Data protection directive does not make search engines liable for material on third parties’ sites

Advocate General Niilo Jääskinen suggests that national data protection legislation applies to search engine providers when they set up an office in a Member State which “orientates its activity” towards the inhabitants of that state, so as to promote and sell advertising space, even if the technical data processing takes place elsewhere.

This is his opinion in Case C-131/12, Google Spain SL and Google Inc v Agencia Española de Protección de Datos, Mario Costeja González. The complainant was aggrieved by the fact that information about a legal process fifteen years ago, which was reported at the time in the newspapers, could still be located with a Google search. The Spanish data protection agency upheld the complaint he made against Google (but not that against the original publisher, as there was a legal justification for publishing the information in the press) and Google appealed to the excellently-named Audiencia National, or national high court, which referred a series of questions to the Court of Justice relating to territorial scope, the legal position of a search engine provider, and the existence of a right to be forgotten.

As far as territorial scope is concerned, the Advocate General says that the primary factor governing the application of the national law is the processing of persona data carried on in the context of the activities of an establishment of the controller on the territory of the Member State concerned. Google claimed that there was no processing of personal data in Spain, and Google Spain merely acted as Google Inc’s commercial representative for its advertising functions. But Mr Jääskinen reckons that the question has to be decided in a way that takes account of the business model of internet search engine providers. They normally rely on keyword advertising, and to make this work they need a presence on national advertising markets. It is therefore appropriate to consider that an establishment processes personal data if it is linked to a service involved in selling targeted advertising to inhabitants of a Member State, even if the technical data processing operations are situated elsewhere. The Advocate General therefore proposes that the Court declare that processing of personal data takes place within the context of a controller’s establishment: national data protection legislation is applicable to a search engine provider when it sets up an office orientated towards the inhabitants of the Member State in which it is based, for the promotion and sale of advertising space on the search engine.

As for the legal position of search engine providers, back in 1995 when the Directive was adopted it was impossible to foresee the sort of arrangements we now have. He does not think that Google should be considered to be a “controller” of personal data appearing on web pages it processes: provision of a tool for locating information does not imply any control over the content included n third party web pages. Indeed, the search engine is not even in a position to distinguish between personal data on those web pages and other data, so the search engine cannot in law or in fact fulfil the obligations of the controller provided in the Directive regarding personal data on source web pages hosted on third party servers.

This means that a national data protection authority cannot require a search engine service provider to withdraw information from its index, except in very special cases – where the service provider has failed to comply with the exclusion codes (which indicate to search engines that the publisher of the page does not want it indexed or stored by them) or where a request regarding an update of cache memory has not been complied with.

Third, there is no general right to be forgotten under the directive, even when that instrument is interpreted in accordance with the Charter of Fundamental Rights of the European Union. The directive does confer rights to rectification, erasure and blocking of data, but these arise where processing does not comply with the provisions of the directive. It also grants any person the right to object at any time, on compelling legitimate grounds relating to his or her particular situation, to the processing of data about them, save as otherwise provided by national legislation. But a mere subjective preference is not a compelling legitimate ground, so the directive does not entitle a person to restrict or terminate dissemination of personal data that they think is harmful or contrary to their interests.

Secondary liability of search engine providers under national law might impose duties amounting to blocking access to third party websites with illegal content. However, requesting search engine service providers to suppress legitimate and legal information that is in the public domain would amount to an interference with freedom of expression, censorship of the content by a private party, which the Advocate General was not prepared to countenance – and neither, one assumes, will the Court of Justice.

The real thing

Letters of Note is a frequently fascinating blog, and its recent offering It's the real thing ought to strike a chord with intellectual property owners, users and lawyers - though I fear that there are many, especially among the owners, on whom it will be lost.

India proposes hike in Patent Office fees

In a recent notification, the Government of India has proposed an amendment to the Patent Rules, 2003. The proposal is made to exercise powers conferred by sub-section (1) of section 159 of the Patents Act, 1970 which states that “The Central Government may, by notification in the Official Gazette, make rules for carrying out the purposes of this Act”. The Notification was published in the official gazette on 6th May 2013 seeking objection and suggestion from General Public.

