European Intellectual Property Law:
An introduction
Matěj Myška
@matejmyska
The Motivation
 „Intellectual property law is, in
short, a twenty- first-century
discipline, focused on the
future of innovation.“
SCAFIDI, Susan, 2004. Digital Property/Analog History. Loyola of Los Angeles Law Review. 1
September 2004. Vol. 38, no. 1, p. 245.
Brief overview of the lectures
1) History & Theory & Basic Principles
2) Substantive EU Law (with focus on Copyright)
a) Database protection
b) Software protection
3) Specific Issues
a) Exceptions and Limitations: Private Copying,
DRM and the Three-step test
b) Private Ordering: Creative Commons, F/OSS
c) Scope of Rights: The „Linking“ Issue
Building the pyramid of IP knowledge
III. ICT specific issues
(linking, F/OSS, DRM,
private copying)
II. Copyright & SGDR
I. Basics
1)HISTORY & THEORY & BASIC
PRINCIPLES
GENERAL INTRODUCTION
Subject matter
 Intangible subject matter <=> tangible
manifestation
 Potential ubiquity (non-crowdability)
 Non-rivalry (non-depletability)
 IP rights – absolute rights in intagible subject
matter
IPRs
Copyright &
Related rights
Industrial
property
IPRs
Copyright
&
Related
Rights
Patents
Trade
Marks
Designs
Other
Convention Establishing the World
Intellectual Property Organization (1967)
 literary, artistic and scientific works;
 performances of performing artists, phonograms,
and broadcasts;
 inventions in all fields of human endeavor;
 scientific discoveries;
 industrial designs;
 trademarks, service marks, and commercial names
and designations;
 protection against unfair competition; and
 all other rights resulting from intellectual activity in
the industrial, scientific, literary or artistic fields.
Justification
 Non-intuitivness => need for justification
 „Free for all“?
 Justifications
 Personality-Based (Hegel)
Moral claim
 Labour theory (Locke)
Fairness
 Utilitarian (incentives-based)
Promotion of creativity
Moore, Adam and Himma, Ken, "Intellectual Property", The Stanford Encyclopedia of Philosophy (Winter 2014 Edition), Edward N.
Zalta (ed.), URL = <https://plato.stanford.edu/archives/win2014/entries/intellectual-property/>.
Issue of territoriality
 No “global” IPRs
 Territoriality based protection
 Overcoming territoriality
 International treaties
National treatment (minimum rights)
Reciprocity
 Easier grant procedure
 International, regional, national filing
Overcoming territoriality – national treatment
 Paris Convention (1883)
 Article 2(1)
Nationals of any country of the Union shall, as regards the protection of
industrial property, enjoy in all the other countries of the Union the
advantages that their respective laws now grant, or may hereafter grant, to
nationals; all without prejudice to the rights specially provided for by this
Convention. Consequently, they shall have the same protection as the
latter, and the same legal remedy against any infringement of their rights,
provided that the conditions and formalities imposed upon nationals are
complied with.
 Berne Convention (1886)
 Article 5(1)
Authors shall enjoy, in respect of works for which they are protected under
this Convention, in countries of the Union other than the country of origin,
the rights which their respective laws do now or may hereafter grant to
their nationals . . .
Overcoming territoriality
 Minimum rights
 Paris Convention (1883)
 Priority
 Berne Convention (1886)
 Iura conventionis
HISTORY & THEORY & BASIC
PRINCIPLES
From Ancient Greece to Copyright
Alocation to Works created by AI
 500 B.C. – Sybaris colony – culinary recipes
 ~100 A.D. – Martial – literary piracy
 1421 – Florentine Patent Status
 1474 – Venetian Patent Law
 1624 – Statute of Monopolies
 1709 – Statute of Anne
From Ancient Greece to Copyright
Alocation to Works created by AI
 1883 – Paris Convention
 1886 – Berne Convention
 1967 – WIPO
 1994 – TRIPS
 1996 – WIPO Treaties
 Napster
 Copyright Wars
 2016 – Morgan Trailer
Life cycle
 Regulation
 Basics
 Requirements for protection
 Grant procedure
 Protection: scope protection & term & exceptions
 Enforcement
 Termination
Regulation
 Paris Convention for the Protection of Industrial Property
(1883)
 Patent Cooperation Treaty (1970)
 Strasbourg Agreement Concerning the International
Patent Classification (1971)
 Patent Law Treaty (2000)
 European Patent Convention (1973)
 http://www.epo.org/law-practice/legaltexts/html/epc/2016/e/index.html
(citations and
referrences in this section concern this act)
 Unitary patent package: EU Regulations 1257/2012,
1260/2012 and Council Decision 2011/167/EU
Basics
 Protection for inventions
 A technical solution to a technical problem
Requirements for protection
 Protectable subject-matter
 Novelty
 Inventive step
 Industrial applicability
Patentable invention (subject matter)
 Inventions solving non-technical problems
relying on subject matter void of any technical
character are not eligible for a patent.
A52(1)
European patents shall be granted for any
inventions, in all fields of technology, provided that
they are
- new,
- involve an inventive step and are
- susceptible of industrial application.
A52(2)
The following in particular shall not be regarded as
inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and
mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing
mental acts, playing games or doing business,
and programs for computers;
(d) presentations of information.
A52(3)
Paragraph 2 shall exclude the patentability of the
subject-matter or activities referred to therein only
to the extent to which a European patent
application or European patent relates to such
subject-matter or activities as such.
Novelty – A54
(1) An invention shall be considered to be new if it
does not form part of the state of the art.
(2) The state of the art shall be held to comprise
everything made available to the public by means
of a written or oral description, by use, or in any
other way, before the date of filing of the European
patent application.
Inventive step – A56
An invention shall be considered as involving an
inventive step if, having regard to the state of the
art, it is not obvious to a person skilled in the art.
Industrial application – A57
An invention shall be considered as susceptible of
industrial application if it can be made or used in
any kind of industry, including agriculture.
