First, harmonisation of national trade mark laws in the Union has been “tight”. In this regard, for reasons that make sense in the European political and legal theatre, it is different from the international model of so-called “minimum rights” harmonisation that drove convergence of trade mark norms for the preceding century. Second, the Trade Mark Directive (with the aid of the Court of Justice and national courts) has effected almost total harmonisation of substantive trade mark law, belying the claims of limited harmonisation that are found in the recital to that Directive. Third, the Court of Justice has exhibited a tendency to limit any room for member state manoeuvre, for example, finding that even optional provisions of the Directive must be given a single European meaning. The Court has paid little attention to concerns of subsidiarity. Finally, additional pressure to find single European solutions results from the existence of a Trade Mark Regulation that creates a counterpart unitary regional right (the Community Trade Mark, or CTM) and attendant EU institutions to administer and enforce that right.

This parallel EU-level regime tends to reinforce the idea that trade mark law has been wholly Europeanised, and exerts pressure on the content of Directive-driven national law because the demands of vertical coherence have trumped the potential benefits of regulatory competition between national and regional regimes. In short, there has over the past twenty years been an extensive and deep Europeanisation of trade mark law. But this in turn raises ongoing questions about how best to develop harmonised European principles, because harmonisation is a dynamic lawmaking process and not a static legislative instrument.

In this Chapter, I consider how the process of harmonisation has affected the development of optimal principles of trade mark law, an analysis that is necessarily informed by substantive preferences. It is only by measuring harmonisation by reference to some form of substantive metric that a full assessment of the harmonisation process can be made. I suggest that it important to recognise the important role of national courts in the development of EU trade mark law (in part because of the nature of the field of law), and that paying attention to national legal traditions would assist the Court of Justice in improving the quality of European trade mark law.

Featured here is the beginning of a paper by , Professor of Intellectual Property and Information Technology Law at the University of Oxford. He is also Director of the Oxford Intellectual Property Research Centre, and a Professorial Fellow of St. Peter’s College. The full article can be found .

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Granting exclusive rights to control the use of a mark preserves its ability to reliably signal origin. Contemporary EU trade mark law goes further and protects the more expansive brand dimension associated with a successful trade mark. The Court of Justice of the European Union (ECJ) has enabled this by recognising not only the origin indication function of marks, but also their advertising, investment and communication functions as well. The brand is a remarkably elusive and protean, yet undeniably valuable, intangible.

So what are the doctrinal tools and techniques available to courts, registrars and legal practitioners, enabling them to work with such elusive subject matter? What are the corresponding assumptions about brand creation and sustenance that reinforce these techniques? And can they be reconciled with recent conceptualisations of branding emerging from marketing and consumer studies research?

Since brand protection is a controversial development within European trade mark law, this paper unpacks the manner in which the brand is conceived of within European legal doctrine. The ECJ situates branding within a one-way broadcast model, while contemporary marketing research emphasises that brand formation is dialogic and iterative. The ECJ’s approach to brand propertization is therefore not only inaccurate in presuming single author brand creation, but also deeply troubling since it marginalizes consumer agency and reinforces the exploitation of their immaterial labour through the instrumentality of trade mark law.

Featured here is an abstract of a paper by . Dr. Gangjee lectures at the London School of Economics, with a primary research interest in intellectual property, including trademarks, geographical indications and domain names. He is also an IP Osgoode Research Affiliate and an Associate of the Oxford IP Research Centre. As an expert he has advised both governments and law firms in the area of trademark law. The full article can be found .

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In doing so, Adv.-Gen. Bot has reaffirmed Justice Arnold’s preliminary ruling, with respect to the prevention of a monopoly on source and object codes of computer programs by the copyright owner. The opinion refers to the interplay between the two EU directives, their transposition into UK national law through to the , and the general adherence of both of the above to of the . As per the facts of the case, the plaintiffs, SAS Institute developed the ‘SAS System,’ a software program that ran on its own programming language, making it impossible for existing clients to run their application programs in any other form without “considerable investment.” To continue using the SAS components required clients to obtain licenses from the SAS Institute. The respondent, WPL Programming had developed software that allowed execution in the SAS programming language, and, according to , also allowed “access and process data stored in SAS's proprietary format, eliminating the need to buy licenses from SAS if users want to develop new functions to analyze their data.”