The proposed amendments are of significance importance to the Patent process in India. The salient features of the proposed amendments are:

1. The First schedule of Patent Rules, 2003 has been revised to increase in the official fee by 100% for both natural and non-natural persons.

2. A further surcharge of 10% shall be levied if the filings for various proceedings are made in hard copy format and not use e-filing system. Levying of surcharge on the fee for filing patent applications and other forms through physical means by 10% is to encourage e-filing. The e-filing system was first launched by the Indian Patent Office (IPO) in the year 2007 which enabled online filing of new applications for Patents. The e-filing system is still not a favoured mode of filing method in India due to various technical drawbacks. Hence, the proposed increase in the fee may deter applicants from filing hard copies and subsequently encourage them to opt for online fling.

3. The Fourth Schedule of Patent Rules, 2003 has also been revised to increase the official fee up to 100%. Since, the pre-grant and post-grant oppositions have been rampant these days and one could also blame the meager fee involved with it, the fee have been increased with the belief that it would cut down frivolous oppositions. The fee for compulsory license have also been doubled apart from increasing the hike in fee for affidavits; and

4. Form 7 A has been introduced for filing pre-grant opposition. Since, Form 7 was used for both, pre and post-grant opposition; introduction of a separate form would ease the process.

The proposed amendment seems to have been made with the objective of reducing the number of frivolous patent applications and moreover comparing with the USPTO and EPO fee, the Indian Patent office fee has been very nominal. The proposed fee hike is currently facing a serious criticism from various sections and groups fearing that there would be substantive drop in filings by individual inventors and also from SMEs which may lead to lower industrial growth in India.

France as a brand

By Catherine Maminska

On 28^th of June, the French Cabinet for Economic Development created a think-tank aiming to analyse the value of France as a trade mark - an avant-garde idea that the French government is willing to conceptualize within the next 6 months.

Opinions will be collected from the general public until 7^th September. Any French speaking person can participate to the think tank by responding to the questionnaire provided online.

On 28^th October a final presentation will be given and there will be a possible launch of brand France in the beginning of 2014.

The idea behind this concept has been largely evoked in Simon Anholt’s latest books - Places: Identity, Image and Reputation and Competitive Identity: the new brand management for nations, cities and regions. For him, branding a country is a way to recover economically against the today very competitive market.  It can help a country to distinguish itself from the crowd.

This concept has already been put into practice by the Anglo-Saxons. The Americans and Canadians have used the concept of Nation Branding to build and manage their reputation. The British have been relatively shy and preferred to incorporate nation branding in their public diplomacy.  However France is probably the first country that explicitly mentions the concept of “trademarking itself”: http://www.marque.france.fr/. The website address itself is evocative, marque meaning trademark in French.

In the paper presented on 28^th of June various French personalities from the sector of tourism, industry, research, design or culture have been consulted to define the mission of the think-tank.

It has been trying to expose the value of France as a trademark: what does France evoke to others? Un certain, je ne sais quoi? Un art de vivre?

It also tried to determine the extent of the branding: should children in school be taught the value of France as a brand?

There has been no mention however to the trade mark legislation as such.  No lawyers have been consulted per se, which is quite worrying knowing the power a brand has. 

Let’s wait until the 28^th of October to see the outcome of the questionnaire.

Trade mark application for red ends of shoelaces rejected

By Catherine Maminska

The General Court of the European Union Court of Justice (decision of 11 July 2013, in Case T-208/12, Think Schuhwerk GmbH v OHIM, only available in German and French) found that the application for a trademark consisting of red ends of shoelaces for “footwear, in particular shoelaces” was not eligible for registration as it lacked distinctiveness.

According to the Court the coloured ends of shoelaces are indistinguishable from the appearance of the goods themselves so that the relevant average consumers will not make assumptions as to their commercial origin

Since red-coloured shoelaces do not significantly depart from customs of the industry and shoe designers can chose from a wide variety of design and in particular colour options, the red colour at the end of shoelaces is not capable to indicate the trade origin of the goods claimed.

