Helsinki District Court Ordered Co-founder of the Pirate Bay to Pay Heavy Compensation

In November 2011, several record labels filed a lawsuit in the District Court of Helsinki against Peter Sunde, the co-founder of the popular file-sharing site Pirate Bay. The record labels provided evidence that 60 albums of their Finnish artists were shared through the Pirate Bay in May 2011. They held Sunde responsible for that and requested that the court orders him to pay compensation of 350 892 euros plus legal interest. 

The record labels also requested that the court orders Sunde to cease making the content available to the public, and imposes a conditional fine of (at least) one million euros to reinforce the order.

Furthermore, the record labels requested that Sunde has to pay their legal fees and other expenses, in total 54 786,91 euros plus legal interest.

According to the record labels, the Pirate Bay is very popular among the Finnish file-sharers. They considered that, even with a cautious estimate, a work in the Pirate Bay was within reach of tens of thousands of Finns. 

The Pirate Bay.

Sunde did not respond to the lawsuit before the deadline and the court issued a default judgment (no. 16/26496) on 2 June 2016 in the record labels favor. The lawsuit was not, according to the court, manifestly without a basis.

According to chapter 12 section 15 of the Code of Judicial Procedure (4/1734), the party against whom the case has been decided by a judgment by default has the right to appeal it in the court that rendered the judgment. Therefore, there is a chance that this case will go straight back to the District Court of Helsinki.

This is a peculiar case and one would assume that Sunde is going to appeal against the judgment. In 2015, Sunde and other founders of the Pirate Bay were cleared of copyright infringement in a Belgian court. They were accused, inter alia, of criminal copyright infringement because copyright infringing material had been shared through the Pirate Bay between September 2011 and November 2013. They were cleared of all charges after they proved that they had sold the site in 2006 and therefore were no longer active with the site's operations during the period in question.*

* SOURCE: Andy (2015, July 10). Pirate Bay Founders Acquitted in Criminal Copyright Case. TorrentFreak. [online] Available at: https://torrentfreak.com/pirate-bay-founders-acquitted-in-criminal-copyright-case-150710/ [Accessed 21 Jun. 2016].

The Market Court: Utility Model for Laser Treatment Lacked Novelty

A utility model is similar to a patent. However, there are some differences. One key difference is that many registration authorities, like the Finnish Patent and Registration Office (PRH), do not automatically examine the requirements of novelty and inventiveness. The examination of those requirements is necessary only if an invalidity claim is raised in relation to those requirements.

The examination of novelty became the decisive factor in the Market Court decision 336/16 of 7 June 2016.

Background

In February 2012, the Board of Trustees of the Leland Stanford Junior University (LSJU) filed a utility model application for an invention 'Patterned laser treatment of the retina'. The invention consisted of independent claim 1 and dependent claims 2-20. The application was converted from a European Patent Application, filed on 2 December 2004. 

PRH registered the utility model (no. 9630) on 19 April 2012. 

Drawing of the invention.
Application no. U20124034.

Valon Lasers Oy (VL) lodged an invalidation claim based on section 19 of the Act of Utility Model Rights (800/1991). The section 19 provides that a utility model registration shall be declared wholly or partially invalid in response to a request to that effect, if, inter alia, the registration relates to an invention that is not new and/or lacks the required inventiveness. VL cited the following prior art documents:

- D1: US 2003179344 A, 25 September 2003

- D2: JP 2001149403 A2, 05 June 2001

PRH accepted the invalidation claim and revoked the utility model on 31 July 2014. According to PRH, all the features in the claim 1 are found in both prior art documents (D1 and D2) although the solutions in the documents are slightly different in practice.

The Market Court

LSJU appealed to the Market Court and requested that the decision of PRH will be reversed. Furthermore, LSJU requested that the Market Court upholds the registration of the utility model no. 9630 in accordance with claims the appellant has provided to the Market Court on 8 December 2014 (independent claim 1 and dependent claims 2-18).

