+47 22 85 50 50
Danish company Trotting and Gallop AS (TGL) has a national monopoly in arranging betting on horse racing arranged in Danish racing fields. The company is owned 90 % by the arranger of the horse races, Danish Horseowner’s Association. In order to allow for the betting to take place before and during races, for the purpose of establish racing tables (which horses should run at a given time at a given field) and for facilitating presentations of on-the-spot relevant information to the gamblers, TGL have established an information base. The base contains updated information on actual Danish racing; tracks, horses, their owners, the results obtained by the horses and all races planned to take place. Information to the base is provided by the owners, arrangers and judges of races, veterinarians and other attached personnel, who feed the base with any news. Totally 30 mill. pieces of information concerning approx. 60 000 trotter and 7000 gallop horses are arranged in 800 tables, from which a smaller number – approx. 80 tables – are used to create the actual set-up of races and the lists of participating horses.
TGL have during six years spent 30 mill. EUR to establish a functional information base to be used for the creation of racing lists and to develop systems of automatic handling of the large quantities of information provided to the base and make them accessible in a systematic manner.
TGL are of the opinion that the developed systems for automatic categorization and indexing of information, including the software developed in order to carry out these operations, are unique and are considering the possibility to apply for a European patent for these systems. Before the launching of the database, you are – as TGL’s legal advisor – approached in order to give advice on the matter.
Question 1: Write a short reasoned opinion on the viability of succeeding with a European patent application, with the emphasis on the legal obstacles that may face such an application. Presuppose that you are of the clear opinion that the requirements of novelty and inventive step in any case will be fulfilled. These requirements are therefore not subject to discussion in the opinion.
After the launching of the database, parts of the base are made publicly available on www.tgl.dk. The company First Bet, operating from Jersey, with a subsidiary in Copenhagen, offers on-line betting to the Danish public based on horse races in Denmark. They offer, in competition with TGL, weekly bets on a limited number of fields. In order to establish their offer they use data for the actual races where First Bet customers may pose bets from the TGL-information available on the net. During and before a race they search the TGL’s pages up to ten times in order to validate their service and if need of changing the odds.
TGL sue First Bet for illegal use of the database. TGL hold that they have copyright protectionpursuant to Article 3 of Directive 96/9/EC on the legal protection of databases (the Database Directive), since the arranging of the tables fulfills the requirements for such protection. Alternatively they claim sui generis protection under Art. 7 of the directive. They claim their investment fulfills the requirements of the directive, and that First Bet’s use of data in their set-up for betting is an infringement of TGL’s rights, since First Bet are basing themselves on the use of information extracted from TGL’s database.
First Bet argue that the database does not fulfill the requirements for copyright protection. Furthermore they hold that TGL’s investment should be considered as related to the setting up of the actual races, and therefore be irrelevant. They also, in any event, claim that their use of the TGL’s base is too limited to amount to an infringement especially since they could have obtained most of the information they needed from other sources, and alternatively that consulting the base on the net does not amount to extraction of data. TGL’s claims therefore cannot be heard.
Question 2: Discuss under what circumstances TGL could have a valid claim against First Bet for copyright infringement under Article 3 of the Database Directive.
Question 3: Discuss whether TGL will have a valid claim against First Bet for breach of Article 7 of the Database Directive.
All three questions must be answered. Estimated time consumption is one hour each on questions 1 and 2 and two hours on question 3.
Chess Fanatic Ltd (“CF”) is a software company based in London. It specialises in creating computer games. It develops a computer game called “Virta-chess” and registers this name as a trade mark. Virta-chess is an online game allowing two or more persons to play a special type of chess which involves use of a 3-dimensional gaming board with hyperlinks on each square and specially designed playing pieces that emit sounds as they are moved or removed in the course of the game. CF enters into a license agreement with Funshine Systems Ltd (“FS”) by which FS is permitted to distribute and market Virta-chess to the German online gaming market. The terms of the licensing agreement stipulate that: (i) “users of Virta-chess are not permitted to reproduce the game without prior permission” from CF; and (ii) “analysis of the Virta-chess software for the purpose of identifying its source code is prohibited”.
