Manuscript Central work well? Does it inject a little excitement into authors' or peer reviewers' lives? Do other publishers who use the same system, or indeed other OUP titles, run the system in a better manner than JIPLP does? Do let us know by emailing me here.

Wednesday, 28 July 2010

In the pipeline: another Google Copyright Story

One of JIPLP's contributors, Jaime Espantaleón (see "Does private copying need an update in the UK?", Journal of Intellectual Property Law Practice, February 2008; 3: 115 - 124, abstract here), is writing another article for the journal. This little teaser gives a flavour of his thoughts on Google Book, the subject of his next article:

Another Google Copyright Story
"I very much like to pick up chestnuts, old rags and specially papers. It is pleasant to me to pick them up, to close my hand on them; … In summer or the beginning of autumn, you can find remnants of sun-baked newspapers in gardens, dry and fragile as dead leaves, so yellow you might think they had been washed with picric acid. In winter, some pages are pounded to pulp; crushed, stained, they return to the earth. Others quite new when covered with ice, all white, all throbbing, are like swans about to fly, but the earth has already caught them from below. They twist and tear themselves from the mud, only to be finally flattened out a little further on. It is good to pick up all that” (Jean Paul Sartre).
This excerpt is from Nausea, translated by Lloyd Alexander, and it can be read freely online via google.books.com.

Sartre died in 1980. Under European copyright laws, which are harmonized by the EU term directive, the book is still in copyright, since this monopoly control right which is given to authors runs for up to 70 years after death.

Those laws grant inter alia Sartre’s successors an exclusive right to authorize or deny the reproduction of Nausea and the right to make the passage quoted available on the internet (i.e. to display it online on someone’s computer).

The scope of the reproduction right in Europe includes even copying 11 words of a book if “the elements thus reproduced are the expression of the intellectual creation of their author,” as the European Court of Justice ruled in 2009 in the Infopaq case.

So why may we access a considerable portion of the pages of Nausea on the internet for free?
(A short dialogue opens between a fat lawyer in jeans and an old, hunch-backed judge with a wig)

Lawyer: Has Arlette Elkaïm-Sartre, Sartre’s child, struck a deal with Google?

Judge: Not likely.

Lawyer: Perhaps the publisher?

Judge: Gallimard would not be able to authorize such use, even if it wanted, since Sartre died before the promulgation of the right of making available online and French laws require the legal assignment to designate specifically the rights assigned to an editor.
The reason we may read Sartre’s diary of anxieties and that I can retype some of it is that Google may have believed it was within its copyright prerogatives. The problem is that it is not.

International copyright laws generally limit the monopoly rights of authors to allow the public to access and learn from the produce of the intellect, but limitations are circumscribed to non-commercial cases, such as educational and research copying, library preservation, citation. Yet Google earns revenue from advertising around its search book site.

The Mountain View company knows its boundaries, as evidenced by an amended class-action settlement agreement it reached in 2009 with US writers and publishers, which condones the digitization of more than 10 million copyright books, in-print and out.

Approval of Google's scheme is still under review by US judge of the Southern District of New York, Denny Chin.

The agreement provides Google with a prospective right to keep copying the same matter and make it available, in whole or in part, to US internet users, whether they pay for it or not. Users will also be able to print books, download them or order paper editions.

In exchange, authors get a cut of 70% of all sales proceeds in the US minus a 10% commission charged by Google and eventual taxes, in addition to a $45 million settlement in compensation for damages.

Books that no longer have copyright are in the public domain and are not covered because nobody can assert any intellectual property rights to them.

In the US the copyright duration varies depending on whether the book was published before or after 1923 and between that date and 1978.

If the oeuvre was published before 1923, such as T.S. Eliot’s poem “The Waste Land” it is public property. In Europe, the same poem is still subject to copyright.

If, on the contrary, it was published between 1923 and 1978, and registered with the Copyright Office, it could be subject to renewals which may extend protection to a total of 95 years from publication. Publications after 1978 enjoy the same term protection as in Europe.

The bulk of the material that Google will offer is composed out-of-print books, i.e. those that publishers have not found profitable to re-edit.

