Ireland IP & Technology Law Blog

The Commission Publishes and Dispels "Myths" Around ACTA

Sally Anne Hinfey — Fri, 03 Feb 2012 18:34:27 +0100

The European Commission has published the final text of the Anti-Counterfeiting Trade Agreement (ACTA) which is an agreement aimed at strengthening the enforcement of intellectual property (IP) rights and combating counterfeiting and piracy. The European Union participated in the negotiation of this agreement and has also published “10 myths about ACTA” to dispel the allegations that ACTA is unlike the US SOPA legislation (see here for the “10 myths about ACTA”).

ACTA sets out the legal framework and enforcement practices for enforcement of IP rights as follows. Although some of the framework is fairly high level, leaving a lot to individual a Member State’s discretion, there are also some meatier terms. The main controversy around ACTA has been around the provisions addressing infringement in the digital environment The ACTA provides, at Section 5, paragraph 2 that:

"Each Party’s enforcement procedures shall apply to infringement of copyright or related rights over digital networks, which may include the unlawful use of means of widespread distribution for infringing purposes. These procedures shall be implemented in a manner that avoids the creation of barriers to legitimate activity, including electronic commerce, and, consistent with each Party’s law, preserves fundamental principles such as freedom of expression, fair process, and privacy."

A footnote to this paragraph suggests that such a procedure could include adopting or maintaining a regime providing for limitations on the liability of or the remedies available against internet service providers (ISPs). The ACTA also provides that each country shall provide for court orders against infringers or alleged infringers for delivery up of information relevant to the infringement. Commentators have criticised the proposed low burden of proof around online infringement (you must show an “alleged infringement”) on the basis that it could result in abuse of process.

The remainder of the enforcement provisions (in particular those broadly around trade mark infringement) outlined under ACTA are not particularly novel and Ireland already provides for a number of remedies which are in line with what is envisaged under ACTA.

The ACTA also emphasises the importance of international co-operation and provides for:

(i) enhancement of public awareness on intellectual property rights;

(ii) development and implementation of national legislation related to the enforcement of intellectual property rights;

(iii) training of officials on the enforcement of intellectual property rights; and

(iv) co-ordinated operations conducted at the regional and multilateral levels

Although, again, these provisions are fairly high level, it is hoped that further educational initiatives and co-operation around enforcement among Member States will flow from these undertakings.

The biggest concern around ACTA has always been that discussions occurred in private. Although, the final text of the agreement remains "subject to legal review”, it is now undoubtedly less extreme, as regards the “digital environment” provisions, than earlier drafts. The most controversial provisions around ISPs' liability and digital-rights-management have been diluted quite a lot from what was original drafted. Whether or not this will serve as helpful to Member States attempting to create workable legislation in this area remains to be seen.

Data Retention Act the Subject of a Reference to the Court of Justice of the European Union

Michelle Halton — Tue, 31 Jan 2012 19:15:02 +0100

The High Court is to make a preliminary reference to the Court of Justice of the European Union on the extent to which national legislation intended to implement an EU Directive, must itself also comply with the European Charter of Fundamental Rights in order to be fully compatible with EU law, a matter with the potential to be of significant impact throughout the EU.

The High Court has asked the CJEU whether EU Directive 2006/24/EC, which requires member states to retain details in relation to mobile, internet and email data, respects the right to privacy of the user.

The questions arise in the context of a case taken by Digital Rights Ireland against the Minister for Communications, Marine and Natural Resources and others, regarding the extent to which the State can require telecommunications providers to retain and to provide to the State, data on how customers use its services.

The Directive was transposed in Ireland last year by the Communications (Retention of Data) Act 2011. The Act does not require data concerning the content of calls or emails to be retained, however the identity of the person sending and receiving the communication must be retained in addition to information as to the time the communication was sent, and in the case of mobile phones, the location of the phones. The Act requires telecommunication providers to retain telephone data for 2 years and internet data is to be retained for 12 months, in order to ensure that the data is available for the purpose of the investigation, detection and prosecution of serious crime.

See here for a previous discussion of the Act.

CONTROVERSIAL DRAFT COPYRIGHT LEGISLATION PUBLISHED - IT'S NO "SOPA"

Sally Anne Hinfey — Thu, 26 Jan 2012 19:06:17 +0100

The Minister for Jobs, Enterprise and Innovation has this afternoon published controversial draft Regulations to address the perceived lacuna in Irish Copyright law, originally flagged by Mr. Justice Charlton in the case of EMI v UPC (also see Davinia Brennan's blog below for another take on this!). The draft Regulations provide for that copyright owners may seek injunctions against intermediaries (which would include internet service providers). Subsection 5A(a) to be inserted at Section 40 of the Copyright and Related Rights Act 2000, would provide as follows:

“The owner of the copyright in a work may, in respect of that work, apply to the High Court for an injunction against an intermediary to whom paragraph 3 of Article 8 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001[1] on the harmonisation of certain aspects of copyright and related rights in the information society applies”

The draft legislation is unspecific as regards the precise nature or scope of injunction which a court might be entitled to grant as against an intermediary service provider. However, as I have previously blogged, the European Court of Justice has already stated that injunctions of the sort which oblige service providers to filter and block internet sites which are permitting unlawful downloads may not be permissible under European law.

