Notwithstanding that there are buildings whose artistic elements made eligible for Copyright protection, the Spanish Case Law had not established the criteria to be taken into account when the building at stake has a more reduced artistic dimension.

Everything changed with the Spanish Supreme Court Judgement 1644/2017 of 26^th of April 2017 where the court set some considerations to assess the originality of such works for the effects of protecting them by Copyright.

In the case, an architect -claimant- designed a building that subsequently lead to a second project in collaboration with another two architects-defendants. Such second project did not finally go ahead due to financial constraints. Some years later, the defendants created a third project based on the former, without the consent of the claimant, who aims to be recognised as co-author.

In order to assess whether or not the claimant is the co-author, the Supreme Court establishes that the work should be original in objective terms, requiring that the author contributions are new and singular since “not all architectonic project entails creativity per se”.

Finally, since the work was a collaborative one and the claimant contributions were limited to non-original and merely technical aspects, the claimant cannot be deemed to be author for Copyright protection purposes.  

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It should be recalled that in Usedsoft case (C-128/11) the ECJ concluded that the exhaustion of rights according art. 4.2 of the Directive 2009/24 also occurs not only when the software is provided on a physical copy but also when is delivered by online means subject to (a) the license provides for an unlimited right of use, in exchange of a price that includes the economic value of the copy itself (b) the reseller disables the copy installed in their computer.

In “Ranks” case, the ECJ went a step further and considered also the case of exhaustion of rights in non-original copies of software when (a) the original copy has been harmed, destroyed or lost, and (b) the acquirer is not using the software or has uninstalled it.

Namely, the ECJ stated that the legitimate acquirer of a computer program, commercialized by the program owner or with his consent, is entitled to resale the used program according to art. 4.c of the Directive 91/250 if and only if such transfer does not undermine the owner´s right of reproduction according art. 4.a of the abovementioned Directive.

The ECJ highlights that the resale of back-up copies of a given program cannot be resold, even if the original copy has been harmed, destroyed or lost, without the program owner’s consent. Despite the prohibition included in art. 5.2 of the Directive 91/250 that impedes software owners to limit the creation of backup copies by contractual means, such prohibition does not extend to the right of reselling backup copies without the original support, regardless it has been harmed, destroyed or lost, said the ECJ.

Nevertheless, the ECJ notes in paragraphs 52 to 56 that, by virtue of the exhaustion of rights rule, the harm, destruction or loss of the original copy does not prevent the legitimate acquirer to resale the program in the used-software market. For this purpose, the ECJ requires the right holder to facilitate the download of the program from his website. In these cases, such download should be deemed a necessary reproduction for the legitimate use by the acquirer.

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• The CJEU Confirms the Existence of Digital Exhaustion for Software
• CJUE Judgement “UsedSoft”: the exhaustion of rights applies to software licenses
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• ECJ Judgement “SAS” on the protection of computer languages

The tension underlying this dispute is that Acacia Srl is attempting to litigate before the Naples Court, whose interpretations of substantive law are more favourable to its interests, while BMW is trying to exclude such Court jurisdiction.

If the recent judgment of the Spanish Supreme Court was based on the undue accumulation of actions by BMW to attribute the jurisdiction to the Spanish Community Design Court (CDC) – as our lawyer Nuria Ruiz explained here – the present Judgement of the CJEU of July 13 In Case C 433/16 “BMW” comes from a request preliminary ruling raised by the Italian Supreme Court of Cassation to the CJEU concerning the jurisdiction (or otherwise) of the Naples Court related to a Community Designs’ negative declaration.

The questions referred by the Italian Court to the CJEU are summarized as follows:

1. Can an exception of a lack of jurisdiction of a preliminary nature and subject to other procedural exceptions be understood as an acceptance of the jurisdiction of a court?

2. Does imply that article 82.4 of Regulation 6/2002 does not contemplate other alternative forums to the domicile of the defendant an exclusive attribution?

3. Are the exclusive jurisdiction rules of Regulation 44/2001 that are not explicitly extended to declaratory actions of non-infringement – but to other actions derived from IPR- applicable to these cases?

4. Is the case-law arising from the CJEU of 25 October 2012 in Case C-133/11 “Folien Fischer and Fofitec” applicable to negative declarations? Hence, in this case, is the CDC (art 81 R. 6/2002), the court for the place where the harmful event occurred or may occur (art 5.3 R. 44/2001) or may the applicant opt for one or another?

