EU Law Blog

File Sharing, Kazaa, Intellectual Property Rights and Privacy: Case C-275/06

The Court of Justice has handed down an interesting judgment in Case C-275/06 Promusicae v. Telefónica on the balance to be struck between privacy and the effective protection of intellectual property rights to prevent peer-to-peer musical file transfers.

It goes like this. In the blue corner you have several EC Directives protecting intellectual property rights, like Directive 2000/31/EC on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market, Directive 2001/29/EC on the harmonization of certain aspects of copyright and related rights in the information society, and Directive 2004/48/EC on the enforcement of intellectual property rights. In the red corner you have Directive 2002/58 concerning the processing of personal data and the protection of privacy in the electronic communications sector. And in the middle you have folks using Kazaa on the internet, access to which is provided by an internet service provider like Telefónica in Spain.

Promusicae, a Spanish organization of producers and publishers of musical and audiovisual recordings, applied to the Spanish courts for an order that Telefónica should disclose the identities and physical addresses of people whom it provided with internet access services, and who were allegedly using the KaZaA file exchange program to share musical and audiovisual files. It sought disclosure of that information to be able to bring civil proceedings against the persons concerned.

Under Spanish law the communication of the data sought by Promusicae was permitted only in a criminal investigation or for the purpose of safeguarding public security and national defence. What Promusicae wanted to commence were clearly civil, not criminal proceedings. Thus, the question was referred to the Court of Justice whether EC law requires member States to lay down, in order to ensure effective protection of copyright, an obligation to communicate personal data in the context of civil proceedings.

The Court held that EC law as it currently stands does not require member States to render mandatory the disclosure of the sort of information requested by Promusicae to commence civil proceedings to protect intellectual rights.

As a result, the file sharers can have their data protected in Spain and it won't be disclosed to the likes of Promusicae to commence civil proceedings against them.

The question is therefore whether Spain could change its law to render disclosure of the personal data sought obligatory in the context of commencing civil proceedings.

The Court held that EC law does not preclude the mandatory disclosure of such information. But when member States introduce legislation to render such disclosure mandatory, the Court held that they must, when transposing the directives on intellectual property and the protection of personal data, rely on an interpretation of those directives which allows a fair balance to be struck between the various fundamental rights protected by the EC legal order. Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with the directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality (see Case C-101/01 Lindqvist, paragraph 87, and Case C-305/05 Ordre des barreaux francophones et germanophones and Others, paragraph 28 - a case we noted here.

A close reading of the Court's judgment and of the Advocate General's Opinion shows a divergence of view on disclosure of such personal data could ever be made mandatory in the context of civil proceedings.

The Advocate General in paragraphs 84 to 86 of her opinion came to the conclusion that Directive 2002/58 does not allow member States to render mandatory disclosure of personal data in the context of civil proceedings brought to protect the rights of others. She pointed out that Article 15(1) of Directive 2002/58 set out two types of bases for exceptions, namely, on the one hand, in the first four alternatives, national security (that is, State security), defense, public security, and the prevention, investigation, detection and prosecution of criminal offenses and, on the other, in the fifth alternative, unauthorized use of the electronic communication system. In addition, Article 15(1) of Directive 2002/58 refers to Article 13(1) of Directive 95/46, which contains further grounds of exception. The question was what exactly did that reference to Article 13(1) of Directive 95/46 mean. She noted that Article 13(1)(g) of Directive 95/46 allows the communication of personal data for the protection of the rights and freedoms of others. Unlike the grounds of exception in Article 13(1) of Directive 95/46, this ground is not expressly listed in Article 15(1) of Directive 2002/58.
Viewed in isolation, that could be understood as a reference to all the grounds of exception under Article 13(1) of Directive 95/46. However, that is contradicted, she opined, by the fact that Article 15(1) of Directive 2002/58 itself mentions grounds of exception which are intended to allow a restriction ‘in accordance with Article 13(1) of Directive 95/46’. Those grounds correspond only in part to the grounds in Article 13(1) of Directive 95/46 and do not include the exception for the rights of others, mentioned under (g). Consequently, the grounds mentioned in Article 13(1) of Directive 95/46 are applicable in the electronic communications sector only in so far as they are expressly included in Article 15(1) of Directive 2002/58. As the protection of the rights and freedoms of others was clearly omitted from the list in Article 15(1) of Directive 2002/58, the reference to Article 13(1) of Directive 95/46 could not incorporate it indirectly.

The Court of Justice took the opposite view in its judgment. It held in paragraph 53 of its judgment:

"It is clear, however, that Article 15(1) of Directive 2002/58 ends the list of the above exceptions with an express reference to Article 13(1) of Directive 95/46. That provision also authorises the Member States to adopt legislative measures to restrict the obligation of confidentiality of personal data where that restriction is necessary inter alia for the protection of the rights and freedoms of others. As they do not specify the rights and freedoms concerned, those provisions of Article 15(1) of Directive 2002/58 must be interpreted as expressing the Community legislature’s intention not to exclude from their scope the protection of the right to property or situations in which authors seek to obtain that protection in civil proceedings."