Many groups of authors and publishers around the globe have criticized this agreement. They seem to prefer culture to be hidden rather than duplicated.

In Europe the proposed settlement has stirred emotions and provoked the ire of French, German, Italian, Spanish and other European authors and publishers, as well as the governments of France and Germany.

The reason is that the settlement includes books first published in the US, books registered in the US before 2009 and those published in the UK, Canada and Australia.

Since registration with the US Copyright Office is currently required for the enforcement of copyrights, and that it was a prerequisite for enjoying copyright at all before the US adhered to the Berne Convention for the Protection of Literary and Artistic Works in 1988, virtually all the English language books in the world are covered by it.

The arrangement is particularly interesting because, first, it creates a new entity, a Registry, financed by Google with $34.5 million, which will manage royalties from Google sales in a similar fashion to the US Copyright Office’s allocation of remuneration from the administration of compulsory licences for cable and satellite retransmission of television and radio broadcasts.

Secondly, it binds non-US authors, unless they opt out, who did not directly negotiate with Google and the parents of orphan works -- book writers who are missing.

The means used in obliging non-represented parties is that of the US procedural rules on class actions, which allow the effects of settlement agreements to apply to “class members”, persons representing closely interrelated interests which constitute a class.

This mechanism is in my view permissible under international copyright law. In fact, in the Nordic countries, this way of tying non-represented rights-holders has been in place for decades through legal provisions in the Copyright Acts regarding extended collective licences.

Such licence provisions allow collecting societies representing a considerable number of rights-holders in the same kind of work categories to conclude collective agreements covering specific copyright exploitations with commercial users and extend their effects to equivalent non-represented rights-holders.

The UK Parliament failed to pass this type of licence into law for orphan works in the Digital Economy Act 2010 because both Houses of Parliament could not agree to it.

The Google class action settlement is indeed an extended collective licence where the legal provision that supports it is found in the Federal Rules of Civil Procedure pursuant to Title 28 of the United States Code.

European countries are now rushing to keep up with the digitization pace set by Google. The European Commission has established a Digital Agenda division, emphasizing “the urgent need to allow for similar projects [to Google books] to develop in Europe”, and is preparing copyright legislation to handle specific digital issues arising from the internet.

But European libraries do not have the Google patent invented by Francois Marie Lefebvre and Marin Saric in 2004 which creates 3D imagery of books using stereoscopic cameras, without which the scanning process is more expensive and strenuous.

Some projects in place are Europeana, the European digital library, and a private-public partnership named Arrow.

The webpage of Europeana crashed on its first launch date and European states are reluctant to share their cultural heritage with it. Arrow, the sister of the Registry, is a cooperative effort by dozens of collecting societies in Europe, representing the reprographic rights of writers and publishers, which attempts to interconnect databases containing information in more than 20 languages on authors and their books.

At a national level a success story is told by the Norwegian national library, which has formed an alliance with literary and non-fiction authors to display online full copies of in-copyright national and foreign books from the 1990s, in accordance with an extended collective licence model.

It is uncertain whether Google will ever reach a comparable collective understanding in Europe for its search book enterprise.

European online users’ ability to preview Nausea’s excerpts is a public gift, though illicit. This is the case in the US, too, until Judge Chin decides to end the suspense.

In the meantime I can flap my eyelids in fatigue, looking at a glimmering screen full of printed letters. It is good to read all that ...".

Jaime is a lawyer, specialized in Copyright and ICT Law, who takes an interest in audiovisual works.

Monday, 26 July 2010

The JIPLP archive and permissions for re-use

One feature of the Journal of Intellectual Property Law & Practice (JIPLP) that has not previously been described on this weblog is its online archive. You can browse the contents of all issues past, present and indeed future (i.e. from November 2005 to August 2010) by clicking here.

Accessing articles, Current Intelligence notes and other published items via JIPLP's archive, anyone who is registered with the Copyright Clearance Center's Rightslink service will be able to enjoy the convenience of its draw-down menu, which enables the user to obtain online permission for fifteen different forms of commercial or non-commercial use, or to stipulate the (non-listed) any use which he or she would like to make of the JIPLP work, receiving in return a quote on how much it might cost.

