IIPL Map

Question 1

National treatment:

Answer 1

works from a MS must be protected in each member state in the same that such state protects the works of their own nationals (i.e. equal treatment of nationals and foreigners in all MS) (BC Art 5.1, PC Art 2.1, TRIPS Art 3)
- Exception: term of protection for copyright (BC Art 7.8): no national treatment unless reciprocity

• “Publication” under BC does not take place when interested parties can only take notice of the work; rather, the author must release it for distribution and make it accessible to the public at large (Gold Rush)
• Posting of a photo on an overseas website is not a simultaneous publication in the US that triggers the need to complete a US copyright registration before suing for infringement (Moberg)

Question 2

Territoriality:

Answer 2

An IP right has effect only in the country where it is registered (PC Art 6, BC Art 5.2)

Copyright protection under Art 3 of BC

1. Nationality of author
2. Place of publication of work
3. “Published” works
4. “Simultaneously published” works (Gold Rush case)

Art 7(1) BC: Life + 50 years after death of author for copyright protection. TRIPS incorporates this.

Question 3

EXCEPTIONS TO TERRITORIALITY

Answer 3

Well-known trademark (Art 16.2 TRIPS, PC Art6bis1)

• Definition of a well-known trademark (WIPO Recommendations)
• TRIP TRAP Case

Question 4

EXHAUSTION

Answer 4

Doctrine of exhaustion achieves an appropriate balance between the interests of the dealer/user and the patent holder (Kodak II)
- To offer consumer protection and facilitate consumer interests and free market for goods while also balancing exploitation rights of the patent holder

• First sale doctrine: exclusive right of the rightholder to the first commercialization and distribution of a good is exhausted once the product is on the market
  o Only if by the rightholder or with his/her consent
  o Exhausted only in relation to the product, not the IP itself

National exhaustion for PATENTS in Switzerland, Italy, France, and Germany (Kodak II).

International Exhaustion for TRADEMARK in Germany (Kodak II)

EU Regional Exhaustion (Trademark Directive 89/104/ECC Art 7, Copyright Directive 2001/29/ECC Art 4)
- Silhouette case: it’s all EU regional exhaustion. No to Austria wanting to implement international exhaustion. It is not open to MS of the Trademark Directive to provide in their domestic law for international exhaustion in respect of products placed on the market outside the EEA
o Laserdisken: same principle for the Copyright Directive
- Davidoff: the trademark owner can consent to international exhaustion (instead of the usual regional exhaustion in EEA) with an express statement I nteh distribution agreement OR the consent can be implied
- Allposters: even if the copyright of posters has been exhausted by the first sale in the EU with the consent of the copyright owner, the exhaustion does not apply to the modified reproduction of the same image (i.e. no digital exhaustion)

SWITZERLAND:
- Copyright: international exhaustion (ATF 124 III 321, JT 1999 I 423, Nintendo)
- Trademark: international exhaustion (ATF 122 III 469, Chanel)
- Patent: regional exhaustion (national in Kodak, Swiss Patent Act Art 9a al 1 – regional now because part of EEA)
o Justified to treat patents differently because protected for only 20 years but high investment
- Complex products with trademark AND patent: apply the national exhaustion regime only if the patented part is the most significant part of the good (Swiss Patent Act Art 9a al 4)

Question 5

EXCEPTIONS TO EXHAUSTION:

Answer 5

Parallel import allowed under the non-geographical language of the US Copyright Act (Kirtsaeng v John Wiley & Sons 2013 SCOTUS)
- First sale exhausted by the first sale worldwide for US Copyright Act s109(a) which provides for exhaustion without geographical limits

Question 6

EXCEPTIONS TO PROTECTION FOR IP RIGHTS HOLDERS

Answer 6

Civilian system – Closed model

Must fit within the enumerated exceptions: private use, parody, work in public domain (Christo), quotation
Flexibility and extensive use allowed when it comes to criticism (Esso – trademark case, France)

American system – Open model

Some enumerated exceptions: criticism, comment, news reporting, teaching, scholarship, research is not an infringement of copyright (US Copyright Act s 107)

Fair Use Four Factors (American principled approach to fair use): whether its use is fair
Campbell v Acuff-Rose Music 1994
Authors Guild v Google Inc 2016 – display of book previews digitally is fair use – LIMITED TRANSFORMATION of work

