CIPIL Spring Conference 9 March 2019 MENTAL ELEMENTS

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CIPIL Spring Conference, 9 March 2019 MENTAL ELEMENTS IN IP LAW DEFENCES Prof. Dr.

CIPIL Spring Conference, 9 March 2019 MENTAL ELEMENTS IN IP LAW DEFENCES Prof. Dr. Martin Senftleben

How much room for mental elements? act not guilty unless mind is guilty?

How much room for mental elements? act not guilty unless mind is guilty?

Issuing a blank cheque? “I didn’t know better…” “I had a good reason…”

Issuing a blank cheque? “I didn’t know better…” “I had a good reason…”

Objective determination of subjective state of mind? looking at the alleged infringer? looking at

Objective determination of subjective state of mind? looking at the alleged infringer? looking at the infringing product?

Harmonization objective: empirical vs. normative factors • Dinwoodie/Gangjee 2016, p. 367 • ‘. .

Harmonization objective: empirical vs. normative factors • Dinwoodie/Gangjee 2016, p. 367 • ‘. . . [t]he more that the reasonably well-informed and reasonably observant and circumspect consumer is a normative fiction, the greater the scope for the CJEU to create legal rules that establish EU-wide standards. The more empirical that question becomes, then the greater the role of national courts…’

COPYRIGHT LAW

COPYRIGHT LAW

General framework: Art. 13 TRIPS • certain special case – curtailment of exclusive rights

General framework: Art. 13 TRIPS • certain special case – curtailment of exclusive rights (WTO Panel) – important policy objective (literature) • conflict with a normal exploitation – existing and future markets (WTO Panel) – profit motive (Art. 5 Info. Soc Directive) • unreasonable prejudice to legitimate interests – informatory purpose (public speeches) – fair practice (quotation right)

Fair practice = specific intention?

Fair practice = specific intention?

CJEU 3 September 2014, case C-201/13, Deckmyn/Vandersteen • parody = autonomous EU concept [15]

CJEU 3 September 2014, case C-201/13, Deckmyn/Vandersteen • parody = autonomous EU concept [15] • usual meaning in everyday language ‘…the essential characteristics of parody are, first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery. ’ [20] • reference to specific state of mind? • intention to ridicule the original work?

National approach

National approach

Hof Amsterdam, 13 September 2011, Mercis and Bruna/Punt. nl • pre-Deckmyn decision • explicit

Hof Amsterdam, 13 September 2011, Mercis and Bruna/Punt. nl • pre-Deckmyn decision • explicit reference to parodist’s intention • ‘The intent of these images, which in combination with the accompanying texts contrast sharply with the original Miffy character, is unmistakably to provoke laughter, regardless of the fact that not everyone will find the offending images funny or appropriate. ’ [4. 7] • expression of humour or mockery • reference point: parodist or parody?

Market impact = objective criterion?

Market impact = objective criterion?

CJEU 10 April 2014, case C-435/12, ACI Adam • focus on corrosive effect on

CJEU 10 April 2014, case C-435/12, ACI Adam • focus on corrosive effect on normal exploitation ‘…to accept that such reproductions may be made from an unlawful source would encourage the circulation of counterfeited or pirated works, thus inevitably reducing the volume of sales or of other lawful transactions relating to the protected works, …’ [39] • always infringement in case of illegal source?

Prohibition of subjective elements in national law? • § 53(1) German Copyright Act •

Prohibition of subjective elements in national law? • § 53(1) German Copyright Act • ‘It shall be permissible for a natural person to make single copies of a work for private use on any medium, insofar as they neither directly nor indirectly serve commercial purposes, as long as no obviously unlawfully-produced model or a model which has been unlawfully made available to the public is used for copying. ’ • subjective test based on user knowledge and education (official explanation)

TRADEMARK LAW

TRADEMARK LAW

General framework: Art. 17 TRIPS • two-step test with concrete example • ‘Members may

General framework: Art. 17 TRIPS • two-step test with concrete example • ‘Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties. ’ • How to safeguard legitimate interests? – fair practice – example of descriptive use defence

ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories

ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories

ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories • compliance with honest practices? • ‘In

ECJ, 17 March 2005, case C-228/03, Gillette/LA-Laboratories • compliance with honest practices? • ‘In that regard, use of the trade mark will not comply with honest practices in industrial or commercial matters where, first, it is done in such a manner that it may give the impression that there is a commercial connection between the reseller and the trade mark proprietor. ’ [42] • repetition of infringement criteria • room for considering intention of defendant? • appropriate way out of circularity?

