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European national news
The regular article tracking developments at the nationallevel in key European countries in the area of IT andcommunications – Co-ordinated by Herbert Smith LLPand contributed to by firms across Europe
Mark Turner, Tim Gunn
Herbert Smith LLP, London, UK
0267-3649/$ – see front matter ª 2008 Herbedoi:10.1016/j.clsr.2008.07.011
a b s t r a c t
This column provides a concise alerting service of important national developments in key
European countries. Part of its purpose is to complement the Journal’s feature articles and
Briefing Notes by keeping readers abreast of what is currently happening ‘‘on the ground’’
at a national level in implementing EU level legislation and international conventions and
treaties. Where an item of European National News is of particular significance, CLSR may
also cover it in more detail in the current or a subsequent edition.
ª 2008 Herbert Smith LLP. Published by Elsevier Ltd. All rights reserved.
1. Belgium mark AERIS was still valid on 7 December 2005. However, the
1.1. Brussels Court of First Instance finds that EURID ispermitted but not obliged to conduct its own investigation ofa .eu domain name application beyond the documentaryevidence filed
On 7 December 2005, the licensee of the German trade mark
‘‘AERIS’’ filed with EURID (the European registry for .eu
domain names) an application to register the domain name
‘‘aeris.eu’’ based on this trade mark, which had been regis-
tered on 20 June 1991 and renewed on 12 July 2000 by its
licensor with the German Patent and Trade Mark Office.
However, on 29 March 2006, EURID refused to register the
domain name, arguing that the licensee failed to prove that
the trade mark was still valid on the date of the licensee’s
request.
The licensee on 8 May 2006 filed an appeal against EURID at
the Czech Arbitration Court (‘‘CAC’’). In that procedure, the
licensee submitted an excerpt from the official data of the
German Patent and Trade Mark Office showing that the trade
rt Smith LLP. Published b
CAC dismissed the appeal on the same grounds as EURID.
The licensee subsequently on 21 September 2006 appealed
the CAC’s decision at the Court of First Instance of Brussels.
The latter too dismissed the appeal.
First, the Court found that the licensee had failed to prove
in a timely manner that the trade mark had been renewed
pursuant to Article 13.2 of the Sunrise Rules. According to this
Article it is required to submit a copy of an official document
issued by the competent Trade Mark Office showing that the
trade mark is registered and that it has been renewed. The
licensee had not submitted such renewal certificate.
Second, based on Article 14.7 of EU Regulation 874/2004,
the licensee argued that EURID had an obligation to conduct
an investigation of the trade mark’s validity beyond the
documentary filed by the licensee. However, the Court did not
agree, because:
� Articles 14.4 and 14.10 of EU Regulation 874/2004 imply that
the burden of proof of the trade mark’s validity and renewal
rests with the applicant.
y Elsevier Ltd. All rights reserved.
c o m p u t e r l a w & s e c u r i t y r e p o r t 2 4 ( 2 0 0 8 ) 3 9 6 – 4 0 0 397
� Article 13.2 of the Sunrise Rules explicitly provides that
EURID’s investigation is exclusively based on a prima facie
assessment of the documentary evidence submitted by the
applicant.
� Article 21.3 of the Sunrise Rules explicitly provides that
EURID is permitted in its sole discretion to conduct its own
investigations, but is not obliged to do so.
� Given the high number of domain name applications, it
would be neither practical nor reasonable to expect from
EURID pro-actively to conduct an investigation if the docu-
mentary evidence filed is incomplete.
The case can be found in IRDI 2008, p. 216.
Erik Valgaeren, Partner erik.valgaeren@stibbe.com and Lien
Ceulemans, Associate lien.ceulemans@stibbe.com from the
Brussels Office of Stibbe (Tel. þ32 2 533 53 51).
2. Denmark
2.1. Danish Act on use of non-solicitation clauses hasnow been passed
It has been common practice to use so-called non-solicitation
clauses in Danish business agreements, including in particular
contracts for the supply of IT services. A non-solicitation clause is
in this context typically an obligation on an acquirer of services or
thesellerofabusinessnottoemploytheemployeesoftheprovider
of such services or the employees relating to the transferred
business, respectively. However, following much attention in the
media, the Act on employers’ use of non-solicitation clauses (the
‘‘Act’’) has now been passed. The Act applies to all employees, i.e.
both salaried employees and blue-collar workers.