TRIPs Agreement, Direct Effect and Patents: Case C-431/05

The Court of Justice handed down a neat judgment on the direct effect in national law of Article 33 of the TRIPs Agreement.

The Court held in Case C-431/05 Merck Genéricos Produtos Farmacêuticos that it is not contrary to EC law for Article 33 of the TRIPs Agreementto be given direct effect in national law and be applied directly by a national court. The Court also held that it had jurisdiction to interpret Article 33 of the TRIPS Agreement to ascertain whether it is contrary to EC law for that provision to be given direct effect.

Article 33 of the TRIPs Agreement, as everyone surely knows, is in the section on patents and stipulates :

"The term of protection available shall not end before the expiration of a period of twenty years counted from the filing date."

Hands up all those who did not know that.

The Court held that the WTO Agreement, of which the TRIPs Agreement forms part, was signed by the Community and subsequently approved by Decision 94/800. Therefore, according to settled case-law, the provisions of that convention form an integral part of the Community legal order (see, inter alia, Case C-344/04 IATA and ELFAA, paragraph 36, and Case C-459/03 Commission v Ireland, paragraph 82). Within the framework of that legal order the Court has jurisdiction to give preliminary rulings concerning the interpretation of that agreement (see, Case 12/86 Demirel, paragraph 7).

Because the TRIPs agreement was concluded by the EC and its member States by virtue of joint competence without any allocation between them of their respective obligations towards the other contracting parties, what is decisive in deciding whether the Court of Justice has jurisdiction to interpret the particular stipulation of the TRIPs Agreement is whether the EC has legislated in the field covered by it.

When the field is one in which the EC has not yet legislated and which consequently falls within the competence of the member States, the protection of intellectual property rights and measures taken for that purpose by the judicial authorities do not fall within the scope of EC law, so that the latter neither requires nor forbids the legal order of a member State to accord to individuals the right to rely directly on a rule laid down in the TRIPs Agreement or to oblige the courts to apply that rule of their own motion (Joined Cases C-300/98 and C-392/98 Dior and Others, paragraph 48).

On the other hand, if the EC has enacted rules in the sphere in question, EC law will apply. That means that it is necessary, as far as may be possible, to supply an interpretation in keeping with the TRIPs Agreement (see, Dior and Others, paragraph 47), although no direct effect may be given to the provision of that agreement at issue (Dior and Others, paragraph 44).

In order to answer the question whether there is or there is not any EC legislation covering the subject matter of the TRIPs Agreement, the Court held that a uniform answer at the EC level is required thus justifying giving the Court of Justice exclusive jurisdiction to answer it.

In this case, the Court held that there are no rules on the EC level specifically covering the subject matter of Article 33 of the TRIPs Agreement. Accordingly, the member States remain competent and they can decide whether or not Article 33 has direct effect. It is not contrary to EC law to give that provision direct effect in national law but of course, EC law does not require it to have direct effect.

This judgment will surely be remembered also for containing one of the best and inadvertently funny one line paragraphs:

"As Community law now stands, there is none."

Communication on improving patent system in Europe

The Commission has issued a Communication on enhancing the patent system in Europe.

A press release sums up the bad state of affairs neatly:

"The Communication highlights that Europe's current patent system is considerably more expensive than the US and Japanese systems. A Community patent would be far more attractive than models under the present system which is a bundle of national patents. A European patent designating 13 countries is 11 times more expensive than a US patent and 13 times more expensive then a Japanese patent. The existing system of patent litigation in the EU, with the risk of multiple patent litigation in several countries on the same patent issue, leads to unnecessary costs for all the parties involved and causes lack of legal certainty."

But how to improve the situation? The member States are divided:

"Recent discussions with Member States show polarised positions on patent jurisdiction arrangements with, on the one hand, Member States supporting the draft European Patent Litigation Agreement (EPLA) in the context of the European Patent Convention, and, on the other hand, Member States favouring the establishment of a specific Community jurisdiction for patent litigation on European and Community patents based on the EC Treaty."

Too bad.

Pharmaceuticals, TRIPS & the EU

Here's an interesting article entitled "Popping Patented Pills: Europe and a Decade’s Dose of TRIPS" by David Vaver and Shamnad Basheer (who sometimes blogs over at Law and Other Things, by the way), both of The Oxford Intellectual Property Research Centre.