The only guidance offered for a court in the draft Regulation is in subsection 5A(b) which states that:

"In considering an application for an injunction under this subsection, the court shall have due regard to the rights of any person likely to be affected by virtue of the grant of any such injunction and the court shall give such directions (including, where appropriate, a direction requiring a person be notified of the application) as the court considers appropriate in all of the circumstances”

It would appear therefore that where an injunction is sought either the individual who will be affected or the website, company or business that may be affected by the application could be notified of the injunction application and the court would have to consider the rights of those persons more generally when making a determination.

These new Regulations are a long way from being as wide reaching as SOPA legislation in the US. In effect the Regulations would hand back the job of defining the limits of Irish copyright law, in relation to online piracy, to the Courts. Therefore, realistically there will still be a lack of certainty surrounding the scope of this legislation, should it be passed into law, until a case comes along that will tests its limits.

Minister publishes draft Copyright legislation

Davinia Brennan — Thu, 26 Jan 2012 19:05:27 +0100

Minister Sherlock has, today, published the draft European Union (Copyright and Related Rights) Regulations 2012, which are expected to be signed imminently. Minister Sherlock has strenuously denied claims that the proposed legislation mirrors the Stop Online Piracy Act (SOPA) in the United States, stating that such claims “are not based on fact”.

The draft Regulations are, in fact, brief and to the point. They amend the Copyright and Related Rights Act 2000 (the 2000) Act), by explicitly providing for the right of a copyright owner to apply to the High Court for an injunction against an intermediary whose services are used by a third party to infringe their copyright or related right.

This right is already available in all other Member States of the EU, as two EU directives (the Copyright Directive 2001/29/EC and the Enforcement Directive 2000/31/EC) specifically require that copyright holders are in a position to apply for such injunctions.

The Department of Jobs, Enterprise and Innovation considered that such injunctions were also available in Ireland under Section 40(4) of the 2000 Act, and the inherent power of the courts to grant injunctions, which are equitable and discretionary remedies. However the case of EMI Records (Ireland) Limited and others v UPC Communications Limited [2010] IEHC 377 threw confusion on the matter, when Mr Justice Charleton found that the Court did not have authority under the 2000 Act to order an injunction against ISP, UPC, requiring it to block certain peer to peer sharing websites on its network, and that Ireland had not fully implemented the relevant Directives. Therefore, as Minister Sherlock stated, these Regulations have been published “for the avoidance of doubt” and “to restate the position that was considered to exist prior to this judgment”.

The Regulations strike a fair balance between the protection of copyright owners and the protection of the fundamental rights of individuals, by providing that the court, where appropriate, should give directions requiring any person likely to be affected by the injunction application to be notified of same.

The Government has treaded carefully in drafting the new Regulations, and has taken appropriate account of the recent ruling of the European Court of Justice (the CJEU), in Scarlet Extended SA v SABAM, Case c-70/10. In that case the CJEU held that EU law precludes an injunction being made against an ISP requiring it to install a filtering system that would prevent the illegal downloading of files. Accordingly, the draft Regulations do not go so far as to allow the court to require an ISP to carry out general monitoring of the information it transmits on its network.

In conclusion, the Government has succeeded in drafting Regulations which clarify the law, and strike a fair balance between the rights of copyright owners, internet service providers, and individual users of the internet.

Please click here to access the draft European Union (Copyright and Related Rights) Regulations 2012.

European Commission publishes its legislative proposals for reform of the Data Protection Directive

Davinia Brennan — Thu, 26 Jan 2012 16:17:59 +0100

The European Commission has published its proposals to reform the EU's Data Protection Directive (95/46/EC).

The proposed Regulation, unlike the 1995 Data Protection Directive, which gives Member States a wide discretion in respect of its implementation, will be directly applicable once implemented. The Vice President of the European Commission, Viviane Reding, has said that the implementation of a single set of rules on data protection, valid across the EU, law will do away with the current fragmentation and costly administrative burdens.

Under the new proposals, multinational companies will be regulated in a ‘one-stop shop’. Companies will only have to deal with a single national data protection authority in the EU country where they have their main establishment. At the moment, businesses are supervised by a different authority in each Member State in which they carry out data processing activities.

The Irish Data Protection Commissioner will therefore have responsibility for overseeing data protection law compliance by some of the world's leading technology companies, such as Google, Facebook, Microsoft and Apple, who all have their European headquarters in Ireland.

One of the key changes includes the creation of a ‘right to be forgotten’ to address privacy risks online. This will allow people to request internet websites to delete their data if there are no legitimate grounds for retaining it. It will also be mandatory for data controllers to notify data protection authorities and the individuals concerned when a data breach is discovered.

The proposed Regulation empowers national data protection authorities to impose far-reaching sanctions for breaches. The proposed fines will be on a sliding scale from €250,000 or 0.5% of a company's global turnover for less serious offences (charging a fee for a data request), and move up to €500,000 or up to 1% (for refusing to hand over data or failing to comply with the right to be forgotten or to erasure).

For serious violations (such as not alerting or notifying a personal data breach, or not timely or completely notifying a breach to the supervisory authority or to the data subject) supervisory authorities shall impose penalties up to €1 million or up to 2% of the global annual turnover of a company.

The Commission's proposals will now be passed on to the European Parliament for approval. They will take effect two years after they have been adopted.

