Intellectual Property

CJEU: The Right of Information can be Asserted in Separate Proceedings

In its judgement C-427/15 of 18 January 2017 (NEW WAVE CZ, a.s. v. ALLTOYS, spol s.r.o.), the Court of Justice of the European Union (CJEU) assessed whether the wording of Article 8 of the Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights (Directive 2004/48/EC) ("Enforcement Directive") means that it is not possible to seek information on the origin and distribution networks of the infringing goods in separate proceedings, after the original infringement case have been decided.

The CJEU stated in its ruling that since the obligation to provide information can also be directed towards other entities than the alleged infringer, it is not prohibited under Article 8 of the Enforcement Directive to assert the right of information in separate proceedings, after the termination of the original infringement proceedings. This is due to the fact that it is possible that the above referred other entities are not parties in the main proceedings but they may possess information on the origin and distribution networks of the infringing goods.

Further, the CJEU concluded that such narrow interpretation of Article 8 of the Enforcement Directive should be rejected because the purpose of the Directive is to ensure as high protection as possible of intellectual property. In addition, the CJEU considered that the right of information is crucial when it comes to the effective exercise of the fundamental right to property; including intellectual property, and thus Article 8 cannot be interpreted narrowly.

CJEU: Union Law Allows Different Ways of Determining the Amount of Damages to be Paid as a Result of an Infringement

In its judgement C-376/15 of 25 January 2017, the Court of Justice of the European Union (CJEU) interpreted Article 13 of the Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights (Directive 2004/48/EC) (hereinafter "Enforcement Directive"), which concerns the assessment of the amount of damages to be paid to the right holder as a result of an infringement. The question to be interpreted was whether the Directive precludes national legislation under which the right holder whose copyright has been infringed is entitled to either demand compensation for the suffered damages, or a lump-sum compensation corresponding twice the licensing fee.

According to the CJEU, the provisions of the Enforcement Directive that regulate the calculation of damages allow national legislation based on which the right holder can demand compensation either based on the assessment of all the damages caused to him or as a sum, which corresponds twice the amount of licensing fee, without the right holder having to prove any actual loss he has suffered. The CJEU reasoned its ruling by stating that the Enforcement Directive is a minimum directive, and thus national legislation may provide higher protection for the right holders. In other words, the Directive allows the Member States to impose compensation, which are penal in nature.

The Swedish Supreme Court Found Painting Inspired by a Photo to be an Independent Work

On 20 February 2017, the Swedish Supreme Court gave its judgement (T 1963-15) in a case regarding copyright of artistic works. The background of the case before the court was that a photographer had taken a photo of a man who then became somewhat famous in Swedish media. Under Article 1 of the Swedish Copyright Act (1960:729), the photographer gained copyright to the photo. Later, an artist painted an oil painting inspired by the original photo. The photographer then claimed that by doing this, the painter had committed copyright infringement.

The main focus of the court's judgement was on whether or not the painting could be seen as a new and independent work in relation to the original photo. The court stated that when determining this, the painting must have gained a certain level of originality and independence in comparison to the original photo. An overall assessment has to be made on the basis of the subjective perception of the work which can be assumed to be shared by the general public.

The court concluded that although the portrayed man of the photo was a central part of the painting, the rest of the painting's composition expressed a whole new and original meaning. Consequently, the Supreme Court ruled that the creation and distribution of the painting did not infringe the photographer's copyright. 

The Swedish Patent and Market Court Ruled on Contributory Infringement for Internet Service

Providers In a judgement on 13 February 2017 (PMT 11706-15), the Swedish Patent and Market Court of Appeal ruled that the Swedish internet provider B2 Bredband AB was contributing to copyright infringement by enabling their customers to have access to the websites The Pirate Bay and Swefilmer.

The court concluded that, in accordance with EU case law and article 8 (3) of the "Infosoc Directive" (2001/29/EC), a Swedish court may prohibit an internet provider from providing access to websites whose services are being used to commit copyright infringements. Furthermore, the court noted that Swedish law is to be interpreted in conformity with EU law.