If you have used this system in order to gain permission to use JIPLP-published materials, and have any comment as to how it might be modified or improved, do please let me know, by emailing me here. Your opinions and experiences are really helpful since they enable us to provide the quality of service which our readers require, at a realistic price.

Monday, 19 July 2010

Current Intelligence

A quick reminder (for those who have forgotten) or explanation (for those who never knew): the short notes published in JIPLP are not called case notes but "Current Intelligence". This is partly a hint to authors that they should be current, and not merely of historical interest (we are reluctant to receive submissions covering cases decided more than three months earlier unless there are good reasons for doing so -- for example uncertainty as to whether the decision is a final one or whether it is going to be appealed, or where the delay is caused by translation issues or by the unavailability of a reliable transcript from which to work). They should also be intelligent, in the sense that the reader will come away from them with a sense of having gained a deeper understanding of or familiarity with the subject.

The Contributor Guidelines add:
"Contributors should keep their Current Intelligence articles, analysing recent key cases, legislation and topical matters, to between 500 and 1,500 words [please!] (but in exceptional cases a greater word length may be agreed with the Editor). Footnotes should not be used: references should be given only for the citation of cases, legislation and literature [but not the page and paragraph numbers of every quote: it can make the text unreadable], which should appear in brackets as part of the main text.
All Current Intelligence pieces should be written to the following template of headings:
* Title (descriptive) [and succinct: thus 'Record damages for patent licence breach' is preferable to 'Appellate court, reversing decision of trial judge, awards record amount of damages in bionic widget patent licence case']
* Name/citation of relevant case/legislation/material [court and country too, please ...]
* Single sentence summary [We are lenient about this when a court establishes two quite separate points or a new statute addresses different legislative issues]
* Legal context [Be specific: sometimes it's not immediately apparent, for example, whether an action is brought for trade mark infringement or passing off/unfair competition, or both]
* Facts [Contributors generally get the facts right. But please be sure to omit those facts that are irrelevant to the note]
* Analysis [This is the author's cadenza, a chance to shine and to demonstate genuine insight or creativity]
* Practical Significance [Please do not use the words "It remains to be seen ..." in this segment]".
Bearing all this in mind, if you would like to submit a Current Intelligence contribution, please contact Sarah Harris. She can let you know if anyone else has already submitted, or proposes to submit, a piece on the same case, statute or significant development. Please be assured that JIPLP solicits and welcomes Current Intelligence contributions concerning all areas of intellectual property and from all jurisdictions.

Thursday, 15 July 2010

Articles in search of an author

The sidebar of the jiplp blog contains a permanent, non-exclusive list of topics on which the journal welcomes the submission articles. There are many other topics on which articles are welcomed. Here is a selection of them:
* A review of how Chinese companies fare as litigants in Community trade mark and Community design disputes before the Office for Harmonisation in the Internal Market (OHIM) [TAKEN];

* Creation and enforcement of rights in digitised versions of public domain artwork [TAKEN];

* Affordable strategies for monitoring and enforcing rights against the transit of counterfeit goods [TAKEN];

* Approaches towards the post-contractual plugging of gaps in hastily-negotiated IP licences [TAKEN];

* A private practitioner's guide to the perils of dealing with in-house IP lawyers [TAKEN];

* Key points to consider when licensing the exploitation of celebrity name and image rights [TAKEN];

* A comparison of the treatment of look-alikes, smell-alikes and sound-alikes [TAKEN];

* Language issues in everyday patent practice [TAKEN];

* Crisis management for branded goods facing product recalls [TAKEN];

* IP "super-regimes" of the Olympics and Fifa -- should these models be developed or dismantled? [TAKEN]
If you would like to tackle one of these subjects yourself or together with a colleague, either as it stands or with some variation, please email me here and let me know. And here, in the event that you've decided to write on these or indeed other topics, is some guidance for authors of articles submitted to JIPLP.