Please click here to access a copy of the Commission’s proposals, which include two legislative proposals: a Regulation setting out a general EU framework for data protection and a Directive on protecting personal data processed for the purposes of prevention, detection, investigation or prosecution of criminal offences and related judicial activities.

CJEU confirms IP addresses are "Personal Data"

Davinia Brennan — Fri, 13 Jan 2012 17:44:42 +0100

As we reported recently, the CJEU held in Scarlet Extended SA (“Scarlet”) v Societe belge des auteurs, compositeurs et editeurs (“SABAM”), Case C-70/10 that an order requiring a Belgian internet service provider to filter certain peer to peer files is not permissible under EU law. The CJEU found that any national measures to protect copyright must “strike a fair balance between the protection of copyright and the protection of the fundamental rights of individuals who are affected by such measures”.

This case is also noteworthy for its landmark decision that internet protocol addresses constitute “protected personal data”. The CJEU held that the injunction sought, requiring installation of the contested filtering system, “would involve a systematic analysis of all content and the collection and identification of users’ IP addresses from which unlawful content on the network is sent. Those addresses are protected personal data because they allow those users to be precisely identified.”

This decision is particularly interesting as Charlton J., in EMI Records (Ireland) Limited v Eircom Limited [2010[] IEHC 108, held that an IP address was not “personal data” under the Data Protection Act 1988-2003, in circumstances where it was collected by a record company and provided to Eircom, in order for Eircom to deal with the owner of the IP address in accordance with the ‘three strikes’ scheme. Charlton J. concluded that as the name and address of the owner of the IP address was unlikely to come into the possession of the record company, since it was a matter for Eircom to deal the relevant person, the IP address in and of itself did not constitute “personal data” in the hands of the record company.

Different positions have been adopted by the Member States on this issue, despite the Article 29 Working Party issuing an Opinion (Opinion 4/2007 on the concept of Personal Data) which states that it considers IP addresses as constituting “personal data”. The Working Party stated this was “especially in those cases where the processing of IP addresses is carried out with the purpose of identifying the users of the computer (for instance, by copyright holders in order to prosecute computer users for violation of intellectual property rights).”

The CJEU’s clarification that IP addresses are “personal data” should ensure a more consistent interpretation is adopted across the EU in the future. Interestingly, the European Commission’s draft EU Data Protection Regulation, which has been leaked ahead of scheduled publication on Data Protection Day, 28 January 2012, also indicates that IP addresses constitute “personal data”.

The Top 11 of 2011

John Whelan — Thu, 22 Dec 2011 19:43:54 +0100

A rundown of our top eleven IP & Technology stories of 2011:

ICANN's Move to Allow For New Domain Names

On 20 June, the Internet Corporation for Assigned Numbers and Names (ICANN), the organisation that oversees Internet domain names, voted overwhelmingly in favour of one of the biggest changes in the web’s history, allowing a major expansion in the range of web suffixes available for registration.

Clarification of ISP responsibility for Internet File Sharing

The ECJ has, in a judgment released today (Scarlet Extended SA (“Scarlet”) v Societe belge des auteurs, compositeurs et editeurs (“SABAM”), Case C-70/10), indicated that an order requiring a Belgian internet service provider to filter certain peer to peer files is not permissible under EU law.

Ireland Implements New E-Privacy Laws on the Use of Web Cookies

Ireland has transposed the new E-Privacy Directive 2009/136/EC. The Directive amends the E-Privacy Directive 2002/58/EC and has attracted much attention due to the new rules it imposes in relation to the use of internet cookies.

Challenges facing the Copyright Review Process

I have been mulling over the review of Irish copyright law recently announced by the Minister for Jobs, Enterprise and Innovation Richard Bruton. This is a commendable initiative and it is reassuring to see that that it has been staffed by a review committee (chaired by Dr. Eoin O’Dell, a lecturer at Trinity College Dublin and blogger) with expertise in the copyright field.

Data Protection - The Article 29 Working Party issues Opinion on the definition of "consent"

The EU's Article 29 Working Party has issued an Opinion on the definition of "consent" in which it examines the individual elements and requirements for consent to be valid under the Data Protection Directive (95/46/EC) and the e-Privacy Directive (2002/58/EC). The Opinion also includes recommendations for improving the concept of consent in the context of the ongoing review of the Data Protection Directive.

BRENNANS - CONFUSING BROWN BREAD!

CJEU Rules that Unified Patent Litigation System is Incompatible with EU Treaties

You might recall that last April we wrote about the long awaited opinion from the Court of Justice of the European Union (CJEU) on the European Council’s draft agreement establishing a new European and Community Patent Court (Patent Court). That opinion was finally issued in March with the CJEC ruling that the draft international agreement put forward by the Council is incompatible with EU Treaties.

Reform of the EU's Data Protection Directive expected in early 2012

Copyright in Sound Recordings Extended to 70 Years

A new EU Directive extending the term of copyright protection in sound recordings from 50 years to 70 years has been recently passed. The ultimate aim of the new Directive is to help bridge the gap between the level of copyright protection given to authors and composers (70 years after their death) and that previously afforded to performers (50 years after the date of the initial performance). Colloquially it has been referred to as “Cliff Richard’s Law” because of this promise to ensure veteran rockers continue to earn royalties into their old age.