This decision is in line with the arguments of the Court in a similar case of orange/red colour at the tiptoe end of socks (decision of 15 June 2010 in Case T-547/08 – X Technology Swiss GmbH v OHIM).

Lets see what red part of shoes comes next. We already had red soles, red ends of shoelaces and red/orange tiptoes.

RCD valid and infringed for a change

In Magmatic Ltd v PMS International Ltd [2013] EWHC 1925 (Pat) (11 July 2013) the High Court held a registered Community design for a child's ride on suitcase valid and infringed. The case is important because previously infringement had rarely gone beyond counterfeiting and identical designs. (Incidentally, can one really say something is a design if it has been copied?)

This design was disclosed in 1998 and the Registered Community design was filed four years later. The claimant argued that the disclosure was obscure: the court said it was not so obscure has to be excluded from prior designs, but it was obscure enough not to form part of the design corpus. This is a fine distinction: it interprets Article 7 (1) so as to protect early disclosures.

Unregistered design right also featured. The court said UDR claims much must be effectively particularised. The features to be protected must be chosen carefully, and the claimant must be specific.

The design had been entered in a competition in 1998. The question was, what was disclosed as a result of the awards ceremony? The concept was made available to the public that only those present at the awards ceremony would have enabled to discover the details.

The design is considered obscure if "those events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community" according to the Court of Appeal in the Green Lane case.

In the present case, the court concluded that:

• The specialised circles must become aware of the design himself, not just its existence.
• The relevant sector is that of the prior design, although since the Green Lane case the Board of Appeal has twice decided that the relevant sector is actually that of the later registered design (Ferrari v Dansk Supermarked R84/2007-3 and Crocs v Holey R9/2008-3). But the Court of Appeal was bound by the Green Lane case, and it did agree with it.
• The specialised circles must be interpreted widely, including all individuals who conducted trade in relation to the products in that sector - designing, making, advertising, marketing, distributing and selling in the community according to the Green Lane case, and also experts and all businesses involved in the trade including importers (R552/2008-3, Harron v THD Accoustics).
• the phrase "could not reasonably have he have become known in the normal course of business" (Court's emphasis) must be interpreted as a composite whole.
• The burden of proof lies on the party relying on the exception. The onus may shift once it is shown that the disclosure relied on is obscure.

The first of these is common sense. The the is an interesting procedural development. The Court held that the obscure designs exception was not a plot applicable in the present case because people connected with the luggage trade were at the awards ceremony and saw the design.

The court held that the informed user was a child between three and six years old, or a related adult. Parties agreed, although the Pogs case differed: children would not buy suitcases out of their pocket money.

The designer of a child's ride on suitcase it had considerable design freedom, so abroad scope of protection was appropriate. The substantial departure from the design corpus also supported this.

The different overall impression given by the Registered Community design compared with the earlier design meant that the validity of the Registered Community design and was not compromised.

Comparing the parties' products, the registered Community design did not include a representation of the bottom of the case, so that was excluded from the comparison. Also, the Registered Community design did not feature graphical elements so the comparison had to be of the shapes alone.

The claimant identified the features of the Registered Community design present in the defendant's product. The defendant identified the novel features of the Registered Community design not in its case, and the features of the case which were not present in the Registered Community design. The court held that the differences were not as visually significant as the defendant contended. The defendant's case was more like the Registered Community design than it was like the old original design, so the Registered Community design was infringed.

As for UK UDR, the court stressed how important it is to particularise the claim. The claimant must make absolutely clear on what designs it relies, with clarity and precision. In this case, the claimant for only got to the final version on day two of the trial.

The defendant argued that the claimant particulars extended to abstract generalisations rather than delineating particular designs. The court rejected this argument, but it did hold that the claimant's particulars if design poor more like patent claims than an identification of particular aspects of configuration of a product, so they amounted to methods of principles of construction. (check words in judgment).

The court held that where the particulars of the design were permissible, there was an infringement.