Monday, 12 July 2010

IP services and professional standards

The August 2010 issue of JIPLP is now available online (you can take a look at its contents here). The Editorial runs as follows:
"IP Services and Professional Standards

How do you know if a firm of patent or trade mark attorneys, or any given member of those professions, is any good? Clients need an answer to this question, but they are not always sure who can tell them. Terms such as ‘leading firm’, ‘leading edge’, ‘respected practice’, ‘first-class service’, ‘exceptional value for money’, and ‘we address the individual needs of each client’ are more or less par for the course and, while truth in advertising is a value to which we all subscribe, through legislative provisions and case law, such terms are generally regarded as marketing puffs rather than as precise and literal descriptions.
So if clients need more information, to whom should they turn? Many firms quote polls or awards in which they have been identified as Best Firm in some category or other, but anecdotal evidence derived from discussions with the firms in question suggests that they generally treat them with mild amusement rather than as precious accolades, probably since the statistical reality is that, in any year, Top Dog status is generally likely to be bestowed on one's competitors. Ideally, a business in need of good IP representation should be able to ask its competitors how satisfactory they have found their own professional service suppliers—but for obvious reasons, this does not normally happen.

There are some objective and freely available data from which a potential client can get some idea of a prospective firm's activities, but even those are not very helpful. Lists showing which firms file the most trade marks or patents, for example, show the extent of involvement of those firms in filing work and may also reflect the degree of commercial activity of their clients, but they do not indicate if that work is done well and within an acceptable range of budgetary commitment on the part of the client. Likewise, data showing which firms are most frequently in court might suggest expertise in IP litigation or its opposite—a failure to negotiate or delivery settlement of disputes without the need to institute proceedings.

The client is not alone with these difficulties. IP practitioners must identify functional excellence and value for money in fellow practitioners in other jurisdictions, when representing their clients' transnational or global interests. Judging by the number of requests I receive for recommendations, even skilled and responsible practitioners prefer to back their own impressions with corroborative opinions of others (perhaps these requests themselves reflect a commendable caution and prudence on the part of those who make them).

The British Standards Institute (BSI), for one, would have IP service providers sign up to a set of clearly stated professional and ethical standards which would entitle them to display the BSI's logo and thus hold out to the public, more persuasively than a thousand self-proclaimed hyperboles, that they maintain the level of professional performance required by the BSI number in question. BSI standards exist for common consumer products (which visitor to Britain has not encountered BS 1254 for plastic toilet seats?) as well as countless industrial and now professional service. Why then has the proposed standard for IP services not met with enthusiastic applause?

While the IP professions may not at present be able to point to a specific standard which speaks to their clients and gives them confidence, they already have something else. Whatever their terminology, patent and trade mark attorneys, solicitors, barristers, and others are not only highly trained and highly skilled but highly regulated. The requirements of professional regulation are in many jurisdictions so onerous that one might reasonably ask whether, in addition to a current practising certificate, any further assurance is needed. Given the vigorous competition in the current climate, which tends to boost aspirations towards professional excellence while depressing fees, it might be felt that the client needs no further assurance at all".

Friday, 9 July 2010

Does listening to music excerpts online amount to fair dealing?

Authors: Emir Aly Crowne-Mohammed (University of Windsor, Faculty of Law, Windsor, ON, Canada) and Yonatan Rozenszajn (former Law Clerk, Federal Court, Canada)

Society of Composers, Authors and Music Publishers of Canada v Bell Canada, et al., 2010 FCA 123, 14 May 2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq089

In Canada the Federal Court of Appeal agrees with the Copyright Board that the fair dealing exception relating to ‘research’ is broad enough to cover 30-second ‘previews’ of songs online.

Legal context

Section 29 of Canada's Copyright Act, RSC 1985 provides (among other things) that ‘fair dealing for the purpose of research or private study does not infringe copyright’.

Facts

The Copyright Board, created under the Copyright Act, is ‘empowered to establish, either mandatorily or at the request of an interested party, the royalties to be paid for the use of copyrighted works, when the administration of such copyright is entrusted to a collective-administration society. The Board also has the right to supervise agreements between users and licensing bodies and issues licences when the copyright owner cannot be located’: Copyright Board of Canada: Our Mandate.

