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A year in review - IP litigation in Ireland

PRACTICE AREA GROUP: Intellectual Property
DATE: 21.06.2011

This year has seen a number of Commercial Court cases in the intellectual property sphere, particularly in the area of copyright. The Commercial Court was set up in 2004 and provides a more efficient forum to determine intellectual property disputes with active case management at all stages of the litigation. There is also a limited panel of High Court judges allocated to the Commercial Court list, which results in a more concentrated experience amongst the judiciary in intellectual property matters.

In March this year, Miss Justice Finlay Geoghegan made a reference to the ECJ (now CJEU) on the interpretation of the rental and lending directive (92/100/EEC) and the copyright in the information society directive (2001/29/EC) for the purposes of assessing the legality of an exemption under the Copyright and Related Rights Act 2000, which exempts hotels and guesthouses from having to pay royalties for the performance of sound recordings in resident accommodation. The case was Phonographic Performance (Ireland) Limited v Ireland and the Attorney General.

In October, there were two decisions in the copyright sphere. The first case was Koger Inc. V O’Donnell and others, where an action for copyright infringement and breach of confidence was brought against former employees who produced a competing software package. Mr Justice Feeney held that the Court was satisfied that the defendants in developing their software did not use a copy of the plaintiff’s software either as a functional and/or design specification and that there was no evidence that the defendants had access to or used an unauthorised copy of the plaintiff’s software. The case recognises agile development methods in the creation of software.

The second decision in October was Mr Justice Charleton’s judgment in EMI and others v. UPC Communications Limited. This case concerned certain recording labels in Ireland seeking injunctive relief against UPC, an internet service provider (ISP), requiring UPC to put in place measures to prevent the copyright infringement of its subscribers involved in peer to peer filesharing. Mr Justice Charleton held that UPC is a mere conduit in this context for the purposes of the E-commerce directive (2000/31/EC) and that whilst injunctions can be granted against ISPs there was nothing in the specific provision of the Copyright and Related Rights Act 2000 relied upon that would enable the Court to grant an injunction requiring an ISP to implement a three strikes policy or otherwise deploy technological methods to combat illegal peer to peer filesharing by subscribers. Matheson acted for UPC.

In the area of trade marks, the Supreme Court gave its judgment in Compagnie Gervais Danone v Glanbia, an appeal from a Commercial Court decision, providing helpful guidance on the concept of use of a mark. Danone had used it ESSENSIS mark to denote a culture ingredient of its yoghurt product (rather than the yoghurt itself) and Glanbia had sought to revoke the mark for yoghurt products on the grounds of non-use. The Supreme Court overturned the prior Commercial Court revocation order and held that Danone has made use of its mark in relation to yoghurt. Matheson acted for Danone.

There has only been one patent decision this year in Medinol v Abbott, whichdealt with the issue of discovery in patent cases. Mr Justice Finlay Geoghan confirmed the legal principles relating to the discovery of documents, namely that under the Rules of the Superior Courts each of the applicants for discovery has to demonstrate that the documents sought are both relevant and necessary for the fair disposal of the case or to save costs. Further, that the onus of establishing relevance and necessity for the purposes mentioned in the rule is on the moving party. Finally, the general principles of discovery are applicable in patent actions as in any other action.

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