There was also a claim aim relating to infringement of copyright in the packaging. The court held there any copying that had taken place place was not of a substantial part.

Private copying levy may be legal - Court of Justice

In Case 521/11, Amazon.com International Sales and Others, the Court of Justice holds that the indiscriminate collection of a private copying levy on the first sale of recording media may, under certain conditions, be compatible with EU law. Press release here.

Forstater & Anor v Python (Monty) Pictures Ltd & Anor [2013] EWHC 1873 (Ch) (05 July 2013)

Forstater & Anor v Python (Monty) Pictures Ltd & Anor [2013] EWHC 1873 (Ch) (05 July 2013)  was a claim by the producer of the film, Monty Python and the Holy Grail, for a share of the proceeds from Spamalot, the stage show which is loosely based on the film. It's a somewhat unedifying tale in which greed seems to play a major part: Mr Forstater came out ahead, but in a fairly complicated judgment by Norris J of 155 paragraphs he lost a few claims too, including (though this was not in the gift of the court) to be known as the seventh Python. And though he got his money, it seems to have been at the expense of his relationship with the Pythons which clearly hit the rocks some time ago - as did Mr Forstater, in a way, as the BBC's report explains that he was declared bankrupt a couple of years ago (perhaps having been involved in Dweck v Forstater [2010] EWHC 1874 (QB) (26 July 2010)).

IP Unzipped is quintessentially IP

By Yasmin Churcher 

The first of a bi-annual series of IP training seminars for junior lawyers. The seminar was hosted by Rosie Burbidge and Arty Rajendra of Rouse Legal with input from Chris Aikens, a barrister from 11 South Square. The panel of three provided a gentle walk through the workings of the Patent County Court, what sort of cases predominantly are heard there, the costs ceiling, length of hearing (usually 1 day hearings) and the who presiding judges are.

From Rouse legal’s research over the period January 2012 to January 2013 of all PCC cases reported, 26% of all rights litigated were patent cases which incidentally are never combined with other IP rights. The type of business these cases came from included life sciences and consumer goods, with the majority from the field of technology. Infringement was found in 44% of cases; 36% of patents were revoked.

Copyright represented 22% of all rights litigated, with the majority of cases being represented by consumer goods; infringement was found in 90% of cases

Trade marks represented 18% of all rights litigated again the majority of cases were derived from the consumer goods business although one technology and one life science case was represented; infringement was held in 60% of cases.

Designs represented 13% of all cases litigated with the predominant number of cases being derived from the consumer goods sector. Infringement was found in all the cases.

Examples were also provided of representative patents (Unilever v SC Johnson: self-cleaning shower and Liversidge v Abbott: automatic medical injector), trade marks (Ghias (t/a Griller) v Ikram (t/a the Griller original), passing off (Lumos v Sweet Squared; W.S Foster & Son Ltd v Brooks Brothers UK Ltd; Allen v Redshaw), design (Gimex v The Chill Bag Company; Kohler Mira Ltd v Bristan Group Ltd) and copyrights (Abraham Moon v Thornber; Temple Island v New English Teas) in dispute to give an idea of the subject matter under scrutiny.

Much was packed into a short space of time but provided a flavour of good things to come. The company was well informed and congenial making for IP exchange of the best kind. We await with anticipation the next IP unzipped seminar.

Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46 (3 July 2013)

Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46 (3 July 2013) was the Supreme Court's (Lord Neuberger (President), Lady Hale, Lord Clarke, Lord Sumption, Lord Reed, Lord Carnwath's) opportunity to rule that the proprietor of a patent which is declared invalid cannot hang on to damages recovered for an infringement of it. Or, to put it another way, a defendant can rely on the subsequent amendment of patent claims to relieve them from liability for damages, which certainly sounds right. A bit of a bifuracation problem - the patent was held valid in the English courts but invalidated by the Technical Board of Appeal in the EPO. For speed, here is the Supreme Court press release:

BACKGROUND TO THE APPEAL

Virgin obtained judgment from the English Court of Appeal (“the CA”) against Zodiac for damages to be assessed for the infringement of certain claims (“the relevant claims”) in a European Patent. The CA found their patent to have been valid and infringed by Zodiac. Subsequently, the Technical Board of Appeal (“the TBA”) of the European Patent Office (“the EPO”) ruled that that the relevant claims were invalid because they had been anticipated in prior art, and retrospectively amended the patent so as to remove, with effect from the date of grant, all the relevant claims.   