In 1995 the Society of Composers, Authors and Music Publishers (SOCAN), a collective society under the Copyright Act, which administers performing rights in Canada, applied to the Copyright Board for the approval of tariffs on musical works communicated over the internet. As part of this application, SOCAN called for a different (and higher) tariff rate for music downloads that offered 30-second previews (or less) versus downloads that were offered without previews.

A number of parties which included broadcasters, internet service providers (ISPs), and Apple Canada Inc. challenged one or more of the proposed tariffs on a number of grounds, but not on fair dealing. The Board on its own initiative raised the issue of whether offering previews of musical works online amounted to fair dealing for the purpose of research and was therefore not compensable by way of a tariff.

The first part of the Board's decision was released on 18 October 2007 (Collective Administration of Performing Rights and of Communication Rights (Re) Copyright Act, subsection 68(3) File: Public Performance of Musical Works Statement of Royalties to be Collected by SOCAN for the Communication to the public by Telecommunication, in Canada, of Musical or Dramatico-musical Works Tariff No. 22.A (internet – Online Music Services) 1996–2006 [2007] CBD No. 7). In this decision the Board concluded (among other things) that providers of online music previews were entitled to rely on the fair dealing provisions of the Copyright Act since listening to 30-second previews before deciding to permanently purchase a musical work should be regarded as a form of consumer research. SOCAN sought a judicial review of the decision by the Federal Court of Appeal.

Analysis

In deciding that the Board's reasoning was neither unreasonable nor in error, the Federal Court of Appeal adopted the ‘large and liberal’ approach to the research exemption under the Copyright Act's fair dealing exemptions as set out by the Chief Justice of the Supreme Court of Canada in CCH v Law Society of Upper Canada [2004] 1 SCR 339 at para. 51:
...‘Research’ must be given a large and liberal interpretation in order to ensure that users' rights are not unduly constrained. I agree with the Court of Appeal that research is not limited to non-commercial or private contexts.
That decision emphasized that the ‘fair dealing exception, like other exceptions in the Copyright Act, is a user's right. In order to maintain the proper balance between the rights of a copyright owner and users' interests, it must not be interpreted restrictively’ (para. 12). In keeping with this approach, the Federal Court of Appeal noted that the term ‘research’ as it was used in the Copyright Act, was not limited by qualifiers like ‘scientific’, ‘economic’ or ‘cultural’. Accordingly that term could be interpreted in a context-specific inquiry.

Given the nature of the ‘research’ involved in users listening to the 30-second clips or previews of songs online, the court felt that research be given its primary and ordinary meaning, this being the use of previews to help consumers in their search for a particular song as to ensure its authenticity and quality before purchasing it. In this context, ‘research’ included consumer research.

The court then examined whether a 30-second preview, or less, was fair. The Federal Court of Appeal agreed with the Copyright Board in holding that the amount of the dealing is presumptively fair, given the length of the complete work.

Practical significance

The Federal Court of Appeal ruling follows the clear guidance of the Chief Justice of the Supreme Court of Canada in CCH v Law Society of Upper Canada [2004] 1 SCR 339 and rightly expands the numbers of activities that may fall within the fair dealing exemption for research. Indeed, copyright law is often touted as a balance between users and creators. This decision goes beyond mere ‘lip service’ and empowers users with powerful rights – rights which become particularly relevant in the new digital economy.

Tuesday, 6 July 2010

Review of Community plant varieties decisions: the ECJ speaks

Author: Gert Würtenberger (Wuesthoff & Wuesthoff, Munich)

Ralf Schräder v Community Plant Variety Office (CPVO), Case C-38/09 P, Court of Justice of the European Union, 15 April 2010

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq088

The European Court of Justice (ECJ) upheld the rejection of an application by the Community Plant Variety Office (CPVO), confirmed by the Board of Appeal of the Office and the Court of First Instance due to lack of distinctness of the candidate variety compared to a reference variety, while sustaining the General Court's opinion of the wide discretion of the CPVO. Finally, the ECJ discussed the extent to which the General Court may review decisions by the Office and its Board of Appeal and the scope of review of the ECJ concerning judgments of the General Court in plant variety matters.

