All posts by luminous

COMPUTER PROGRAMS AND (RE) SALE OF COPIES VIA NON ORIGINAL SUPPORTS

14/10/2016

With recent decision of 12 October 2016, the Court of Justice of the European Union has once again dealt with the issue of exhaustion of the right of distribution for the sale of used computer program copies. The matter reached the European Court following referral for a preliminary ruling by the Regional Court of Right, Special Panel for criminal matters, in Latvia, where criminal proceedings were pending against Messrs. Aleksandrs Ranks and Jurijs Vasiļevičs. The defendants were accused of the sale of several online copies of software produced by Microsoft and protected by copyright.


 

The national judge asked the Court whether articles 4, letters a) and c), and 5, paragraphs 1 and 2, of Directive 91/250/EEC of the Council, should be interpreted in the sense that the purchaser of a “used” copy of a computer program, registered on a non original physical support, could, following application of the rule governing exhaustion of the right of distribution of the rightholder, sell to third parties such copy if (i) the original physical support for such program, delivered to the first purchaser, has deteriorated and (ii) the first purchaser has cancelled the copy of the software installed on his own PC or has ceased using it.

The Court of Justice initially observed that it is a well known principle pursuant to which the right of distribution of a copy of a computer program must be considered exhausted if the rightholder has (i) authorized the first sale of the copy itself and (ii), upon gaining an economic benefit, has assigned the right of use without temporal limitations (as stated by the Court of Justice in the known UsedSoft ./. Oracle judgment of 3 July 2012, case C-128/11).

The above mentioned rule of exhaustion of the right of distribution applies to copies of licensed software both in the case where such copies have been registered on analog support as well as downloaded from the website of the right holder in so far as, according to the Court, the directive makes no distinction between the tangible or intangible form of the copy. However, the first purchaser, if he intends to resell the copy of the purchased software, must render it unusuable or remove it from his or her PC.

The case under scrutiny concerns resale to third parties by Messrs. Aleksandrs Ranks and Jurijs Vasiļevičs of copies of Microsoft software registered on non original supports in so far as, according to the defendants, the original support had deteriorated or been destroyed. No evidence was brought forth in the course of the proceedings such as to prove that the copies of the Microsoft software, the object of the resale, had been legitimately purchased by Messrs. Aleksandrs Ranks and Jurijs Vasiļevičs.

Faced with these arguments, the Court excluded that the reserve copy of a computer program, albeit legitimate pursuant to art. 5, para. 2 of the above mentioned Directive, could constitute object of sale to third parties without the consent of the rightholder. However, the Court also observed that if the support on which the licensed program deteriorates or is destroyed, then the legitimate purchaser of an unlimited license for a copy of the computer program must be left in a position to download the aforesaid copy via the web site of the right holder for his own exclusive use.

In conclusion, the Court of Justice clarified that the first purchaser of an unlimited license for software has the right to resell to third parties the copy installed on his own PC without, however, being able to assign the reserve copy of said software if the origina support on which the copy has been registered deteriorates or is destroyed. In any case, it falls upon those who invoke the application of the principle of exhaustion of the right of distribution to prove, by any evidence, that they have legitimately purchased an unlimited license for the individual resold copy (and that they have rendered unusuale / have cancelled the copy originally installed on their PC).

TANKRED THIEM PROMOTES MILAN AS CANDIDATE FOR THE CENTRAL DIVISION OF THE UNIFIED COURT AT THE DIJV CONGRESS

11/10/2016

On 7-9 October 2016, the annual congress organized by the “Vereinigung für den Gedankenaustausch zwischen deutschen und italienischen Juristen e.V.” and its sister company the “Association for cultural exchanges between Italian and German jurists” was held – in complete bilingualism – in Munich, Germany. The congress took place in the comfortable EPO hall in Munich, with the participation of German lawyers, judges and university professors and with patent law being one of the central topics of the event.


 

Yet again the most heated debate concerned the effects of BREXIT on the new unified system of European patent law and the Unified Patent Court. While on the one hand several issues were brought to light by the interpretation of the treaty and of European Regulations, on the other hand what was discussed was the feasibility of those approaches that nevertheless try to include the UK in the scope covered by the unitary title, thus ensuring that the extent of jurisdiction of the future Tribunal will also reach beyond the Channel. In the discussions and debates that follow several possibilities and political and legal implications were discussed, and specifically that of assigning to Milan the section of the central division of the Unified Court, originally given to London. In that regard, the order of Italian consultants had already invited the national Government to take a formal stand on the point (cfr: http://www.ordine-brevetti.it/categoria/comunicazioni-iscritti/name/candidatura-di-milano-a-sede-del-tribunale-unificato-dei-brevetti). The agreement establishing a Unified Court places peculiar attention on the number of validated patents as well as the number of ongoing proceedings, as relevant factors for the choice of location where to allocate the sections of the Court. It is undeniable that Italy – after Germany and France, where the other two sections of the central division have been assigned to – is the State with the highest number of convalidated European patents. The debate ended with the statement, no longer disputed, that the city of Milan would be the most realistic and suitable choice for the section originally assigned to London. This also confirms what had already been stated by several Germany professionals who participated at the AIPPI Conference in Milan in September 2016. The colleagues had the opportunity to visit and see Milan and consider the potential offered by the Court of Milan with its modern adjacent structures.


