Search Yahoo! for Elly? Not on your Nellie

This is the film that has got
Yahoo! into so much trouble

All sorts of exciting things have been going on in Rome, if the IPKat's Italian eyes do not deceive him.  Of particular excitement is an historical decision of the Tribunale di Roma (that's the First Instance Court in Rome, unless you end up at some other forum) which was handed down on 22 March 2011. The Ninth Division of the Tribunale, it seems, was the first Italian court to hold a search engine (in this case, Yahoo!) liable for not controlling online piracy. According to the Kat's friend Eleonora Rosati (Bird & Bird), 

"The Court found Yahoo! guilty of aiding and abetting the infringement of copyright in the film 'About Elly' because, among the various results obtained by “yahooing” ‘About Elly’, links were displayed which led to websites that unlawfully offered the reproduction, as whole or in part, of the film (through streaming or downloading options). 

The Court (Mrs Justice Gabriella Muscolo) referred to Articles 14-17 of the E-Commerce Directive (as implemented in Italy by Legislative Decree 9 April 2003, No. 70) and Article 156 of the Italian Copyright Act (Law 22 April 1941, No. 633, as modified in order to implement the IP Enforcement Directive) and cited - inter alia - the decision of the ECJ in Google Adwords (Case C-236/08). 

The judge thus held Yahoo! liable for contributory infringement and ordered the search engine to pay the costs of the proceedings".

Another of the Kat's Italian friends, Gaetano Dimita, tells him that the reasoning of the court is not yet available, but that in any event Yahoo! has already declared that it will appeal. Gaetano also did a bit of empirical research:

"Interestingly, simply typing 'Abou' into Yahoo!, the engine suggested 'About Elly' -- providing the user with 10,300,000 links to websites making the film available. The extent to which this constituted 'knowledge' cannot be assessed without seeing the full reasoning of the judgment, but it seems that the Italian courts are increasingly prepared to find ISPs liable (ie vividawn v Google last year)". 

He adds that Open Gate Italia has declared that Google will be the next target and suggests that readers may wish to check out the reports of this decision in the Italian media:

• ANSA - Sentenza contro Yahoo, stretta su film
• Corriere della Sera - Pirateria di film in rete. Condannato Yahoo!
• Repubblica - here• Il Sole 24 Ore - Sanzionato il link al sito pirata
• La Stampa - Cinema, sentenza senza precedenti contro Yahoo! Italia
• L'Unità - Condannato Yahoo!: violazione diritti sfruttamento economico film
• Il Velino - Web, per “About Elly” Yahoo! può indirizzare solo al sito ufficiale

The IPKat thanks his friends for this information.  Merpel says, I tried keying in "Abou" into Yahoo! and ended up with Abou Diaby ...

"Not on your Nellie" here, here and here

Judge cagey about retro-fit patent infringement

It's a late March decision but the IPKat has only just caught up with it. He's talking about Schütz (UK) Ltd v Werit Ltd and Protechna SA [2010] EWHC 660 (Pat), a fascinating and pretty long (227 paragraph) ruling of Mr Justice Floyd, sitting in the Patents Court, England and Wales.

Schütz owned two European patents (307 and 967) for intermediate bulk containers (IBCs) which consisted of a metal outer protective cage and a removable plastic inner bottle. No little bottle, this removable feature could hold up to 1,000 litres. The patents claimed, among other things, a system of welding for the metal cages. Werit sold its own plastic bottles to a third party, Delta, which retro-bottled them into second-hand Schütz cages before selling them on. According to Schütz, this was a "making" the patented product and Werit's supply of bottles to Delta for retro-fitting into its frames was a contributory infringement under the Patents Act 1977 s.60(2).

Did these alleged infringements fall within the claims? It all depended on whether Schütz's cages fell within its own patents. Werit said that (i) Delta's retro-fitting didn't constitute infringement in the first place because they did not amount to making the patented product; (ii) Schütz's patents weren't even valid on the grounds obviousness, insufficiency and, for the 967 patent, added matter; and (iii) even if the patents were valid, since there was an unlawful restrictive licensing agreement made by Schütz with a third party, Protechna, there was a breach of the Patents Act 1977, s.44, which rendered Schütz's patent rights unenforceable during the period of the alleged infringements.

Holding both patents to be valid, Floyd J gave judgment for Werit on the basis that the company hadn't infringed them. In doing so, he explained that, in any infringement action, the crucial issue was whether what the defendant is shown to have done actually deprives the patentee of the rights to which his patent entitled him. In this instance, where the alleged infringement related to only part of the patent, the correct approach was to consider whether, when the part in dispute was removed, what was left embodied the whole of the inventive concept of the claim. Such a test would give the patentee the full rights to which his patent entitled him, having regard to the nature of the invention as claimed and to the nature of the patented article.

On the facts here, Floyd J continued, replacing the inner container of Schütz's IBC with a bottle from Werit did not amount to making the patented product under either patent since the inventive concept of each patent was wholly embodied in the cage. Accordingly when the bottle was removed, the part that was left -- the cage -- embodied the whole of the inventive concept.

The judge added that s.44 didn't apply here anyway. The agreement between Schütz and Protechna was not a restrictive abuse of monopoly, but a harmless agreement under which the licensee agreed to purchase the patented product in kit form.

The IPKat draws the attention of readers to the classical and historical allusions which reflect earlier versions of the conundrum raised in this case. He said:

"According to Greek legend (as reported by Plutarch):

"The ship wherein Theseus and the youth of Athens returned [from Crete] … was preserved by the Athenians down even to the time of Demetrius Phalereus, for they took away the old planks as they decayed, putting in new and stronger timber in their place, insomuch that this ship became a standing example among the philosophers, for the logical question of things that grow; one side holding that the ship remained the same, and the other contending that it was not the same."

This paradox, like that of George Washington's axe with its three new handles and two new heads, has divided philosophers for centuries. One of the issues which divides the parties to the present patent action is whether the acts of infringement relied on amount to making a new product, or merely replacing parts in an old one".

Other intellectual property assets involving cages here, here and here