Grant procedure
 National
 European Patent (European Patent Convention)
– not an EU Patent, international agreement
 Filing, Search, Examination, Grant, Opposition
European unitary patent
 Application and grant: EPC
 Upon request of the proprietor: unitary effect (no
validation)
 Unified patent court
Protection: scope protection & term & exceptions
 EPC: bundle of national patens
 A69 EPC – defined by claims
 A64 EPC – the same rights as would be conferred
by a national patent granted in that State
---
 A3 (Regulation 1257/2012) Unitary patent: unitary
effect
 limited, transferred or revoked, or lapse, in
respect of all the participating Member States
 A7 (Regulation 1257/2012)
Protection: scope protection & term &
exceptions
 20 years from filing
 Yearly fees
 Exceptions: experimental & private use (national
law)
Life cycle
 Regulation
 Basics
 Requirements for protection
 Grant procedure
 Protection: scope protection & term & exceptions
 Enforcement
 Termination
Regulation
 Paris Convention (1883)
 Madrid Agreement Concerning the International Registration of Marks (1891)
 Protocol Relating to the Madrid Agreement Concerning the International Registration of
Marks (1989)
 Nice Agreement Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks (1957)
 Vienna Agreement Establishing an International Classification of the Figurative Elements of
Marks (1973)
 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December
2015 to approximate the laws of the Member States relating to trade marks
 Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union
trade mark (codified version!) (citations and referrences in this section concern this
act)
Basics
 Unitary character
 any signs, in particular words, including personal names, or designs,
letters, numerals, colours, the shape of goods or of the packaging of
goods, or sounds, provided that such signs are capable of:
 (a) distinguishing the goods or services of one undertaking from
those of other undertakings; and
 (b) being represented on the Register of European Union
trade marks, (“the Register”), in a manner which enables the
competent authorities and the public to determine the clear
and precise subject matter of the protection afforded to its
proprietor.’
 [shall only apply as from 1 October 2017] – as of today –
graphical representation
 Council Regulation (EC) No 207/2009 of 26 February 2009 on
the European Union trade mark (codified version!)
Requirements for protection
 Notion of Trademark
 Distinctiveness (i.e. not general descriptive
terms)
Grant procedure
Source: https://euipo.europa.eu/ohimportal/en/registration-process
Grant procedure
 Application filing (€350)
 A7 Absolute grounds
 Public policy, morality
 Non-distinctive (generic)
 …
 A8 Relative grounds – opposition proceedings
 Conflict with prior rights
Similarity
Likelihood of confusion
Protection: scope protection & term & exceptions
 A9 – right to exclude anybody from using the
trademark in course of the trade
 Identical – same goods/service
 Similarity – likelihood of confusion – same
goods/service
 Trademark with reputation (and unfair
advantage/detrimental) – similarity – likelihood
of confusion – no limits
Protection: scope protection & term & exceptions
 A9 right to exclude anybody from using the
trademark in course of the trade
 Identical – same goods/service
 Similarity – likelihood of confusion – same
goods/service
 Trademark with reputation (and unfair
advantage/detrimental) – similarity – likelihood of
confusion – no limits
 A9a prohibition of preparatory acts
 A13 exhaustion of rights
 A17 transfer A22 licensing
Protection: scope protection & term & exceptions
 A12 Limits
 [Non-relevant use (not in course of trade)]
 Use of own name
 “Spare parts” – indication of intended purpose
 A46 – duration of registration – 10 y, can be
renewed indefinitely
Termination
 A50 Surrender
 A51 Revocation (application to
EUIPO/counterclaim)
 Non-genuine use for 5 years
 “Generification”
 Misleading the public
 Invalidity
 Aboslute
 Relative
Bonus
 A66 EU collective mark is applied for and is
capable of distinguishing the goods or services
of the members of the association which is the
proprietor of the mark from those of other
undertakings.
 A74 certification trademark - shows compliace
with some standard
Enforcement
 EU Trademark courts
 Infringement and validity jurisdiction
DESIGNS
Life cycle
 Regulation
 Basics
 Requirements for protection
 Grant procedure
 Protection: scope protection & term & exceptions
 Enforcement
 Termination
Regulation
 Hague agreement concerning the international registration of
industrial designs (1934)
 Locarno agreement establishing an international classification
for industrial designs (1968)
 Directive 98/71/EC of the European Parliament and of the
Council of 13 October 1998 on the legal protection of designs
 Harmonization of national substantive law
 Council Regulation (EC) No 6/2002 of 12 December 2001
on Community designs (citations and referrences in this
section concern this act)
 Unitary (EU wide) design protection
 Commission Regulation (EC) 2246/2002 of 16 December
2002 on the fees payable in respect of the registration of
Community designs
Basics
 Design: A3(1) the appearance of the whole or a
part of a product resulting from the features of, in
particular, the lines, contours, colours, shape,
texture and/or materials of the product itself
and/or its ornamentation;
 Product: A3(2) any industrial or handicraft item,
including inter alia parts intended to be
assembled into a complex product, packaging,
get-up, graphic symbols and typographic
typefaces, but excluding computer programs;
Requirements for protection
 Novelty + individual character
 A5(1) new if no identical design has been made
available to the public
 identical if their features differ only in immaterial
details
 A6(1) if the overall impression it produces on the
informed user differs from the overall impression
produced on such a user by any design which has
been made available to the public
 degree of freedom of the designer needs to be
considered
Requirements for protection
 Disclosure of design:
 Exhibition, use in trade
 12-month grace period (lawful disclosure)
 A8 designs dictated by their technical function
and designs of interconnections not protected
 A9 no protection against designs contrary to
public policy or to accepted principles of morality
Grant procedure
 A11 Unregistered design
 Making available to the public, i.e. if it has
been published, exhibited, used in trade or
otherwise disclosed in such a way that, in the
normal course of business, these events could
reasonably have become known to the circles
specialised in the sector concerned, operating
within the Community – “confidential
disclosure” not enough
Grant procedure