Clarification from the ECJ on IP Infringement Control in E-Commerce

A recent ruling by the European Court of Justice (ECJ) on 12 July 2011 in the L'Oreal v. eBay case is an interesting one as it goes some way toward clarifying the law with regard to IP infringement control in the area of e-commerce.

Report on Data Breach Notifications in the EU

The E-Privacy Directive (2009/136/EC), which formed part of the EU telecommunications regulation reform package passed in November 2009, makes it mandatory for public communications providers (i.e. ISPs and telcos) to inform national authorities of any data security breaches. Member States have until 25 May 2011 to transpose this Directive.

Latest evolutions in the EU and US Patent Systems

Kristof Panis — Tue, 20 Dec 2011 18:39:30 +0100

After 30 years of negotiations, the Council of the European Union and the European Parliament agreed on vital elements of a European unitary system of patent protection this year.

The proposal, allowing for the creation of a unitary patent protection, will give rise to two regulations (one of which will deal with the controversial issue of translations) and one international agreement creating the European patent court. A statute for the unified patent court is also in draft form currently.

The proposal aims to reduce the costs and uncertainty of enforcing patents across national borders. The unified court will have exclusive jurisdiction over civil litigation related to infringement and validity for both the "classical" European patents and the European patents with unitary effect, with the main objectives of reducing costs relating to multiple litigations in several countries and preventing conflicting judgments. The court will also be able to request preliminary rulings on points of law from the EU courts in the same way that any Member State court can.

However one notable sticking-point remains.

The cities of Munich, London and Paris are all vying to be the seat of the new patent court. It is expected that the European Parliament will vote on the proposal in the beginning of next year.

After many years of debate, on 16 September 2011, the United States has adopted the Leahy-Smith America Invents Act (AIA), which moves the US patent system closer to the European one.

The most significant shift is the shift from the current first-to-invent system to a first-inventor-to-file (FITF) regime, effective for all patent applications with effective filing dates on or after 16 March 2013.

Next, the AIA introduced a new litigation “joinder” rule. In order to join parties, defendants must be either jointly and severally liable, or the infringement must arise from the same transactions or occurences. The purpose of the new joinder rule is to decrease litigation initiated by Non-Practicing Entities (NPEs - companies that purchase patents without really using them except for suing infringers), who had sued many defendants that are not linked except for having infringed the same patent.

Finally, a change that will have a significant impact on US litigation practice is the “prior commercial use” defence. This defence offers companies significantly broader protection in cases of innocent infringement. Specifically, it will protect companies from infringement claims if they innocently use an infringing process, or make and sell an infringing product that is used in a commercial process, without knowledge of the claimed patent. The defence applies to good faith commercial uses and arm’s length sales and commercial transfers that occurred at least one year before the earlier of (1) the effective filing date of the patent application, or (2) the inventor’s public disclosure.

Legislating for a Copyright "Loophole" in 2012

Sally Anne Hinfey — Mon, 19 Dec 2011 10:54:00 +0100

The Department of Jobs, Enterprise and Innovation has indicated that a new piece of legislation will be published early in the new year to address the perceived loophole in Irish Copyright Law which was said to exist in the wake of the EMI v UPC case (reported at : www.bailii.org/ie/cases/IEHC/2010/H377.html.

It is surprising that this move appears to come before the release of the much anticipated Copyright Law Review Group report, which was a Government born initiative.

You may recall that in the EMI v UPC case, Justice Charlton in the High Court held that Irish copyright law did not provide for any kind of injunctive relief which permitted the blocking or filtering of websites on the Internet.

Accordingly, internet service providers could not be obliged by the Courts to block sites like “The Pirate Bay” where users can use file sharing software to unlawfully download copyright materials.

It would appear that the new law is primarily aimed at satisfying a number of industry players (to include EMI) who have called for Government action in the wake of the UPC decision, a case that clearly identified that Irish law did not provide for injunctive relief of the type sought by the music industry.

It is also interesting to hear that the Government still intend to proceed with this new legislation even in light of the more recent decision from the European Court of Justice (Scarlet Extended SA (“Scarlet”) v Societe belge des auteurs, compositeurs et editeurs (“SABAM”), Case C-70/10) where it was held that any national measures to protect copyright must “strike a fair balance between the protection of copyright and the protection of the fundamental rights of individuals who are affected by such measures”. In that case the Court indicated that EU legislation did not allow for a Court to award injunctions which ordered ISPs to implement filtering technology to prevent unlawful file sharing on its network. See our earlier blog on 24 November 2011 below.

The Irish Government will therefore have to tread carefully as regards the nature and form of the proposed legislation which it introduces as presumably otherwise such legislation could go beyond the remit of current EU law.

"Counterfeit Goods" - Just Passing Through

Steven Duggan — Fri, 16 Dec 2011 17:45:31 +0100

Council Regulation 1383/2003 (the Regulation) permits customs authorities to take certain actions where goods entering the European Union (the EU) from non-member states are suspected of infringing intellectual property rights recognised in the EU. This includes suspending release of, or detaining the goods. Under the Regulation, such goods include, amongst others, counterfeit goods (goods infringing a trade mark right), pirated goods (goods infringing copyright or related right or design rights) and goods which infringe a patent under the law of the member state whose customs authorities are seeking to take action.

