Failure to show breach of implied licence and secondary passing-off of airline goods by advertising agency

Author: Sophie Arrowsmith (Hamlins LLP)

Orvec International Limited v Linfoots Limited [2014] EWHC 1970 (IPEC), 18 June 2014, Intellectual Property Enterprise Court (IPEC), England and Wales

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu219, first published online: November 19, 2014

The Intellectual Property Enterprise Court (IPEC) rejected Orvec's claims against Linfoots, an advertising agency, for (i) breach of an implied copyright licence for photographs of products supplied to airlines by Orvec and (ii) secondary passing-off of the products.

Legal context

In determining whether a term is to be implied into a contract, the court should look at the meaning the contract would convey to a reasonable person having the necessary background knowledge reasonably available to the audience to whom the contract is addressed (see Investors Compensation Scheme Ltd v West Bromwich Building Society (1997) UKHL 28). The court cannot improve the contract and cannot introduce terms to make it fairer or more reasonable.

Where a contract does not expressly provide for the circumstance arising, it is usually inferred that nothing is to happen if that circumstance does occur and that any loss lies where it falls. However, if the reasonable reader concludes the authors intended the contract to convey that something was to happen, a term to that effect will be implied. Such implied term only goes to the contract's meaning, and is not an addition to the contract. An implied term must be (i) reasonable and equitable; (ii) necessary to give business efficacy to the contract (no term will be implied if the contract is effective without it); (iii) so obvious that ‘it goes without saying’; (iv) capable of clear expression and (v) not contradictory to any express term (BP Refinery (Westernport) Pty Ltd v Shire of Hastings (Victoria) (1977) UKPC 13).

To establish an action in passing-off, it needs to be shown that (i) there is goodwill or reputation attached to the goods or services in question; (ii) the defendant made a misrepresentation leading, or likely to lead, the public to believe that the goods or services it offers are those of the claimant; and (iii) the claimant suffered damage by reason of that incorrect belief. It is an actionable misrepresentation where a defendant represents the claimant's goods as being the product of his own efforts and skill (see Bristol Conservatories Ltd v Conservatories Custom Built Ltd (1989) RPC 455). Secondary passing-off occurs when the defendant assisted in or procured the passing-off.


Orvec provided textile products to airlines. Under Linfoot's standard terms and conditions Linfoots provided advertising and marketing services to Orvec which involved Linfoots taking photographs of Orvec's products. Linfoots retained ownership of copyright in the photographs. Upon the cessation of their relationship, it was agreed Linfoots would supply certain images from among the photographs for Orvec's internal use and for supply by email to Orvec's customers.

Of Orvec's products shown in the photographs, some were manufactured by Orvec but most were supplied to Orvec by another company, Intex. After Intex and Orvec had terminated their business dealings, Intex asked Linfoots to create and supply photographs of its products for use in Intex's advertising. Among the images supplied by Linfoots to Intex were photographs created for Orvec.

Orvec claimed an implied term of the contract with Linfoots gave Orvec a perpetual and exclusive licence under the copyright in the photographs. Linfoots had therefore infringed Orvec's exclusive right. Further, Orvec claimed the use of the photographs by Intex gave rise to passing off on the part of Intex and, by supplying Intex with the photographs, Linfoots both equipped Intex with the means to pass off and and procured the passing off.

Orvec's action against Linfoots failed in relation to both breach of contract and passing off.

Breach of implied licence

The parties agreed there was an implied copyright licence for Orvec to use the advertising material supplied by Linfoots. However, they disagreed as to the nature of that licence. As some of the photographs included Orvec's trade marks and/or the livery, trade marks and logos of Orvec's airline clients, Orvec argued Linfoots had no use for those photographs and, therefore, the licence must have been exclusive and perpetual, and covering all photographs, not just the photographs containing trade marks. However, the court held there was no implication that exclusive rights were granted when the photographs displayed a third party's trade mark. Using the minimalist approach which must be taken when inferring the presence of unexpressed terms in a contract, only a non-exclusive licence and no more than a non-exclusive licence was sufficient to make the relevant part of the contract consistent with the whole of the contract. If more than a non-exclusive licence was to be implied, at most the licence is exclusive only where Orvec's trade mark appears in the photographs.

The term implied was therefore one which granted Orvec a non-exclusive licence under the copyright in the photographs, although the licence was probably perpetual.

Passing off

By displaying samples of products which were recognizably used in the cabins of Orvec's clients on its website, Orvec argued Intex falsely represented (i) that the products came from Intex, when in truth they came from Orvec; and (ii) that those airlines were customers of Intex, when in truth they were not. However, the court found the first misrepresentation was not supported by the evidence presented. Where the products in the photographs were made by Intex, it was true (ie it was ‘not false’) to represent the products originated from Intex. Where the products were not made by Intex, the products would be seen as nothing other than a generic product, and therefore could not have represented anything regarding products which originated from Orvec.