Here is a translation of the independent claim 1, amended on 8 December 2014 (FinnIPR translation with the help of EP20040812972): 

1. A system for laser treatment of the retina of an eye of a patient, the system comprising: 

an alignment source (411) producing an alignment beam that provides a visible alignment pattern comprising a plurality of separated spots projected onto said retina; and 

a laser source (413) producing, responding to an operator action, a laser beam for providing doses of laser energy to at least two treatment locations on said retina where the said spots are,

characterised in that the said treatment locations are spaced apart, and that the system comprises a scanner for moving the laser beam from one of said treatment locations to another of said treatment locations, and wherein said scanner moves the alignment beam from one of said separated spots to another of said separated spots, and for providing all of said doses of laser energy to said treatment locations substantially sequentially, and in less than about 1 second.

VL, on the other hand, argued that:

1) the appellant should have provided the amended claims already in the proceedings at PRH. Therefore, the amended claims should be dismissed. 

2) the invention is, according to the independent claim 1, merely a process and therefore not registrable. 

3) the amended independent claim 1 and the description include matter that is not disclosed in the original application. 

4) the independent claim 1 of the invention is not presented precisely enough and that the description of the invention is not sufficiently clear to enable a person skilled in the art to carry out the invention. 

5) the invention is not new and/or it lacks the required inventiveness.

The Market Court issued its decision 336/16 on 7 June 2016. 

1) Was LSJU able to amend the claims in the proceedings at the Market Court?

The Market Court started its analysis by stating that one has to seek answer from the Administrative Judicial Procedure Act (586/1996) since neither the Market Court Proceedings Act (100/2013), Act on Utility Model Rights nor the Act on the Finnish Patent and Registration Office (578/2013) have rules that restrict the appellant from presenting new grounds during the appeal proceedings.

Section 27 paragraph 2 of the Administrative Judicial Procedure Act provides that, after the end of the appeal period, the appellant may present new grounds in support of his appeal, unless the matter as a result changes in nature. The court ruled that this applicable rule does not prevent the appellant from providing new amended claims during the appeal to the Market Court.

2. Is the invention merely a process?

According to section 1 paragraph 4 sub-paragraph 3 of the Act on Utility Model Rights, utility model rights shall not be granted for processes.

VL had argued that the invention is merely a process because of the following statement in the independent claim 1:

"providing all of said doses of laser energy to said treatment locations -- in less than about 1 second".

The court ruled that the feature mentioned above is a so-called functional feature. The court continued by stating that it is possible to use functional features in product or apparatus claims. The court concluded that the independent claim 1 is clearly an apparatus claim, not a process claim.

3. Does the amended independent claim 1 and the description include matter that is not disclosed in the original application?

According to section 11 of the Act on Utility Model Rights, a utility model application may not be amended in such a way that a utility model right is claimed for matter not disclosed in the original application.

VL argued that the statement in the independent claim 1, which mentions that the treatment locations are apart, is not disclosed in the original application. 

The court disagreed and stated that the original description includes drawings that demonstrate how the treatment locations are apart.

4. Is the independent claim 1 of the invention presented precisely enough and is the description of the invention sufficiently clear to enable a person skilled in the art to carry out the invention?

According to section 6 paragraph 2 of the Act on Utility Model Rights, the application shall contain a description of the invention, accompanied by drawings where necessary, and a precise statement of the subject matter for which utility model right protection is sought (a claim). Furthermore, the description shall be sufficiently clear to enable a person skilled in the art to carry out the invention with the guidance thereof.

VL argued that according to the description, the treatment locations could be bigger than the alignment spots and therefore, according to VL, the treatment locations could be partially overlapping each other if their corresponding spots are close to each other and if the treatment locations are bigger in relation to the said spots. This would contradict the independent claim 1, which mentions that the treatment locations are apart.

The court stated that the description of the invention does not mention that the treatment locations could be partially overlapping. The statement in the independent claim, which mentions that the treatment locations are apart, is therefore consistent with the description and it is presented precisely enough.