 A12 Registered design
 Application filing – EUIPO (€350)
 Locarno classification
 A45-47 Formal/material examination (refusal:
definition, public policy/morality)
novelty/individual character are not
examined
 A48, 49 Registration/publication
Scope & term & exceptions
 A18 – right of the designer to be cited
 A19(1) Registered design
 making, offering, putting on the market, importing,
exporting or using of a product in which the design is
incorporated or to which it is applied, or stocking such a
product for those purposes
 A10 includes any design which does not produce on the
informed user a different overall impression
 A19(2) Unregistered design
 the right to prevent the [abovementioned] acts only if the
contested use results from copying the protected design
 A21 Exhaustion of rights
 A32 Licence + A28 transfer (registered)
Scope & term & exceptions
 A20 Exceptions
 Private and non-commercial purposes
 Experimental purposes
 Reproduction for the purpose of making
citations or of teaching (must be compatible
with fair trade practice and do not unduly
prejudice the normal exploitation of the design
+ attribution of source)
Scope & term & exceptions
 Term
 A11 – unregistered 3 years since publication
 A12 – registered 5 years since application
(A13 renewal – max. 25 y)
Enforcement
 Community design courts
 Infringement and validity jurisdiction
Termination
 A24-26, 52-53 Invalidation
 Declaration of invalidity (EUIPO/counterclaim)
 Grounds for invalidity (inter alia no design, no
entitlement, unauthorised use of work)
 Consequences - no effect from the outset
 A51 Surrender
THE EU COPYRIGHT LAW
European Copyright Framework
 Directive on the coordination of certain rules concerning copyright and rights related to
copyright applicable to satellite broadcasting and cable retransmission ("Satellite and Cable
Directive"), 27 September 1993
 Directive on the legal protection of databases (“Database Directive”), 11 March 1996
 Directive on the harmonisation of certain aspects of copyright and related rights in the
information society ("InfoSoc Directive"), 22 May 2001
 Directive on the resale right for the benefit of the author of an original work of art ("Resale
Right Directive"), 27 September 2001
 Directive on the legal protection of computer programs (“Software Directive”), 23 April 2009
 Directive on the enforcement of intellectual property right (“IPRED”), 29 April 2004
 Directive on rental right and lending right and on certain rights related to copyright in the
field of intellectual property ("Rental and Lending Directive"), 12 December 2006
 Directive on the term of protection of copyright and certain related rights amending the
previous 2006 Directive (“Term Directive”), 27 September 2011
 Directive on certain permitted uses of orphan works (“Orphan Works Directive”), 25 October
2012
 Directive on collective management of copyright and related rights and multi-territorial
licensing of rights in musical works for online use in the internal market (“CRM Directive”),
26 February 2014
FOCUS
 Directive on the harmonisation of certain aspects
of copyright and related rights in the information
society ("ISD"), 22 May 2001
 Directive on the legal protection of computer
programs (“SD”), 23 April 2009
 Directive on the legal protection of
databases (“DD”), 11 March 1996
EU copyright development
 Decade od Directives (1991-2001)
 Consolidation Decade (2001-2009)
 Age of Judicial Activism (2009-now)
 HUGENHOLTZ, P. Bernt, 2012, Copyright in Europe: Twenty Years Ago, Today and What the Future
Holds. Fordham Intellectual Property, Media & Entertainment Law Journal. 2012. Vol. 23, no. 2, p. 503–
524.
EU Copyright principles – introduced by the ISD
 Harmonisation
 High level of protection (Recital 4)
 Appropriate reward for the use of
authors' work (Recital 36)
 Communication to the public righ
 Exclusive rights (broad)
 Exceptions (exhaustive)
 Three-step test
Rights granted – ISD
 A2 Reproduction right
 A3 Communication to the public
 A4 Distribution right
 Not only for copyright, but also for related rights
Exhaustion of distribution right (Art. 4(2) ISD)
 Case C-419/13 (Art & Allposters), 22. 1. 2015
 Article 4(2) ISD must be interpreted as meaning
that the rule of exhaustion […] does not apply in
a situation where a reproduction of a protected
work, after having been marketed in the EU with
the copyright holder's consent, has undergone
an alteration of its medium, such as the transfer
of that reproduction from a paper poster onto a
canvas, and is placed on the market again in its
new form.
ISD – basic notions
 Missing
 Author?
 Work?
 Copyright contracts?
 Moral rights?
 Judicial activism:
 Work – criterion of originality (not general, only for databases,
computer programs and photographs
 “author’s own intellectual creation”
 C-5/08, Infopaq, C-403/08, C-429/08, Premier League v. QC
Leisure and Murphy, C-145/10, Painer, C-604/10, Football
Dataco
 Work: intellectual creation of the author reflecting his personality
and expressing his free and creative choices (C-145/10, Painer)
Further rights
 + Rental/lending directive => fixation right, right
of communication to the public, distribution right
to performers
 Term directive => rights to photographs
 Resale right directive => droit de suite
Orphan works directive
 Possibility to use (still copyrighted) work of
unidentified or not located author(s) by specific
beneficiaries (publicly accessible libraries,
educational establishments and museums, as
well as by archives, film or audio heritage
institutions and public-service broadcasting
organisations, established in the Member States)
for specific purposes
Term
 Term directive: extended term to 70 years p.m.a.
(Berne requires 50 years)
 Prolonging of performers’ and sound recording
rights from 50 to 70 years in 2011
DATABASE PROTECTION
Outline
 Regulation
 Protection of databases and
exceptions/limitations thereof
 CJEU Case Law: exploring the boundaries of
protection
 Ryanair v PR Aviation case and its
consequences – Less is more or more is less?
Regulation
 No international instrument for mere amassments of data
 Berne Convention
 Protection of collections (works)
 2(5) Collections of literary or artistic works such as
encyclopaedias and anthologies which, by reason of
the selection and arrangement of their contents,
constitute intellectual creations shall be protected as
such, without prejudice to the copyright in each of the
works forming part of such collections.
 Directive 96/9/EC of the European Parliament and of the
Council of 11 March 1996 on the legal protection of
databases
Database
“Database” shall mean:
1. a collection of independent works, data or other
materials
2. arranged in a systematic or methodical way and
3. individually accessible by electronic or other
means.
