Posted online only yesterday was the decision of the Irish Supreme Court (Hardiman J, Fennelly J and, giving judgment for the court, Macken J) of 19 May 2010 in Compagnie Gervais Danone v Glanbia Foods Society Ltd [2010] IESC 36 (thank you, Gemma O’Farrell, for the tip-off).

This is an appeal from a judgment of the High Court (Finlay Geoghegan, J.) which was delivered over three years ago, on 20 April 2007. Danone, which sold ACTIVIA yoghurt under its DANONE house mark, describing that product as containing “bifidus essensis”, said Glanbia had infringed its ESSENSIS trade mark by selling ESSENCE yoghurt; the trial judge dismissed the action, held that Danone had not made any genuine use of its Irish trade mark ESSENSIS for the goods in Class 29 yoghurt) for which it was registered for the statutory period of five years from the date of publication of the registration, and revoked the mark for non-use under s.51(1)(a) of the Trade Marks Act 1996. A further defence, that the ESSENSIS mark was registered in bad faith, was rejected.

The Supreme Court allowed Danone’s appeal. The trial judge had accepted that the word mark ESSENSIS had been used in the phrase “bifidus essensis”, but did not consider (having looked at the relevant Court of Justice case law in Case C-40/01 Ansul) that this use was in relation to yoghurt itself, rather than for a culture which was an ingredient of yoghurt and which was properly categorised within Class 1, and that the use of the mark in this manner was not in accordance with its essential function — indicating the identity of the origin of yoghurts. She also concluded that genuine use of the mark in respect of yoghurt would require consumers to understand that the mark in question actually related to yoghurt, for which it was after all registered. There was however nothing in law to compel the conclusion that the use of a trade mark in relation to an essential ingredient of a product was not also a use of that same mark in relation to the product itself. Nor was there any basis upon which to draw a distinction between the use of a trade mark in respect of spare parts for a product (as in Ansul) and in respect of its ingredients. Further, the rule in Ansul was not limited to the specific facts of that case — thus inviting judges to distinguish other cases from it — but was formulated as a general rule to apply in all cases involving genuine use.

Says the IPKat, there’s lots of fun stuff in this decision, including some detailed textual analysis of the words and the linguistic significance of the Trade Mark Directive. Thus the court says

“There are two matters it seems to me, which arise from this argument. The first … concerns whether … the phrase “in connection with the goods” in the Directive (or in the case of the Irish legislation “in relation to the goods”) can properly be said to be in any way materially, or even reasonably, different from the phrase “for the goods or services” found in other language versions of the Directive. Although certain dictionary meanings were considered in the course of the exchanges during the hearing of this appeal, I am not at all satisfied that there is any evidence before this Court from which it could be concluded that there is any real distinction, linguistically speaking, between the various phrases used in the different versions of the same Directive, and I do not find either that this was a serious issue in the High Court or one considered by the learned High Court judge in her judgment. Indeed, I am satisfied that the more vague phrase “for the goods or services”, which is in no way limited linguistically, does not, on any reasonable interpretation, necessarily mean “on the products”, if by that phrase is meant physically on the products. Nor is it narrower than either the phrase used in the English language version of the Directive, or in the Act of 1996, as contended for by the respondent”

and

“… no real distinction in law can be drawn between the requirements for use as expressed by the phrase “in connection with the goods” or indeed “in relation to the goods” on the one hand, and the phrase “for the goods” on the other hand, and in this judgment I deal with the phrase occurring in the English language version of Article 12(1), as transposed into Irish law by the Act of 1996, as if all three phrases were identical”.

Let’s hope those issues don’t arise again.

Yoghurt or yogurt? Here

Yoghurt and health here

Yoghurt and cats here

Very unkind joke about yoghurt (click here and search for ‘yogurt’)

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On Friday the IPKat posted a “breaking news” item on an Irish case, EMI Records (Ireland) Ltd and others v Eircom Ltd [2010] IEHC 108, which he somewhat unhelpfully described as being the first Irish decision on that country’s “three strikes” law (the Irish “three strikes” being the result of a consensual arrangement, not legislation). The Kat had planned to dedicate part of the weekend to reading the decision and producing a note on it. However, David Brophy (FRKelly) has fortuitously saved him the trouble by sending him this summary. Say David:

“The question being decided was whether a “three strikes” protocol agreed between the four major record labels (EMI, Sony, Universal and Warner) and the largest of Ireland’s ISPs (Eircom) was objectionable on data protection grounds. Briefly, the arrangement was that the record labels would operate software to identify file-sharing of files in which they claimed copyright, where one of the parties was operating from an IP address assigned to Eircom. Eircom would be notified of the alleged infringement, and agreed it would implement a “three strikes” procedure ultimately leading to termination of the subscriber’s internet access on the third such notification.