The court additionally found the second misrepresentation was not supported by the evidence presented, either. Of Orvec's three customers in question, the first was also an Intex customer, or at least had received samples from Intex marked with its name; the second (to which Intex had not supplied products) had stopped flying and so there could have been no inference it was a customer of Intex; and the third had never been a direct customer of Intex. While persons with knowledge of the airline industry, looking at the photograph, would know the product displayed was used in the past by Orvec's third customer, it did not follow that such persons would take from this a representation that the customer bought the product directly from Intex. Such persons were more likely to think Intex was providing examples of the products it previously supplied, and could in future supply, and there was no false representation in doing this. Also, since Orvec's third customer no longer used the product in the photograph in question, there was no reason why it could not be offered to other airlines.

Since Orvec did not establish its case for passing off by Intex, its case on Linfoots' liability could not succeed.


This case does not really establish any new legal ground. However, it does reiterate that the more complex a term required to be implied into the contract is considered to be, the less likely it is the objective, reasonable person would take it to be an implied term of the contract. Detailed terms will either be present as an express term of the contract or will not be present at all.

Orvec did not make a claim against Intex—the party alleged to have committed the primary acts of passing off—but only against Linfoots for secondary passing-off. The reasons for this were not clear from the case report.

Also of interest is the judge's discussion of the contrast between the implied licence to use the copyright in the photographs of trade marked products and the licence that might have been implied for the use of the trade mark itself (had this been the issue). It was thought that, where a designer had created a logo for a client, it would have been understood no one other than the client could have a legitimate reason to copy the work and the client would expect to be able to prevent others from copying it. A term would therefore be implied that the copyright in the logo passed to the client. This implied term is supported by the client having other rights in the logo which could be relied on to prevent other parties from using the logo (ie trade mark rights).

Practical significance

When drafting a contract, all the key circumstances must be clearly and expressly provided for: it should not be assumed a term will be implied into the contract. If it is necessary to rely on an implied licence, bear in mind the court will take a minimalist attitude and will imply as bare a licence as possible in order to give effect to the contract.

‘Redskins’ marks cancelled: offensive to Native Americans

Author: Mira T. Sundara Rajan (Professor of Intellectual Property Law, CREATe and Glasgow Law School and Honorary Member, Magdalen College, Oxford)

Blackhorse v Pro Football, Inc, TTAB Cancellation No 92046185, 18 June 2014, available at

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu199

The US Patent & Trademark Office's Trademark Trial and Appeal Board (TTAB) cancelled six registrations of trade marks incorporating the word ‘Redskins’, used by the Washington Redskins football team. While the team is not barred from using the marks, it will be denied legal recourse under trade mark law in cases of infringement, depriving the marks of much of their commercial value.

Legal context The Lanham Act 15 USC s 1052(a) is responsible for the legal regulation of trade marks in the United States. Section 2(a) of the Act prohibits the registration of any word that is disparaging of ‘persons’, providing as follows:
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. …

A group of six Native American plaintiffs brought an action against the Washington Redskins football team, arguing that the use of the name ‘Redskins’ was disparaging to Native Americans, and that trade mark registrations held by the team should be cancelled. The marks registered by the team in relation to ‘professional football services’ included various presentations of the terms ‘Redskins’, ‘Washington Redskins’ and ‘Redskinettes’, sometimes in combination with a picture of a Native American man, seen in profile and wearing a traditional headdress. The plaintiffs were Native American individuals with no claim to an interest in the marks except their Native American ancestry.

The Redskins case considered the validity of marks registered between 1967 and 1990. Its history is properly traced to 10 September 1992, when a case on this issue was first initiated by Suzan Harjo and six other Native Americans, who filed a petition seeking the cancellation of the marks (Pro-Football, Inc v Harjo, 415 F 3d 44 (DC Cir 2005)). After seven years of litigation, the TTAB cancelled the registrations. This decision was appealed, and eventually dismissed, on the grounds of laches: the Native American plaintiffs, the court said, had waited too long to bring the action. An issue regarding the evidence presented in the case also arose, with a suggestion that it might be insufficient to show that the term ‘Redskins’ was derogatory; but no ruling was made on the merits, and it never received a response (TTAB decision, pp. 4–6, ‘Prior Litigation’). Harjo was controversial and, in the case before it, the TTAB had emphasized that laches should not apply to claims involving public interest issues. It also allowed the plaintiffs to resubmit the evidence first put forward in Harjo in support of their claim.