When marketing its game, FS uses the Google referencing service, AdWords, whereby FS pays Google so that whenever a user of the Google search engine types in a reference to “Virta-chess”, an advertising link to FS and its new game appears on the right-hand side of the “natural” search results.
When CF discovers the existence of the new checkers game, it sues FS for infringement of copyright. CF also sues Google for unlawful use of its trade mark. At the same time, a dispute breaks out between FS and B over who has copyright in the checkers game software: B claims the software is his creation and that he has sole copyright in it; FS disagrees.
• Advise CF on the legal propriety of suing FS for breach of copyright.
• Advise CF on the legal propriety of suing Google for unlawful use of its trade mark.
• Advise B on the legal propriety of his claim to sole copyright in the computerised checkers game.
For the pieces of advice dealing with copyright, you need only refer to relevant provisions of Directive 91/250/EEC along with any relevant case law.
For the piece of advice dealing with trade mark usage, you need only refer to relevant parts of Article 5 of Directive 89/104/EEC (as amended and consolidated under Directive 2008/95/EC) along with any relevant case law. The relevant parts of Article 5 are as follows:
“1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.
2. … [T]he proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”
NB. Most of your time and effort should be directed at advising CF on the legal propriety of suing FS for breach of copyright. The other two pieces of advice can be dealt with relatively concisely and quickly.
Xidiome (“X”) is a software company based in Germany. It develops computer programs (hereinafter termed “inspection programs”) that are able to inspect the contents of digital files and monitor how these files are disseminated and used across networks. It enters into a contract with Paymore Systems (“PS”), a computer games manufacturer based in the United Kingdom, which sells usage rights to its games through an online service. Under the contract between PS and X, the inspection programs of X are attached to the computer games of PS. This means that when a computer game is downloaded to the computer of a person (“end-user”) who purchases rights to use the game, the inspection program of X is also transferred to the end-user’s computer. The inspection program then covertly monitors how the game is used. However, before purchasing and downloading a PS computer game, the end-user is notified by PS that his/her use of the game will be monitored to ensure that the game is not used in violation of the usage agreement.
Byron (“B”) is a computer-savvy end-user, residing in London, who has downloaded a PS game. He quickly discovers the existence of the inspection program in his computer system. He angrily informs PS that he will not tolerate the placement of such a program in his system. He adds that he can “easily develop a program to disable the monitoring capabilities of the inspection program”. PS counters this threat by stating that if B develops such a program, PS will sue him for breach of the provisions in the Copyright, Designs and Patents Act 1988 (UK) which deal with circumvention of technological protection measures.
1. Advise PS on the viability of suing B for breach of these provisions. In your answer, you need not refer specifically to the provisions of the Copyright, Designs and Patents Act 1988 (UK) but to the relevant provisions of Directive 2001/29/EC (upon which the UK provisions are based).
2. X wishes to apply for patent protection for its inspection program. Advise X on the extent to which such an application would be successful in Europe.
Critically discuss the following comments by an academic researcher:
“A profound change is occurring in the way that intellectual property is protected. The change may be summed up as the technologisation of copyright. This somewhat inelegant phrase denotes the increasing use of technological mechanisms – including information systems architectures – to ensure that copyright is respected, particularly in the online environment.
[This] technologisation will have consequences for the long-term status of copyright law. It is likely to facilitate the use of contract as the primary means of regulating usage of copyrighted material, thus helping to marginalise traditional copyright law in favour of contract law – at least in the digital context. In broader terms, this is a development in which enforcement of intellectual property rights increasingly relies on private fiat, decreasingly on public law with its finely tuned balance of interests.”
In your discussion, you should focus on relevant EU legal instruments. You may also mention other legal instruments and rules where appropriate.