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English Premier League football is a global, multi-billion pound business. The Premier League derives much of its income from the auction of territorial licences to broadcasters throughout the EU and the world. Each broadcaster beams matches live into private homes and pubs within its licensed territory in return for subscription fees.Key points
Although satellite signals are broadcast indiscriminately across the continent, territorial divisions are enforced by signal encryption and restrictions on the sale of decoder cards. Following attempts to stymie parallel trade in decoder cards by use of criminal and civil proceedings, the High Court has referred questions to the CJEU on the interpretation of the relevant rules. Advocate General Kokott has advised the CJEU that territorial divisions of the sort imposed by the Premier League are contrary to the internal market freedoms and EU competition law.Practical significance
The Opinion, if followed by the CJEU, will have considerable ramifications for broadcasting and other areas in the digital economy. This article considers the Opinion and outlines the business implications that might follow were the CJEU to follow the Opinion.
Roving injunctions and John Doe orders against unidentifiable defendants in IP infringement proceedings
In 2003 Mr. Justice Laddie brought back John Doe to assist both Harry Potter and the courts of England in dealing with defendants whose names were not known, but who could be identified ‘by their works’. The use of such ‘Persons Unknown’ actions has been gathering momentum since that time and has been used in a number of different types of proceeding.Key points
John Doe or "Persons Unknown" proceedings are used and orders given when parties are identifiable by description but when the claimant is unaware of their names. The description must be sufficient to identify the party such that it is plain the order applies to them. Alternatively, many cases use representative party procedures under CPR 19.6 when at least one defendant's name is known. John Doe orders have tended to be used in personal privacy, protestor, copyright, and confidential information cases. John Doe orders have been used incredibly extensively in Canada which may give some roadmap to their future use in the UK.Practical significance
Practitioners need to be aware when drafting proceedings that they may not have time to seek Norwich Pharmacal-type relief and identify all of the parties before commencing an action and seeking injunctions. In an IP context, orders in this genre have been used to restrain counterfeits outside of concerts, sales of literary works prior to distribution dates, and copyrighted works on stolen laptops.
Domain names are primarily Internet addresses but also serve as business identifiers. There is still no common standpoint on the legal nature of domain names.Key points
Are domain names property or just relative rights that result from the contractual relationship between the registrar and the person registering the domain name? Neither national legislations nor the international agreements address this issue. The idea of domain as property has over time become more significant and more or less prevailed. Given the fact that there is no legislation recognizing domain names as property or regulating the scope of such a right in a domain name, and that the case law on whether domain names are considered property is different from country to country, the legal nature of domain names depends mainly on the applicable law in question.Practical significance
If we consider them property then the fact that they are intangible and represent a right to a domain name means that they are very similar to intellectual property rights. However the scope of such property right cannot be defined by applying old rules and there are more fields in which the recognition of domain names as property would have impact. Perhaps in the future, legislation will recognize domain names as a sui generic intellectual property right defining its scope of protection as to protect its function as a business identifier.
In the digital era cultural institutions, such as libraries, museums and archives, face new opportunities, but also new challenges. While digital technologies enable these institutions to preserve and disseminate their collections on a wider scale, copyright creates a "bottleneck" which is hard to clear.Key points
Cultural institutions in general do not dispose of sufficient know-how or budget to tackle these issues. Sometimes the law creates more than just a bottleneck: in the case of orphan works, new customs will have to be backed by legal changes in order to legitimize online use of copyrighted works. Otherwise these acts will simply remain illegal.Practical significance
In their search for functional, yet affordable solutions, cultural organisations often refer to "collective licences". But what does this notion of ‘collective licence’ exactly entail? What kind of collective mechanisms exist in the realm of copyright and what is the type of collective solution cultural organizations could use?
British and German law provide diametrically opposed answers to the question of the transferability and thus the marketability of copyright property assets.Key points
Under the current legal situation in Germany, the non-transferability dogma of copyrights is maintained. The law thus continues to follow the monistic theory. However, in recent years it has been observed in German legal literature that this dogma has been eroded. In fact, there are examples showing that the copyright can be legally transferred.Practical significance
This development is interesting because German copyright goes one step further than the situation in the UK. Whereas moral rights cannot be transferred under British copyright law, and a waiver is possible at best, in Germany moral rights can factually be transferred under both the law of succession and employment law.