The TTAB's examination of the case was closely tied to the earlier disposal of Harjo's case. The Board noted the continuity between the earlier litigation and the present case, and, in the interest of efficiency, it allowed the re-submission of the ‘voluminous’ documentation from the previous case as evidence in the current dispute. Indeed, the majority effectively attempted to correct what it perceived as errors in the Harjo decision. In contrast, the lone dissenting voice on the Board argued that the evidence amounted to ‘a database dump’, and that it was insufficient to establish that the term ‘Redskins’ was disparaging to Native Americans at the relevant time when the registrations were made.

In determining the validity of the marks using the Redskins name, the majority outlined a two-step analysis:

(i) What was the meaning of the term ‘Redskins’?

(ii) Was that term disparaging to Native Americans?

In response to the first issue, the Board was able to demonstrate, with ease, that the term Redskins was used by the football team to designate Native Americans. In doing so, it was sufficient to look at the team's own practice surrounding the name. The team not only used the name ‘Redskins’, but it also had an associated image that often appeared with the word—a picture of a Native American man wearing traditional, feathered headgear. The team's cheerleaders, called the ‘Redskinettes’, had also appeared in Native American costumes during games. On one sample occasion, their pictures appeared with the caption ‘Dancing Indians’, and the notation, ‘Here are the Redskinettes all decked out in their Indian garb and carrying Burgundy and Gold pom-poms’. Press guides for the team displayed Native American imagery on their covers. Accordingly, there could be no doubt that the name represented anything else.

In dealing with the more complex issue of whether the term was disparaging, the Board attempted to determine not only whether the term itself was at fault but also how the use of the term by the team might affect its derogatory character. It pointed out that the character of the term could be altered by the use, which could either infuse a derogatory flavour into a neutral term, or neutralize an offensive term. It concluded that the use of the term did not have an impact on its objective meaning—and, in particular, that the team's ‘honorable intent’ or otherwise non-derogatory use of the term—was essentially irrelevant to the issue facing the Board.

The Board then examined what exactly the character of the term ‘Redskins’ might be. In this regard, it was confronted with substantial evidence on both sides, as each party, in typical style, tendered its own expert witness on the nature of the word. The experts traced the evolution of ‘Redskins’ through the decades of the 20th century, examining dictionary definitions of the term and whether it was designated in dictionaries as a ‘disparaging’ or ‘offensive’ word, as opposed to a standard one. Predictably, some dictionaries identified the term as offensive, while others did not. The experts argued about the significance of these designations or omissions, in some cases pointing out the political pressures operating on the compilers of dictionaries. But the Board pointed out that much of the analysis was ‘not from the viewpoint of Native Americans’ which, in its view, was what really mattered. This simple remark represents a crucial insight from a Western legal perspective—subtle, but seismic nevertheless—in the overt admission that the point of view that matters may be one that is inherently difficult for both court and plaintiff to grasp, representing a non-Western worldview. The Board then considered the use of the term in different media, drawing an interesting inference from the fact that the term ‘Redskins’ was generally used, at times disparagingly, to refer to a group of people, but rarely if at all to an individual.

The Board considered the position of the National Congress of American Indians (NCAI), which had adopted a resolution in favor of the cancellation of the marks back in 1993. It also accepted evidence in the form of nineteen letters from Native Americans across the United States, which complained of the derogatory nature of the team's name.

The team was also able to offer evidence from Native American groups that the term ‘Redskins’ was not derogatory. A number of tribal councils from the states of Oklahoma, Washington and California had all submitted letters in the early 1990s, affirming that they did not find the use of the Redskins name by the Washington team to be offensive. Chief Taylor of the Eastern Band of Cherokee Indians in North Carolina wrote that the use of the Redskins name by a school in Naperville, Illinois was ‘a great honor for all Native Americans’.

In the end, the Board identified the key question, crucially, as whether the term disparaged ‘a substantial composite, which need not be a majority, of Native Americans at the times of the registrations’. In this regard, the majority of the Board considered the position of the NCAI to be determinative; in its view, evidence showed that it was the largest and most established body representing Native Americans in the United States and, as such, its position had to be accorded the value that was its due. The dissent, however, disagreed strongly with this approach, calling efforts to include evidence about NCAI membership ‘gyrations’: There was no order or structure to petitioners' evidence that told a compelling story or presented a coherent case. One need look no further than gyrations the majority employed to establish membership of the National Council of American Indians. It is astounding that the petitioners did not submit any evidence regarding the Native American population during the relevant time frame, nor did they introduce any evidence or argument as to what comprises a substantial composite of that population thereby leaving it to the majority to make petitioners' case have some semblance of meaning (p. 84).