Ratio: 31996L0009 Rec. (6)
 (5)…copyright remains an appropriate form of
exclusive right for authors who have created
databases;
 (6)…in the absence of a harmonized system of
unfair-competition legislation or of case-law,
other measures are required in addition to
prevent the unauthorized extraction and/or reutilization
of the contents of a database;
 => two-tier protection
Requirements for protection
 Chapter II – Copyright + limitations on the scope
 “by reason of the selection or arrangement of
their contents, constitute the author's own
intellectual creation”
 Chapter III – Sui generis rights + exceptions
 “qualitatively and/or quantitatively a
substantial investment in either the
obtaining, verification or presentation of the
contents”
Restricted acts
 Copyright: reproduction, translation, adaptation
arrangement, alteration, distribution to the public,
communication, display or performance to the
public of the original or altered database
 Sui generis: extraction + re-utilization
EXCEPTIONS
Exceptions – © – A6(1)
The performance by the lawful user
of a database or of a copy thereof
of any of the acts listed in Article 5
which is necessary for the purposes
of access to the contents of the
databases and normal use of the
contents by the lawful user shall
Exceptions – SGDR – A8(1)
The maker of a database which is
made available to the public in
whatever manner may not prevent a
lawful user of the database from
extracting and/or re-utilizing
insubstantial parts of its contents,
evaluated qualitatively and/or
quantitatively, for any purposes
whatsoever.
CJEU CASE LAW
CJEU – protected subject matter
 Investment
 Obtaining
 Verification
 Presentation
Obtaining I
 NO spin-off databases (C-203/02 (BHB), C-
46/02, C-338/02 (Fixtures/Svenska), C-444/02
(Fixtures/OPAP)
 British Horseracing Board: aim of the directive:
„promote the establishment of storage and
processing systems for existing information and
not the creation of materials capable of being
collected subsequently in a database.“
(C-203/02 (BHB). Also: C-444/02
(Fixtures/OPAP)
Obtaining II
 No obstacle for the creator of the elements that
would hinder the acuqiring of SGDR protection
 IF
 he establishes that the obtaining of those materials,
their verification or their presentation, [...], required
substantial investment in quantitative or qualitative
terms, which was independent of the resources used
to create those materials.
 C-444/02 (Fixtures/OPAP), C-338/02
(Fixtures/Svenska)
Verification
 AIM: ensuring the reliability of the information
contained in that database, to monitor the
accuracy of the materials collected when the
database was created and during its operation.
 Correction of duplicities, removal of typing errors
and keeping the contens up-to-date => ensuring
the reliability of the data in their long-term use
 C-338/02 (Fixtures/Svenska), also: C-46/02
Presentation
 Structure and arrangement of the data in
communication to the public
 „Resources used for the purpose of giving the
database its function of processing information,
that is to say those used for the systematic or
methodical arrangement of the materials
contained in that database and the organisation
of their individual accessibility.“
 C-338/02 (Fixtures/Svenska)
Substantial investment
 R7: „considerable human, technical and financial
resources“
 R39: „results of the financial and professional
investment“
 R40 „investment may consist in the deployment
of financial resources and/or the expending of
time, effort and energy“
C-30/14, RYANAIR
PR Aviation - service
 PR Aviation: comparison of flight ticket prices –
screen scraping of other websites
 E.g. – Ryanair Ltd.
 Ryanair required an explicit consent with T&C:
 NO screen-scraping + „right of distribution of
flight tickets reserved exclusively to Ryanair “
 PR Aviation allegedly infringed these conditions no
contract with Ryanair
 Previous case law: Innoweb, C-202/12
National courts
 Gerechtshof te Amsterdam – PR Aviation - no
infringement PR Aviation, its acts were covered
by standard exceptions
 Hoge Raad der Nederlanden – reference for a
preliminary ruling – According to the DD does a
database exist that is not protected by any of the
protection regimes?
C-30/14, Ryanair
 Database per se does not fulfill the requieremnts
of protection => no protection and exceptions
thereof
 IF no tier of the protection => Directive as such
does not preclude the author/maker of such
database from laying down contractual
limitations on its use by third parties
Privity of the Contract
 precludes the imposition of the contractual
obligations on third parties
 information extracted from a contractually
protected database => further disseminated
online – no claim for breach against the third
party by the producer/author
 absolute rights to information? (no ©/SGDR) –
only contract
Substantial investment
 Waiving SGDR to get more protection?
 Substantial investment – cannot claim that there
is none?
 Unfair contract clauses? Unfair protection?
Copernican Revolution
 39: “ ..it is clear from the purpose and structure
of Directive 96/9 that Articles 6(1), 8 and 15
thereof, which establish mandatory rights for
lawful users of databases, are not applicable
to a database which is not protected either by
copyright or by the sui generis right under that
directive, so that it does not prevent the adoption
of contractual clauses concerning the conditions
of use of such a database”.
Copernican Revolution
 40: „directive sets out to achieve a balance
between the rights of the person who created
a database and the rights of lawful users of
such a database, that is third parties authorised
by that person to use the database….”.
X
ACI Adam BV and Others v Stichting de
Thuiskopie Stichting Onderhandelingen Thuiskopie
vergoeding ruling, Case C-435/12 – restrictive
interpretation
Further consequences
 “Spin-off” database is again alive = contract
 “Public” databases (PSI databases) = stronger
contractual protection?
 Less is more or more is less?
SOFTWARE PROTECTION
Outline
• Historical overview
– What form of IP protection?
• IP Basics
• Legal Framework
– Berne Convention, TRIPS, WIPO World
Copyright Treaty
– European Software Directive (“SD”)
Development of protection I
• 1960s – software as accessory
• 1969 – Unbundling – IBM 360-series
• 1970s and 1980s – the Great Debate USA –
Commission on New Technological Uses of
Copyrighted Works (CONTU)
– Contract clauses
– Trade secret
– Patent Law
– Copyright Law
Development of protection
 1991 – EU Software Directive
 1996 – WIPO World Copyright Treaty
 2002 – Proposal for Directive on the protection
by patents of computer-implemented inventions -
FAIL
 2009 - Recodification
What to protect?
IP Basics - repetition
Copyright Law
› Idea-Expression
dichotomy
› Sufficient level of
creativity or originality
(!)
› Original works of
authorship
› 70y p.m.a.
Patent Law
› Definded by claims
› new, non-obvious,
and useful or
industrially applicable
implementation
(inovative step) of
ideas
› 20y since filing
The Difference
 Droit d’auteur
 Civil Law
 Author
 Copyright
 Common law
 Rightholder
Legal framework I
 Berne Convention
 A2 – Definitions – literary works
 A9 – Right of Reproduction
 The Agreement on Trade-related Aspects of
Intellectual Property Rights (“TRIPS”)
 Article 10 –
Computer programs, whether in source or object
code, shall be protected as literary works under the
Berne Convention.
