The Authors' Take - CJEU rules that repeal of provisional measure does not automatically create liability for wrongful enforcement

CJEU rules that repeal of provisional measure does not automatically create liability for wrongful enforcement

by Léon Dijkman

In its important decision in Bayer Pharma AG v. Richter Gedeon Vegyészeti Gyár Nyrt. and Exeltis Magyarország Gyógyszerkereskedelmi Kft., C-688/17, the Court of Justice of the European Union (CJEU) interpreted Article 9(7) of Directive 2004/48/EC (the Enforcement Directive) to mean that the repeal of provisional measures does not automatically entitle a defendant to damages for wrongful enforcement. 

The case concerned two generic pharmaceutical companies that launched at risk, i.e. entered the market without first invalidating the relevant patent. The patentee, Bayer, requested and obtained provisional measures restraining the generic companies. The patent was subsequently revoked and the generic companies sued Bayer for damages. 

The CJEU found the launch at risk objectively indicative of the existence of a risk of irreparable harm for the patentee, which made the request for provisional measures justified. The mere fact that the patent was later revoked did not, in itself, suffice to make Bayer liable for damages suffered as a result of enforcement of these measures. 

First and foremost, the decision makes clear that a launch at risk by a generic company is very much at their own risk. European courts readily grant preliminary injunctions (PIs) in cases of imminent generic market entry due to the damage this can cause to the patentee. A generic company is now unlikely to recover any damages from the originator company for damages suffered as a result of the PI, even if the patent is subsequently invalidated or found not infringed. 

The big question is how Bayer applies beyond launch-at-risk scenarios. It is worth noting here that several European jurisdictions apply a strict liability rule to enforcement of preliminary decisions that are later revoked. Thus, if the outcome in Bayer indeed extends to all provisional measures in IP cases, that would mean a major departure from well-established legal practice in a significant number of Member States. 

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon]

Join us for the Joint JIPLP-GRUR Conference on 'The Future of IP in a Changing World'!

For the past few years, JIPLP and GRUR have had a fruitful collaboration, which has led to both the exchange of articles between the respective journals and the organisation of joint events.

This year JIPLP and GRUR will jointly organise yet another exciting event: a free half-day conference in London on 10 December 2019 to discuss 'The Future of IP in a Changing World'. 

The programme features leading industry representatives, practitioners, and academics, as well as two keynote addresses to be delivered by, respectively, Sir Robin Jacob (Sir Hugh Laddie Chair of Intellectual Property Law at UCL) and Ms Ros Lynch (Copyright and IP Enforcement Director at the UK Intellectual Property Office).

Kindly hosted at the Tower Bridge offices of RPC, the conference will allow participants to discuss key issues in the patent, copyright, trade mark and enforcement fields.

Here's the programme:

13:30 – 14:00 Registration

14:00 – 14:10 Welcome remarks

14:10 – 14:40 Keynote address - Sir Robin Jacob (UCL): Is IP out of control?

14:40 – 14:50 Q&As

14:50 – 15:50 Panel discussion - The future of patents

Moderators: Stefano Barazza (JIPLP and Swansea University) and Gwilym Roberts (Kilburn and Strode and Queen Mary University of London)

Maximilian Haedicke (University of Freiburg)

Paul England (Taylor Wessing)

Justine Pila (Oxford University)

Pat Treacy (Bristows and Deputy High Court judge)

15:50 – 16:10 Coffee break

16:10 – 16:40 Keynote address - Ros Lynch (UK Intellectual Property Office): UK copyright at a time of change

16:40 – 16:50 Q&As

16:50 – 17:50 Panel discussion - The future of copyright

Moderator: Eleonora Rosati (JIPLP, Stockholm University and Bird & Bird)

Amit Datta (Hengeler Mueller)

Katharina Hiersemenzel (Netflix)

Lauri Rechardt (International Federation of the Phonographic Industry)

Katherine Stephens (Bird & Bird)

17:50 – 18:50 Panel discussion - The future of trade marks and enforcement

Moderator: Marius Schneider (JIPLP and IPvocate)

Jeremy Drew (RPC)

Carina Gommers (Hoyng Rokh Monegier)

Willem Leppink (Ploum)

Kai Schmidt-Hern (Lubberger Lehment)

18:50 – 19:30 Drinks and nibbles

Registration is required and you can do so here.

The Authors' Take - Do Deepfakes Pose a Golden Opportunity? Considering Whether English Law Should Adopt California's Publicity Right in the Age of the Deepfake

Do Deepfakes Pose a Golden Opportunity? Considering Whether English Law Should Adopt California's Publicity Right in the Age of the Deepfake

by Kelsey Farish

In 2017, a machine learning algorithm was shared on Reddit as a tool to insert faces of celebrity actresses into pornographic videos. This “deepfake” phenomenon has since spread across social media, and is no longer confined to sexual contexts. The technology can be used to swap faces in film scenes, or even digitally insert people into their favourite movie clips. Although the results are often comical, deepfake sophistication and realism has rapidly improved over the last two years, making them difficult to spot as fake. There is a growing concern that such videos could be used to extort, intimidate, or otherwise defame an individual. In such instances, could the victim portrayed in the deepfake bring a lawsuit against its creator?

In California, perhaps. There, a person has a statutory and common law “publicity right”, which is a cause of action used to prevent or penalise any misappropriation of one’s image, photograph, or voice. By contrast, the lack of a recognised image right under English law can be a source of frustration amongst claimants, and debate amongst lawyers. Drawing upon her knowledge of English and Californian law, the author explores whether or not California’s codified publicity right is superior to that of the English piecemeal approach, using the deepfake phenomenon as a case study.

It is hoped that the article will be of interest to practitioners and academics involved in technology and intellectual property rights matters. Those working in artificial intelligence and digital media may also find the article insightful, as it aims to explain the legal landscape surrounding this disruptive new technology. Finally, given the role our selfies and snaps play in the internet ecosystem, this discussion on image rights in the age of the deepfake may be interesting to the casual reader as well.

[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP). The full text of this contribution will be made available on Advance Access soon and included in the 2020 JIPLP Special Image Rights Issue]