The Act came into force on 1 July 2008. The main purpose of the
Act is to restrict and reduce the use of non-solicitation clauses and
to ensure that the clauses will be entered into in a fair and loyal
manner only. In general, the Act provides that an employer is
prohibited from secretly and without any recompense to use non-
solicitation clauses, which limit the employee’s opportunities of
entering into a new position after his resignation.
Non-solicitation clauses are therefore only legally valid if
the following two conditions are met:
1. The employer and the employee must have entered into
a written agreement regarding such non-solicitation
clause. The agreement shall include detailed information
on how the non-solicitation clause limits the employee’s
employment opportunities, for how long these conditions
apply, and the right to compensation.
2. The employer must pay a financial compensation to the
employee, equivalent to at least 50% of the employee’s
salary at the time of resignation, until the employee obtains
other appropriate employment and the former employer is
entitled to deduct such income from the compensation.
However, there are exceptions to these two conditions, e.g.
if the non-solicitation clause is entered in connection with
negotiations for the transfer of a business.
The Danish Parliament has decided to enforce the Act with
a delayed retroactive effect. From 1 July 2008, the Act applies
to all non-solicitation clauses agreed from that date. However,
from 1 July 2009, the Act will also apply to non-solicitation and
no-hire clauses agreed prior to the Act’s enforcement. This
means that current non-solicitation clauses will all be
declared invalid from 1 July 2009, as they do not meet the legal
requirements.
Therefore, in future, any employer that wishes to obtain
a non-solicitation clause regarding its employees will, in
practice, be required to enter an agreement with all employees
that are subject to the clause. This places a considerable
practical and financial burden on any such employer.
Carsten Raasteen, Partner, cr@kromannreumert.com and Daniel
Herman Roejtburg, Assistant Attorney, drb@kromannreumert.
com from Kromann Reumert, Copenhagen Office, Denmark (Tel.
þ45 70 12 12 11).
3. France
3.1. Louis Vuitton attacks eBay: luxury fine for luxuryfakes
On 30 June 2008, the Paris Commercial Court delivered three
striking decisions hitting both eBay Inc. and eBay Interna-
tional AG with a V38 million fine (aggregated amount) in
favour of Louis Vuitton, Christian Dior and four of LVMH’s
other well-known subsidiaries in the perfume industry.
Louis Vuitton and Christian Dior took legal action against
the online auctioneer eBay for its failure to ensure that its
activities did not trigger illegal acts endangering their
economic activities and for publishing advertisements
favouring copyright infringement. The four perfume compa-
nies sought eBay’s conviction on the grounds that their
selective distribution networks were undermined by the
parallel trade of its products on and by eBay.
eBay alleged that it should benefit from the exclusion of
liability principle for intermediaries set out in Article 6 of the
law dated 21 June 2004 which states that the liability of tech-
nical intermediaries, and in particular that of hosting services
providers, cannot be sought for content made available
through their services, unless they have been informed of the
unlawful activities or content and fail to react promptly.
Moreover, eBay responded that its activity is fully compliant
with French laws and regulations, and highlighted the
investment it has made in creating its ‘‘Vero security
program’’ which aims to protect owners of intellectual prop-
erty rights.
The Commercial Court rejected all of the online auction-
eer’s defences and heavily condemned eBay, finding that its
status did not correspond to that of a hosting services provider
according to the terms of the 2004 law, and that eBay
committed serious offences by failing in its obligation to
ensure that its activity did not trigger unlawful acts to the
prejudice of the plaintiffs. The Court awarded damages to the
claimants for exploitation of their rights, for the harm caused
to their image and for moral misconduct.
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The whole electronic trade industry could be undermined by
these decisions, leaving eBay, its fellow competitors and other
Web 2.0 platforms vulnerable to numerous lawsuits despite
genuine efforts being made to track down copyright infringement.
These three decisions may not, however, signify the end of
a highly controversial debate that has given rise to diverging
French case law on similar matters involving eBay (Paris Court of
Appeal, 9 November 2007; Grenoble District Court, 1st February
2007) and, on an international level, the exact opposite ruling was
issued in the recent US District Court of New York ruling that
rejected the claim brought by Tiffany’s (15th July 2008).