1. The purpose and character of the use
   a. Transformative, non-profit, educational, new message?
   b. Campbell v Acuff Rose Music – basically new song parody
   c. Commercial character is only one element to be weighed for the first factor of Purpose and Character.
   d. If limited transformation (digital previews of Authors Guild v Google)
2. The nature of the copyrighted work
   a. Published; factual
   b. If history book vs fiction that is more creative
3. The portion of the work used
   a. Not essential, relatively small
4. The effect of the use on the potential market
   a. Won’t prevent the owner from making money
   b. Parodies will rarely substitute for the original work as they serve different market functions (Campbell v Acuff Rose Music)
   Cases
   - Crystal case (public domain)

Question 7

JURISDICTION

Answer 7

Four main ways to determine the appropriate jurisdiction for a dispute:

1) Domicile of the defendant (art. 2:101 CLIP; art. 2 CL)
2) Court that the parties have agreed will have jurisdiction, aka choice of court (art 202 ALI)
3) Place of infringement / harmful event (Pinckney v KDG Mediatech AG; Wintersteiger v Products 4U;)
4) Country of registration (Gat v Luk – infringement can be done in foreign court, but validity of patent cannot).
i) Article 16(4) of the Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters:
(1) In proceedings concerned with the registration or validity of IP rights, the courts of the Contracting State in which the deposit or registration happened has exclusive jurisdiction, regardless of domicile.

No global regulatory framework for PIL and IP
- EU
o Regulation 1215/2012 on jurisdiction and the recognition and enforcement of judgements in civil and commercial matters (Brussels I)
o Regulation 593/2008 on the law applicable to contractual obligations (Rome I)
o Regulation 864/2007 on the law applicable to non-contractual obligations (Rome II)
- CH
o Lugano Convention on Jurisdiction and the Recognition and Enforcement of Judgements in Civil and Commercial Matters (2007) (LC)
o Swiss Act on Private International Law
- Soft law
o ALI Principles of the American Law Institute (2007) (ALI)
o CLIP Principles of the European Max-Planck Group (2011) (CLIP)

THREE PRINCIPLES FOR JURISIDCTION

1. If there are tangible goods, not just an IP issue. E.g. French company delivers game consoles to Switzerland, then you can just apply classic private intl law.
2. There is some case law accepting jurisdiction solely because the website is accessible (accessibility principle)
3. Third principle, remember criteria for the minimum contact/minimum substantial connection required for a state to accept jurisdiction (e.g. what’s the currency accepted when you go on the website to buy stuff; are there any ads in a given state?)

3 Part test for personal jurisdiction in the US in compliance with federal due process: (Pebble Beach)
Minimal contact with the forum being sought such that the assertion of jurisdiction “does not offend traditional notions of fair play and substantial justice”

1. Defendant performed some act or consummated some transaction within the forum or otherwise purposefully availed himself of privileges of conducting activities in the forum/purposefully directed his activities toward the forum
   - There needs to be “something more” to establish that the defendant availed himself or privileges or purposefully directed his activities at the forum
   - Passive websites don’t meet the test
   - Evidence of availment: action taking place in the forum that invokes the benefits and protection of the laws in the forum. (Pebble Beach)
2. Claim arises out of events from forum-related activities
3. Exercise of jurisdiction is reasonable

Art 5(3) of BR EC Reg 44/2001 confers jurisdiction for copyright infringements in another Member State, but only for determining the damaged caused in the Member State within which it is situated (Peter Pinckney v KDG Mediatech AG ECJ 2013) – Art 5(3) is for tortious harmful events

• Article 5(3) of the Regulation is intended to cover both the place where the damage occurred and the place of the event giving rise to it, so that the defendant may be sued, at the option of the applicant, in either courts (Melzer) (Mediatech)
  o Does not require activity concerned to be directed to the MS where proceedings are taking place
• Distinguishing between infringements of personality rights and infringement of IP rights (Mediatech) (eDate Advertising originally)

o For personality rights cases, P can bring suit in each of the Member States
o For intellectual and industrial property rights, case must be brought in the territory of the Member State of registration which are best placed to ascertain whether the right at issue has been infringed