This is what the abstract states:

This paper considers some features of Europe’s approach to medicine, public health and patents as it has developed during the decade since TRIPs came into force. It then reviews what rights users have in relation to such patents and what duties right holders may owe users. The following issues are discussed:
1. How patents on medicines are viewed in Europe;
2. How TRIPs has affected European law;
3. How bilateral agreements since TRIPs have affected Europe;
4. How user rights should be viewed under TRIPs;
5. Whether patents in the public health field are a special case.

Well worth reading.

You can download the article here.

Copyright, exhaustion, freedom of expression & Directive 2001/29: Case C-479/04

The Court of Justice handed down an interesting judgment in Case C-479/04 Laserdisken ApS v. Kulturministeriet on the validity of Directive 2001/29 on the harmonization of certain aspects of copyright and related rights in the information society.

The case arose because the plaintiff in the main proceedings, Laserdisken, sells DVDs in Denmark. Laserdisken sold all kinds of DVDs, including original American editions and a wide range of films which were not otherwise available in Europe. But then Article 4 (2) of the Directive provided that the distribution right shall not be exhausted within the Community in respect of the original or copies of the work, except where the first sale or other transfer of ownership in the Community of that object is made by the rightholder or with his consent. In fact, Article 4 (2) had a major impact on Laserdisken's trade in non-EU DVDs. As a result, Laserdisken sued the Danish Ministry responsible for implementing the Directive and claimed, among other things, that the Directive breached the right of freedom of expression because citizens were deprived of their right to receive information in breach of Article 10 of the European Convention on Human Rights.

The Court rejected Laserdisken's claims and upheld the validity of Directive 2001/29 because it helped to protect copyright.

The Court held that freedom of expression is a fundamental right the observance of which is ensured by the EC courts (see Case C-260/89 ERT, paragraph 44). But, if the exhaustion rule laid down in Article 4(2) of the Directive does restrict that freedom to some extent, the Court pointed out that Article 10(2) of the ECHR allows the freedoms guaranteed by Article 10(1) ECHR to be limited for certain reasons in the public interest, including the protection of intellectual property rights like copyright.

Compulsory licenses of pharmaceutical patents for export

The Community has adopted and published a regulation - Regulation 816/2006 - on compulsory licensing of patents relating to the manufacture of pharmaceutical products for export to countries with health problems.

This regulation sets up, within the EC, the system that had been foreseen in paragraph 6 of the Decision of the General Council of the WTO of August 30th, 2003 implementing the Doha Declaration on the TRIPS Agreement and public health. It enters into force at the end of June 2006.

European patents and software

Things are getting curioser and curioser in the long drawn out debate on whether computer software is patentable or not. The Commission had proposed back in 2000 that computer software patents could be invalidated. Then in 2002 the Commission proposed that software should be patentable (see proposal COM (2002) 92 final Also here). The the European Parliament rejected that proposal (see generally, legislative history).

Now, the Commission in response to a parliamentary question (P-1625/06 by Adam Gierek) seems to indicate that

...the draft Community patent Regulation confirms in its Article 28.1(a) that patents granted for a subject matter (such as computer programs), which is excluded from patentability pursuant to Article 52 EPC, may be invalidated in a relevant court proceeding.

So it seems like the Commission is reverting to its position in 2000 and abandon the position it took when the EP rejected the software patent proposal.

Digital libraries

The Commission seems keen on digital libraries. So what does it do ? It sets up a committee, well ... er ... a "High Level Expert Group" to look into how it can be done. The Director general in the Commission's Directorate general for the Information Society will appoint the members of the group.

Why not just ask Larry Lessig?

Feta is not generic but geographical

The Court of Justice upheld the claim that feta is a geographical term not a generic one. In Joined C-465/02 and C-466/02 Germany v. Commission the Court rejected Germany's claim that the term was generic and not goegraphical.

In Commission Regulation (EC) No 1829/2002 of 14 October 2002 amending the Annex to Regulation (EC) No 1107/96 with regard to the name "Feta" the Commission included the term "Φέτα" or "Feta" in the register of protected designations of origin and geographical indications provided for in Article 6(3) of Regulation (EEC) No 2081/92 as a protected designation of origin (PDO). Germany, on the other hand, considered that the Commission had erred and brought an action to annul Regulation 1829/2002. The Court dismissed the action as unfounded.

Feta is a kind of white cheese soaked in brine traditionally produced in Greece and made from ewes’ milk or a mixture of ewes’ milk and goats’ milk. You'll have trouble finding a place called Feta on the map but apparently the area concerned covers mainland Greece and the department of Lesbos.

Copyright and online distribution of music

Finally, the Commission's recommendation of May 18th 2005 on collective cross-border management of copyright and related rights for legitimate online music services has been published.

The idea is to encourage the member States to allow multi-territorial management and protection of copyright and related rights for music. In that way, it will be easier to distribute music online legitimately giving right-holders a multi-territory revenue stream.

Recommendations are not legally binding, of course.