5. If there is connexion between the cases, is it possible to accumulate actions for unfair competition and abuse of dominant position to the negative declaration when the admissibility of any of the former presupposes the admissibility of the latter?

6. Do the two above referred actions constitute a case of tort, delict or quasi-delict? If so, could this condition the applicability of the rules of jurisdiction?

The CJUE answers the first question that the objection raised by the defendant based on the lack of jurisdiction of the Court in any case precludes a tacit acceptance of its competence, still if the exception is made cumulatively and even alternatively to other actions.

On the other hand, with respect to the second and third questions, the Court understands that if the defendant is domiciled in a Member State, declaratory actions of non-infringement must be filed with the CDC of said member state, without prejudice of prorogation of jurisdiction, litis pendens and/or related actions in accordance with the aforementioned Regulations.

After ruling out in reply to the fourth question the applicability of Article 5.3 of Regulation 44/2001 – the place where the harmful event occurred or may occur – to negative declarations, the CJUE responds to the fifth and sixth questions stating that the rule of connection established in Article 28.3 of Regulation 44/2001 does not apply to the claims for a declaration of abuse of a dominant position and unfair competition that are related to negative declarations when the admissibility of any of the former presupposes the admissibility of the latter.

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• European Union Trademark Licenses do not Need to be Registered for Licensees to Pursue Infringers, Says CJEU, as Opposed to the Interpretation of the EU Trademark Court of Alicante

Moreno Benavente, owners of the Spanish trademark M-2.841.993, “La Milla de Oro” – The Golden Mile- to protect wines, filed a claim against Abadía Retuerta before the Commercial Courts of Burgos for the use of the sign “El Pago de la Milla de Oro “in the labeling of their bottles. According to the plaintiffs, the use made by the defendant of the distinctive sign could confund the consumers.

Abadía Retuerta responded the claim and counter-claimed the cancellation of the trademark “La Milla de Oro” for being indicative of the geographical origin of the products.

According to the defendant, wine sector consumers associate this term with a specific geographical area within the Ribera del Duero Appellation of Origin where some of the most reputed wineries, such as Pago de Carrovejas, Vega Sicilia and Pingus, are located.

The Commercial Court of Burgos declared the cancellation of the trademark the “La Milla de Oro”, leading to a subsequent appeal of the ruling.

The appellants defend in their appeal that the ” La Milla de Oro ” is just a fancy name which is common in other wine producing areas, such as La Rioja, and other sectors, like in Madrid, where an area of ​​the Barrio Salamanca is commonly know as “Milla de oro” due to the great concetration of luxury shops.

In view of the above, the Audiencia Provincial de Burgos suspended the proceedings and raised the following questions to the CJEU:

• Could a sign that refers to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality, be descriptive?
• Could the abovementioned sign be regarded as an indicator of geographical origin insofar as the concentration of the product or service will always be in a given physical space?

The CJEU considers that the sign “La Milla de Oro” cannot constitute an indication of geographical origin, since it must necessarily be accompanied by a name designating a geographical place in order to identify the physical space to which it refers. Thus, the term ” La Milla de Oro ” could be associated with other areas with important concentration of products or services whose only common point is their high level of quality.

As per the first question, the CJEU understands that “The Golden Mile” refers to the characteristic of a product or service which is that it can be found in abundance in a single place with a high degree of value and quality. Therefore it might be deemed descriptive and being cancelled.

Now it is turn of the Provincial Court that will have to decide whether or not to cancel the trademark on the basis of the CJEU analysis. Subsequently, if the trademark it is not cancelled, the court must assess the likelihood of confussion between signs.

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Although for the moment it seems it is not one of the EU priorities, the Brexit will strongly impact on the regulation of Intellectual Property rights and, in particular, the EU trademarks regulation. In the following lines we will analyse some aspects which will probably experience changes in respect to the EU trademark’s regulation once the UK leaves the EU.

The first question that comes up is whether or not UE trademarks will have effect on UK territory and how will it happen. In our opinion, there are three scenarios that should be considered:

1. That when the UK leaves the EU, EU trademarks and trademark applications registered/filed before that moment automatically stop granting protection in UK. Some EU trademarks’ holders have decided to anticipate this scenario by filing UK trademarks.
2. That the owners of pre-Brexit EU trademarks applications and registrations would be entitled to convert their EU trademark rights into UK trademarks, with or without paying a fee, during a specific transitory period to that effect – while maintaining its unitary effects for the rest of countries. This solution may not be the most convenient one if we take into account the great number of EU trademarks In this sense, opting for this solution could indeed collapse the British Office.
3. That the effects of pre-Brexit EU trademark applications or registrations are maintained up to its registration or nearest renewal, moment when the holder of the right would have the possibility of converting it in a UK trademark.

