The Appellate Court in Poznań in its judgment of 12 December 2006, case file I ACa 784/06, ruled issues related to the control of the merits of granting the right of protection for utility model has been under the articles 6(2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, transferred to the jurisdiction of the Polish Patent Office, which rules on such matters as provided for in article 255 of the IPL, the civil court has no jurisdiction to evaluate and verify the correctness of the decision of the Patent Office, but is to be bound, because these are decisions issued by the authority in respect of its powers.
Archive for: June, 2007
Polish Patent Office, case I ACa 784/06
June 24th, 2007, Tomasz Rychlicki
Unfair competition, case V CSK 237/06
June 22nd, 2007, Tomasz RychlickiHortex Holding SA Company (Hortex) filed a suit against Hortino, seeking (i) a preliminary injunction to prohibit Hortino labelling its products with its trade mark, (ii) an order that Hortino publish an apology in the press, and (iii) the return of unjustified and undeserved profits gained through the trade mark infringement.
The legal dispute between Hortex and Hortino spanned two different jurisdictions. Trade mark invalidation suits are based on the administrative procedure and this case was reported in my post entitled “Trade mark law, case II GSK 63/05“.
While the administrative procedure was running its course, Hortex commenced civil proceedings against Hortino. Its petition included a claim for trade mark infringement under articles 19 and 20 of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, repealed on 22 August 2001 by the Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, and breach of article 10 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with later amendments.
Article 10
(1) Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
(2) Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons
Hortex asked the court to issue a preliminary injunction against Hortino and to order Hortino to publish a specified apology in the press. Hortex also asked the court to order the reimbursement of unfounded and undeserved profits gained by means of its trade mark infringement. The Court of the First Instance acknowledged the first two claims in its judgment but did not issue any order regarding the monetary award because, in its opinion, Hortex had not proved sufficiently that any of Hortino’s profits had been obtained through the use of its similar trade mark. Both parties appealed.
The appellate court varied the judgment in so far as it affected monetary damages and ordered Hortino to pay 304,000 zloty. The court based its calculations on a test of a fictional licence fee. Hortino then filed a cassation complaint before the Supreme Court, insisting that the judgment was decided in contravention of the CUC and the TMA, some procedural regulations, and even international treaties. The Supreme Court in its judgment of 10 August 2006, case file V CSK 237/06, dismissed the petition and upheld the contested judgment. Judge Tadeusz Zyznowski pointed that all courts, including the Supreme Administrative Court, had reached their decisions in a proper manner. Hortino’s actions were clearly made in bad faith and could lead many consumers to confusion about the origin of labelled and sold products.
The method of establishing the quantum of profits gained by the trade mark infringer is based on the Court of Second Instance’s findings. That court ruled that the measure should be a fictional and hypothetical licence agreement’s fee that would be owed to the trade mark holder if the disputing parties were to have signed a trade mark licence agreement. In the civil proceedings, the appellate court set the fee level at 3 per cent of all profits gained by Hortino when it was selling goods bearing the disputed trade mark.
The Republic of Poland is one of many European countries that, in the course of its legal history, adopted the civil law system. From the point of view of common law lawyers, it simply means that Polish courts do not follow their opinions and judgments. There are no legally binding precedents except for the Supreme Court’s legal rulings. Nonetheless, after the Supreme Court’s final judgment in the issue described above, based on the cassation procedure, one may be sure that all inferior courts will be eager to employ the methods stipulated in this instance.
How to negotiate with crackers
June 19th, 2007, Tomasz RychlickiAbout two months ago, two releases named Harrison.Digital.Media.Salvation.v1.00-BB3D (nfo file) and Harrison.Digital.Media.Salvation.MX.v1.0-BB3D (nfo file) were preed on the warez scene. Trey Harrison is the creator of these programs, correctly named Harrison Digital Media Salvation. He has used third party “effective” technological protection measure, known as Armadillo Software Passport to secure his products against illegal (i.e. without a valid license agreement) use. You may read an article at torrentfreak.com website how he negotiated with crackers to stop future cracking and distribiution of his work.
For all of you interested in this subject matter I recommend to read the article of Goldman, Eric, “Warez Trading and Criminal Copyright Infringement” (January 7, 2004). Available at the SSRN: http://ssrn.com/abstract=487163. I do not want to sound immodest but additionaly, I’d like to suggest you to read my article. T. Rychlicki, “Crimes Violating Intellectual Property Laws. The Modus Operandi Of The Warez Scene”. Computer and Telecommunications Law Review, 2006, 12(1), 27-31. Sweet and Maxwell, London. I’ll try to put it on the SSRN as soon as it is possible. Meanwhile, it is available at westlaw.com.