The Data Protection Commissioner wrote to the solicitors for EMI, expressing concern over their intention to collect, share and process IP addresses which might constitute “personal data” and/or “sensitive personal data”. The judge was asked to make a ruling on three questions which can be summarised, simplified and rephrased for context as follows:

(1) Do IP addresses, in the hands of EMI, constitute “personal data” for the purposes of the Data Protection Acts 1988-2003, such that EMI must comply with certain specified provisions of the Data Protection Acts?

Held: No. Since the subscriber cannot be identified from the IP address, and it is not likely that the record labels can combine the IP address with other information, or will even attempt to do so, the IP addresses are not personal data within the meaning of the Act.

(2) Assuming that the processing by Eircom of “personal data” when terminating an internet user’s subscription is potentially permissible under the Data Protection Acts, is it nevertheless prohibited because the termination of internet access represents “unwarranted [processing] by reasons of prejudice to the fundamental rights and freedoms or legitimate interests of the data subject”?

Held: No. Terminating an internet user’s subscription is not unwarranted and therefore not prohibited. Copyright is a personal property right under the Irish Constitution which the Courts have a duty to protect. By imposing on subscribers, as a condition of internet access, a prohibition on copyright infringement, Eircom as an ISP is acting legitimately to support a third party’s constitutional right, and the sanction of terminating access is not excessive and is consented to by the subscriber. Enforcing this sanction, using the automated system agreed with the record labels, is similarly not excessive or unwarranted.

(3) Is it open to EMI and/or Eircom under the Data Protection Acts to implement the three strikes process, and in particular, the termination of an internet user’s subscription, in circumstances where:
(a) In doing so they would be engaged in the processing of “personal data” and/or “sensitive personal data”, including the provision of such data from one private entity to another private entity; and
(b) The termination of an internet user’s subscription by Eircom would be predicated on the user having committed an offence (i.e. the uploading of copyright-protected material to a third party by means of a peer-to-peer application) but without any such offence having been the subject of investigation by an authorised body; and, further, without any determination having been made by a court of competent jurisdiction, following the conduct of a fair and impartial hearing, to the effect that an offence had in fact been committed.

Held: Yes. It was open to the parties to operate the three strikes process. The judge reasoned that the parties were not really concerned with whether any criminal offence had been committed (this would require a showing of knowledge or intent, which was beyond the scope of the detection and notification procedures), and that their only concern, in operating the three strikes process, was in detecting and preventing civil copyright infringement. As such, the issues associated with “sensitive personal data” and the more stringent controls on processing data relating to criminal offences, did not require consideration.

It is noteworthy that the Data Protection Commissioner was not represented before the Court, nor was there any representation for the consumer, for digital advocacy groups, or for any party strongly opposed to the implementation of the three strikes system. The overall tenor of the judgment strongly champions the rights of the copyright holder, and one can only speculate if this would be different in a case where the legitimate interests of the data subject were strongly advocated. The judgment is particularly striking for the language used to describe the act of copyright infringement (“theft”, “stealing”, “filching”), and the data subjects, whose interests the case is of course addressing, become “copyright thieves” when their IP addresses have been identified as having been involved in file-sharing.

Finally, it should be noted that this three strikes procedure arises from a settlement between the record labels and a single ISP, namely Eircom. No other ISP has yet agreed to implement this three strikes rule, and some have said that they will fight any attempt to impose this solution on them. All of this suggests that this is not the last word on the three strikes system from the Irish courts”.

The IPKat thanks David for his lucid exposition of the decision and also for his observations concerning it. Merpel says, it will be interesting to see whether internet users migrate from Eircom to other ISPs in result of this ruling, or whether most remain indifferent to it.