Global jurisdiction:
Under French copyright law, the author of the work is entitled to claim droit moral (moral right) merely due to the actual creation of the work, independent of where it was first published

Question 8

UDRP: Uniform Domain Name Dispute Resolution

Answer 8

The UDRP: The Three Substantive Elements

1. Trademark – Confusion and Descriptive Terms
2. Legitimate Interests
3. Bad Faith
   a. What about passively holding a name originally in good faith?
   b. Could retroactively find bad faith because the person could then find out that it’s a name likely to be used by a company

ICANN(Internet Corporation for Assigned Names and Numbers)

Source of jurisdictional power:

• ICANN Registrar Domain Name holders
• All domain name registrars are bound to the UDRP through their registration agreement

What is required? Three requirements

1. Domain name must be identical or confusingly similar to a trademark of the Complainant (s 4(a)(i) UDRP Policy); and
2. The owner of the domain name must have no rights or legitimate interests in such domain name (s 4aii UDRP Policy); and
   a. E.g. cybersquatters have no legitimate interest
3. The domain name must have been registered and used in bad faith (Para 4(a)iii UDRP Policy)
   a. Subsequent use of domain name in bad faith still considered as retroactive bad faith registration (Ville de Paris v Jeff Walter WIPO). Walter did not have rights or legitimate interests in the disputed domain name. Walter also had no “demonstrable preparations to use” the disputed domain name for the asserted purpose of a social networking site.
   b. Octagon Trio of Cases: looked at whether registered in good faith but used in bad faith met the requirement of para 4aiii of the Policy
   i. Yes bad faith can be deemed to have occurred if later on it’s used in bad faith. The obligation not to use the domain name in bad faith imposes a duty to investigate at time of registration AND now or in the future
   c. WIPO Panel will order transfer of domain name to legitimate holder

Question 9

IP Enforcement

Answer 9

Classic tension and balance of rights in IP law: Balance between private creator’s interests/rights and the public interest of free circulation/free market.

At national level:

• National law
• EU-law (enforcement-directive, Regulation 608/2013)

At international level:
- TRIPS Agreement – all members bound by this agreement – must submit claims through this dispute resolution mechanism
o Part III – 10 measures that deal concretely with enforcement measures
♣ Art 42 and following: civil procedures, seizures, injunctions (Art 44), damages (Art 45), various enforcement measures
♣ Art 41 para 1; Art 47: treaty is recalling that every measure shall prevent infringements, but also aware of not creating barriers to trade

o Criminal measures (Art 61 TRIPS) – limited to only counterfeiting – imitation, Rolex watches, and copyright piracy (e.g. copies)

♣ Conditional prerequisites for Art 61 to be triggered: cases of wilful trademark counterfeiting or copyright piracy on a commercial scale
• What is the meaning of “on a commercial scale”? – WTO case law US-China complaint defines it. Turns on whether someone is doing this counterfeiting professionally.
♣ Remedies: Art 61
• “remedies available shall include”: imprisonment and/or monetary fines sufficient to provide a deterrent effect
• “in appropriate cases”: seizure, forfeiture, destruction of the infringing goods and of any material
♣ e.g. ECHR 19 Feb 2013, Pirate Bay v Sweden (2 years jail for founders)

o Administrative measures (border measures), Art 51 (51-60 TRIPS): allows rightholders who have valid grounds for suspecting that the import of counterfeit goods or pirated copyright goods is taking place, may seize products before entering country’s circulation
♣ Conditional prerequisites for Art 51 to be triggered:
• i. evidence of prima facie infringement (faster; lower proof; need for urgency to act)
• ii. Detailed description of the goods required – of goods that are to be seized at the border such that they can be recognizable
♣ Procedure: Notice of suspension and 20 days to initiate proceedings leading to decision on merits

o Civil measures (injunctions, seizure, damages) Art 44
o Injunctions:
♣ A remedy against further injury and court will not make order if satisfied that no such injury is likely to occur (2000 UK Coflexip SA v Stolt Comex)
• Injunctions are to prevent future behaviour
♣ Three types of injunctions
♣ Art 50 para 3 TRIPS – Provision protects alleged infringers by requiring the applicant to prove that they are the rightholder. Member states must have powers to enforce injunctions otherwise they are in violation of TRIPS (Art 50 (1))