EPO’s case law
June 17th, 2007, Tomasz RychlickiThe fifth edition of the Case Law of the Boards of Appeal of the European Patent Office has been published. Over a period of 27 years the EPO’s Boards of Appeal have settled more than 21 000 cases, while a total of 85 decisions and opinions issued by the Enlarged Board of Appeal have helped clarify legal points of fundamental importance. This comprehensive report incorporates decisions up to the end of 2005, as well as the most important decisions issued in the first half of 2006.
The book, which is available in English, French or German, can be purchased via the EPO’s website at a price of EUR 42. It can be also downloaded in the electronic form from epo.org website, PDF file.
A tangible document from RAM
June 15th, 2007, Tomasz RychlickiWhen I read some of U.S. judgements I immediately loose my faith in ideas covered by the judge-made law doctrine. I had such feelings when I read opinion in the case Columbia Pictures Industries et. al v. Justin Bunnell, No. CV 06-1093 FMC(JCx) (D. Cal. May. 29, 2007). It was issued by Judge Jacqueline Chooljian. She is appointed as a Magistrate Judge since January 6, 2006 and admitted in California since 1986. During this time she was involved in deciding almost 700 cases where about sixty of them were copyright related. Unfortunately, those information is insufficient for me to understand how can you decide that RAM is a “tangible document” that can be stored and must be turned over in a lawsuit. More comments about this case and a link to the judgement are available at zdnet.com website.
Internet domains and trade mark law, case I ACa 1228/05
June 14th, 2007, Tomasz RychlickiThe Appellate Court in Poznań in its judgment of 26 April 2006, case file I ACa 1228/05, published in electronic database LEX no. 214296, ruled that in the case of a trade mark in the form of a particular word, the word representing a sign it is important, so long as it has the distinctive character and it is possible to distinguish the goods supplied or manufactured by a company from the products of another company. The appearance of a sign that may be represented by letters written in different fonts was less important in the described case. The conclusion that the only the graphic/figurative similarity between the two marks would give a plaintiff the right to assert claims arising out from article 296 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, would render the protection resulting from this provision purely illusory and would wreck the sense of norms arising from this article.
Article 296
1. Any person whose right of protection for a trademark has been infringed or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits and in case of infringement caused by fault also to redress the damage:
(i) in accordance with the general principles of law,
(ii) by the payment of a sum of money at the amount corresponding to the license fee or of other reasonable compensation, which while being vindicated would have been due on account of consent given by the holder to exploit his trademark.1a. To the claims referred to in paragraph (1) the provisions of Article 287(2) and (3) shall apply accordingly.
2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.3. The claims referred to in paragraph (1) shall also be enforceable against a person who only puts on the market the goods already bearing that trademark, provided that the goods do not originate from the right holder or from a party authorised by him to use the trademark.
4. When invoking the right of protection conferred by his trademark, the licensor may enforce the claims referred to in paragraph (1) against a licensee who breaches any provision in his licensing contract with regard to its duration and territory covered by the contract, the form covered by the contract in which the trademark may be used, as well as the scope of the goods for which the trademark may be used or the quality of the goods. This shall apply accordingly to the sub-license.
5. A holder of a right of protection for a trademark may enforce the claims referred to in paragraph (1) against a licensee or a sub-licensee in case where the provisions of the sub-license contract, referred to in paragraph (4) have been breached, as well as in the case, where the contract has been concluded in breach of Article 163(2).
The Court also held that the registration of a web site under a given domain name address, and conducting a business activity through, and also its advertising, complete the condition of “trade mark use”.
See also “Polish case law on domain names“.
The TOS are not so absolute
June 9th, 2007, Tomasz RychlickiA very important judgement in Bragg v. Linden Research, Inc., 2007 U.S. Dist. LEXIS 39516 (D. Pa. 2007). Comments on this case and its original text are available at slashdot.org website. I talked to Carey Lening about it two days ago and I agree with her that the ruling will be reversed during the appelation. As an additional read I recommend you an article by R.D. Kunkel, “Recent Developments in Shrinkwrap, Clickwrap and Browsewrap Licenses in the United States“, Murdoch University Electronic Journal of Law, Volume 9, Number 3, September 2002.