Legal framework II
 WIPO World Copyright Treaty (A4)
 …are protected as literary works within the
meaning of Article 2 of the Berne Convention.
Such protection applies to computer
programs, whatever may be the mode or form
of their expression.
 Directive on the legal protection of computer
programs (“SD”) 2009/24/EC
Copyright protection
 Computer programs as literary works
European Patent Convention
 A52
 The following in particular shall not be regarded
as patentable inventions:
 (c) schemes, rules and methods for
performing mental acts, playing games or
doing business, and programs for
computers;
SOFTWARE PATENTS IN
EUROPE
Technical effect
As defined in: MACHEK, Jörg. Computer Implemented Inventions at the EPO
Available at:
http://www.pks.rs/SADRZAJ/Files/Biro%20za%20saradnju%20sa%20EU/Inovacije%20u%20kompjuterskoj%20tehnici%20u%20EPZ.pdf
No business methods patents
 Pure business methods as such are not
patentable (Article 52 (2) (c) and (3) EPC, e. g. T
931/95 "PBS").
 An auction method carried out by means of the
Internet
 Denied - no technical contribution to the prior
art (T 258/03 "Hitachi") => technical
implementation of the improved auction rules
was done by the conventional means of a
computer and a computer network
Jinseok Park: Has Patentable Subject Matter Been Expanded? -A Comparative
Study on Software Patent Practices in the European Patent Office, the United
States Patent and Trademark Office and the Japanese Patent Office. I. J. Law and
Information Technology 13(3): 336-377 (2005), p. 341.
Jinseok Park: Has Patentable Subject Matter Been Expanded? -A Comparative
Study on Software Patent Practices in the European Patent Office, the United
States Patent and Trademark Office and the Japanese Patent Office. I. J. Law and
Information Technology 13(3): 336-377 (2005), p. 342.
To sum up…
 „Further technical effect“
 Not the „inevitable psychical effect” – i.e.
running of the program (current changes)
 „what is achieved beyond this normal
technical effect“
 EP0771280 – „ABS“ patent
 METHOD AND SYSTEM FOR DETECTING
THE PROPER FUNCTIONING OF AN ABS
CONTROL UNIT UTILIZING DUAL
PROGRAMMED MICROPROCESSORS
„The Little Man test“
“The question to ask should be: is it (the artefact or
process) new and non-obvious merely because there
is a computer program? Or would it still be new and
non-obvious in principle even if the same decisions
and commands could somehow be taken and
issued by a little man at a control panel, operating
under the same rules? For if the answer to the latter
question is 'Yes' it becomes apparent that the
computer program is merely a tool, and the invention is
not about computer programming at all.”
CFPH LLC, Patent Applications by [2005] EWHC 1589 (Pat) (21 July 2005)
URL: http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html
 Proprietary Software
 Shareware
 Freeware
 Abandonware
 Adware
 Public Domain Software
Terminology
Proprietary Soft
 “Traditional”
 Non-free
 Closed source code
 Only binaries distributed
 Source code – how could it be protected?
 Licensing
Shareware
 Proprietary software
 Business model
 Trialware, demoware, added functionality
(levels)
Freeware
 “Fully” copyrighted
 i.e. no modification, redistribution possible
 Available for use at no cost or for an optional fee
 No disclosure of source code
Public Domain Soft
 Disclaimed copyright
 Not possible under Berne Convention
 Quasi public domain Software
 After 70y – Free work
Abandonware
• Copyrighted software
• Copyright infringement (!)
• No enforcement
• "When we become aware of these instances of piracy,
we go to these sites and pursue our IP (intellectual
property) rights," "It's not something we go after on a
day-to-day basis, but if it's our IP, then it's our IP."
Nancy Bushkin, (former) Infogrames
vice president of corporate communications
https://www.wired.com/2002/01/abandonware-dead-games-live-on/
SD
• Overview
– A1 Object of protection
– A2 Authorship
– A3 Beneficiaries of protection
– A4 Restricted acts
– A5 Exceptions
– A6 Decompilation
– A7 Special measures of protection
– Term of protection
SD A1
 (1)
 In accordance with the provisions of this
Directive, Member States shall protect
computer programs, by copyright, as literary
works within the meaning of the Berne
Convention for the Protection of Literary and
Artistic Works.
 For the purposes of this Directive, the term
"computer programs" shall include their
preparatory design material.
SD A1
 (2)
 Protection in accordance with this Directive
shall apply to the expression in any form of
a computer program.
 Ideas and principles which underlie any
element of a computer program, including
those which underlie its interfaces, are not
protected by copyright under this Directive.
SD A1
 (3)
 A computer program shall be protected if it is
original in the sense that it is the author's own
intellectual creation.
 No other criteria shall be applied to
determine its eligibility for protection.
What is protected?
YES
- Expression of a computer
program
- Binary Code
- Source code
- Preparatory underlying
materials
No
- Ideas
- Principles
- Logic
- Algorithms
- Programming languages
- Data formats
- GUI
C-406/10, SAS v WPL
 [39] „Neither the functionality of a computer
program nor the programming language and the
format of data files used in a computer program
… constitute a form of expression of that
program
 and
 as such, are not protected by copyright“.