Even as WPL Programming admitted its intention to follow the functionality of the plaintiff’s program as closely as possible, it denied SAS Institute’s claim of infringement of the overall computer program itself, since it had no access to the latter’s code when designing its own code. Further, previous rulings in the UK courts had also shown that studying a program’s code to determine how it works (decompilation) was not deemed to be an infringement of the owner’s copyright.

While Adv.-Gen. Bot was clear that the protection of computer programs was defined as extending to expression, and not “ideas, procedures, methods of operation or mathematical concepts,” he also mentioned that the legal definition of ‘expression’ with respect to functionality was left open to interpretation, in order to accommodate future technologies within the framework of Directive 91/250. The Advocate-General then deemed that functionalities were ‘dictated by a specific and limited purpose,’ finding them closer to an ideas rather than expression, and hence, not copyrightable. By equating a computer program to a literary work, the opinion also stated that Article 1(3) of the Directive cited originality, and the time, effort and level of skill and judgment invested in the expression as the only criteria to determine copyrightability.

When considering whether the programming language was protectable under Directive 91/250, Adv.-Gen. Bot again drew a parallel between computer programs and literary works, stating that the language the former was written in merely permitted the actual expression, and not being part of the latter, was not copyrightable. With respect to interfaces however, the Advocate-General opined that 91/250 did not preclude these from copyrightability, provided that they formed a substantial part of the expression of the computer program itself. Also, Article 6(1) of the same directive was deemed to be indicative of decompilation of the program by a licensee as being permissible, if it was for the purpose of interoperability. Additional proposed limits included the licensee having to demonstrate “the form of the code for the purposes of interoperability with the elements of his own program,” and ensuring that the original code was not merely recopied.  Finally, Adv.-Gen. Bot referred to Article 2(a) of Directive 2001/29/EC to recommend that certain elements of a computer program could constitute infringement if reproduced in manuals, as long as they were found to be “expressions of the author’s own intellectual creation.”

Though non-binding, the opinion is an influential intermediary move in determining the nature and scope of the copyrightability of computer programs. The ECJ is due to consider the case in 2012, and in the meantime, scholars have already deemed Adv.-Gen. Bot's opinion as a step in the right direction, emphasizing that to ensure fair monopolization of software programs.

Mekhala Chaubal is a JD candidate at Osgoode Hall Law School.

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Looking at the current state of trans-border licensing of music inEurope, the European example can teach mainly what to avoid. Even more so, many of the issues discussed in the EU might even be totally irrelevant for Canada. Unlike Canada, the EU currently consists of 27 member states, and as of today, there is no unified EU copyright code.

As a starting point, it has to be stated, that since the beginning of the new millennium no workable mechanism has been achieved for the music sector to provide easy, centralised Pan-European access to the full scope of licenses needed for on-demand offers of music. Investigating this issue a bit closer, it becomes evident however, that the problems are limited almost entirely to the licensing of copyrights for works of musical authors, namely the rights of composers and lyricists. In contrast, the EU-wide licensing of the rights vested in producers of sound recordings and in performing artists functions relatively smoothly without any fundamental problems arising.

In the “” and “” authors’ societies, organised in CISAC, chose a type of reciprocal representation agreement containing a restriction whereby only the society at which the user was located should be responsible (and qualified) for licensing. This restrictive policy lead to antitrust investigations with the Directorate General (DG) Competition at the EU Commission and an administrative ruling against CISAC and the member companies concerned. This matter () is currently subject of a lawsuit before of the ECJ, effectively resulting in a breakdown of the system of reciprocal representation concerning online rights of musical authors.

Subsequently, encouraged by an official yet non-binding recommendation by the EU Commission (DG Markt) () which was intended to facilitate and speed up pan-European licensing of rights, most of the big music publishing companies have withdrawn the mechanical rights concerning the US repertoire from the network of European collecting societies, in order to administer these rights by themselves.

This fact has shown to have serious consequences – and not at all the ones intended by the EU Commission: While withdrawing US-repertoire from collective licensing, all other parts of the overall repertoire of music remained within the collecting societies. The same applied to the “making available” right. If an online service like iTunes is interested in licensing a sound recording of a US author, he not only requires a license of the record company but needs to establish licensing relations with collecting societies of musical authors, too, and, last but not least, with the respective music publishers insofar as their rights are not represented by those societies. In effect, not two, but three different types of contracts are required for using a single song in an online service (while not a single such contract was needed for a traditional retailer to re-sell CDs) – theoretically to be concluded on a country by country basis.