Practical significance

The ruling of the Board effectively accepts the idea that the possibility of offence to some Native Americans is sufficient reason to cancel the registration of the Redskins' trade marks. The objections of the minority are well reasoned, but the strength of the majority's viewpoint lies in its ultimately credible suggestion that the standard of proof required in a case such as this should be somewhat lenient. Arguably, where the use of potentially derogatory racial epithets is concerned, this approach is appropriate enough. The evidence offered on both sides shows the potential absurdity of trying to establish the offensiveness of a racially-motivated term—in this case, by looking at the history of its treatment in dictionaries compiled by non-Natives—through evidence offered by non-Native linguistic experts about how non-Natives might perceive the term. The search for certainty may lead us from indeterminacy to absurdity.

From a purely legal standpoint, the approach of the Board to this conflict is an interesting one. Both majority and minority show a striking level of sensitivity towards non-mainstream points of view when it comes to the recognition and ownership of intellectual property. Where the claims of aboriginal peoples around the world are concerned, courts in countries like the United States, Canada and Australia have had the greatest difficulty accommodating the possibility of an alternate worldview (see eg the well-known Australian case of Yumbulul v Reserve Bank of Australia [1991] 21 IPR 481). No one can accuse the Board of failing to stretch its imagination in that direction. It did so in spite of an evidently clumsy and disorganized approach to the presentation of the case, perhaps with the greater goal of recognizing a principle that was, in its view, in need of support. In this sense, notwithstanding the imperfect fact scenario, the case represents a benchmark for a new understanding of the relationship between intellectual property and traditional perspectives and, indeed, traditional knowledge.

The Board's decision does not mean that the Redskins team needs to change its name; what it does is limit, if not destroy, the ability of the Redskins to fight the production of counterfeit merchandising or other infringements of its marks. But this begs the question, why wouldn′t the Redskins want to consider changing their name? As a matter of public relations, the Redskins name seems like more of a liability than an asset: not only has it cost the team money to defend it, but it has also led to years of controversy, ugly accusations, and animosity from at least some interested parties. On the other hand, a change of name, and a corresponding change of strategy, could open the doors wide to a new opportunity. As Jeremy Phillips notes,
‘[h]eritage is history, but it is not the same as goodwill and it cannot of itself create or preserve conditions of profitability for a brand’. 
The gesture could generate immense positive publicity and widespread goodwill by representing the team's broader support for non-discrimination and human rights.

A win–win situation? Apparently, the Redskins don′t think so. Their owner has filed an appeal, arguing that the name is a ‘badge of honor’ that ‘celebrates Native Americans’.

Short introduction to EU IP law: a book to review

EU IP Law: a short introduction to European Intellectual Property Law is the title of a short book by Dirk Visser and Paul van der Kooij of the Leiden Law School, The Netherlands.

This book, which the authors have published as an e-book but which will also be published in print in due course, is in need of a JIPLP reviewer. If you would like to be that person, please contact Sarah Harris at and let her know.

The text of this work can be accessed here or downloaded here.

The authors are happy for these links to be passed on to bona fide students and teachers of the subject.

India's first spare parts case: the intellectual property defence in Indian antitrust law

Author: Divyanshu Agrawal (National Law School of India University, Bangalore, India)

Shamsher Kataria v Honda Siel Cars India and others, Case No 03/2011, Competition Commission of India, 25 August 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu213, first published online: November 10, 2014

The Competition Commission of India adopts the essential facilities doctrine in ‘refusal to deal’ cases, denies competence to question the validity of an intellectual property right and explains the scope of the statutory exemption for holders of intellectual property rights to enter into anti-competitive agreements.

Legal context

The Indian Competition Act 2002 has been in force since 2009. Sections 3 and 4 prohibit anti-competitive agreements and abuse of dominance respectively. Extensive penalties have been prescribed for a violation of these prohibitions.

Section 3(5) specifically considers the interest of intellectual property holders as granted under various Indian statues and exempts any ‘reasonable conditions, as may be necessary for protecting any of his (IP) rights …’. Thus far, the Competition Commission of India (CCI) had not adjudicated upon the interface between IP and competition policy in India. However, there has been a series of recent investigations which bring this interface to the fore—FRAND licensing in the case of standard essential patents (SEP) in Micromax v Ericsson (Competition Commission of India, Case No. 50/2013, MANU/CO/0066/2013), pharmaceutical settlements between patent holders and generic manufacturers and so on.

In this context, the CCI's order in Kataria, India's first spare parts case, gains much significance. The interface of IP and antitrust in the case of spare parts has evoked conflicting decisions in the United States in Kodak II (Image Technical Services Inc. v Eastman Kodak Co., 125 F.3d 1195 (9th Cir. 1997)) and Xerox (Re Independent Services Organizations Antitrust Litigation, 203 F.3d 1322 (Fed. Cir. 2000)). In contrast, the European Union has provided for a block exemption with stricter antitrust rules specifically for motor vehicle spare parts. Besides its relevance for spare parts, CCI has also made general observations about the scope of the IP defence which has significant practical implications.