The Court of Justice of the European Union (the CJEU) has recently ruled that goods which are imitations of goods protected by a trade mark right, copies of goods protected by copyright or a design under EU or Member State law and which have originated from a non-member state cannot be classified as “counterfeit goods” or “pirated goods” under the Regulation merely on the basis that they have been temporarily imported into the EU while en route to another non-member state. Such goods will be classified as “counterfeit goods” or pirated goods” only where it is proven that they are intended to be put on sale in the EU.

This decision appears to be restricted to goods infringing trade marks, copyright, or design rights but it is unclear whether it will apply where goods infringe patent rights which, although included in the definition of “goods infringing an intellectual property right” under the Regulation, were not discussed by the CJEU which referred only to “counterfeit goods” and “pirated goods”.

Interestingly, the Irish Patents Act 1992 (the Patents Act) provides, at section 40(c), that patent holders have the right to prevent the importation of products the subject-matter of their patent. There is no guidance in the Patents Act as regards what constitutes importing, but the wording of the relevant section suggests that goods which would infringe a patent granted under the Patents Act, which are merely passing through Ireland could still constitute infringing goods, even where they are only temporarily passing through Ireland en route to another member state.

This decision was delivered by the CJEU in the joined cases of Philips Electronics v Lucheng Meijing and others (C-446/09) and Nokia Corporation v Her Majesty’s Revenue and Customs (C-495/09), the full text of which can be found here.

BRENNANS - CONFUSING BROWN BREAD!

Aisling Muldowney — Fri, 16 Dec 2011 13:38:56 +0100

For the later part of this year, I have been watching with great interest (partly due to a fondness for the subject matter) the passing off case involving bread makers McCambridge’s and Brennans. McCambridge’s sued Brennans claiming deliberate copying of its brown bread packaging which would cause confusion within the market. You might wonder what sparked such action. The matter seems to have arisen after Brennans changed the design and colour of its packaging in January 2011, adopting a transparent, resealable packaging with a dark green rectangle on the front of the packaging and McCambridges’ claimed that this re-branding would result in confusion amongst its own customers. Would you be confused, see for yourself:

In order for McCambridge’s to succeed they needed to show that: (i) they had built up a reputation or goodwill in its bread; (ii) there had been a misrepresentation by Brennans to the public which was likely to lead the public to believe that the bread was McCambridge’s; and (iii) damage had been caused or was likely to be caused by the misrepresentation.

Mr Justice Peart of the High Court ruled in McCambridge’s favour in late November, holding that while Brennans had not intended to imitate or copy McCambridge’s packaging, the packaging was nonetheless likely to confuse customers. He said that the bread consumer’s overall impression of the product was crucial and he had to decide whether a reasonable person wishing to buy McCambridge’s bread would be confused into buying the Brennans product by mistake. Accordingly, he granted an injunction against Brennans to prevent them from continuing to sell their bread but adjourned the case for one week from the date of his judgment, to allow both sides to consider his finding. Most recently in the “bread wars” Brennans has appealed the decision to the Supreme Court. In lieu of this appeal (i) McCambridge’s have only been awarded 40% of its costs; (ii) a stay has been placed on that award of costs; and (iii) Brennans also obtained a stay on the order restraining it from selling its product subject to bringing its appeal as a priority application.

It is unusual in Ireland for an entire High Court order to be stayed in such cases and we will be watching this space to see which of these big bread players are toast in the appeal. In the meantime, I’m feeling rather peckish. Lunch anyone…?

Intellectual Property Rights Protection, China

Pu Yang — Tue, 13 Dec 2011 15:51:02 +0100

The modern Intellectual Property Rights (IPR) law system was born out of China’s need to develop its market economy in the early 1980s. Within the past three decades China has built up a relatively comprehensive and advanced Intellectual Property Laws and enforcement procedures.

General Legal Frame

To date, China has introduced and enacted legislation in the following areas:

1. Trade Marks: PRC Trademark Law (implemented as of 1 March 1983, last amendment in 2001);

2. Patents: PRC Patent Law (implemented as of 1 April 1985, last amendment in 2008);

3. Copyright: PRC copyright Law (implemented as of 1 June 1991, last amendment in 2010)

4. Software: Regulations on the Protection of Computer Software (implemented as of 1991);

5. Unfair Competition: Anti-unfair Competition Law (implemented as of 1993);

6. Customs: Intellectual Property Customs Protection Regulations (implemented as of 1995);

7. Integrated Circuits: Regulations on Protection of Integrated Circuit Layout Design (implemented as of 1995);

8. Plant Varieties: Regulations of Protection of New Plant Varieties (implemented as of 1997); and

9. IP Offences: Introducing Crimes of Infringing upon Intellectual Property Rights into PRC Criminal Law (implemented as of 1997).

Enforcement

The Judiciary in China increasingly plays a leading role in the enforcement of IPRs. In 2010, the number of new civil IPR cases filed at first instance reached 42,931. This was an increase of 40% on the previous year. Concluded civil IPR cases in 2010 reached 41,718. The total damages claimed in those cases exceeded USD 1.3 billion. With respect to criminal IPR cases, the number of new first instance cases in 2010 was 3,992 and the number of such cases concluded in the same period was 3,942.