LGV AVVOCATI ORGANIZES AN APERITIF WITH AIPPI

04/10/2016

With the AIPPI 2016 congress, entirely devoted to intellectual property and organized in Milan in September, LGV Avvocati held an evening reception that was attended by a high number of professionals and corporate representatives coming from the world over.


 

The firm expresses its thanks to all attendees for the wonderful evening and trusts that this will only be the first of several encounters.                                    foto-da-pubblicare-sul-sito

THE ADVOCATE GENERAL ADVISES ON THE SCOPE OF APPLICATION OF THE PRINCIPLES OF THE IP TRANSLATOR JUDGMENT – THE CASE “Lambretta” – C 577/14 P
29/09/2016

Is the burden of precise indication of protected products and services confined to the trade mark application or does it also concern marks that have already been registered at the time of the famous judgment of the Court of Justice? In the context of a dispute concerning forfeiture for a five year period of non-use of the Community mark “Lambretta”, rigid application of the above mentioned principles was requested and not only with respect to trade mark applications but also for marks already registered at the time of the aforesaid decision. Within case C-577/14, the Advocate General has now expressed his doubts as to the applicability of the principles in the described context.


 

With decision dated 24 September 2010, the Cancellation Division of the EUIPO declared partial forfeiture for a five year period of non-use of the mark “Lambretta” for products falling within, among other things, class 12 of the Niece classification. The title of this class includes, according to the Niece Classification, «Vehicles; terrestrial, aerial and nautical locomotion devices» and does not expressly include spare parts for these products. The petition against said decision was not successful (with reference to products falling within class 12): the Petition Commission considered actual use of the “Lambretta” mark for products of class 12 to be insufficiently proved and held the proffered evidence for use of the mark with respect to spare parts (for products falling within said class) to be irrelevant. This was because the spare parts, not expressly claimed with the trade mark application, would not fall within the objective scope of protection on the basis of the principles of IP Translator judgment.

The decision of the Petition Commission was appealed with a cancellation petition before the Tribunal: it was said that the Commission wrongly included the spare parts in the forfeiture declaration, where said spare parts would fall within the scope of protection in accordance with the so-called “inclusive criterion”. Based on such criterion, if a trade mark application for registration mentions – as was the case here – without distinction, the goods indicated in the title of a class, protection concerns all products of the alphabetical list of goods and services falling within such class.

The decision of the Petition Commission was overruled by the Tribunal which had excluded the applicability of the principles deriving from the IP Translator decision. Also the decision of the Tribunal was appealed by the party who had interest in the forfeiture of the mark and the proceedings are now pending before the Court of Justice (C-577/14). The Advocate General, who recently filed his conclusions, believes that it is not possible to transpose sic et simpliciter  the IP Translator judgment, which concerned a trade mark application, to the case of a situation in which the mark was already registered and therefore proposes to reject the petition. Correctly, the EUIPO applied the “inclusive criterion” for imperative needs of legal certainty, a principle integrated in the legal system of the European Union.

The proposal of the Advocate General seems to have been determined by the new art. 28, para. 8, of the European Union trade mark regulation that granted owner of already registered EU trade mark the option of presenting a declaration to the EUIPO by 24 September 2016 in order to specify definitevly the scope of protection.


DECISION OF THE EURUPEAN COURT OF JUSTICE: THE SALE OF COMPUTERS WITH PRE-INSTALLED SOFTWARE DOES NOT OF ITSELF CONSTITUTE AN UNFAIR COMMERCIAL PRACTICE

20/09/2016

The CJEU, with judgment C-310/15 filed on 7 September 2016, has decided that the sale of a pc that comes with a pre-installed operative system does not contravene the norms on professional ethics and, especially, does not distort the economic behavior of consumers. Additionally, the Court held that omitting the price of each of the pre-installed programs does not amount to an unfair commercial practice.


 

With the above mentioned judgment the Court put an end to a sequence of events that started in France in 2008, when a consumer purchased a Sony computer that came with a Windows Vista operating system: upon using the software for the first time, the purchaser refused to enter into the software license agreement, requesting that Sony refund the price of the pre-installed program. Sony rejected the request of the client, and instead proposed to annul the complete purchase and refund the entire price. The dispute reached the French Supreme Court, which decided to remand the issue to the EU judges, in order to obtain clarifications concerning directive 2005/29 on unfair commercial practices of corporations in their relations with consumers of the internal market.

The European judges held that the sale of a computer having pre-installed computer programs does not, of itself, amount to an unfair commercial practice, considering that an offer of this type does not contravene the norms on professional diligence and does not distort the economic behavior of consumers. In the case at hand, the Court observed that “as noted by the connected market survey, the sale by Sony of computers having pre-installed computer programs meets the expectations of the vast majority of consumers, who prefer the purchase of a computer having such software pre-installed and immediately utilizable as opposed to purchasing separately the computer and the programs”. The judges of the Court of Justice stated that, in any case, it is the duty of the national judge to evaluate whether the consumer has been properly informed, before the purchase, of the fact that a given model of computer is sold with pre-installed programs. In the case under scrutiny, Sony had conformed to the norms on professional diligence, having provided the consumer with the option of receding from the sale.

As concerns the second question, the Court held that the omission of the prices of the pre-installed programs does not prevent the consumer from making an informed commercial decision nor does it provoke him or her to make a commercial decision that he or she would not have taken otherwise. Indeed, considering that the price of these programs does constitute relevant information which the vendor is obliged to give to the purchaser, the failure to indicate the price of each of the pre-installed computer programs cannot be considered an unfair commercial practice.