Virgin submitted that it was nevertheless entitled to recover damages for infringement because the CA’s conclusions - that the patent (including the relevant claims) was valid and that the relevant claims were infringed by Zodiac - were res judicata as between it and Zodiac on the subsequent assessment of damages, and that it was not open to Zodiac to reply on the TBA’s amendment to the patent, as this would be inconsistent with the orders made by the CA. That argument had succeeded before the CA in similar circumstances in previous cases, and the CA had followed those decisions in the present case. Zodiac’s case is that the unamended patent has been retrospectively amended, and that the relevant claims therefore no longer exist, and are deemed never to have existed. It submits that no issue of res judicata arises because that was not the situation considered by the CA.

JUDGMENT

The Supreme Court unanimously allows the appeal and declares that Zodiac are entitled to rely on the amendment of patent in answer to Virgin’s claim for damages on the enquiry. Lord Sumption gives the lead judgment, Lord Neuberger gives a concurring judgment, and the other members of the Court agree with both judgments. 

REASONS FOR THE JUDGMENT

After a review of the law of res judicata [17-26], the Court gives two related reasons why Zodiac cannot be precluded from relying on the decision of the TBA on the enquiry as to damages. One is that it is relying on the more limited terms of a different patent which, by virtue of the TBA’s decision, must at the time of the enquiry be treated as the one that existed at the relevant time, whereas the unamended patent, relied on by Virgin, must be treated as if it had never existed. The second reason is that Zodiac is not seeking to reopen the validity of the relevant claims, which was one of the questions determined by the CA. The invalidity of those claims may be the reason the TBA amended the patent, but Zodiac is relying on the mere fact of amendment, not the reasons why it happened [27, 53, 54].

The CA reached a different conclusion because it followed a line of cases holding that a patentee, whose patent (in proceedings against a particular defendant) is found to be valid and infringed, is entitled to claim damages from the defendant for the infringement without regard to a subsequent revocation of the patent, even though as a matter of English law the revocation of  a patent for invalidity relates back to the date of grant [28, 48]. 

The Court holds that this line of cases was wrongly decided. Their major fallacy is the assumption that cause of action estoppel was absolute generally rather than absolute only as regards points actually determined by the earlier decision. Accordingly, the decisions in those cases had no regard to the fact that the consequences of the patent’s subsequent revocation had not been, and could not have been, determined, or even taken into account, in the earlier decision, because it had not happened by the time of that decision. They were also wrong to suppose that, by taking into account the subsequent revocation, a court would be rehearing the question of validity decided by the judgment on liability.

The revocation was a decision in rem determining the status of the patent as against the world [32, 48]. It had been revoked by the authority which had granted it and it must be treated as never having existed. The issue raised on the enquiry was not invalidity but revocation [32].  

Accordingly, where judgment is given in an English court that a patent (whether English or European) is valid and infringed, and that patent is subsequently revoked or amended (whether  n England or at the EPO), the defendant is entitled to rely on the revocation or amendment on  he enquiry as to damages [35].

The Supreme Court also proposed that the current procedural guidelines laid down by the CA,  which propose that the English court should normally refuse to stay its own proceedings if it  would be likely to resolve the question of validity significantly earlier than the EPO, should be re-examined [38, 69]. 