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The IPKat thanks his friend Deirdre Kilroy (LK Shields) for telling him that the first Irish High Court decision on the Republic’s “three strikes” law has just been handed down today by Mr Justice Charleton in EMI Records (Ireland) Ltd and others v Eircom Ltd [2010] IEHC 108. You can read the decision in full here – which is more than this Kat has done, since he is just in the act of winding down for a day off.

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A week after he reported that Irish fashion designer Jen Kelly was suing Riverdance duo Moya Doherty and John McColgan for unauthorised use of his designs, the IPKat can now tell his readers that Kelly’s action has been withdrawn. According to Tim Healy, writing in today’s Irish Independent, Kelly

“…dramatically withdrew his legal claim against the ‘Riverdance’ producers after a compromise was reached.

Jen Kelly … claimed he had been “airbrushed out of history” by the world famous dance and music sensation. … Mr Kelly sought €820,000 damages, alleging he had not been given proper credit for his work and his designs were used and altered without his consent …

But [he] yesterday decided to accept that producers did not use costumes he had designed, nor copies of them, in live performances of ‘Riverdance’ after December 31, 2001.

It was unclear last night whether money had changed hands ahead of the settlement.
Afterwards Mr Kelly said he was “delighted that I can get back to what I do best, designing clothes”. …

[Kelly] claimed the defendants breached a November 1999 agreement not to use his costume designs in ‘Riverdance the Show’ after December 31, 2001. It was in 1999 that Mr Kelly was informed that another designer, Joan Bergin, would be used for the costumes in a new show on Broadway. The defendants had denied the claims.

And yesterday, on the third day of the hearing, Mr Justice John MacMenamin was told that there had been a compromise in the proceedings. … The judge struck out the action which had been estimated to run for two weeks.

… Joan Bergin, the designer who took over the ‘Riverdance’ costume work, said: “I’m mightily relieved for every costume designer who works in theatre, otherwise we’d just spend the rest of our lives looking over our shoulders.”

Last week the court had heard that Mr Kelly agreed to design costumes for ‘Riverdance the Show’ following the success of the performance at the 1994 Eurovision Song Contest. As the show’s popularity expanded, an agreement was entered into in October 1996 between ‘Riverdance’ and Mr Kelly. As part of that agreement Mr Kelly received a royalty payment of £60 per performance — but difficulties later arose …. The difficulties culminated in an agreement in December 1999 under which Mr Kelly was to receive a payment and his costume designs would be used in the shows up until the end of December 2001 …”.

The IPKat feels a little sorry for the legal teams involved, who must have blanked a fortnight out of their respective diaries in the anticipation of some interesting, instructive, lucrative and publicity-rich court work. Merpel says, if you get rid of all the repeated bits, couldn’t you have choreographed the two-week trial down to about three days?

Traditional Irish dancing here and here
How to dance an Irish jig here (“Be careful not to fall when standing on one foot or hopping”)
Fitness and health issues for Irish dancers here and here

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Ireland’s Sunday Business Post reports that Riverdance duo Moya Doherty and John McColgan are being sued by fashion designer Jen Kelly for using his designs without permission; Kelly is also reported to be seeking royalties on Riverdance’s profits. The two are offering a vigorous and no doubt immaculately choreographed if ear-splitting defence to the claims when they appear live in the Irish High Court later this week. According to the news report,

“Kelly designed and made hundreds of outfits that were used in the Riverdance shows in the mid-1990s. After receiving initial design fees for the show costumes, Kelly claimed he was paid about €60 in royalties per performance until 2001.

Kelly has claimed Riverdance continued to use and modify his designs without licence or payment. McColgan and Doherty claimed an agreement was reached in November 1999 under which the designer accepted a substantial sum to finalise his involvement.

McColgan said there was never “any unauthorised exploitation of Kelly’s designs by Riverdance”. He said Kelly’s designs had not been used since 2001″.

The IPKat looks forward to learning more about the legal grounds of the claim. Merpel wonders if there is any country in the world in which, in the absence of a licence, the live performance by a person wearing a costume could infringe either the design right or the copyright in that item of clothing. Says Tufty, I bet the judge doesn’t fall asleep in this trial …

Riverdance in response to the Haka here
Dancing cats here and here

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