C-393/09, BSA v Ministerstvo kultury
• [38] „any form of expression of a computer program
must be protected from the moment when its
reproduction would engender the reproduction of the
computer program itself
• [40] graphic user interface is an interaction interface
which enables communication between the
computer program and the user
• [42] does not constitute a form of expression of a
computer program
• [42] cannot be protected specifically by copyright in
computer programs by virtue of that directive“
C-393/09, BSA v Ministerstvo kultury
• [46] „graphic user interface can, as a work, be
protected by copyright if it is its author’s own
intellectual creation.“
• [44] „graphic user interface of a computer program
can be protected by the ordinary law of copyright“
• [49] „where the expression of those components is
dictated by their technical function, the criterion of
originality is not met, since the different methods of
implementing an idea are so limited that the idea
and the expression become indissociable“
Originality
• Eligibility criterion for copyright protection
• skill, labour, and judgment doctrine (UK)
• sweat of the brow (US)
– After Feist Publications, Inc., v. Rural
Telephone Service Co., 499 U.S. 340 (1991)
•a program may not be a copy of another program,
and it must be possible to demonstrate a minimum
degree of creativity
• Author’s mark (France)
• Kleine Münze (Germany)
SD
• Overview
– A1 Object of protection
– A2 Authorship
– A3 Beneficiaries of protection
– A4 Restricted acts
– A5 Exceptions
– A6 Decompilation
– A7 Special measures of protection
– Term of protection
SD A2,3
• Authorship
1. natural person, group of natural persons,
legal person designated as the rightholder,
collective works
2. group of natural persons jointly
3. employee – employer
• Beneficiaries
SD
• Overview
– A1 Object of protection
– A2 Authorship
– A3 Beneficiaries of protection
– A4 Restricted acts
– A5 Exceptions
– A6 Decompilation
– A7 Special measures of protection
– Term of protection
SD A4
 (1) Exclusive acts (rights)
 Reproduction (a)
 Integrity (b)
 Distribution (c)
 (2) Exhaustion of Rights
 UsedSoft GmbH v. Oracle International Corp..
SD
• Overview
– A1 Object of protection
– A2 Authorship
– A3 Beneficiaries of protection
– A4 Restricted acts
– A5 Exceptions
– A6 Decompilation
– A7 Special measures of protection
– Term of protection
SD A5 (1)
 Intended use
 In the absence of specific contractual
provisions…(reproduction+alternation)…
shall not require authorisation by the
rightholder where they are necessary for the
use of the computer program by the lawful
acquirer in accordance with its intended
purpose, including for error correction.
SD A5 (2)
• Back-up copies
– The making of a back-up copy by a person
having a right to use the computer
program may not be prevented by contract in
so far as it is necessary for that use.
X
• ISD A5 (2)(b)
– made by a natural person for private use
SD A5(3)
 The person having a right to use a copy of a
computer program shall be entitled, without the
authorisation of the rightholder, to observe, study
or test the functioning of the program in order to
determine the ideas and principles which
underlie any element of the program if he does
so while performing any of the acts of loading,
displaying, running, transmitting or storing the
program which he is entitled to do.
SD
• Overview
– A1 Object of protection
– A2 Authorship
– A3 Beneficiaries of protection
– A4 Restricted acts
– A5 Exceptions
– A6 Decompilation
– A7 Special measures of protection
– Term of protection
SD A6
› Decompilation
› Interoperability
› Only:
› Independent program
› Person having a right to use a copy of a program
› No necessary information available
› Gained result
› Any other purpose
› Three-step test
› in a manner which unreasonably prejudices the rightholder's
legitimate interests or conflicts with a normal exploitation of the
computer program
SD
• Overview
– A1 Object of protection
– A2 Authorship
– A3 Beneficiaries of protection
– A4 Restricted acts
– A5 Exceptions
– A6 Decompilation
– A7 Special measures of protection
– Term of protection
SD A7
 Special measures of protection
 Infringing copies
 Technical protection measures (measures)
Act of circumvention not illegal
Any act of putting into circulation, or the possession
for commercial purposes of, any means the sole
intended purpose of which is to facilitate the
unauthorised removal or circumvention of any
technical device which may have been applied to
protect a computer program.
SD
• Overview
– A1 Object of protection
– A2 Authorship
– A3 Beneficiaries of protection
– A4 Restricted acts
– A5 Exceptions
– A6 Decompilation
– A7 Special measures of protection
– Term of protection
Term of protection
 WAS 50y
 Council Directive 93/98/EEC harmonisig the
term of protection of copyright and certain
related rights
 NOW 70y p.m.a.
 Justification X life-span
 New versions? – derivative works
EU Copyright Acquis
 Exclusive rights (broad)
 Exceptions (exhaustive)
 Three-step test
The exceptions and limitations provided for in
paragraphs 1, 2, 3 and 4 shall only be applied in
1) certain special cases which
2) do not conflict with a normal exploitation of the work
or other subject-matter and
3) do not unreasonably prejudice the legitimate
interests of the rightholder.’
5(5) ISD
The Exceptions (overview):
REPRODUCTION RIGHT (5)(2)
- Mandatory for for transient and
incidental copies (5)(1)
- (a) Photocopies (no music
sheets) – Fair comp.
- (b) Private copying – Fair comp.
- (c) NC – specific acts of
reproductions by EDU&LIB&MUS
- (d) Ephemeral recordings by
broadcasters
- (e) reproductions of broadcasts
for NC social institutions – Fair
comp.
REPRODUCTION & CTP (MAP) (5)(3)
- (a) Teaching & scientific
- (b) Disabled
- (c) Reporting of current events
- (d) Quotations
- (e) Public security
- (f) Political & public speeches
- (g) Religious & off. celebrations
- (h) Freedom of panorama
- (i) Incidental inclusion
- (j) Advertising of Art
- (k) Parody
- (l) Repair & Demonstration
- (m) Reconstruction
- (n)Terminal access
- (o) Other minor cases
One mandatory
- transient or incidental
- integral and essential part of a technological
process
- whose sole purpose is to enable:
 (a) a transmission in a network between third
parties by an intermediary, or
 (b) a lawful use of a work or other subject-matter
to be made,
- no independent economic significance
Meltwater (C-360/13)
 Browsing is ok…
 „copies on the user’s computer screen and the
copies in the internet ‘cache’ of that computer’s hard
disk, made by an end-user in the course of viewing a
website, satisfy the conditions that those copies
must be temporary, that they must be transient or
incidental in nature and that they must constitute an
integral and essential part of a technological
process, as well as the conditions laid down in
Article 5(5) of that directive, and that they may
therefore be made without the authorisation of the
copyright holders.“
EXCEPTIONS TO THE
REPRODUCTION RIGHT
“Private copying”
- on any medium
- made by a natural person for private use and for
ends that are neither directly nor indirectly
commercial
- fair compensation which takes account of the
application or non-application DRM
Padawan case (C-467/08)
 Fair compensation – autonomous concept
 Indiscriminate payment – not EU coherent
C-435/12 ACI ADAM (par. 54-58)
C-463/12 Copydan (par. 74-79)
 Obligation to pay fair compensation = only for
private copies of lawfully acquired works
DRM A6 ISD
 3. For the purposes of this Directive, the expression
"technological measures" means any technology, device or
component that, in the normal course of its operation, is
designed to prevent or restrict acts, in respect of works or
other subject-matter, which are not authorised by the
rightholder of any copyright or any right related to copyright as
provided for by law or the sui generis right provided for in
Chapter III of Directive 96/9/EC.