Following eBay’s appeal against the three decisions, it will
be up to the Paris Court of Appeal and probably later the
French Supreme Court to determine the final outcome.
Alexandra Neri, Partner Alexandra.neri@herbertsmith.com and
Olivier Menant, AssociateOlivier.menant@herbertsmith.com from
the Paris Office of Herbert Smith LLP (Tel. þ33 1 53 57 74 02), with
the contribution of Alexandre Vasseur.
4. Italy
4.1. Italy implements the EU Directive on data retention
By means of Legislative Decree No. 109 of 30 May 2008 (the
‘‘Decree’’), Italy has implemented Directive 2006/24/EC (the
‘‘EU Directive’’) on the retention of data generated or pro-
cessed in connection with the provision of publicly available
electronic communications services or of public communi-
cations networks. The Decree partially modifies the Italian
Privacy Code (Legislative Decree No. 196 of 2003) in relation to
the required period of traffic data retention by providers.
Specifically, Article 132 of the Italian Privacy Code, as amen-
ded, provides that, for the purpose of detecting and sup-
pressing criminal offences, telephone traffic data shall be
retained by the provider for 24 months from the date of the
communication, whereas electronic communications traffic
data (except for the content of communications) shall be
retained by the provider for 12 months from the date of
the communication.
In addition, data concerning unanswered calls, temporarily
processed by providers of publicly available electronic
communications services or providers of public communica-
tions networks, shall be retained for a period of 30 days.
Breach of such provisions by providers may result in a fine
ranging from Euro 10,000 to Euro 50,000. Furthermore, in the
case of an assignment of an IP address which does not
unambiguously identify the user or the subscriber, a fine
ranging from Euro 5000 to Euro 50,000 shall apply. These
maximum amounts may be increased up to three times if they
are found to be ineffective on account of the offender’s
economic status.
The Decree, in compliance with the EU Directive, also
provides for the categories of data to be retained and for an
obligation on providers to inform, on a yearly basis, the Italian
Ministry of Justice (which will in turn forward this information
to the EU Commission,) of: (i) the number of cases in which
telephone and electronic communications traffic data were
provided to the competent authorities in accordance with
applicable national law; (ii) the time elapsed between the date
on which the data were retained and the date on which the
competent authority requested the transmission of the data;
and (iii) the cases where requests for data could not be met.
http://www.parlamento.it/leggi/deleghe/08109dl.htm.
Salvatore Orlando, Partner, s.orlando@macchi-gangemi.com and
Stefano Bartoli, Senior Associate, s.bartoli@macchi-gangemi.com
from the Rome Office of Macchi di Cellere Gangemi (Tel. þ39 06
362141).
5. The Netherlands
5.1. The Dutch home copy fee
In the Netherlands a surcharge is levied on all blank copying
media to compensate (intellectual) rights holders for the loss
suffered in relation to home copying. Twenty stakeholders
(among which are Fuji, Nashua, Philips and Sony) started
proceedings regarding the determination of this home copy
fee against ‘Stichting Thuiskopie’ (the Dutch home copy
association) and ‘Stichting Onderhandelingen Thuiskopie-
vergoeding’ (the Dutch foundation for negotiations regarding
the home copy fee, hereafter ‘‘SONT’’). On 25 June 2008 the
District Court of The Hague gave its judgment.
In these proceedings the stakeholders claimed a declara-
tory judgment on 16 aspects which should be taken into
account when determining the copy fee and claimed that the
home copy fee should be determined taking into account the
loss referred to above.
The District Court first of all ruled that it cannot determine
the home copy fee because the Dutch Copyright Act states
that SONT is the designated competent authority. Further-
more, it rejected 15 of the 16 points for which a declaratory
judgment was asked.
The declaratory judgment that was awarded relates to
material that is made public with the explicit or implicit
consent of the rights holder. The District Court ruled that,
when determining the home copy fee, no consideration
should be given to material for which the rights holder has
given its explicit or implicit consent. The District Court gave
an example of this: if a rights holder releases material on the
Internet without technical protection measures, this can
constitute implicit consent.
Furthermore, the District Court ruled that copying from an
illegal source is not permitted pursuant to the Dutch Copy-
right Act (Article 16c). This is noteworthy because it contra-
dicts declarations made by the Minister of Justice on this topic.
