European IP Bulletin - Issue 86, January 2012

by McDermott Will & Emery

In This Issue:


ISP Not Responsible for Preventing Illegal Downloading: CJEU Decision Finds Filtering System Would Infringe ISP’s Business Rights and Customers’ Freedom

In Scarlet Extended SA v Société belge des auteurs, compositeurs et éditeurs SCRL C-70/10 24 November 2011, the Court of Justice of the European Union found that imposing an injunction on an internet service provider (ISP) requiring it to install a filtering system to prevent illegal downloading is unlawful under European law. To impose such a system would breach the ISP’s fundamental right to freedom to conduct business. Further, it would infringe the rights of its customers to the protection of their personal data and the freedom to receive or impart information.


A Digital Copyright Exchange in The United Kingdom

The United Kingdom’s Department of Business, Innovation, and Skills has honoured its early commitment to one of the more controversial ideas put forward by Professor Hargreaves in his May 2011 Review of Intellectual Property and Growth by announcing the launch of a feasibility study on developing a Digital Copyright Exchange in the United Kingdom. The study will be led by Richard Hooper, former Deputy Chairman of Ofcom, the independent regulator and competition authority for the UK communications industries.


Televisual “Communication To The Public” Stays Undefined: The Law Needs to “Catchup” with Technology

In ITV Broadcasting Ltd v TVCatchup Ltd [2011] EWHC 2977 (Pat), the High Court of England and Wales decided to maintain its reference to the Court of Justice of the European Union on the issue of “communication to the public”, however the reference on “reproduction of a substantial part” was no longer necessary.

“Communication to the Public”: CJEU Finds it Does Not Include Live Performances or Direct Presentations of Copyrighted Work

The Court of Justice of the European Union (CJEU) has once again considered the meaning of “communication to the public” under Article 3(1) of the Copyright Directive (2001/29/EC). This time the Court found that it does not include live performances or direct presentation of copyright protected works.


Dyson v Vax Ltd: Court of Appeal Of England and Wales Finds “These are Different Designs”

In Dyson v Vax Ltd [2011] EWCA Civ 1206, Dyson Ltd has lost its appeal against Mr Justice Arnold’s decision that Vax Ltd had not infringed Dyson’s UK registered design in relation to its Dual Cyclone vacuum cleaner by importing and marketing the Mach Zen C-91 MZ vacuum cleaner.


Appeal Against Exclusion From Patentability of Software to Protect Minors Online Allowed

In relation to the application by Protecting Kids the World Over(PKTWO)[2011] EWHC 2720 (Pat),the High Court of England and Wales has allowed an appeal against a decision of a Hearing Officer that found that an alarm notification system for monitoring inappropriate electronic communications fell within the computer program exclusion.


Registration of Colour Marks: Cadbury’s Purple Registered for Chocolate

In Cadbury Ltd (The Colour Purple) BL 0-358-11 20 October 2011, the UK Intellectual Property Office has dismissed an opposition brought by Nestlé against Cadbury’s application to register a particular shade of purple as a UK trade mark for chocolate, on the basis that Cadbury would limit its specification of goods to those for which the mark had acquired distinctiveness.


WIPO Refuses to Order the Transfer of to The International Rugby Board

In Rugby World Cup Ltd v Andreas Gyrre WIPO D2011-1520 (1 November 2011) sole panellist Robert Badgely dismissed the complaint by the International Rugby Board (IRB) against ticket reseller Euroteam AS on the basis that the domain name could not be considered confusingly similar to the IRB’s trade marks RUGBY WORLD CUP and RUGBY WORLD CUP 2011, essentially because the dominant term “rugby” was lacking in the domain name.


The Information Commissioner’s Office Publishes Briefing on Future of Data Protection in The European Union

The Information Commissioner’s Office (ICO) has published a briefing on the future of data protection in the European Union, setting out the ICO’s views on the scope and expected content of the new EU data protection legal framework. The briefing outlines what the ICO would like to see in future legislation.

Proposals for Reform of the Data Protection Regime and Binding Corporate Rules

EU Justice Commissioner Viviane Reding recently delivered two speeches. One was on the proposals for reform of EU data protection laws and its impact on businesses, the other was on the benefits of “binding corporate rules”. Ms Reding’s speeches provide insight into the European Commission’s policy and its commitment to reform.


Malicious Falsehood During a Broadcast: Claims Must be Particularised

In Tesla Motors Ltd v British Broadcasting Corporation [2011] EWHC 2760 (QB), the High Court of England and Wales has ordered that a claim for malicious falsehood against the BBC should be struck out unless Tesla Motors Ltd obtains permission to amend its claim for damages, which it had not particularised properly, as required in a claim for malicious falsehood.

Please see full issue below for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

McDermott Will & Emery

McDermott Will & Emery on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.