IP Two Minute Monthly – March 2021

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


Web Framing, Communication to the Public and Copyright

The ECJ has ruled that where a rightholder is seeking to make access to their copyright-protected works subject to protection measures to preclude website framing (where a hyperlink is embedded in a third-party website), that rightholder cannot be regarded as having consented to an act of communication to the public by framing. That is the case even though their works would otherwise be freely available to the public. Accordingly, an act of framing which circumvents protection from framing, either by circumventing technological restrictions or ignoring a requirement for such restrictions imposed by contract, can amount to an infringement of the communication to the public right. For a summary of the issues in the case, see here (Case C-392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz).

Communication to the Public and Copyright

The Court of Appeal (with one minor exception) dismissed an appeal by TuneIn against the High Court’s judgment which had found TuneIn to have infringed the communication to the public right. In doing so, it did say that the VG Bild-Kunst judgment discussed above was highly persuasive, even though it post-dated Brexit. The Court of Appeal also took the opportunity to give several reasons why it would be wrong for the UK courts to diverge from the approach previously taken by the CJEU in its numerous judgments on the communication to the public right. For a summary of the issues in this case, see here (TuneIn Inc v Warner Music UK Ltd and Another [2021] EWCA Civ 441).

Modular Systems, Must Fit, Technical Function and Designs

The EU General Court has ruled that the exception in Art. 8(3) Designs Regulation, which dis-applies the “must fit” exception to Community design protection for features which permit interconnection of products within a modular system, can also be relied upon to dis-apply the exclusion from protection of features dictated solely by technical function (Lego v Delta Sport, Case T-515/19).

Colours and Trade Marks

Garden machinery company Stihl successfully defeated a challenge to its EUTM registration in the General Court for the combination of its orange and grey colours used on its chain saws. The registration, which included the description ‘The colour orange is applied to the top of the housing of the chain saw and the colour grey is applied to the bottom of the housing of the chain saw’ was sufficiently precise for economic operators to know the scope of protection afforded by the registration (Case T-193/18).

Databases and Database Rights

Although the owner of a database relating to PPI claims owned database right in the database through its substantial investment in ascertaining facts relating to individuals who had potential claims, and in its presentation, there had been no infringement as the defendant had express consent to access it (DRSP Holdings v O’Connor and others [2021] EWHC 626 (Ch)).

Penalty Clauses and Contracts

Clauses in a settlement agreement which prevented the claimant from challenging the other party’s IP rights were not unenforceable as penalty clauses because they protected that party’s legitimate business interests in a proportionate way (Permavent Ltd and another v Makin [2021] EWHC 467 (Ch)).

Computer Simulations and Patents

The EPO’s Enlarged Board of Appeal has decided that computer-implemented simulations (the case involved a simulation of the movement of a crowd of pedestrians) can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer, and are therefore potentially patentable (Case G1/19).

Computer Programs and Copyright

The US Supreme Court found in Google’s favour in its long-running dispute with Oracle concerning its copying of JAVA API declarations in order to develop the Android smartphone platform, deciding that it amounted to fair use and was transformative. The Court said that to allow Oracle’s claim “would make the Java API declaring code a lock limiting the future creativity of new programs”, which would “interfere with, not further, copyright’s basic creative objectives”.

Affiliations and Passing Off

The Court of Appeal largely upheld an IPEC judgment finding trade mark infringement and passing off in favour of British Amateur Gymnastics Association in respect of the defendant’s use of “UK Gymnastics” and part of the Union Jack in relation to gymnastics coaching and clubs. The judge had erred in finding one aspect of passing off and the Court of Appeal amended the scope of the injunction. It did, however, confirm that where a claimant has an effective monopoly, it can be a relevant factor that little attention may be paid by consumers who assume that there is only one provider of the goods/services covered by the trade mark  (British Amateur Gymnastics Association v UK Gymnastics Ltd and others [2021] EWCA Civ 425).

Competition and Patents

The CJEU upheld the General Court’s judgment which had dismissed the appeals by various generic medicine manufacturers challenging the European Commision’s decision in 2013 finding that they had breached Article 101(1) of the TFEU by agreeing to delay the marketing of a generic antidepressant medicine (Cases C-586/16, C-588/16 C-591/16, C-591/16, C-611/16 P and C-614/16).

Art and Copyright

A US court has overturned a previous court’s ruling, finding that a series of Andy Warhol prints depicting the music artist Prince infringed copyright in the photograph on which they were based, and did not amount to fair use.

Simon Clark


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