This ruling has taken everybody by surprise and has
therefore generated a lot of questions and criticism in the
Netherlands. It will be interesting to see what consequences
this ruling will have in the (near) future.
Link (in Dutch only): http://www.boek9.nl/getobject.
aspx?id¼4790.
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Reinout Rinzema, Partner, reinout.rinzema@stibbe.com and
Rembrandt Brouwer, Associate, rembrandt.brouwer@stibbe.com
from the Amsterdam Office of Stibbe (Tel. þ31 20 546 01 12).
6. Norway
6.1. The Data Retention Directive might lack EEArelevance
The new Data Retention Directive (Dir. 2006/24/EC) has been
subject to extensive public debate, with business participants,
administrative authorities, politicians as well as private indi-
viduals expressing their concern. The latest Norwegian
development is the publication last month of a legal state-
ment by two distinguished Norwegian professors on European
law, Dr Finn Arnesen and Dr Fredrik Sejersted, questioning the
relevance of the Directive to the EEA-Agreement.
The statement was obtained by the trade organisation for
the Norwegian ICT industry in order to clarify the legal aspects
of the issue, and concludes that the Directive might not be EEA
relevant. It is argued that, although the Directive was enacted
by the EU with legal basis in Article 95 of the EEC Treaty
(concerning harmonisation of trade amongst EC Member
States and establishment of the internal market), the purpose
of the Directive is not primarily to facilitate free trade. On the
contrary, the core content and the purpose of the Directive
relate to the fight against crime – an objective falling outside
the scope of the EEA-Agreement. If the Directive is included in
the EEA-Agreement, it would represent an expansion of the
EEA-Agreement’s scope of application. Conversely, there are
nevertheless valid grounds on which it could be argued that
the Directive actually is EEA relevant.
The Government has not yet taken a stand in this respect,
and the Norwegian Minister of Transport and Communica-
tions has pronounced that one should await the outcome of
a case which Ireland has brought before the European Court of
Justice (case No. C-301/06). In this case, Ireland asserts that the
Directive is invalid because it has been enacted on an incor-
rect legal basis.
A possible implementation of the Directive into Norwegian
law is therefore unlikely to take place this year.
Stein-Erik Jahr Dahl, Associate, sjd@thommessen.no and Ingvild
Standal Næss, Associate, ina@thommessen.no: Thommessen
Krefting Greve Lund AS (Tel. þ47 23 11 14 94).
7. Spain
7.1. The battle over intellectual property rights in Spain
A recent report from the United States Trade Representative,
as well as statistics from associations such as the Business
Software Alliance and Promusicae, show that Spain has one of
the highest audiovisual piracy rates among Western coun-
tries. This fact, according to industry representatives,
provokes losses in the order of millions of Euros and inhibits
the creation of new jobs in the software sector.
An explanation for this situation may be the historically
marginal value attributed to intellectual property rights in
Spain and the lack of judicial willingness to punish infringe-
ment, especially in the criminal jurisdiction.
Moreover, since the adoption of the Public Prosecutors
Intellectual Property Directive 1/2006, Spanish public prose-
cutors consider that copying and distribution of audiovisual
works are not criminal acts, unless they give rise to profit on
a commercial scale. This assumption has led public prosecu-
tors to take a passive attitude in some criminal proceedings.
Accordingly, producers in the audiovisual content sector are
left to launch private actions. These have resulted in a series
of unsuccessful judicial decisions.
In a similar vein, a wide interpretation by Spanish Courts of
the legal concept of users’ private copying right has led to a kind
of legitimacy, as far as private users are concerned. In most
cases, it seems that the Court is willing to condone storage in
their computers and recordable devices of a large number of
unauthorised copies of all kinds of audiovisual content.
Possibly because of this judicial reluctance to punish
infringement by end-users, the main Spanish content
producers have recently decided to launch an unfair compe-
tition civil action against a software company specialising in
creating software for peer-to-peer (‘‘P2P’’) platforms. The
companies have based their action (which is in the order of
millions of Euros) on their claim that P2P platforms offer to the
public music in which copyright subsists, without any
authorisation, with the aim of attracting visitors and gener-
ating benefits from publicity.
The outcome of this claim may determine future condi-
tions for P2P platforms in Spain while defendants and
contributors to Internet users’ forums advocate freedom to
share knowledge and content, the industry talks about large
scale financial losses. The battle continues.