Other issues that will deserve a careful analysis – and also interpretation by EU and UK Courts – are, among others, the requirement of “genuine use” of a EU trademark. Would the genuine use of an EU trademark in the UK after its exit from the EU be considered a valid use? How long? Additionally, the scope of EU trademarks with regards the exhaustion principle will not vary if the UK continues to be part of the European Economic Area. If not, the goods commercialized with the authorization of the trademark holder in UK will require an additional authorisation to be resold in the European Union.

There are certainly many open-ended questions. For the moment, we suggest EU trademark owners, their licensees and other concerned parties, to review their private contracts in order to avoid potential conflicts after the Brexit. It will be exciting in any case to see how these issues evolve.

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• European Union Trademark Licenses do not Need to be Registered for Licensees to Pursue Infringers, Says CJEU, as Opposed to the Interpretation of the EU Trademark Court of Alicante
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Such structure optimizes storage and data transmission conditions, making peer-to-peer networks a very attractive system for, among other things, sharing large files. The problem arises when the files that are shared contain data and works protected by copyright.

In a centralized system that works with a single server it is possible to easily track and eliminate the infringing content of the same, nevertheless, in the case of “peer-to-peer” networks the difficulty resides in the fact that the infringing files are located in the computers of the network users which operate as servers and are placed in different countries, making it virtually impossible to track and eliminate them. In addition, administrators of file exchange platforms such as TPB argue that they do not perform the communication acts of files containing copyrighted works themselves but the users of their platform.

For this reason, since their establishment, peer-to-peer networks have been the workhorse of copyright holders and one of the main objectives of the anti-piracy fight. The TPB platform consists of a free search and tracking engine of bittorrent files. These files are loaded on the platform and sent to a centralized server that identifies the users of the platform that are available to exchange a particular file. The TPB platform indexes these files in different categories based on the nature of the works, their type or their popularity so that their users can find specific works and download them on their computers. Without TPB’s management and indexation of the files, it would be very difficult for the platform users to get access to them. 

The torrents files uploaded in TPB refer, for the most part, to musical and cinematographic works protected by copyright for which no authorization has been granted in connection with the acts of exchange that are performed on the platform. The judgment of the Second Chamber of the Court of Justice of 14 June 2017 in Case C-610/15, “The Pirate Bay”, derives from a conflict between a foundation defending the interests of copyright holders (Stichting Brein )and the two leading Internet access providers in the Dutch market (Ziggo BV and XS4ALL Internet BV).

The purpose of the litigation is to obtain an injunction ordering the defendant companies to block access to the TPB site in order to prevent their customers from committing large-scale copyright infringements through the services of the defendant. This measure was rejected by the Appeal Court on the grounds that it was not the TPB platform but the end users of the defendants’ services who committed the infringing acts and that the request to block the TPB site was not proportional to the aim pursued. In view of the above, the Netherlands Supreme Court referred the following two questions to the Court of Justice of the European Union for a preliminary ruling:

(i) whether the offer and management on the Internet of a system by means of which metadata on protected works which are present on the users’ computers are indexed and categorized for users, so that they can trace and upload/download the protected works on the basis thereof, amounts to “communication to the public” within the meaning of article 3(1) of Directive 2001/29 and, in the negative of the above ,

(ii) if it is possible, in the context of Articles 8.3 of Directive 2001/29 and 11 of Directive 2004/48, to issue an injunction against directed to an Internet access provider to block the access of its users to a website that facilitates the infringements of third parties in the way previously referred to in Question 1. 

In order to answer the first question, in the absence of a definition in Directive 2001/29 of the notion of “communication to the public”, The CJEU relies on the case law that develops such concept and establishes the requirement of two elements to assess its existence: On the one hand, an act of communication and, on the other hand, the presence of a public. The CJEU’s case-law also indicates that an “act of communication” exists when an actor provides his clients, with full knowledge of the facts, access to protected works, especially when without the actor’s intervention such access could only be achieved with great difficulty.  In this case, the CJEU determines that the administrators of TPB, with their actions intervene with full knowledge of the consequences of their acts, significantly facilitating the access and tracking of the protected works for download by their users. As a result, the management of the TPB platform should be considered an act of communication. The CJEU also establishes the second requirement, the presence of a public, is met, since the communication at stake has as its intended audience the users of the TPB platform which, according to the case law of the concept of “public”, constitute an indeterminate number of potential recipients and a significant number of people. Furthermore, the public to which the act of communication is addressed must also be considered “new” because it was not taken into consideration by the owners of the protected works when they authorized the initial communication.