Automobile manufacturers operating in India were alleged to have been indulging in anti-competitive practices by not making genuine spare parts for these automobiles freely available in the open market. Instead, those manufacturers operated or regulated authorized workshops which sold such spare parts in addition to rendering after-sale maintenance services. Even the technological information, diagnostic tools and software programs required to provide such services efficiently were not freely available to the independent repair workshops. As a result, only authorized workshops were able to sell spare parts or provide maintenance services at higher (or even monopolistic) prices.

It was contended that these practices constituted an abuse of dominance (s 4) by denying market access to independent repair workshops, limiting the production of goods or provisions services and leveraging. The agreement between the manufacturer and the authorized workshop was argued to be anti-competitive as it amounted to a ‘refusal to deal’ and to an ‘exclusive supply agreement’ having an ‘appreciable adverse effect on competition’.

Among the manufacturers' objections, two are relevant from an IP perspective: the ‘essential facilities’ doctrine and the defence under s 3(5). Briefly for ‘essential facilities’, the manufacturers argued that there was no restriction on independent manufacturers producing the same spare parts, and that it was not feasible for them to make spare parts available in the open market. As regards the exemption under s 3(5), it was maintained that such conditions were necessary to protect the proprietary information in relation to spare parts, which was covered by various IP rights—patents and designs for spare parts—and copyright in the technical manuals and the engineering drawings. Further, such conditions were reasonable as they ensured the safety and quality of the products and services.


To evaluate whether there was an abuse of dominance, ‘relevant market’ had to be determined. The CCI concluded that the relevant market was restricted in its scope to each manufacturer's automobiles as spare parts were not substitutable as between manufacturers. Automatically, therefore, each manufacturer was in a dominant position with respect to its automobiles especially so since the substitution costs were so very high, involving a change of car.

In its analysis on whether there is a ‘refusal to deal’ leading to a violation of s 4(2), the CCI held that, since there is no equivalent to s 3(5) under s 4, there is no IP defence against an alleged abuse of dominance:
[I]f an enterprise is found to be dominant pursuant to explanation (a) to section 4(2) and indulges in practices that amount to denial of market access to customers in the relevant market; it is no defence to suggest that such exclusionary conduct is within the scope of intellectual property rights of the OEMs.
At first, this appears to be a significant blow to IPR in general. Indeed, an IP holder does not have the obligation to deal with its competitors (see eg s 48 of the Indian Patents Act 1970). However, two limiting principles may be deduced from the CCI's reasoning. First, the IP holder needs to be in a ‘dominant position’. Merely by virtue of holding an IP, a person may not be in a dominant position as there may still be another product substitutable with the product in which the IP exists. Secondly, while CCI does not expressly adopt the ‘essential facilities’ doctrine, its reliance on the same is clear from the decision. It refers to two decisions of the Court of Justice of the European Union in Commercial Solvents ([1974] ECR 223) and United Brands ([1978] ECR 207) to hold that there would be an abuse if the dominant enterprise refused to deal in essential inputs in order to exclude competition in a derivative market.

The Director General (investigative authority under the Competition Act) relied on the elements laid down by the Seventh Circuit in the USA in MCI v AT&T (708 F 2d 1081 (7th Cir 1983)). The US approach to ‘essential facilities’ (explained in Trinko, 540 US 398 (2004)) is much narrower in scope than its EU counterpart. However, it is more likely that the EU approach will be followed in the future as well.

The CCI then considered the IP defence under s 3(5) while determining the existence of an anti-competitive agreement between the manufacturer and the authorized seller or workshop. To begin with, CCI correctly observed that it is
not the competent authority to decide, for example if a patent/trademark that is validly registered under the applicable laws of another country fulfils the legal and technical requirement or is capable of being registered under the Indian IPR statutes, specified under section 3(5) of the Competition Act.
This is a welcome observation. To prove the existence of an IP right protected by the statutes listed under Section 3(5), the person must adduce adequate documentary evidence. It is the subsequent analysis of CCI which is deeply problematic.

First, the CCI drew a distinction between the right to exploit an IPR and the IPR itself, holding that the former is not protected by s 3(5). This appears to contradict the text of the exemption which refers to ‘any person’ and not just the enterprise alleged to have violated s 3.

Secondly, with regard to non-registered IP such as copyright, the CCI states that no such copyright can exist in engineering drawings as it should have been registered as a design instead (s 15 of the Copyright Act 1957). Not only does the CCI adjudicate upon the existence of the IP right (contrary to the quote above): it also completely skirts the issue of copyright over technical manuals and software programs.