These problems are basically home made by the music publishing industry and should not be used as an argument against the viability of the EU Copyright System as it stands.

Dr. Jur. Martin Schaefer began his career as assistant to his mentor, Prof. Dr. Wilhelm Nordemann. From the beginning of the 1990s, Dr. Schaefer was employed by the German national group of the recording industry association, IFPI (Bundesverband der Phonographischen Wirtschaft und Deutsche Landesgruppe der IFPI). As in‐house counsel, and from 1998 as Managing Director, Dr. Schaefer was responsible for such areas as combating piracy, representing industry interests in the making of government copyright policy, and the development of future oriented industry projects. In 2001, he moved to BMG (Bertelsmann Music Group) as Vice President, Legal Counsel Europe. In this position, he was integrated into the European management team before leaving the company at the beginning of 2004 in order to apply his knowledge and experience as lawyer. He has specialized in copyright law with an emphasis on music industry matters, collective and individual administration of rights and electronic media law.

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As previously reported by the IPilogue , the Supreme Court of Canada is not the only national court grappling with the term “communication to the public”. Similar to two of the internet copyright cases earlier this month and reported by the IPilogue , questions related to transmissions of protected content over the internet have also arisen in the United Kingdom.

In the case of ITV v TVCatchup, Justice Floyd of the UK High Court of Justice has returned with a disposing with a series of issues which arose during his initial decision in the case in July and referring a question relating to the definition of “communication to the public” to the European Court of Justice (ECJ). As , TVCatchup is a live-streaming service that allows users to view television broadcasts on their computers, tablets, smartphones, and other internet-capable devices.  The service individually identifies users and then serves them content based on their existing television licence (they can access channels like ITV, Channel Five, and the BBC, but viewers can only receive content that they are legally entitled to watch based on their existing television licence).  TVCatchup funds its operation by showing advertisements before each live stream begins and by “skinning” the stream such that advertisements served by TVCatchup are displayed around the edges of the window displaying the live stream.  It is also important to note that TVCatchup does not alter the original stream, so any advertisements shown by the broadcasters as part of their television transmission are not affected.

Although he had initially planned to refer two questions to the ECJ this past summer, Justice Floyd deferred the case awaiting a ruling in Football Association Premier League v QC Leisure by the ECJ. As a result, the Justice Floyd was able to apply that judgement to TVCatchup and decide an issue related to “reproduction of a substantial part” of films in memory buffers and on screens. Consequently, Justice Floyd is now only referring a single question to the ECJ on “communication to the public”.

Based on his ruling in July, Justice Floyd entertained the idea of using the definition of “communication to the public” from a case called Airfield.  This case was actually a set of joined cases heard by the ECJ ( about the encrypted re-broadcasting of satellite television signals. Following a review of the facts, Justice Floyd ultimately distinguished Airfield from TVCatchup and decided to ask the ECJ the following questions:

"Does the right to authorise or prohibit a "communication to the public of their works by wire or wireless means" in Article 3.1 of the Directive extend to a case where:

1.  Authors authorise the inclusion of their works in a terrestrial free‑to‑air television broadcast which is intended for reception either throughout the territory of a Member State or within a geographical area within a Member State;

2.  A third party (i.e. an organisation other than the original broadcaster), provides a service whereby individual subscribers within the intended area of reception of the broadcast who could lawfully receive the broadcast on a television receiver in their own homes may log on to the third party's server and receive the content of the broadcast by means of an internet stream?

Does it make any difference to the answer to the above question if:

(a) The third party's server allows only a "one‑to‑one" connection for each subscriber whereby each individual subscriber establishes his or her own internet connection to the server and every data packet sent by the server onto the internet is addressed to only one individual subscriber?

(b) The third party's service is funded by advertising which is presented "pre‑roll" (i.e. during the period of time after a subscriber logs on but before he or she begins to receive the broadcast content) or "in‑skin" (i.e. within the frame of the viewing software which displays the received programme on the subscriber's viewing device but outside the programme picture) but the original advertisements contained within the broadcast are presented to the subscriber at the point where they are inserted in the programme by the broadcaster?