For the above, the CJEU concludes that the acts consisting of making available and managing on the Internet of a platform that allows its users to locate works protected by copyright and to exchange them in a peer-to-peer network amount to an act of communication in the sense of Article 3.1 of Directive 2001/29, considering it unnecessary to rule on the second question referred. With this unprecedented judgment, the CJEU makes a broad interpretation of the concept of “communication to the public” adapting it to the current technological reality and acting severely against the operators of indexing websites of peer-to-peer networks by confirming their responsibility for the infringements of copyright carried out by their users in the context of the use of such networks.

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Please be informed that the rest of our contact details will remain the same. We take advantage of this communication to wish you a nice summer and invite you to visit our new premises.

The SFP Legal team

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When it comes to understanding the role of industrial property in the standardisation process, we have to briefly refer to the standards’ creation process. Some of those standards are created within private organisations known as Standard Setting Organisations (hereafter, SSO’s). The members of the SSOs, most of whom are private companies, decide to contribute their most cutting-edge technology, resulting from their large investments in innovation. The best proposals are selected among the different contributions and integrated into the standard.

In the context of our (highly) competitive environment, it is not unusual for the companies to protect their above-mentioned investments in innovation by patenting the resulting technology. When such a patented technology is integrated into a standard, in the sense that in order to comply with such standard any third party must infringe the exclusive right granted by the patent, that patent becomes essential (Standard Essential Patent, hereafter SEP).

This situation raises concerns with regards the power of SEP holders, who can block third parties wishing to adopt the standard for example by denying the grant of licenses or demanding abusive royalties. Legally, this kind of third parties’ lockout, that generally entails injunctions before the Courts requesting the cessation of any activity that infringes the patent, might be understood as an abuse of dominant position within the meaning of art. 102 TFEU.

In order to avoid these situations, the SSO’s bylaws require the SEP holders to license their rights in Fair, Reasonable and Non-Discriminatory terms (FRAND), whose underlying purpose is to secure a proper reward for innovation whilst avoiding the “hold-up” problem.

Predictably, in most cases the negotiating parties have not the same view as to what should be considered fair, reasonable and non-discriminatory, and that has led to a high level of litigation, bringing up the debate as to which area of law is most appropriate to solve this kind of conflicts.

In its well-known ruling of July 16, 2015, C-170/13, Huawei vs. ZTE, the CJEU laid down the conditions that must prevail in order to consider that the bringing up of an injunction by a SEP holder is not an abusive behaviour in light of Competition law. By these means, the Court established a set of general principles seeking to ensure a proper balance between the SEP holder legitimate exclusive rights, the FRAND compromise assumed with the SDO and the maintaining of a healthy competition in the market. In very general terms, the ruling considered that the SEP holder must offer to the third party a license proposal in FRAND terms, and the third party must treat such proposal diligently, in accordance with recognised commercial practices in the field and in good faith.

It is clear that these general rules will now have to be interpreted and applied to the particular cases at issue by the national courts, which brings us to the recent ruling of the High court of Justice of the UK, dated April 4 2017, in the matter Unwired Planet c. Huawei.

In his ruling, which is over 160 pages long, Mr. Justice Birss established (among many other considerations that exceed by far the object of this post) that if the general conditions of Huawei vs. ZTE are met, the behaviour of the SEP holder cannot be qualified as abusive. However, this is a one-way rule that can’t be applied strictly in reverse: the absence of a license offer in FRAND terms does not necessarily implies the intervention of Competition Law. The general behaviour of the parties in the negotiations needs to be taken into account. Moreover, the judge considers that the compliance with the FRAND commitment assumed with the SSO is a matter of Contract Law, resorting to the doctrine of the “agreement for the benefit of third parties”, and thus the issue at hand could be resolved without the need of Competition Law.

This could be interpreted as another illustration of the general reluctance to bring Competition Law to these SEP conflicts. Indeed, practitioners and academics have pointed out that the self-evident pro-competitive effects of the collaboration under the wing of a SDO between different companies that are otherwise competing in the market could be jeopardized by the threat of the severe penalties and consequences deriving from Competition law.      

The latest development in this proceeding is that Huawei has rejected the conditions considered FRAND by the Judge, opening the door to Unwired Planet’s injunction… More information here.

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