Force India: breach of confidence, but no more damages

Force India Formula One Team Ltd v Aerolab Srl & Anor [2013] EWCA Civ 780 (03 July 2013)  is perhaps the judicial equivalent of being relegated to the back of the grid after being found to be 1.5 kg overweight. Certainly it's a second, arguably self-inflicted, misfortune in only a few days to be visited on Force India, who nevertheless are knocking ever harder on the door that leads to the front end of grand prix motor racing.*

The appeal was from a judgment of Arnold J, ([2012] EWHC 616 (Ch) (21 March 2012)) who had awarded Force India damages which failed to meet the team's claim, falling short by three orders of  magnitude. The Court of Appeal dismissed the appeal: the award was proportionate and dissuasive (amounting to the profit made by the defendants). Interestingly Lewison LJ said he was "sceptical" about whether the enforcement directive applied to breach of confidence actions, though even if it did he did not think the award breached the directive.

The dispute dates back to August 2009, when the defendants started to work for Team Lotus, which began campaigning in the 2010 season (though under the name Lotus Racing at first), before being obliged to change its name to Caterham for the 2012 season after the Chapman family changed sides. The use of the Lotus name also gave rise to litigation - and to Peter Smith J's expression of regret that the parties were not fighting things out on the racetrack but in the courtroom. Unfortunately for Team Lotus/Caterham, on the track they never come within striking distance of their opponents in the court (except when Paul Di Resta is obliged to start from the back of the grid and has to pass what are still often called the "new teams").

In the present case, of course, Caterham were not a party. Nevertheless, they were the indirect beneficiary of the breach of confidence, and therefore an indirect target of the litigation - which perhaps shows how times change in grand prix motor racing: Force India have not been consistently near the front but they have had their moments over the years, while Caterham's best years are, I hope, ahead of them - they are a couple of years behind Force India, which started racing in 2008, although it can trace its history back to the launch of the Jordan team in 1991. Even in 2010 Force India were miles ahead of the new teams. From Force India's point of view, was the backmarker worth (as litigators say) powder and shot?

* I use the expression deliberately, in protest against the appropriation as a trade mark of the title of the applicable set of rules and its use as the name of the series of races.

Tata Motors moves court against trademark infringement | Business Standard

Tata Motors moves court against trademark infringement | Business Standard

Getting the copyright balance right | Kingston Publishing: inspiring future publishers

I came across this posting on the Kingston Publishing (Kingston University, that is, and publishing course rather than publishing house) blog and wanted to share it. It's by Samantha Perkins, an MA Publishing student at Kingston, and is based on the Charles Clark Memorial Lecture given at the London Book Fair. The talk was presented by Richard Hooper CBE, Chairman of the Copyright Hub Launch Group. A very useful review of what is going on in that corner of the copyright world, and a suitable memorial to Charles who did so much in this field.

British Sky Broadcasting Group Plc & Ors v Microsoft Corporation Microsoft & Anor [2013] EWHC 1826 (Ch) (28 June 2013)

In British Sky Broadcasting Group Plc & Ors v Microsoft Corporation Microsoft & Anor [2013] EWHC 1826 (Ch) (28 June 2013) the broadcaster succeeded in its trade mark infringement claim against Microsoft. Mrs Justice Asplin (or as Legal Week has it, elevating her to a much higher court, "Justice Sarah Asplin", or even just "Asplin", which shows a distinct lack of respect for the judiciary) rule that Microsoft infringed two Community and two UK SKY trademarks when it named its cloud service "SkyDrive". The judge said:

Damage is inherently likely where frequently the customers of a business wrongly connect it with another...in my judgment, is clear from the very fact that the callers to the Sky helpline who were enquiring about SkyDrive were having serious difficulties with the product which they believed to be connected with Sky.

The defendant counterclaimed for a declaration of partial invalidity of all four trade marks involved, on the ground of descriptiveness for cloud storage services (a touch of pot and kettle there, although of course Microsoft were not defending a trade mark registration, for which one hopes "Sky Drive" for cloud computing services would never qualify), and also sought a declaration of invalidity in respect of one CTM in the light of what is alleged to have been its impermissible amendment. On the descriptiveness point, the judge said:

This is not a case in which there is a ‘sufficiently direct and specific relationship between the sign and the goods or services in question to enable the public immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics.’

She was also pretty dismissive of the amendment argument. Microsoft has announced that it intends to appeal.