In light of this, the court established that under article 53 (b) of the Swedish Copyright Act (1960:729) the court can prohibit an internet provider from allowing its customers to have access to such websites. B2 Bredband AB was thus ordered to hinder all access to The Pirate Bay and Swefilmer through technical blocking measures under the threat of a 500.000 SEK penalty. The order applies for three years and the judgement cannot be appealed.

Marketing & Consumer

CJEU Ruled on Communication of Material Information in Comparative Advertising

In its judgement C-562/15 of 8 February 2017, the Court of Justice of the European Union (CJEU) assessed price comparisons in advertising in light of Article 4 of Directive 2006/114/EC concerning misleading and comparative advertising and of Article 7 of Directive 2005/29/EC concerning unfair business to consumer commercial practices (Unfair Business Practices Directive). In the case at hand, Carrefour Hypermarchés SAS (Carrefour) had in its advertising campaign compared prices of leading brand products in Carrefour shops and in competitors' shops.

The TV advertisements contained price differences favorable to Carrefour, especially in comparison with Intermarché shops. The advertising campaign also contained a lowest price guarantee. In the advertisements, all Intermarché shops were supermarkets and all of the Carrefour shops were hypermarkets. The information of the size difference of the shops appeared only on Carrefour's website, where it was clarified that the guarantee only applied to Carrefour's hypermarkets. The TV advertisements had the word 'Super' in smaller letters beneath the name Intermarché¬.

In its decision, the CJEU established at the outset that the lawfulness of comparative advertising is to be assessed solely in the light of the criteria laid down by the EU legislation and further developed in CJEU case law. According to the CJEU, such advertising must be interpreted favorably to that advertising, while ensuring that it is not used anti-competitively or unfairly in a manner, which adversely affects the consumers' interests. The advertising in the case at hand might mislead the consumer to think that the prices are cheaper in general in Carrefour's shops, and material information on the sizes of the shops was missing.

The CJEU found that the advertisements did not comply with the requirement of objective comparison under Article 4(c) of Directive 2006/114, and were thus misleading within the meaning of Article 4(a). The degree to which material information needs to be communicated is to be interpreted in the light of Article 7 of the Unfair Business Practices Directive. If the material information is omitted or not communicated clearly enough in the advertisements, the requirement for objective comparison is not met and the advertisements are hence misleading.

Media & Entertainment

CJEU: Hotel rooms are not considered as places accessible to the public against payment of an entrance fee

In its judgement Verwertungsgesellschaft Rundfunk GmbH v. Hettegger Hotel Edelweiss GmbH (C-641/15) of 16 February 2017, the Court of Justice of the European Union (CJEU) stated that Article 8(3) of the Rental and Lending Rights Directive (2006/115) must be interpreted as meaning that the communication of television and radio broadcasts by means of TV sets installed in hotel rooms does not constitute a communication made in a place accessible to the public against payment of an entrance fee.

The case was initiated by a collecting society Verwertungsgesellschaft Rundfunk, which represents broadcasting organizations established in the territory of the Republic of Austria or in other Member States. The Rental and Lending Rights Directive grants broadcasting organizations e.g. the right to prohibit the communication to the public of the broadcasts managed by them. The right of the broadcasters is however limited to cases of communication to the public in places accessible to the public against payment of an entrance fee, unlike the exclusive right of performers and the right of phonogram producers secured by Article 8(1) and (2) of the Rental and Lending Rights Directive.

Verwertungsgesellschaft Rundfunk was of the view that the price of the hotel room is an entrance fee within the meaning of the provisions concerned in so far as the fact that a television is offered in the hotel has an impact on that price. Therefore, authorization of beneficiaries would be needed along with payments for the use for the communication to the public. However, the CJEU found that the price of the hotel room covers mainly consideration for the accommodation service to which certain additional services – that are usually included in the price of the stay - are added.

