IP Two Minute Monthly – June 2021

This is our summary of developments and cases in the world of IP from June which should take you no more than two minutes to read:

22.09.2021

Content Hosting and Copyright

The CJEU has ruled that companies such as YouTube and other file-sharing platforms should not be liable for copyright infringement under the communication to the public right unless they contribute beyond merely making the platform available which gives access to copyright-infringing content. Relevant criteria which could make them liable include not using appropriate technical measures or providing tools specifically intended for illegal sharing. They would also have a defence under the e-Commerce Directive unless they played an active role which would give them knowledge of specific illegal acts or control (Petersen v Google LLC and others and Elsevier Inc v Cyando AG (Joined Cases C-682/18 and C-683/18)).

Investment and Database Rights

Internet search engines extract and re-utilise the content of databases within the meaning of the Database Directive when they copy and index the content of online databases and make those contents available for users to search against. However, the CJEU has apparently introduced a new criteria for infringement not expressly set out in the Database Directive by concluding that such activities will only amount to an infringement provided that they adversely affect the database maker’s investment in their obtaining, verification or presentation of the contents of their database (SIA CV-Online Latvia v SIA Melons (Case C‑762/19)).

Customer Details and Online Infringements

The CJEU has ruled that customer information relating to illegal file-sharing on peer-to-peer networks can be obtained from ISPs provided that the requests meet certain conditions, including being non-abusive, justified and proportionate. Users who upload pieces of protected content (e.g. media files including parts of films) make those copyright-protected works available to the public (Mircom International Content Management & Consulting (MICM) Limited v Telenet BVBA (Case C‑597/19)).

Technical Result and Trade Marks

The CJEU has upheld a General Court decision which had overturned a refusal to register the pattern of a single groove on a tyre tread. The evidence had not established that the groove could achieve the technical result claimed (Yokohama Rubber Co Ltd v Pirelli Tyre SpA (Joined Cases C-818/18 P and C-6/19 P)).

Online Content and Copyright

The EU Commission published its guidance on the implementation of controversial Article 17 of the Digital Copyright Directive which governs the use of content by online content-sharing service providers, which Member States had to implement by 7 June. The UK decided not to implement its provisions.

Validity, Infringement and Patents

The Court of Appeal upheld the trial judge’s decision in finding a patent relating to track beds for railways valid and infringed (Fiberweb Geosynthetics Ltd v Geofabrics Ltd [2021] EWCA Civ 854).

Intention and Passing Off

For a reminder that it is not necessary to show that a defendant intended to pass off its business as that of a claimant’s business in order to win a passing off action, see Alyssa Jewellery Ltd v Goodstone t/a Alyssa Jewellery Design [2021] EWHC 1482 (IPEC).

FRAND and Patents

In the second technical trial, two of Mitsubishi’s telecommunication patents were found to be valid and essential – a FRAND trial will follow (Mitsubishi Electric Company v Oneplus Technology (Shenzhen) Co, Ltd [2021] EWHC 1639).

Surveys, Evidence, Passing Off and Trade Marks

In a trade mark dispute, the High Court has allowed witnesses to give evidence that they were not confused. The statements would be used to rebut inferences that those witnesses were actually confused, and did not amount to survey evidence or a witness-gathering exercise in breach of the Whitford guidelines (Easygroup Ltd v Easylife Ltd and another [2021] EWHC 1705).

Disclosure and Standard Essential Patents

The owner of a standard essential patent was not obliged to disclose its existence to the working group which established the standard and so would not be estopped from enforcing it (Optis Cellular Technology LLC and others v Apple Retail UK and others [2021] EWHC 1739).

Double Patenting and Patents

The Enlarged Board of Appeal issued a decision confirming that double patenting was not permitted, so that a second application for a European Patent filed on the same date as, or claiming the same priority date as, an earlier granted European Patent and covering the same subject matter, will not be granted (Case G4/19).

Cultural Heritage Institutions and Copyright

The EUIPO launched its orphan works database from where cultural heritage institutions (libraries, museums etc) can obtain licences from collecting societies in order to digitise or disseminate the works.

Music and Copyright

The group The Jesus and Mary Chain are suing Warner Music in the US for recovery of the copyright in five of their albums, under the US law which permits reversion of ownership after 35 years.

Simon Clark

Author

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