5. Is the invention new and does it have the required inventiveness?

According to section 2 paragraph 1 of the Act on Utility Model Rights, an invention must be new in relation to what was known before the filing date of the utility model right application and must differ essentially therefrom.

VL argued that the independent claim 1 is not new in light of the prior art documents D1 and D2.

The court stated that the D1 does not include a feature where an alignment beam provides a visible alignment pattern comprised of several separate spots. The invention, as presented in the independent claim 1, is therefore new in light of prior art document D1.

The court then analysed the prior art document D2. According to the court, there are some differences between the treatment presented in the independent claim 1 and the treatment presented in D2. The court ruled, however, that the functional features, mainly the separate treatments spots, are not able to add to the independent claim 1 any technical features, which would differentiate the independent claim 1 from the prior art D2.

The court ruled that the invention is not new in relation to what was known before the filing date of the utility model right application and it does not differ essentially therefrom.

Therefore, the invention is not registrable.

The appeal was dismissed.

The Market Court: Faulty Amendment of a Patent Application

Preparing a patent application requires a lot of precision. After the application is filed, there may be situations where an amendment of the application is needed. The amendment can be a way to overcome a novelty or inventive step objection. With regard to amendments, an important rule is that an amendment should not add any subject matter that is not disclosed in the original patent application. Any new matter requires a new patent application. The decision 329/16 issued by the Market Court on 6 June 2016 is a good example of that.

Background

In January 2006, person X sought patent protection on his invention called 'A district heating facility'. The application consisted of one independent claim and dependent claims 2-3. The Patent and Registration Office (PRH) gave its first technical office action in December 2006. In that office action PRH requested the applicant to specify the prior art and what are the new and characteristic features of the invention. In total, PRH issued five technical office actions regarding the application. After each technical office action, the applicant provided a new set of updated patent claim and description documents. In the end, the application consisted of one independent claim and dependent claims 2-5.

Moving from an idea to a patent (if it is granted).
Image courtesy of OpenClipartVectors at Pixabay.com

In September 2014, PRH decided to reject the application based on section 13 of the Patents Act (550/1967). The section 13 provides that an application for a patent may not be amended in such a way that protection is claimed for matter not disclosed in the application at the time it was filed. According to PRH, the applicant has amended his patent claims on several occasions by adding new features. PRH notified the applicant in all technical office actions that on those occasions the applicant shall, under section 19 of the Patents Decree (669/1980), state where those new features are to be found in the basic documents. PRH did not receive this kind of statement from the applicant.  

PRH continued by stating that the independent claim has, in accordance with section 8 paragraph 2 of the Patents Act, many unclear statements and therefore does not express precisely the subject matter for which patent protection is sought. 

Furthermore, PRH stated that the clear parts of the independent claim are lacking an inventive step, a requirement set out in section 2 of the Patents Act. The independent claim includes only conventional ways to take thermal energy from outside air with one heat exchanger and then with another to transfer the thermal energy to indoor spaces.

The Market Court

X did not agree with the decision of PRH and lodged an appeal at the Market Court. X requested the Market Court to reverse the decision of PRH. Furthermore, according to the X, the patent application should be accepted 

1) in accordance with the claims that were under examination in the decision of PRH or 
2) in accordance with the claims the appellant attached into the appeal or 
3) in accordance with the claims the appellant has provided during the Market Court proceedings.

The Market Court issued its decision 329/16 on 6 June 2016.

The Market Court started by stating that in all three scenarios mentioned above there is one independent claim and dependent claims 2-5.

The court then ruled that in all those three scenarios the independent claim adds new matter that is not disclosed in the application at the time it was filed in 2006.

Furthermore, the court ruled that in all three scenarios the independent claim includes unclear statements and that the claim lacks an inventive step.

The appeal was dismissed.

The Market Court: Cider Spirit Verlados is an Evocation of Protected GI Calvados

When is a product name an illegal evocation of a protected geographical indication (GI) of spirit drinks? This question is the core of the decision 307/16 issued by the Market Court on 31 May 2016.