Thirdly, in evading the issue of the existence of the IP right, the CCI held that, in any event, the conditions are unreasonable: manufacturers can sell spare parts in which IP exists even in the open market without compromising the IP. By adequate regulation, even independent service providers would be capable of delivering the same safety and quality of spare parts without any adverse effect to the IP. The CCI lost sight of the proposition that the freedom to not deal with competitors is an inherent right of IP.

Practical significance

For the first time, the CCI in Kataria has fully considered the IP defence in Indian antitrust law. While there is no IP exemption from an allegation of abuse of dominance, the CCI has adopted the EU's ‘essential facilities’ doctrine. This will prove crucial in Micromax, where the issue of FRAND licensing of SEPs has arisen. However, since it appears necessary to adduce documentary evidence to claim the exemption under s 3(5), it is advisable to register the IP under Indian statues to the extent possible. While the CCI has categorically stated that it would not question the validity of the IP, it also essentially held that mandatory licensing would not infringe the IP. This reasoning is clearly flawed and the only limiting principle that can be deduced is that this will be restricted to secondary markets (and derivative products). While the automobile manufacturers will surely appeal this decision to the Competition Appellate Tribunal, these observations are bound to guide the approach of the CCI in antitrust investigations in the near future.

CJEU says that Member States may grant public libraries the right to digitize works in their collections

Author: Eleonora Rosati (e-LAWnora and University of Southampton)

Technische Universität Darmstadt v Eugen Ulmer KG, Court of Justice of the European Union, Case C-117/13, ECLI:EU:C:2014:2196, 11 September 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu215, first published online: November 10, 2014

In this decision, the Court of Justice of the European Union (CJEU) ruled that Article 5(3)(n) of Directive 2001/29 (the ‘InfoSoc Directive’), read in conjunction with Article 5(2)(c) of the same directive, must be interpreted as allowing Member States to grant publicly accessible libraries the right—under certain conditions—to digitize the works contained in their collections.


This reference for a preliminary ruling was made in proceedings between the Technical University (TU) of Darmstadt and publisher Eugen Ulmer KG. In 2009, a library of TU Darmstadt scanned a book to which rights were held by the publisher, Ulmer. The library did so to allow its electronic consultation from dedicated terminals, where users could also print out on paper or store on a USB stick—in part or in their entirety—the works made available for consultation there on a one-book-one-user basis. Having unsuccessfully offered the university the possibility of purchasing its own e-books, Ulmer started proceedings for copyright infringement over unauthorized scanning of that book and other works.

Following partial victory before the Landgericht of Frankfurt am Main (Frankfurt District Court), both parties appealed before the Bundesgerichtshof (Germany's Federal Court of Justice). It was uncertain whether TU Darmstadt could rely on the exception pursuant to Article 52b Urheberrechtsgesetz, by which Germany had transposed Article 5(3)(n) of Directive 2001/29 (the ‘InfoSoc Directive’) into its own copyright law. The court thus decided to stay the proceedings and refer the following questions to the Court of Justice of the European Union (CJEU):

Is use subject to purchase or licensing terms within the meaning of Article 5(3)(n) of the InfoSoc Directive where the rightholder offers to conclude with the establishments referred to therein licensing agreements for the use of works on appropriate terms?

Does Article 5(3)(n) of the InfoSoc Directive entitle the Member States to confer on the establishments the right to digitize the works contained in their collections, if that is necessary in order to make those works available on terminals?

May the rights which the Member States lay down pursuant to Article 5(3)(n) of the InfoSoc Directive go so far as to enable users of the terminals to print out on paper or store on a USB stick the works made available there?


As regards the first question, the CJEU compared the language versions of Article 5(3)(n) and concluded that the EU legislature used the concept ‘terms’, which refers to contractual terms actually agreed, not mere contractual offers (as was the case of Ulmer). It then recalled the rationale of Article 5(3)(n), which is to promote the public interest in encouraging research and private study through the dissemination of knowledge, this being the core mission of publicly accessible libraries. From these considerations, it follows that the mere act of offering to conclude a licensing agreement does not rule out the application of Article 5(3)(n).

Turning to the second question, the CJEU noted that, while the exception in Article 5(3)(n) relates to Articles 2 and 3 of the InfoSoc Directive, this provision limits the use of works to their ‘communication or making available’. An establishment that gives access to a work contained in its collection to a ‘public’, namely all of the individual members of the public using the dedicated terminals installed on its premises for the purpose of research or private study, communicates that work for the purposes of Article 3(1). The exception in Article 5(3)(n) would be meaningless if such an establishment did not also have an ancillary right to digitize the work in question. Such a right would exist under Article 5(2)(c) of the InfoSoc Directive, provided that ‘specific acts of reproduction’ are involved. This means that, as a general rule and also in compliance with the three-step test in Article 5(5) of the same directive, the establishment in question may not digitize its entire collection.