Descriptive use

Descriptive use

ECJ, 7 January 2004, case C-100/02, Gerolsteiner/Putsch • direct reference to fair practice ‘The

ECJ, 7 January 2004, case C-100/02, Gerolsteiner/Putsch • direct reference to fair practice ‘The condition of ‘honest practice’ constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner. ’ [24] • risk of aural confusion not decisive [25]

ECJ, 7 January 2004, case C-100/02, Gerolsteiner/Putsch • focus on conduct of the defendant

ECJ, 7 January 2004, case C-100/02, Gerolsteiner/Putsch • focus on conduct of the defendant ‘…circumstances to be taken into account by that court would include in particular the shape and labelling of the bottle in order to assess, more particularly, whether the producer of the drink bearing the indication of geographical origin might be regarded as unfairly competing with the proprietor of the trade mark. ’ [26] • shape and labelling as expressions of intent to act fairly

Decorative use

Decorative use

CJEU, 10 April 2008, case C-102/07, Adidas/Marca • limits of an intention-based approach •

CJEU, 10 April 2008, case C-102/07, Adidas/Marca • limits of an intention-based approach • ‘…when, despite its decorative nature, that sign is so similar to the registered trade mark that the relevant public is likely to perceive that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings. ’ [34] • relevant factor: degree of trade mark recognition on the market [36]

Bundesgerichtshof, 24 November 2011, case I ZR 175/09, ‘Medusa’ • only 5% of consumers

Bundesgerichtshof, 24 November 2011, case I ZR 175/09, ‘Medusa’ • only 5% of consumers knows Versace’s Medusa logo = no infringement [23] • still room for inquiry into intention? • source of inspiration: Medusa Rondanini

PATENT LAW

PATENT LAW

General framework: Art. 30 TRIPS • limited exception • unreasonable conflict with a normal

General framework: Art. 30 TRIPS • limited exception • unreasonable conflict with a normal exploitation • unreasonable prejudice to legitimate patent owner interests, taking account of legitimate third party interests – normative approach – interests that are justifiable in the sense that they are supported by relevant public policies or other social norms (WTO Panel)

Impact on exceptions • WTO Panel, 17 March 2000, WT/DS 114/R, Canada – Pharmaceutical

Impact on exceptions • WTO Panel, 17 March 2000, WT/DS 114/R, Canada – Pharmaceutical Products • example: experimental use • ‘…under the policy of the patent laws [to facilitate the dissemination and advancement of technical knowledge], both society and the scientist have a ‘legitimate interest’ in using the patent disclosure to support the advance of science and technology. ’ [7. 664]

Experimental use ‘. . . acts done for experimental purposes relating to the subject-matter

Experimental use ‘. . . acts done for experimental purposes relating to the subject-matter of the patented invention. ’ (Art. 27(b) UPCA) • allows testing of claimed properties or different indications • requirement: experiments are directed to the substance itself • problematic: use as research tool

Hoge Raad, 18 December 1992, ICI/Medicopharma • decisive: unauthorized use must be justified by

Hoge Raad, 18 December 1992, ICI/Medicopharma • decisive: unauthorized use must be justified by the research objective ‘This is only the case if the researcher argues and if necessary proves that his research is exclusively of a purely scientific nature or is only aimed at achieving the aim of the patent law, such as the further development of technology. ’ • specific intention required

Software patents ‘…the acts and the use of the obtained information as allowed under

Software patents ‘…the acts and the use of the obtained information as allowed under Articles 5 and 6 of [the Computer Programs] Directive 2009/24/EC, in particular, by its provisions on decompilation and interoperability. ’ (Art. 27(k) UPCA) = inclusion of copyright exceptions into patent law by reference • again specific intention, such as achieving interoperability

Private, non-commercial use ‘The rights conferred by a patent shall not extend to any

Private, non-commercial use ‘The rights conferred by a patent shall not extend to any of the following: acts done privately and for noncommercial purposes. ’ (Art. 27(a) UPCA) • non-commercial character decisive • impact on knowledge requirements in the distribution chain? • indirect infringement in 3 D printing scenario?

Discussion about right intention “I had a good reason…” “But you wanted to make

Discussion about right intention “I had a good reason…” “But you wanted to make money/kill my market etc…”

THE END. THANK YOU!

THE END. THANK YOU!