i. ex parte – D need not be heard, urgency; demonstrable risk of evidence being destroyed;
ii. Preliminary injunction
iii. Permanent injunction: P must demonstrate (eBay v MercExchange LLC (2006)) – four factor test applies to US Patent Act because patents are similar to property rights – excluding others (Fox Film Corp v Doyal)
1. It has suffered an irreparable injury;
a. Paper Bag Co v Eastern Paper Bag Co rejected contention that a court of equity will not grant injunctive relief to a patent holder who has unreasonably declined to use the patent
2. That remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
3. Considering the balance of hardships between the P and D, a remedy in equity is warranted;
4. That the public interest would not be disserved by a permanent injunction

o Seizure orders (Anton Piller orders; saisie-contrafacon) to preserve relevant evidence
o Damages (Art 45.1 TRIPS)
♣ To compensate claimant for the injury suffered because of an infringement by an infringer who knowingly, or with reasonable grounds to know, engaged in infringement activity (Art 45.1 TRIPS)
♣ Types
• Lost profits – sales the claimant would have made “but for” the infringement. Often calculated on the infringer’s profits (but for causation test): 1. Demand for the infringed product, 2. Absence of non-infringing substitutes, 3. Capacity of the right holder to exploit the demand, 4. Amount of the profit it would have made (Panduit Corp v Stahlin Bros Fibre Works Inc)

• Depreciation of the IP right: Amount by which the relevant IP right has been depreciated by the infringement. Infringement must cause a diminution in the capital value. E.g. tires infringement, see which US states they lost sales in.

Unfair profits – jurisdictions usually allow to claim the profits sales made by the defendant. Knowledge of infringement often required

• Only the portion of the infringer’s profits attributable to the invention (causation)
o Adidas case. Because four lines on counterfeit shoes not same as 3 lines, then reduce the amount of unfair profits awarded to Adidas. A proportion/percentage.

• Reasonable royalty – claim amount that would have been paid to the claimant.
o Georgia Pacific Corp v US Plywood provides 15 factors for determining what reasonably royalty is. E.g.
♣ Royalties patentee receives for licensing the patent in suit
♣ Rates licensee pays for use of other comparable to the patent in suit
♣ Nature and scope of license in terms of exclusivity and territory / customer restrictions
♣ Licensor’s established policy and marketing program to maintain patent monopoly by not licensing others to use the invention
♣ Commercial relationship between licensor and licensee, such as whether they are competitors or inventor and promoter

• Statutory/increased damages - compensatory, deterrent, punitive; US Copyright Act s 504(c) - $750 to 30k per infringed work, min $200 if no fault and max $150k if bad faith

Question 10

IP AND THE INTERNET

Answer 10

Linking and hyperlinking: is there a new public created? If so, then infringement.
- Clickable links that redirect to works freely available on another website are NOT infringements and do NOT constitute an “act of communication to the public” (Nils Svensson et al v Retriever Sverige)
o Visitors were DEEMED potential recipients of the initial communication given that visitors to the sites did not face restrictions
- Art 11 of BC, Art 8 of WIPO Copyright Treaty, and Art 3(1) of the 2001/29 Directive all protect copyright holders’ right to communication to the public

• GS Media – Here GSM found infringing because they knew of illegality, was for profit, and had no consent from Sanoma/Playboy.

Test for infringement of Art 3(1) of Directive 2001/29 and communication to public right (GSM v Sanoma, Playboy)

1. Need creation of new public
   a. Did the hyperlinks circumvent restrictions? Did they help access content that were previously never been communicated?
   b. Presumption of due diligence to check legality of content
   c. CONSENT is important here – in Svensson it was freely available, here there was no clearly no consent from the copyright holders
2. Person needs to know that the content was illegal such that person has a commercial interest in the new website

Framing/Embedding
- BestWater – if freely available no issue, but if uploaded then that’s a new public and therefore infringement
o Embedding is not a copyright infringement

Exhaustion of Copyright
- Art 6 WCT, Art 12 of Berne Convention
- Exception for exhaustion, in US, it is illegal to resell music files
- No digital exhaustion in EU copyright so legal
o Capitol Records v ReDigi (USDC SDNY)
o Usedsoft v Oracle
- About online digital files