The phenomena of globalisation and increasing sophistication of consumers has led to a heightened desire for high-quality wines, spirits and food products that derive their unique characteristics from the geographical region from which they originate. The particular geographic identity of a product, known as a "geographical indication" can increase the marketability and value of any number of consumer goods which includes everything from textiles to food products. Due to its economic importance, there has been a growing concern about the protection of geographical indications which ultimately resulted in the 1994 TRIPS Agreement.Key points and practical significance
This paper analyses the need to extend protection of geographical indications to products and services other than wines. Part I puts forth the deadlock created under TRIPS agreement which provides a two tier system for the protection of geographical indications. It also encompasses the issue related to the extension of protection of geographical indications provided for in Article 23 under TRIP to products other than wines and spirits. Part II and III deal with the stake for the developing countries with special reference to India along with case studies. Finally, Part IV of the paper deals with the means through which the lacunae in the protection of GIs can be met with.
Having installed product regime, machinery for obtaining, and enforcing product patents including elaborate pre- and post-grant oppositions, Intellectual Property Appellate Board, India ought to create conducive environment for enforcing product patents. Denial of patent linkage in Bayer v UOI (Petition(s) for Special Leave to Appeal (Civil) No(s).6540/2010 can be detrimental to the newly installed product patent regime and innovative drug manufacturing industry in India for it may either promote litigation or acquisition of generic manufacturers by drug innovative companies.Key points
Disruption of the linkage of monopoly granted to innovative drug manufacturers by way of product patents and simultaneous allowance of marketing approval to generics manufacturers of the original drug may have non-desirable consequences in India. Remedy for abuse of monopoly, such as upscale costs, lies somewhere else.Practical significance
In summary, denial of patent linkage in India is a negative development. Availability of life-saving drugs may be ensured through compulsory licences, declaration as to non-infringement, non-statutory defence of public interest, patent revocation, drug price control, and competition law. The situation calls for revamping of the role of DCGI.
The Court of Appeal for England and Wales has overturned a decision from the High Court that had granted summary judgment to the defendant in a patent infringement dispute and ordered the case to proceed to a full trial.
US reissue proceedings may be used to add additional dependent claims even if none of the issued claims are changed.
The Court of Justice of the European Union (ECJ) has held that an injunction granted by a Community trade mark court under the CTM Regulation (40/94, now replaced by 207/2009) in one EU Member State has effect, in principle, throughout the EU.
The General Court has held that an earlier unappealed OHIM Board of Appeal decision bars the General Court from reviewing a subsequent OHIM Board of Appeal decision, relating to a later filed application for a trade mark, identical to the mark the subject of the first OHIM Board of Appeal decision.
The Australian Federal Court has confirmed the factors to be considered when determining whether use of a trade mark on an ‘international’ website constitutes use of the trade mark in Australia. The case highlights the difficulties presented in the online environment when a mark is owned by different parties in different jurisdictions.
In an unusual interpretation of the ECJ's guidance in Google France, the Higher Regional Court of Braunschweig compares Google's search engine with a shop assistant.
Applicants should be afforded an opportunity to restrict the class of goods originally applied for in the event of a successful limited opposition brought in the United Kingdom Trade Mark Registry.
In what might be the penultimate word on the legality of an advertiser using another's trade mark in his search engine keyword advertising, the Advocate General has delivered a welcomed opinion that while such advertising takes ‘obvious’ advantage of the reputation of the trade mark used, such advantage should not generally be considered unfair and the practice should be permitted in the interests of undistorted competition and consumer choice.
The Court of Appeal of England and Wales has again overturned summary judgment against an ex-EEA parallel importer and allowed competition and free movement ‘Euro-defences’ to proceed to trial. The Supreme Court has given permission to appeal and the case may go to the European Court of Justice.