With regard to the final question, the court noted that acts such as the printing out of a work on paper or its storage on a USB stick are acts of reproduction, not communication or making available to the public. As such, they fall outside the scope of the Article 5(3)(n) exception. They are not allowed under Article 5(2)(c) either, as they are not necessary for the purpose of making a certain work available to the users via dedicated terminals. However, such acts may be allowed under national legislation transposing the exceptions or limitations within Article 5(2)(a) or (b) of the InfoSoc Directive. In any case, the conditions set out in Article 5(5) must be respected.

Practical significance

This decision, which largely follows the Opinion of Advocate General Jääskinen in Technische Universität Darmstadt v Eugen Ulmer KG, C-117713, ECLI:EU:C:2014:1795, shows how interdependent are the exceptions and limitations in Article 5 of the InfoSoc Directive. Yet their optional nature allows Member States to determine the actual shape and scope of any given resulting national exception. In a case like the one at hand, how effective would a national exception be under Article 5(3)(n) in a Member State that did not also provide in its national law for an exception under Article 5(2)(c)? Publicly accessible libraries would only have the ‘right’ to communicate or make available digitized works in their collections to the public, but would lack the pre-requisite to that, ie the ‘right’ to digitize them in the first place. When there are exceptions and limitations that are so closely linked that they depend on each other to be effective, one may, indeed, wonder whether it makes sense to maintain a system of exceptions and limitations like that in Article 5 of the InfoSoc Directive. The list contained in this provision is so fragmented and overly specific as regards possible permitted uses to be misleading as to the actual importance of the individual exceptions, if considered (and adopted) on their own.

Significantly, the CJEU employed a language which is not really that of exceptions or limitations (provided that exceptions are actually different from limitations, as both Advocate General Sharpston and the CJEU appeared instead to suggest in Verwertungsgesellschaft Wort (VG Wort) v KYOCERA Document Solutions Deutschland GmbH and Others and Hewlett-Packard GmbH v Verwertungsgesellschaft Wort (VG Wort), Joined Cases C-457/11 to C-460/11, ECLI:EU:C:2013:34). The court spoke of an ‘ancillary right’ to digitize works, which would stem from the exception in Article 5(3)(n). Whether the use of the term ‘right’ alongside, or instead of, ‘exceptions’, ‘limitations’, ‘permitted use’, etc, has any practical implications is as yet unknown. Yet it is not excluded that it may have a bearing in future interpretations of the three-step test under Article 5(5). In this case, the court ruled that the three-step test prevented the ‘right’ to digitize from being intended as allowing digitization of the entire collection of a library, in that this would be against the first step, ie ‘special cases’. However, in future cases, the reference to ‘right(s)’ may be used to achieve more relaxed interpretations of—in particular—the final step of the three-step test, which mandates upon exceptions and limitations not to cause an unreasonable prejudice to the legitimate interests of the rightholder. This is because also the legitimate interests (‘rights’ as opposed to mere ‘exceptions’/‘limitations’) of users should not be unduly compressed.

Indigenous and traditional communities must be consulted before approval of intellectual property treaties

Author: Jhonny Antonio Pabón Cadavid (Victoria University of Wellington and Universidad Externado de Colombia)

Decision C-1051/12, Colombian Constitutional Court, Judgment, 5 December 2012 (published 31 March 2014)

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu214, first published online: November 12, 2014

The Colombian Constitutional Court held that Law 1518 of 2012, which integrates into national legislation the International Convention for the Protection of New Varieties of Plants (UPOV Convention 1991), is unconstitutional because the government failed to consult indigenous and Afro-Colombian communities.

Legal context and facts

In May 2012, a free trade agreement (FTA) between Colombia and the United States entered into force. The first article of the FTA chapter on intellectual property rights (ch 16) created an obligation for the Colombian government to ratify several international IP treaties including the 1991 Act of the International Convention for the Protection of New Varieties of Plants (UPOV Convention 1991 Act). Law 1518 of 2012, which was enacted to meet the obligation of the FTA, approved the 1991 UPOV Convention.

The Constitutional Court has a function of reviewing legislation approving international treaties; after the signature by the president, the declaration of constitutionality is a requirement for the ratification of any international treaty. The review evaluates the validity of the formal procedure during the legislative process according to constitutional norms (formal control) and the content of the treaty (material control) against the Constitution and human rights instruments to which Colombia is party (constitutional block). The International Labour Organization (ILO) Convention No 169 concerning Indigenous and Tribal Peoples in Independent Countries is part of Colombian's constitutional block. According to Article 6 of the ILO Convention, the government should consult with indigenous communities regarding the implementation of any legislative or administrative measures which may affect them directly. The Colombian Constitutional Court has recognized this obligation for any measure that also affects other ethnic and traditional communities such as Afro-Colombians (Decision C-169 of 2001).

