In conjunction with the upcoming World IP Day (26 April 2015), we held an in-house counsel masterclass on recent developments in IP and social media law. The following is an overview of some of the IP developments included in the session and our speakers have given a summary of their remarks in the video below.
Click here to view the video.
Injunction granted against ISP to adopt a Graduated Response Scheme (GRS)
In March 2015, the Irish Commercial Court granted an injunction against an ISP to implement and adopt a GRS to assist in the enforcement of music companies’ copyright against the ISP’s subscribers.
The precise scope of the scheme is unknown as the parties will make further submissions on the form of the order including exclusions, safeguards and the contribution of righsholders to the costs of the GRS. However, the order will involve at least two educational / warning letters being sent to the ISP’s subscribers identified as infringing copyright.
This is the first court ordered GRS to be imposed in Europe and to our knowledge further afield. Read more on this order in our recent article here.
Shop layout capable of trade mark protection
In the recent case taken by Apple, the CJEU confirmed that a representation of the layout of a retail store may be registered as a trade mark for retail services as long as it complies with the conditions for valid trade mark registration.
This decision will probably lead to an increase in similar applications and litigation as retailers move to protect their layouts. Perhaps even restaurants will move to protect their distinct layout and resulting “ambience”.
The rise of the publicity order in trade mark disputes
Recently, UK Courts have shown an increased willingness to grant publicity orders to successful trade mark infringement claimants. Often this relief is being ordered with no stay in place pending appeal. The legal basis for this remedy is Article 15 of the IP Enforcement Directive, and to an extent the inherent jurisdiction of the Court.
This trend commenced with the design infringement case between Samsung and Apple whereby Apple was ordered to publicise a finding that Samsung’s Galaxy tablets did not infringe its designs in certain newspapers and on its UK home page.
Recent high profile publicity orders include:
- an order against Amazon that it publish a link to a judgment against it, over its use of the mark "lush" to sell rival cosmetics, on its website for 1 month (Cosmetic Warriors v Amazon);
- an order against Twentieth Century Fox, that it publicise the ruling against it regarding its US television show “Glee”, with no stay on that order pending appeal (Comic Enterprises v Twentieth Century Fox); and
- an order (not stayed pending appeal) against Victoria’s Secret that it publicise the finding of infringement of the Thomas Pink marks by displaying prominent notices in each of its PINK branded retail/commercial premises in Europe (Thomas Pink v Victoria’s Secret).
This is a highly effective and “on trend” relief which will no doubt be replicated by the Irish Courts in early course.
Screen scraping can be restricted through effective terms and conditions (T&Cs)
Screen scraping is the process whereby price-comparison websites automatically collect and compare data from various providers. In Ryanair v PR Aviation, the CJEU recently held that websites can contractually restrict use and access by third parties to databases that are not protected under the EU Database Directive by either copyright or the sui generis database right.
Subsequently, in the decisions of Svensson and Bestwater, the CJEU held that hyperlinking and framing respectively does not infringe copyright if the website content is freely available to the public on the Internet.
Website database owners should consider amending their T&Cs to limit/prohibit screen scraping. Similarly, price-comparison sites should ensure that they comply with the T&Cs of any sites from which they wish to gather information.