Legal context

In the framework of the examination of whether a plant variety fulfils the protection requirements, distinctness, uniformity and stability, as defined in Article 6 of Council Regulation on Community Plant Variety Rights 2100/94, according to Article 76 of the Regulation the Office is obliged to conduct all necessary investigations on the facts of its motion to the extent that they fall under the examination as determined by Articles 54 and 55 of the Regulation. Moreover, the Office must disregard facts of items of evidence which have not been submitted within the time-limit set by the CPVO.

Facts

The application for a Community plant variety right for the plant variety SUMCOL 01, a plant of the species Plectranthus ornatus and the result of the crossing of a plant of this species and a plant of the species Plectranthus ssp was rejected by the CPVO for lack of distinctness. Within examination proceedings, doubts arose about whether the variety was new as there were indications that the candidate variety was a wild form originating in South Africa, which had been marketed for years in that country as well as in Germany. The Bundessortenamt, as the Examination Office of the CPVO, approached Kirstenbosch Botanical Gardens (South Africa) with a request for cuttings or seeds of Plectranthus comoses or Plectranthus ornatus. Following this request, a gentleman from Kirstenbosch Botanical Gardens provided cuttings, which, however, originated from the private garden of the sender, a plant expert working with Kirstenbosch. In order to exclude the possibility that any differences between the candidate variety and the plant material from South Africa, used as the reference variety, were due to environmental factors, cuttings had been made from the reference variety. As a result of the comparison trials, the Examiner responsible for the technical examination regarded differences between the candidate variety and the variety obtained from South Africa as minimal although, according to an email from the Examiner, the differences were ‘significant’ but barely visible. Following an exchange of communications between the applicant and CPVO, the Office refused the application for a Community plant variety for lack of distinctness of the SUMCOL 01 variety in accordance with Article 7 of Regulation 2100/94.

The Board of Appeal, following a hearing, was not entirely convinced that the reference variety was a matter of common knowledge. For this reason, it ordered the taking of evidence, however making it dependent upon an advance payment of fees by the appellant of 6.000 under Article 62 of Regulation 1239/95. The appellant claimed that he was not required to provide evidence and had not sought the taking of evidence which had been ordered as it was the CPVO's duty to determine distinctness. For this reason, the appellant refused to pay the fees.

The Board of Appeal dismissed the appeal, concluding that the evidence at hand sufficed and that the requested taking of evidence was no longer necessary to enable it to decide on the question of distinctness of the candidate variety. As the Board considered SUMCOL 01 as not clearly distinguishable from a reference variety which was a matter of common knowledge at the time the applications were filed, the protection requirement ‘distinctness’ was not given.

The applicant appealed this decision to the General Court. Before dealing with the plea that the Board of Appeal had erred in the application of the criterion of distinctness, the General Court pointed to ‘preliminary considerations as to the scope of the Court's power of judicial review’. In that context, it referred to longstanding ECJ case law in other fields of Community law in which wide discretion of the Community authority had been confirmed when complex scientific or technical issues must be decided upon. The Court confirmed that case law might be generally applicable in cases in which administrative decisions are based upon complex appraisals in other scientific domains, such as botany or genetics. In these cases, the exercise of discretion is subject to a very limited judicial review, restricted to examination of the accuracy of the findings of fact and law and control of the Authority's activities; the exercise of this discretion must be neither excessive nor represent misuse of its powers. As the Court recognised the examination of distinctness as being of a complex scientific and technical nature, leading to limited possibility for reconsideration by the Court, the Court confirmed the correctness of the decisions of the CPVO and the BOA.

The applicant contested the judgement of the General Court by way of an action filed with the European Court of Justice.

Analysis

The applicant raised two main pleas, the first of which discussed procedural defects whereas, at first sight, the second dealt with material deficiencies.