(c) The intervening organisation is:

(i) providing an alternative service to that of the original broadcaster, thereby acting in competition with the original broadcaster for viewers; or

(ii) acting in competition with the original broadcaster for advertising revenues?”

The ECJ’s response to this question could represent an important precedent in the on-going battle over the transmission of protected content over the internet.

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On September 22, 2011, the European Court of Justice handed down on a series of trade mark related questions spurred by the long running dispute between international flower delivery network Interflora and English retailer Marks and Spencer. The case stemmed from a complaint raised by Interflora that Marks and Spencer used Google’s “AdWords” service to create internet advertisements targeting keywords such as ‘Interflora’, ‘Interflora Flowers’, and ‘Interflora.com’.

This use of Interflora related keywords by Marks and Spencer meant that when users visited sites where the name Interflora appeared, ads for Marks and Spencer’s own flower delivery services would be displayed. Interflora Inc. owns a trade mark on the word ‘Interflora’, and as a result, brought an action against Marks and Spencer alleging that their use of words identical to Interflora’s trade mark is unlawful.

The High Court of Justice (England and Wales), Chancery Division, which heard Interflora’s case for trade mark infringement referred questions to the Court of Justice on a series of issues related to the use of keywords identical to a trade mark, without the consent of the trade mark proprietor, by a competitor within an internet referencing service. It is important to note that the European Court of Justice’s decision does not decide the case between Interflora and Marks and Spencer, it simply clarifies the law for the High Courts of each of Europe’s member states.

As outlined in a by the court, because the use of a keyword can only be prevented by a trade mark owner if it is liable to have an adverse effect on one of the functions of that mark, each of the functions of a trade mark were examined and outlined in the course of considering the case. These functions included the origin-indicating function, the advertising function, and for the first time, the investment function of a trade mark.

In dealing with the origin-indicating function of a trade mark, the court followed its decision in Google France (). The Google France case was previously covered by the IPilogue here. In Google France, the court observed that the test to determine whether a trade mark has been infringed should consist of an evaluation of whether a reasonably well informed and observant internet user is able, based on general market knowledge, to determine whether the goods or services referred to by an advertisement originate from the proprietor of the trade mark. Applied to the Interflora v Marks and Spencer case, this element of the trade mark evaluation becomes a question of fact for the lower courts related to whether Marks and Spencer’s advertisement enabled an internet user to recognize whether or not Marks and Spencer is a member of the Interflora network.

Considering the advertising function of a trade mark, the court ruled that a rise in the cost-per-click of advertising online due to a competitor’s use of a trade mark keyword was not sufficient in every case to conclude that the advertising function of a company’s trade mark had been adversely affected. The court also commented that there is nothing wrong with a company using an internet advertising service to create competition by offering alternatives to a particular product of service; however, the trade mark owner must not be prevented from using their mark to attract customers.

The European Court of Justice recognized the investment function of a trade mark for the first time in this judgement. The court ruled that the investment function of a trade mark is adversely affected when use of the mark by a competitor substantially interferes with the owner’s ability to create or preserve a reputation capable of attracting customers and retaining loyalty with the trade mark. This consideration of the investment function of a trade mark was followed by a clarification of the scope of “dilution” (detracting from the distinctive character of a trade mark) and “free-riding” (taking unfair advantage of the distinctive character of a trade mark). The court ruled that choosing to duplicate a trade mark without due cause when selecting keywords for internet advertising may be construed as “free-riding”; however, the court made clear that this was intended to deal with cases where internet advertisers were selling replica and imitation goods by using the trade mark as a keyword to attract potential customers.

Ultimately, the European Court of Justice ruled that the decision in this case would come down to a finding of fact by lower courts as to whether or not Marks and Spencer adversely affected one of Interflora’s trade mark’s functions. However, as re-iterated in the court’s , “Where [an] advertisement displayed on the internet on the basis of a keyword corresponding to a trade mark with a reputation puts forward an alternative to the goods or services of the proprietor of the trade mark with a reputation – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution of the trade mark or detriment to its repute, and without adversely affecting the functions of the trade mark – such use falls, as a rule, within the ambit of fair competition in the sector for the goods or services concerned.”

It will be interesting to see how the High Court in the UK decides the case of Interflora v Marks and Spencer based on this ruling.

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