Registration of IPRs

The State Intellectual Property Office (‘SIPO’) takes charge of all the patent application acceptance and examination matters. In 2010, 1.2 million new patent applications were filed with SIPO, which was an increase of 27.9% in comparison with the previous year. Among those patents filed, there were 293,000 locally filed patent applications and 12,337 PCT applications.

The Trade Marks Office, accepted 1.07 million trademark registration applications in 2010 and concluded 1.5 million applications. The examination period for trademark registration has been cut back from 36 months to only one year in 2010. In recent years China has ranked first in the world for trade mark application levels, and for trade mark registrations.

There is also a procedure available in China for the registration of copyright (similar to the American procedure). In 2010, the number of registered copyrights reached 370,000. Furthermore, there was 81,966 software copyright registrations last year (an increase of 15.5% in comparison with the previous year).

China has experienced rapid development in the past two or three years and this can be expected to continue. It is my belief that along with China's development and improvement of its IPR law system, a more healthy and friendly legal environment is (and continues to) evolve to safeguard a rapid and smooth economic development.

Commission Invites Views on Technology Transfer Regulations

Sally Anne Hinfey — Wed, 07 Dec 2011 20:13:19 +0100

The Commission has invited interested parties to make submissions to it regarding EU competition law rules for the assessment of technology transfer agreements, i.e. patent, know-how and software licensing. The current regime consists of a block exemption regulation ("TTBER") that create a safe harbour for certain agreements, as well as on the assessment of agreements that fall outside the TTBER. The current TTBER exempts certain agreements that are considered to be non-problematic from a competition law perspective under European law. To qualify for an exemption, agreements need (i) to produce positive effects which outweigh the restrictions inherent in the agreement and (ii) be concluded either between rivals who have less than 20% market share or between non-competitors who have less than 30% market share. The TTBER also defines certain hardcore restrictions, which never qualify for an exemption, such as fixing of prices charged to third parties.

The current TTBER will expire in April 2014 and the Commission is seeking input on the proposal for assessing technology transfer agreements after this date.

The Commission has published a questionnaire to facilitate initial engagement with relevant interested parties. It is crucial that Irish industry players, particularly in the technology and pharmaceutical sectors, engage in this process in order to ensure their interests are represented at a European level and in order to share their unique experiences in the technology transfer arena.

Reform of the EU's Data Protection Directive expected in early 2012

Davinia Brennan — Wed, 07 Dec 2011 19:53:12 +0100

The Vice President of the European Commission and EU Justice Commissioner, Viviane Reding, recently issued a statement regarding the proposed reform of the Data Protection Directive (95/46/EC), indicating the proposal will be published in early 2012. The proposals contained in the new legislative package, which is intended to fix weaknesses in the current data protection framework, include:

· A 'one-stop-shop' for businesses and consumers when it comes to data protection matters - one law and one single data protection authority for each business; that of the Member State in which they have their main establishment. Under the current data protection regime, companies that operate in several Member States must comply with different laws and different decisions taken by data protection authorities in 27 Member States. A non-European company operating in the European Union has to abide by 27 different interpretations of the EU law on data protection.

· Making the binding corporate rules simpler to use, with a single point of contact for companies amongst the European data protection authorities. Once the binding corporate rules are approved by one data protection authority, they should be recognised by all European data protection authorities, without the need for additional national authorisation in case of further transfers.

· Cutting red tape by eliminating unnecessary costs and administrative burdens to create a more business-friendly regulatory environment. This means doing away with the general requirement to notify data processing to data protection authorities.

· Strengthening coordination and cooperation between national data protection authorities to make sure that the rules are enforced consistently.

· Putting individuals in control of their information. Firstly, businesses must ensure transparency for individuals, who must be provided – in a simple and understandable language – with appropriate information about the processing of their data. Secondly, business responsibility means that whenever users give their agreement to the processing of their data, it has to be meaningful. This requires individuals to be informed about privacy policies and their consent needs to be specific and explicit. Thirdly, business responsibility means better control for individuals over their own data: that's requires easier access to one's own data. If a user requests their information, it should be given to them in a widely used format which makes it simple to transfer elsewhere.

· Creating a right to be forgotten, to address the privacy risks online. Accordingly, if an individual no longer wants their personal data to be processed or stored by a data controller, and if there is no legitimate reason for keeping it, the data should be removed from their system.

· A mandatory obligation for data controllers to notify data protection authorities and the individuals concerned when a data breach is discovered.

The proposal that businesses will be subject to just one Member State's data protection law aims to make it less costly for businesses to comply with data protection laws, and will no doubt be welcomed by businesses who operate across the the EU. It also might also lead to an increase in cross-border trade and increase consumer confidence regarding the protection of their privacy rights.

Social Media Contracts

Kristof Panis — Tue, 06 Dec 2011 14:57:07 +0100

A recent decision (Ardis Health LLC et al. v. Nankivell)of the U.S. District Court for the Southern District of New York dated 19 October 2011, provides a good insight into the best practices for parties contracting in the social media space.

“Social media” refers to any online medium that includes community features such as user-generated content, the ability to form groups and the ability to recommend, comment on, and share the content of others. Examples include Facebook and Twitter.