Jorge Llevat, Partner jorge.llevat@cuatrecasas.com and Jon Cam-
pins, Associate jon.campins@cuatrecasas.com from the Barcelona
office of Cuatrecasas (Tel. þ34 93 290 55 85).
8. Sweden
8.1. New Signal Surveillance Act
On 18 June 2008, the Swedish Parliament enacted a new Signal
Surveillance Act (the ‘‘Act’’) which will come into force on 1
January 2009. The Act entitles the National Defence Radio
Establishment (‘‘FRA’’) to collect electronic signals trans-
mitted over air or by wire for defence intelligence purposes.
Pursuant to the Act, FRA will have access to communications
from telecoms operators as from 1 October 2009. Pursuant to
an amendment in the Electronic Communications Act, the
telecoms operators are obliged to collect, store and transmit
crossborder communications to certain co-ordinated points,
in order to make the signal surveillance more efficient.
The Act contains a number of provisions designed to
protect the integrity of the individual. Moreover, the Parlia-
ment announced the introduction of further control mecha-
nisms and mechanisms to ensure the rule of law applies to the
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Government, to increase the protection of individuals further.
Furthermore, the Act will be supplemented with provisions
regarding the purposes for which signal surveillance may be
conducted within the framework of the new legislation and
how the licensing procedure is to be administered.
However, on 14 June 2008 the new legislation was reported
by individuals to the European Court of Human Rights in
Strasbourg. The applicants are of the opinion that the Act is
not sufficiently detailed to meet the requirements under
Article 8 in the European Convention of Human Rights and
have referred to a judgment against the United Kingdom by
the European Court of Human Rights on 1 July 2008.
For further information, please refer to: http://www.fra.se
(in Swedish).
http://www.riksdagen.se/templates/R_PageExtended___
16402.aspx.
Bjorn Gustavsson Partner, bjorn.gustavsson@vinge.se and Eva
Fredrikson Associate eva.fredrikson@vinge.se from Advokatfirman
Vinge KB (Tel. þ46 8 614 30 00).
9. United Kingdom
9.1. New civil and criminal penalties for breaching dataprotection
The Criminal Justice and Immigration Act 2008 provides for
new powers, not yet in force:
� making it an offence to disclose intentionally or recklessly
personal data or repeatedly or negligently to allow personal
data to be disclosed (s.77);
� allowing the Information Commissioner’s Office (‘‘ICO’’) to
impose fines for breaching the data protection principles
deliberately or reckless in ways that are serious and likely to
cause substantial damage or distress (s.144, inserting a new
section 55A into the DPA).
The new Act: http://www.opsi.gov.uk/acts/acts2008/
ukpga_20080004_en_1.
9.2. Reviews recommend extending data protectionpowers to private sector
In the aftermath of last year’s loss of records on 25 million
people by HMRC, the government gave the ICO new data
protection powers over UK government departments.
Sir Gus O’Donnell’s June 2008 review of data handling
procedures in government extends these powers to cover
private sector contractors to whom those departments out-
source work. Stringent data security processes and obligations
are being implemented and apply to both existing and new
contracts, including:
� Encryption and compulsory testing by independent experts
of systems resilience.
� Mandatory annual training for staff dealing with personal
data.
� Spot checks by the ICO.
Following on from the above, the July 2008 government
commissioned Data Sharing Review has recommended
further extension of ICO powers, including:
(i) setting the maximum level of fines under the ICO’s new
section 55A DPA powers to mirror sanctions available to
the Financial Services Authority (‘‘FSA’’). The fine
schedule should include high, but proportionate, maxima
related to turnover. The FSA, last year, penalised two UK
financial services companies for seven figure amounts;
(ii) a statutory power to gain entry to private company
premises to carry out inspections.
Sir Gus O’Donnell’s Report: http://www.cabinetoffice.
gov.uk/w/media/assets/www.cabinetoffice.gov.uk/csia/dhr/
dhr080625%20pdf.ashx.
The Data Sharing Review: http://www.justice.gov.uk/docs/
data-sharing-review.pdf.
Mark Turner, Report Correspondent, Partner, mark.turner@
herbertsmith.com and Tim Gunn, Professional Support Lawyer
tim.gunn@herbertsmith.com from the London Office of Herbert
Smith LLP (Tel. þ44 20 7374 8000).