 Technological measures shall be deemed "effective" where
the use of a protected work or other subject-matter is
controlled by the rightholders through application of an access
control or protection process, such as encryption, scrambling
or other transformation of the work or other subject-matter or a
copy control mechanism, which achieves the protection
objective.
DRM A6 ISD
 4. Notwithstanding the legal protection provided for in
paragraph 1, in the absence of voluntary measures taken
by rightholders, including agreements between
rightholders and other parties concerned, Member States
shall take appropriate measures to ensure that
rightholders make available to the beneficiary of an
exception or limitation provided for in national law in
accordance with Article 5(2)(a), (2)(c), (2)(d), (2)(e),
(3)(a), (3)(b) or (3)(e) the means of benefiting from that
exception or limitation, to the extent necessary to benefit
from that exception or limitation and where that
beneficiary has legal access to the protected work or
subject-matter concerned.
C-355/12 - NINTENDO
 It is for the national court to determine whether other measures or
measures which are not installed in consoles could cause less
interference with the activities of third parties or limitations to those
activities, while still providing comparable protection of the
rightholder’s rights. Accordingly, it is relevant to take account, inter
alia, of the relative costs of different types of technological
measures, of technological and practical aspects of their
implementation, and of a comparison of the effectiveness of those
different types of technological measures as regards the protection
of the rightholder’s rights, that effectiveness however not having to
be absolute. That court must also examine the purpose of devices,
products or components, which are capable of circumventing those
technological measures. In that regard, the evidence of use which
third parties actually make of them will, in the light of the
circumstances at issue, be particularly relevant.
 The national court may, in particular, examine how often those
devices, products or components are in fact used in disregard
of copyright and how often they are used for purposes which
do not infringe copyright.
REPRODUCTION AND
COMMUNICATION TO THE PUBLIC
Teaching & Science
- sole purpose of illustration for teaching or
scientific research,
- source indication
- to the extent justified by the non-commercial
purpose to be achieved;
Teaching & Science
 International teaching: Applicable law – both Uni
and student
 Fair compensation (?)
 European Research Area (?)
Reporting of current events
 (c) reproduction by the press, communication to the public or
making available of published articles on current economic,
political or religious topics or of broadcast works or other
subject-matter of the same character,
 in cases where such use is not expressly reserved, and
 as long as the source, including the author's name, is
indicated, (E.g.: http://www.bbc.co.uk/terms/business.shtml#2)
 Or
 use of works or other subject-matter
 in connection with the reporting of current events,
 to the extent justified by the informatory purpose and
 as long as the source, including the author's name, is
indicated, unless this turns out to be impossible;
Quotation
 (d) quotations for purposes such as criticism or
review:
 [i] relation to work
 [ii] lawfully made available to the public,
 [iii] source indicated
 [iv] in accordance with fair practice
 [v] extent required by the specific purpose;
Painer
 Article 5(3)(e) + 5(5) ISD
 Par. 116 “media, such as newspaper
publishers, may not, on their own initiative,
use a work protected by copyright by invoking
an objective of public security.” – however –
may contribute
 Art. 5(3)(d) “quoting work“ – even press
report
 Indicating author - indicating source (5)(3)(e)
Freedom of panorama
 [i] use of works, such as works of architecture or
sculpture,
 [ii] made to be located permanently in
 [iii] public places;
Parody
 use for the purpose of caricature, parody or
pastiche;
Deckmyn case
 Parody – autonomous concept
 «work whose essential elements are the
evocation of an existing work in a noticeably
different manner and the expression of humour
or mockery» (par. 19-20)
 fair balance between the interests of the
copyright holders and the freedom of expression
of the user

SPECIAL PROTECTED SUBJECT
MATTER: SOFTWARE &
DATABASES
SOFTWARE – A5,6 SD
- All mandatory (!)
- Lawful acquirer
- Proper functioning
- Back-up copy – must not be contracted out
- Reverse engineering – observe, study or test the
functioning in order to determine the underlying
ideas – must not be contracted out
- Decompilation – must not be contracted out
- Interoperability
- No private copying
- No exception for education or research (!) – but
Reverse engineering
Databases A6,8,9 DD
COPYRIGHT
 Mandatory:
 Lawful user – if restricted acts
necessary for access to
content and normal use
 Optional:
 Non-electronic databases for
private use
 NC teaching
 Public security
 + 3ST
SUI GENERIS DATABASE
RIGHTS
 Mandatory: DB made
available – lawful user –
extraction/re-utilization
insubstantial parts
 Optional:
 Extraction for non-electronic
databases for private use
 Extraction for NC teaching
 Extraction/re-utilization for
public security
 + 3ST
MUST NOT BE OVERRIDDEN BY CONTRACT!
Sum up
 Member States – free choice
 3ST – issue
 Member States – responsible for finding the
balance
THE THREE-STEP TEST
The exceptions and limitations provided for in
paragraphs 1, 2, 3 and 4 shall only be applied in
1) certain special cases which
2) do not conflict with a normal exploitation of the work
or other subject-matter and
3) do not unreasonably prejudice the legitimate
interests of the rightholder.’