With the first plea, the applicant pointed to procedural deficiencies leading to the finding that SUMCOL 01 was not distinct from the variety from which the plant material was obtained from South Africa. In proceedings before the CPVO the applicant alleged that the material provided from South Africa and used as a reference variety was plant material from SUMCOL 01. This was, however, refuted by the Office as well as by the Board of Appeal due to the differences between the candidate variety and the reference variety revealed during the technical examination. In addition, the applicant raised arguments before the CPVO and the Board of Appeal against the holding that the reference variety was of common knowledge. Before the Board of Appeal, reference was made, inter alia, to the discussion of Plectranthus ornatus in various scientific publications which, in the Board's opinion, confirmed the statements of the gentleman of Kirstenbosch about the common availability in South Africa of the plants of the variety supplied by him. As the applicant did not substantiate and offer proof of his argument that the varieties discussed in the scientific publications were not the same as those supplied from South Africa and used for the technical examination, the Court confirmed that the Board of Appeal was in a position to regard the variety supplied as the same as that discussed in scientific literature. As the Board of Appeal did not base its assessment that the candidate variety is of common knowledge on the description in scientific literature, but made reference to it only in support of its opinion that common knowledge was proven by the plant material supplied from South Africa, there were no deficiencies in the Board of Appeal's conclusion that the reference variety was of common knowledge. In proceedings before the Court, the applicant argued that this holding was based on incomplete recording of statements made before the Board of Appeal, rendering of the minutes of the hearing in breach of Article 63(2) of Regulation 1239/95 and the General Court's reliance on items of evidence not in the case file, resulting in findings based on mere speculation as far as a certain communication was made by the Examiner during the technical examination.

The ECJ emphasized that pleading that the General Court could not reasonably conclude that the facts and circumstances referred to were not sufficient to refute conclusions by the Examination Division, and confirmed by the Board of Appeal, was formally a plea on an error of law, but called into question the factual assessment carried out by the General Court and, in particular, it disputed the probative value it attached to those facts. Article 225(1) EC and the first paragraph of Article 58 of the Statute of the Court of Justice limit an appeal only to points of law. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. Consequently, the Court regarded the submitted pleas as inadmissible.

As regards the appellant's argument that the General Court distorted the facts and evidence when it assessed the argument on questions of the distinctness of the candidate variety, the ECJ made it clear that the General Court is the sole judge of any need to supplement the information available to it in respect of the cases before it. It emphasised that the General Court is the sole authority in judging whether the evidence before it is sufficient and thus is not subject to review by the Court of Justice on appeal, unless the evidence available has been distorted or the inaccuracy of the findings of the General Court becomes apparent from the documents in the case file. In this context, the Court also stressed that facts not submitted by the parties before the departments of the CPVO cannot be submitted at the stage of the action brought before the General Court, as the General Court is called upon to assess the legality of the decision of the Board of Appeal on the basis of facts submitted to the Office and the Board of Appeal.

Further, the appellant claimed infringement of principles governing the taking of evidence, by stating that the General Court imposed excessive demands upon the Applicant and that the General Court's decision was finally based on distortion of facts and evidence. This lead to the incorrect appraisal of the probative value of the statements made by the South African person, Mr van Jaarsveld, who supplied the material of the candidate variety. This gentleman elucidated in detail to the Bundessortenamt the origin of the plant material in his garden, leaving the Board of Appeal no doubt that the variety was commonly known long before the application for SUMCOL 01. The Court found, however, that the appeal judgement was not marred by an error of law.

The second plea alleged contradictions, errors and breach of Community law concerning the account taken of scientific publications in order to establish that the reference variety was a matter of common knowledge, that the General Court erred in law in failing to take account of the Applicant's arguments concerning the infringement of Article 62 of the Regulation and finally alleging errors in law in assessing the Examiner's participation in the hearing.

The General Court accepted in the appeal decision that the detailed description of a variety appearing in a scientific publication can be taken into account as evidence that a variety is a matter of common knowledge within the meaning of Article 7(2) of Regulation 2100/94. Apart from the fact that scientific literature was referred to merely as confirmation of Mr van Jaarveld's statement, the General Court included the reference purely for the sake of completeness. According to settled case law, the complaint directed against grounds of a judgement of the General Court included purely for the sake of completeness will be rejected outright since it cannot lead to the judgement being set aside and is therefore nugatory.

