The European Union Commission and recent trends in European information law.

• Author: Hoeren, Thomas

1. INTRODUCTION

   This Article addresses several recent and emerging developments regarding the European Union's copyright and intellectual property ("IP") laws. Because not every significant issue can be discussed within this short survey, the Article will only address what the author considers to be the most significant developments. Specifically, this Article discusses: (1) recent European Union law relating to intellectual property infringements occurring on or via the Internet; (2) the patentability of computer-implemented inventions; (3) implementation of the Council Directive on the legal protection of computer programs--i.e., the "Software Directive"; (4) selected topics regarding contract law as applied to copyright infringement and copyright related matters; (5) recent developments regarding collecting societies; (6) compatibility of the European Union's copyright directives; (7) applying European Union legislation on design protection to graphical interface and icons; and (8) the development of the new ".eu" top-level-domain.

2. RECENT EUROPEAN UNION LAWS RELATING TO INTELLECTUAL PROPERTY INFRINGEMENTS OCCURRING ON OR VIA THE INTERNET

   In the European Union ("EU"), several new legislative measures have been passed relating to cross-border IP infringements. Specifically, the legislature has addressed Internet infringement, as well as proper forum selection in infringement matters. In regard to issues of international jurisdiction, the recently enacted "Council Regulation on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters" (1) ("Brussels I Regulation") has replaced the Brussels Convention of 1968 for all Member States, except Denmark. (2) According to the general rule of article 2, number 1 of the Brussels I Regulation, a defendant, who is domiciled in a European Union Member State ("Member State"), may be sued in the courts of that Member State. (3) Article 5, number 3 then provides for special jurisdiction in matters relating to a tort or delict, which includes IP infringements. (4) Specifically, the relevant forum is the courts of the place "where the harmful event occurred or may occur." (5) Therefore, the plaintiff has the option of suing in the state where the act or omission causing the injury occurred, or may occur, (6) or alternatively, in the state where the harm occurred, or may occur. (7)

   As applied to IP infringements occurring on or via the Internet, a copyright owner now has the ability to sue in any Member State where the infringing Internet activity can be accessed (assuming that accessibility is considered to be an IP infringing activity in that Member State). (8) Indeed, Council Directive 2001/29 (the "Info-Soc Directive") (9) will likely be interpreted to cover the mere availability of protected content on the Internet. (10) Pursuant to article 5, number 3, of the Brussels I Regulation, Member States had to enact the Directive by the end of 2002; therefore, the accessibility of copyrighted content in a Member State may result in granting special jurisdiction. Of particular significance, this may enable forum shopping, allowing the plaintiff to select the forum where he expects the highest damages or where the defendant has valuable assets.

   The European Commission began negotiations in March 2002 to amend the Lugano Convention to address rules of international jurisdiction. (11) Essentially, the amendment would mirror the Brussels I Regulation to ensure that the concepts applied in the Brussels I Regulation would also be applied between the Member States. (12)

   In addition to forum selection issues in cross-border disputes, the EU has recently addressed, both directly and indirectly, questions of private international law. In terms of indirect action, the E-Commerce Directive (13) establishes a so-called "principle of the country of origin" or "internal market principle" under which a provider of Internet services is only bound by the laws of the country in which it is permanently established. (14) In effect, this excludes the application of another Member State's laws, even if the service in question can be accessed in, or is directed to, other Member States. (15)

   The E-Commerce Directive also addresses potential conflicts between Member States' choice of law rules. The E-Commerce Directive specifically states that such provisions "must not restrict the freedom to provide information society services" as established by the laws of the country of origin. (16) Consequently, whenever a Member State's private international law rule determines that the law of a country, other than the country of origin, is applicable, that provision is overruled by the internal market principle. (17)

   According to the E-Commerce Directive, the country of origin rule does not apply to fields referred to in the Annex of the E-Commerce Directive. (18) Therefore, the E-Commerce Directive excludes copyright and industrial property rights from the scope of the internal market principle; while competition law, on the other hand, is still governed by this principle. (19)