The proceedings of constitutional control are open to the participation of organizations and citizens. During the review of Law 1518, the ministers of agriculture and rural development, commerce, industry and tourism, foreign affairs and internal affairs, as well as the national institute of biological resources (Alexander Von Humboldt) and ACOSEMILLAS (an organization that represents the seed industry) supported the constitutionality of the law.

The minister of environment and sustainable development, the national university of Colombia, several non-governmental organizations (NGOs), the National Indigenous Organization of Colombia (ONIC) and more than 6 500 citizens signed petitions asking to the court to declare that the law was unconstitutional on several grounds, one of which was that the 1991 UPOV Convention threatened the food security, biodiversity, traditional knowledge and cultural heritage of the country. The main and recurrent claim of those opposing the law was that the government did not undertake any consultation with the traditional communities for the approval and ratification of this intellectual property treaty, which directly affected them.


The Constitutional Court has developed a doctrine establishing that the right to be consulted is a fundamental right of indigenous and other traditional communities. This approach is based on the ILO Convention No 169 and the constitutional protection for ethnic and cultural diversity, the right to democratic participation, the protection of culture as part of nationality and the right of indigenous people regarding their territories and natural resources (Articles 7, 40, 70, 329 and 330 of the Constitution). Prior consultation is a right of the communities (to be consulted) and an obligation of the state (to consult) only when there is a direct effect on the relevant communities. In such cases the omission of consultation is a violation of the constitution.

In 2008, the Constitutional Court began to analyse the obligation of the government to consult traditional communities in relation to the approval of international treaties. This case is the first time that the court analysed the prior consultation obligation in relation to an IP treaty dealing with biological resources. The analysis of these cases is highly problematic, because the effects of an international IP treaty are not addressed to specific sectors of the population but affect all inhabitants of the country (general impact). The Constitutional Court has confirmed that prior consultation is only mandatory in cases when legislation affects traditional communities in specific, direct and concrete form (specific impact). Such impacts can be identified with different criteria, including that the legislation may directly jeopardize their ethnic identity.

The court found that, despite the UPOV Convention having a general impact on the intellectual property rights of plant breeders, those rights can directly affect agricultural activities and biological resources of traditional communities and as a consequence affect their way of life. In previous decisions, the Constitutional Court recognized the special religious, political, social and economic relationship of indigenous groups with the land and with natural resources (Decision T-693 of 2011). The court recognized the protection of biodiversity and the ecosystems, where indigenous groups live, as a fundamental part of their physical, spiritual and cultural identity existence.

The court held that the omission of the government constituted a failure to acknowledge the historical role of the traditional communities to bestow the richness, conservation and development of the biodiversity on the ecosystems of the country. The court expressed concerns about the effect that the 1991 UPOV Convention could have on practices and traditional knowledge of ethnic and peasant communities and their rights over native resources, especially sacred and medicinal plants. In addition, the possible appropriation and bioprospecting activities, that, as a result, could create private and individual rights over varieties of plants, could be at odds with the idea of collective ownership of the indigenous communities.

The court found that intellectual property rights over seeds may affect the identity, autonomy and livelihoods of indigenous people. Therefore these communities have the right to participate in decisions regarding the implementation of intellectual property rights that are directly related to food security, diversity, traditional knowledge and cultural survival of indigenous, Afro-Colombian and peasant groups.

Practical significance

This ruling is a good example of judicial activism in IP rights. The effects of this decision on plant breeders' rights are political rather than legal. Colombia ratified the UPOV Act 1978 (Law 243 of 1995 in 1996), and adopted legislation (Andean Decision 345) and regulations (Decree 2687 of 2002 and Resolution 2046 of 2003) that granted similar rights to the UPOV Act 1991. Within this framework, the decision of the Constitutional Court did not affect the legal expectation of plant breeders but had a political impact on the implementation of the FTA with US Colombia has an international obligation to ratify the UPOV Act 1991 and, in order to do so, should now open a dialogue with indigenous and traditional communities about the IP rights to biological resources, a topic highly contested and politically difficult in a country with more than 60 different indigenous groups and several Afro-Colombian communities located in some of the richest biodiversity hotspots of the world.

The ruling of the Constitutional Court created a precedent that should be followed by the government in any future legislative and regulatory measures related directly or indirectly with IP rights over biological resources (beyond the UPOV's scope). Following this case, the government is duty-bound to conduct a prior consultation with the indigenous and other traditional communities in a manner that they truly participate in the adoption of IP policies that could have a specific impact on their cultural identity and survival.