Art. 5(5) InfoSoc Directive
Fair Use 17 U.S.C. § 107
1. the purpose and character of the use, including
whether such use is of a commercial nature or is
for nonprofit educational purposes;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used
in relation to the copyrighted work as a whole;
and
4. the effect of the use upon the potential market
for or value of the copyrighted work
Anglo-America
 open limitations
 factor analysis
 case-by-case
approach (judge)
 flexibility
 quick reactions to
new developments
Continental Europe
 specific limitations
 fixed requirements
 closed catalogue of
limitations (legislator)
 legal certainty
 slow reactions to
new developments
Comparison: legal traditions
Quoting: Senftleben, M. Available from: The Three-Step Test Tragedy, http://www.km.gov.lv/lv/doc/nozaru/autortiesibas/Plenary-I_MartinSenftleben_260315.pdf
European Union
 closed catalogue
 controled by open
factors
 no flexibility
 no legal certainty
 very slow reactions to
new developments
= worst case scenario
 structural problem
 not only if three-step
test in national law (+)
(France)
 but also if three-step
test in national law (-)
(The Netherlands)
EU legal framework
Quoting: Senftleben, M. Available from: The Three-Step Test Tragedy, http://www.km.gov.lv/lv/doc/nozaru/autortiesibas/Plenary-I_MartinSenftleben_260315.pdf
THE PROBLEM
Problems
 1. Territoriality of (C)
 2. Non-mandatory character
 3. Restrictive interpretation (?)
 4. Contractual overridability
 => disharmonisation
Ad 1. Territoriality
 28 different sets of national rules and regulations
Ad 1. Territoriality
 Jurisdiction – Brussels I (2015/2012/EU)
 Applicable law – Rome II (864/2007/EU)
Jurisdiction & Applicable Law
 Wintersteiger AG v. Products 4U
Sondermaschinenbau (C-523/10)
 Art. 5(3) – Art. 7(2)
 “Center of interests“
 Rome II Art. 8
Ad 2. Optional character
 Excessive amount of possible combinations
Freedom of Panorama
https://commons.wikimedia.org/wiki/File%3AFreedom_of_Panorama_in_Europe_NC.svg
By Made by King of Hearts based on Quibik's work [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons
Ad 3. Interpretation
 From restrictive interpretation
(Infopaq (56-57)) to
acknowledging technology (FAPL)
and user‘s rights and freedoms
(Deckmyn)
Missing harmonization
 Transposition “in an inconsistent and
unharmonised manner which may vary from one
Member State to another, would be incompatible
with the objective of that directive“
 C-467/08, Padawan, para. 36;
 C-510/10, DR and TV2 Danmark, para. 36
Ad 4. Contractual overridability
 No regulation
 But software and DB
 (Ryanair!)
“PUBLIC” LICENSES
Open Content Definition v2
 RETAIN
 REUSE
 REVISE
 REMIX
 REDISTRIBUTE
 David Wiley, http://opencontent.org/definition/
Open Definition
 “A piece of data or content is open if anyone is
free to use, reuse, and redistribute it — subject
only, at most, to the requirement to attribute
and/or share-alike.”
 Open Knowledge Foundation (old)
 New: Knowledge is open if anyone is free to
access, use, modify, and share it — subject, at
most, to measures that preserve provenance
and openness.
 Source: http://opendefinition.org/od/2.1/en/
Public licences – characteristics
 Allow sharing (modification)
 Under specific conditions
 Always attribution
 Irrevocable
 Automatic termination upon breach
 Creative Commons
 https://creativecommons.org/choose/
Recommended reading:
 Pila, Justine, and Paul Torremans.
2016. European Intellectual Property Law.
Oxford: Oxford University Press.
FREE AND OPEN SOURCE
SOFTWARE
The Idea of FS
4 essential freedoms:
 run the program, for any purpose,
 study how the program works (through
access to the source code) and change
it at will,
 copy and share the program with others
 share modifications with others
 Source: https://www.gnu.org/philosophy/free-sw.en.html
Idea of OSS
 Business oriented
 No ethical call
 System of software development
 Eric S. Raymond, 1997,
http://www.catb.org/~esr/writings/cathedral-
bazaar/cathedral-bazaar/index.html
 Cathedral
"carefully crafted by individual wizards or small bands of
mages working in splendid isolation"
 Bazaar
"a great babbling bazaar of differing agendas and
approaches."
The Difference
 “The fundamental difference between the two
movements is in their values, their ways of
looking at the world. For the Open Source
movement, the issue of whether software should
be open source is a practical question, not an
ethical one.”
 Source: http://www.gnu.org/philosophy/free-
software-for-freedom.html
LEGAL ASPECTS OF FOSS
Legal Aspects
 Copyright
 Licences
 Copyleft effect / Share-alike
 Various types of licences
 opensource.org/licenses/alphabetical
Copyleft Effect
 GNU GPL v2.0
 “Art. 2 b) You must cause any work that you
distribute or publish, that in whole or in part
contains or is derived from the Program or any
part thereof, to be licensed as a whole at no
charge to all third parties under the terms of
this License.”
Legal typology
 Strongly protective licences
 “viral licences”
 GNU General Public License
 Weakly protective licences
 Lesser General Public License (LGPL)
 Permissive licences
 Author’s crediting
 BSD License, MIT License
GNU LICENCES
 GNU GPL
 LGPL
 GNU Free Documentation License
BSD License
• Copyright (c) <year>, <copyright holder> All rights reserved.
• Redistribution and use in source and binary forms, with or without
modification, are permitted provided that the following conditions are
met:
• * Redistributions of source code must retain the above copyright
notice, this list of conditions and the following disclaimer.
• * Redistributions in binary form must reproduce the above copyright
notice, this list of conditions and the following disclaimer in the
documentation and/or other materials provided with the distribution.
• * Neither the name of the <organization> nor the names of its
contributors may be used to endorse or promote products derived
from this software without specific prior written permission.
• https://opensource.org/licenses/BSD-3-Clause
• + DISCLAIMER
Legal Issues
• Enforceability
• Multi-licensing
– Mozilla Suite / tri-license
• Liability and Warranty Disclaimers
• Copyright / Droit d’auteur
• Dynamic linking
– GNU GPL no – derivative works?
– LGPL yes
COMMUNICATION TO THE
PUBLIC
The right
 A3(1) ISD: Member States shall provide authors
with the exclusive right to authorise or prohibit
any communication to the public of their works,
by wire or wireless means, including the making
available to the public of their works in such a
way that members of the public may access
them from a place and at a time individually
chosen by them.
 New public
Source: Eleonora Rosati: http://ipkitten.blogspot.cz/2016/09/linking-after-gs-media-in-table.html
Notes
 A = Article of the respective act
 R = Recital of the respective directive