   In May 2002, the European Commission published a preliminary draft proposal for the "Council Regulation on the Law Applicable to Non-Contractual Obligations" (the "Rome II Draft"). (20) The purpose of the draft proposal was to consult interested parties and launch a public debate on the issue. (21) Article 3, number 1, of the Rome II Draft provides a general rule for non-contractual obligations deriving from a tort or delict; stating that the applicable law is that "of the country in which the loss is sustained." (22) Further, article 3 excludes the law of the country "in which the harmful event occurred" and where "the indirect consequences of the harmful event are sustained." (23)

   Because none of the special tort related choice of law rules from the Rome II Draft apply, it is unclear whether and how the general provisions of article 3 address IP infringements. First, one might argue that article 24 of the Rome II Draft, which determines the Member States' relationship to international conventions, functions to exclude copyright infringements from the scope of the Rome II Draft instrument. (24) Indeed, article 24 aims to ensure the continued application of "choice of law rules to non-contractual obligations" set forth in international conventions. (25) With respect to copyright law, one could argue that article 5, section 2, of the revised Berne Convention precludes the application of article 3 of the Rome II Draft by stating that "the extent of [copyright] protection ... shall exclusively be governed by the laws of the country where protection is claimed." (26) Article 5, section 2, of the Berne Convention may be interpreted as a reference to the international private law principle of the country of protection, which governs the applicability of national IP laws. However, others deny that the provision can be characterized as a choice of law rule. Therefore, the answer to how the Rome II Draft applies to IP infringements depends on whether article 5 of the Berne Convention is considered a choice of law rule within the meaning of article 24 of the Rome II Draft.

   Presuming that copyright and other IP infringements are not excluded by virtue of article 24, the general rule of article 3, number 1, applies to online IP infringements; therefore, the national IP laws (27) of the country in which the copyright holder suffers a loss are applied. (28) From this, one has to determine the meaning of "loss": does it refer to the injuring result of the infringing conduct (29) or to the economic loss suffered due to the infringement? The phrasing of article 3 suggests the latter. (30) Therefore, the law governing non-contractual obligations arising from an infringement of economic IP rights would typically be the law of the country where the infringing activity interferes with the copyright holder's utilization of the protected subject matter in question. (31) In any instance, due to the principle of territoriality in IP Law, a precondition to a successful infringement claim is that the country grants protection to the subject matter in question under its national IP laws. (32)

   In matters of unfair competition, article 6 of the Rome II Draft provides a special choice of law rule, designating the governing law to be that of the country where the practice affects competitive relations or the collective interests of the consumers. (33) In regard to acts of unfair competition committed online, the Rome II Draft ensures that the conflicting principle of the country of origin set forth in the E-Commerce Directive is not overruled. (34)

   Significantly, article 23, number 2, treats unfair competition that occurs online differently from unfair competition occurring offline. In the online world, an Internet service provider is bound merely by the laws of the country of origin. Alternatively, the applicable laws for unfair competition committed offline are those of each Member State where an individual's practice affects competitive relations or the collective interests of consumers. (35)

   In light of this inconsistency, it is imperative that European lawmakers begin addressing choice of law and jurisdictional aspects of online IP infringements directly, instead of excluding them, (36) or merely relying on general rules governing torts. (37)

3. PATENTABILITY OF COMPUTER-IMPLEMENTED INVENTIONS

   Software development has been growing in recent years and substantially contributes to the GDP and to employment. In 1998, the value of the packaged software market in Europe was about 39 billion €. (38) Indeed, in 1999, the packaged software industry was responsible for 1,009,000 jobs in Europe. (39) It is expected that the number of packaged software workers in Western European countries will grow by a rate of between 24 percent and 71 percent from 1999 to 2003, with an average growth of 47 percent. (40)

   According to article...