The plaintiffs in the proceedings were three companies that market online herbal and beauty products. The three plaintiffs are wholly owned and collaboratively operated by Jordan Finger. The defendant was hired by one of the plaintiffs, CYC, as a “Video and Social Media Producer”. The defendant signed a Work Product Agreement that provides that work created and developed by the defendant “shall be the sole and exclusive property of CYC, in whatever stage of development or completion”, and that it ”will be prepared as ‘work-for-hire’ within the meaning of the Copyright Act”. The agreement also provided that the defendant return all confidential information to the plaintiffs upon request, and that “actual or threatened breach of the agreement will cause irreparable injury and damage”.

The U.S. District Court for the Southern District of New York judged that the plaintiffs own the rights to the Access Information, as the plaintiffs provided the Court with sufficient evidence to support this claim.

However according to the U.S. District Court the plaintiffs were not entitled to the return of the laptop computer at this time, nor were they entitled to prohibit the defendant from displaying Whatsinurs’ content on her website, as the plaintiffs presented little evidence in support of their claim.

Ardis Health LLC et al. v. Nankivell is therefore a further warning to businesses with an online presence. Such businesses must develop strategies to protect their social media presence and content. If content is developed and managed by an independent contractor, ownership of the content should be established by contract. However, even when a contractual relationship exists, enforcement is not always straightforward. As there is no similar “work for hire” concept under Irish law, the position here may be even murkier in circumstances where parties do not set out their rights clearly under contract.

Jordan Finger and the defendant developed a social media website for cosmetic products (“Whatsinurs”). The plaintiffs drafted an additional agreement, “for the organisation and governance of Whatsinurs” but the parties never signed this agreement.

These arrangements were later terminated and the plaintiffs requested that the defendant return the laptop and the passwords used to access the websites (“Access Information”). The defendant refused this, and began displaying content from the Whatsinurs website on her own personal website.

Commission Proposal to Establish a European On-Line Dispute Resolution Platform

Michelle Halton — Tue, 29 Nov 2011 18:16:48 +0100

The European Commission published today a package of legislative proposals in a bid to ensure that all EU consumers can resolve disputes with traders without recourse to the courts. The proposal envisages that the European Parliament and the EU Council will adopt a Directive which requires Member States to ensure that competent alternative dispute resolution entities (“ADR entities”)will be available throughout EU to which consumers may refer any contractual dispute with a trader.

The package also includes a proposal for a Regulation to establish an EU-wide online platform to facilitate the resolution of disputes related to the cross-border online sale of goods or provision of services between a consumer and a trader. It is proposed that this online platform will automatically send the consumer’s complaint to the competent national ADR entity and facilitate the resolution of the dispute within 30 days.

In support of the new proposals, John Dalli, the Commissioner for Health and Consumers stated “Once adopted, the proposals that I am putting forward today, will help European consumers to use easy, quick and inexpensive ways to sort out their problems, wherever and however they purchase a product or service in the EU”.

The European Parliament and the EU Council have committed to adopting the package by the end of 2012 and it is anticipated that Member States will have taken measures to ensure competent ADR entities are in place by mid 2014, with the single EU-wide platform for online dispute resolution becoming fully operational six months later.

Clarification of ISP responsibility for Internet File Sharing

Sally Anne Hinfey — Thu, 24 Nov 2011 16:42:00 +0100

The cour d’appel de Bruxelles referred questions to the ECJ following an appeal from a decision of the Tribunel de premiere instance in which Scarlet was ordered to implement filtering technology to prevent unlawful file sharing on its network. The question referred to the ECJ was, in particular, relevant to the interpretation of the Directive 2000/31/EC (the “E-Commerce Directive”), Directive 2001/29/EC (“the InfoSoc Directive) and Directive 2004/48/EC (“the Enforcement Directive”) and whether the provisions of these Directives permit Member States to authorise national courts to “issue injunctions against intermediaries whose services are used by a third party to infringe a copyright or related right”.

Both the InfoSoc Directive and the Enforcement Directive provide that intellectual property rights holders may apply for an injunction against intermediaries such as ISPs whose services are being used by a third party to infringe their rights. The ECJ held that it was a natural corollary of this that national courts could order ISPs to prevent future infringement. However, the Court held that any implementation of the InfoSoc Directive and Enforcement Directive should not affect the provisions of the E-Commerce Directive and more particularly the provisions of that Directive that relate to the “mere-conduit”, “caching” and “hosting” defences which can be relied on by Internet Service Providers and furthermore, the provisions of Article 15 which state that no general internet network monitoring obligations can be imposed on ISPs.

The filtering system which was proposed by SABAM would oblige Scarlet to identify files relating to peer to peer traffic and whether those files contain copyright materials which have been unlawfully shared and, finally, oblige it to block such files. In the above instance the Court held that any such order imposed against an ISP by a national court could not be sanctioned by reason of the obligations under the aforementioned Directives.

The Court said that any national measures to protect copyright must “strike a fair balance between the protection of copyright and the protection of the fundamental rights of individuals who are affected by such measures” and in the present case, the orders sought by SABAM did not satisfy this requirement.

This case will, no doubt, be of particular interest to Irish internet service providers and rights holders alike, who are awaiting the outcome of the Irish Government’s review of copyright law. The decision is also of interest in light of the High Court decision last year in EMI v UPC where Justice Charlton held that the Court did not have authority under Irish law to order a form of injunction against ISP, UPC requiring it to block certain peer to peer file sharing websites on its network.