In proceedings before the Board of Appeal, the Board of Appeal heard the Examiner who performed the technical examination. The applicant argued that, due to lack of a decision ordering a measure to take evidence, the Examiner should not have been heard. However, the General Court regarded the Examiner as an agent of the CPVO and therefore measures to take evidence did not have to be decided upon in order to hear her. In the applicant's opinion, this holding was based on an error in law. The European Court of Justice confirmed the General Court's holding under Article 15(2) of Regulation 1239/95, that the acts performed by the Examiner of an office appointed by the CPVO as an examination office must be regarded as acts of the CPVO as far as third parties are concerned. As it is entirely for the President of the CPVO to decide upon the composition of his delegation, the Examiner had to be regarded as an agent. For this reason, her presence at the hearing did not require the adoption of a measure for taking evidence within Article 60(1) of Regulation 1239/95.

Practical significance

This case raised issues of the scope of discretion of the CPVO, of new facts in further proceedings, admissibility and the scope of judicial review of decisions of the CPVO and its Board of Appeal.

As is the case with regard to Community designs and Community trade marks, decisions taken by the CPVO are potentially subject to a three-tier review system, unless the CPVO does not change its decision appealed by an interlocutory revision. Decisions of the CPVO may be appealed to the Board of Appeal, followed by the possibility of judicial review by the General Court and, under Article 225 EC, by the Court of Justice on appeal.

The subject matter of review differs at each of those levels. While, according to Articles 71 and 72 of Regulation 2100/94, the Board of Appeal may re-examine the case and, in doing so, may itself exercise any power which lies within the competence of the CPVO, including conducting a new full examination as to the merits of the appeal in terms of both law and fact, proceedings before the General Court and the Court of Justice are much narrower. The General Court is called upon to review the lawfulness of an appeal, whereas the Court of Justice is limited to the control of legality of the decision or judgement of the General Court (Article 225 EC). Consequently the General Court considers whether a decision is, by reference to the time of its adoption by the Board of Appeal, initiated by one of the grounds mentioned in Article 73(1) of Regulation 2100/94, namely lack of competence, infringement of an essential procedural requirement, infringement of the Treaty of the Regulation on Community Plant Variety Rights, or of any rule of law related to their application or misuse of power. In contrast, the Court of Justice has no jurisdiction to review the decision taken by the Board of Appeal or the decision originally taken by the CPVO, nor is the appeals procedure intended as a general re-examination of the application brought before the General Court. In proceedings before the Court of Justice, its jurisdiction is limited to reviewing the findings of law of the General Court on the pleas argued before that court.

In this case the General Court as well as the Court of Justice declared case law applicable according to which judicial review of decisions of Community institutions is limited. These are cases where Community authorities are called upon to make complex assessments of a technical, scientific, economic or social nature. When reviewing an administrative decision based on such an appraisal, the Community adjudicator should not substitute its own assessment for that of the competent authority. Consequently, judicial review in such cases is limited to verifying that the measure in question is not vitiated by any manifest errors or misuse of power and that the authority concerned has not manifestly exceeded the limits of its discretion. In such cases, the court can only examine whether the evidence relied upon is factually accurate, reliable and consistent and whether that evidence contains all the information that must be taken into account in order to assess the complex situation concerned.

As the administrative decision in Community Plant Variety Rights is a result of complex assessment of the type referred to in that case law, as is the case when appraising the distinctive character of a plant variety in light of the criteria laid down in the Regulation, decisions of the CPVO and its Board of Appeal are subject to very limited judicial review. As this case shows, the CPVO has extremely wide discretion in the evaluation of the results of the technical examination. While it is the duty of the Office to examine ex officio all reasonable sources in order to decide upon the protection requirements – distinctness, stability and uniformity – applicants need to introduce substantiated evidence of facts in support of the protection criteria even if, in the opinion of the CPVO, they are of minor significance. Otherwise there is a risk that such facts will not be considered and followed up in greater detail ex officio, whereas – for procedural reasons – the applicant will be precluded from submitting such facts and evidence in further proceedings.