It should be noted that the CJEU has already in other decisions (for example judgment of 7 December 2006, SGAE, C-306/05) confirmed that installing TV sets and making a television signal available through them is considered as communication to the public. This applies to article 3(1) of the InfoSoc Directive as well as the Article 8(2) of the Rental and Lending Rights Directive. The current decision handles however merely broadcasting organizations and according to the decision the communication to the public of TV and radio broadcasts by means of TV and radio sets installed in hotel rooms does not fall within their authorization as provided for in Article 8(3) of the Rental and Lending Rights Directive. 

In Brief

Roschier Successfully Represented Elisa Oyj in a Trademark Dispute between marks ELISA and ELESA before the Finnish Supreme Administrative Court

In its decision (KHO:2017:17) of 3 February 2017 (ELESA S.p.A. v. Elisa Oyj) the Finnish Supreme Administrative Court ("Court") ruled that there is no likelihood of confusion between the trademarks ELISA and ELESA. The Court quite unambiguously stated that an average consumer would not be mistaken about the origin of the marks in question even though they are visually quite similar because of the short length of the two marks and the fact that for Finnish consumers the word 'ELISA' is a name but the word 'ELESA' does not have a meaning. 

Finnish Supervisory Commission for the Marketing of Medicinal Products decisions of 2016 published 22 February 2017

The Finnish Supervisory Commission for the Marketing of Medicinal Products (Supervisory Commission), Pharma Industry Finland's independent and voluntary control system for the marketing of medicinal products, has recently published its annual report containing its decisions of 2016 as well as a general report of its activities for the past year. The five decisions made 2016 cover marketing of prescription and nonprescription medicinal products directed both to consumers and companies. Amongst other things, the Supervisory Commission considered whether the parent company is responsible for marketing done by their affiliates. 

Finnish Market Court: Open Wi-Fi can Help Avoid Liability of Copyright Infringement

The Finnish Market Court ("Court") gave on 7 February 2017 a decision (MAO:55/17) concerning unauthorized communication to the public of TV-series in peer to peer network BitTorrent. Fundamentally, the Court ruled that since the defendant at the time of the alleged infringement had an open, unprotected Wi-Fi connection, the claimant could not provide sufficient evidence to prove that the defendant personally was the one downloading the TV-series into BitTorrent. The decision is not final. 

Finnish Market Court: Reasonable Grounds for a Domain Name Registration Evaluated at the Moment of Application

In its judgement MAO:6/17 of 11 January 2017, the Finnish Market Court stated that the reasonable grounds for a domain name to be registered in Finland shall be evaluated at the moment of application of the domain name.

In the case before the Market Court, the holder of the domain name had at the moment of applying for the domain name h-d.fi (9 December 2004) had in the Finnish business register an auxiliary trade name H D Kuopio Oy. The Market Court considered this to be sufficient grounds for the domain registration despite the fact that the auxiliary trade name had ceased (in 2008) and the retail agreement between the plaintiff (H-D U.S.A., holder of several Harley Davidson trademarks) and the holder of the domain name had both ceased after the application of the domain name. The Market Court also held this opinion despite the fact that the plaintiff had already at the moment the domain was applied for obtained several EU trademark registrations for the trademark H-D. 

Finnish Supreme Administrative Court Rules that the Problem-Solution Approach Cannot Be Applied to Utility Models

On 20 February 2017 (KHO:2017:26), the Finnish Supreme Administrative Court ruled that the problem-solution approach developed by the European Patent Office for the assessment of patentability cannot be applied to utility models.

The problem-solution approach consists of identifying the closest prior art, establishing the objective technical problem and considering whether the claimed invention is obvious to a person skilled in the art. However, according to the Supreme Administrative Court, an invention may meet the criteria for the registration of utility models even if it is not inventive according to the problem-solution approach. A utility model must be new in relation to what is known before the filing date and differ distinctly therefrom. This can be the case if, for instance, non-trivial elements of the invention are different from the closest prior art.