Jurisdiction for Online Defamation Cases - ECJ Clarification

Sally Anne Hinfey — Wed, 23 Nov 2011 16:52:19 +0100

Two recent cases which were jointly heard before the Court of Justice (Joined Cases C-509/09 and C-161/10 - eDate Advertising GmbH v X and Olivier Martinez, Robert Martinez v MGN Limited), have resulted in a useful clarification of the law in relation to jurisdiction in circumstances where allegations of defamation have been levelled against a party who operates an online publication. The Court considered the wording of Council Regulation (EC) 44/2001 and, in particular, it was asked to clarify the meaning of Article 3(2) of the Regulation which provides that;

A person domiciled in a Member State may, in an other Member State, be sued in matters relating to a tort, delict, or quasi-delict, in the courts for the place where the harmful event occurred or may occur”.

The Court held that a person who alleges that a defamatory statement has been made on the internet “may bring an action in one forum in respect of all of the damage caused, depending on the place in which the damage caused in the European Union by that infringement occurred.”

The Court also acknowledged that “Given that the impact which material placed online is liable to have on an individual’s personality rights might best be assessed by the court of the place where the alleged victim has his centre of interests, the attribution of jurisdiction to that court corresponds to the objective of the sound administration of justice.”

This is a welcome clarification of the issue of jurisdiction as it relates to cases involving alleged online reputational damage.

Music Body Asks BT to Block User Access to Pirate Bay Site

Ciara Cullen — Wed, 09 Nov 2011 17:44:32 +0100

The British Phonographic Industry (BPI) has requested BT to use its own software to block users from accessing “Pirate Bay”, a website which provides access to illegal downloads of music, film and game files. While it does not store content, Pirate Bay facilitates access to sites which breach copyright via an index of links.

BT has stated that, while it is considering its response, it will require a Court order to put measures in place to block access. As you may recall from a blog post earlier this year, the UK High Court previously ordered BT to block access to the site “Newzbin2”, which similarly provided access to illegal download sites via links collated on its site.

It remains to be seen whether BT can maintain its current approach which requires complainants to proceed with the costly process of obtaining a High Court Order, before it will block access.

European Commission publishes proposal for an optional Common European Sales Law

Davinia Brennan — Wed, 09 Nov 2011 17:33:53 +0100

The European Commission has published a proposal for a Regulation on an optional Common European Sales Law. It is envisaged that the Common European Sales Law will exist alongside each Member State’s national contract law as a second, alternative, contract law regime available to consumers in cross-border situations. The Commission has stated that the 27 different sets of contract law rules which currently exist in the EU act as a deterrent for both businesses and consumers to shopping and trading across EU borders.

Justification for proposal

The Commission has justified the proposal on the grounds that companies will benefit from one (optional) uniform regime of contract law in all 27 Member States, as traders will “no longer need to wrestle with the uncertainties that arise from having to deal with multiple national contract systems”.

The Commission believes that, if adopted, the Regulation will also cut transaction costs for companies wishing to trade cross-border, and help small and medium-sized companies to expand into new markets.

Consumers are expected to benefit from having the same level of consumer protection in all Member States, having a wider choice of products at lower prices, and from certainty about their rights in cross-border transactions.

Scope

The Common European Sales Law would apply upon express agreement by both parties to: (i) a cross-border contract, (ii) for the sale of goods, the supply of digital content, or for related services, (iii) where at least one party is established in a Member State of the EU.

It would apply to business-to-consumer, and business-to-business transactions, where at least one party is a small or medium-sized enterprise (SME). An SME is defined as a trader which employs fewer than 250 persons, and has an annual turnover not exceeding €50 million or an annual balance sheet total not exceeding €43 million.

It will not apply to financial services contracts, including online banking services; legal or financial advice provided in electronic form; electronic healthcare services; electronic communications services; or gambling.

The proposed Regulation leaves Member States free to decide to make the Common European Sales Law available to parties for use in purely domestic situations, and to enact legislation making it available for contracts between traders, neither of which is an SME.

Reason for an Optional Instrument

The Commission has proposed an optional instrument on the grounds that “a Directive or a Regulation replacing national laws with a non-optional European contract law would go too far, as it would require domestic traders who do not want to sell across borders to bear costs which are not outweighed by the cost savings that only occur when cross-border transactions take place”.

Comments and Next Steps

The Commission hopes to achieve agreement on the Common European Sales Law within a year. The proposal has been sent to the European Parliament and the Council for approval and adoption in the ordinary legislative procedure and by qualified majority. Once adopted, the Regulation will have direct effect, without the need for a transposing domestic law to be passed.

There may, however, be issues with the EU’s adoption of this proposal. For example, concerns have been expressed about the degree of legal uncertainty that the proposal could introduce in a settled legal environment, and whether the proposal leaves businesses with sufficient freedom to contract. It is questionable whether the current proposal contains sufficient advantages for business to business transactions in order to motivate businesses to use it. The draft Regulation is a complex document, containing 186 articles, which will need to be closely reviewed and debated before it is adopted by the EU.

If the Regulation is adopted, there will also be a significant exercise involved in educating consumers and businesses as to the implications of using this so-called optional Common European Sales Law, in particular to explain the practical differences between that law and existing domestic laws, and the implications if it is used and a dispute arises between the parties.

The Commission has published useful FAQs. on the Common European Sales Law.