Background

Viiniverla Oy (Viiniverla) started manufacturing and marketing cider spirits named 'Verlados' in 2001. Viiniverla is located in Verla village in Southern Finland. 

In 2012, European Commission requested a clarification from the Finnish authorities relating to the use of the name 'Verlados'. The Commission had received a complaint relating to an alleged misuse of the French GI 'Calvados'. 

A GI, in accordance with Article 15 of Regulation No 110/2008, is an indication which identifies a spirit drink as originating in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristic of that spirit drink is essentially attributable to its geographical origin.

The Finnish Authorities replied in 2013 and stated that the name 'Verlados' refers to the place where it is being manufactured, the village of Verla and the Verla winery. The Finnish Authorities also stated that the two names have only one syllable in common ('dos') and therefore the 'Verlados' is not evocative from the protected GI 'Calvados'. The Finnish authorities referred to an old decision of the Court of Justice (CJ) in which CJ ruled that there is a clear evocation if the term used to designate the product at issue ends in the same two syllables and contains the same number of syllables as the protected name (Consorzio per la tutela del formaggio Gorgonzola, C‑87/97). 

The Commission was not impressed and stated that the 'Verlados' is an illegal evocation of the GI 'Calvados' in accordance with Article 16(b) of the Regulation. It also threatened to open infringement proceedings against Finland if that interpretation was not accepted.

The Article 16(b) is worded as follows:

Without prejudice to Article 10, the geographical indications registered in Annex III shall be protected against:

         (b) any misuse, imitation or evocation, even if the true origin of the product is indicated or the geographical indication is used in translation or accompanied by an expression such as “like”, “type”, “style”, “made”, “flavour” or any other similar term

According to Annex III to the Regulation, 'Calvados' is registered in the category of products No 10 'Cider spirit and perry spirit', country of origin being France.

In November 2013, Sosiaali- ja terveysalan lupa- ja valvontavirasto (National Supervisory Authority for Welfare and Health) issued a decision where it prohibited Viiniverla Oy (Viiniverla) from marketing a drink named 'Verlados' as from 1 February 2014. The decision was based under section 49 paragraph 2 of Alcohol Act (1143/1994). According to that rule, the Authority can prohibit advertising or other marketing or sales promotion measure of alcoholic beverages if the labelling and other presentation of those beverages are not in compliance with the provisions and regulations issued.

The Market Court and a request for a preliminary ruling

Viiniverla appealed to the Market Court and claimed that the use of the name 'Verlados' does not infringe EU law on the protection of geographical indications.

The Market Court felt obliged to request a preliminary ruling and referred three questions to CJ. CJ answered those questions in its decision C 75/15, 21 January 2016.

(1) When assessing where there has been an “evocation” within the meaning of Article 16(b) of Regulation [No 110/2008], should reference be made to an average consumer who is reasonably well informed and reasonably observant and circumspect?

The Article 16(b) does not mention the concept of consumer. However, CJ has ruled in its earlier decisions that, for the purpose of finding the existence of an 'evocation', it is for the national court to verify, in addition to the inclusion of part of a protected name in the term used to designate the product at issue, that when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected. 

CJ continued by ruling that the purpose of the Regulation is to protect, inter alia, the attainment of a high level of consumer protection. Therefore it is necessary, as the established case-law relating to consumer protection states, to take into account of the presumed expectation of the average consumer, who is reasonably well informed and reasonably observant and circumspect.

CJ then emphasized that the concept of 'consumer' covers European consumers and not merely consumers of the Member State in which the product giving rise to the evocation of the protected geographical indication is manufactured.

(2) When assessing whether to prohibit the use of the name Verlados used to market nationally a spirit drink distilled from apples in order to protect the geographical indication “Calvados”, what importance should be given to the following facts in the interpretation of the concept of “evocation” in Article 16(b) of Regulation No 110/2008 and the application of that regulation: 

(a) the first part of the name Verlados, Verla, is a village in Finland whose name may be recognised by Finnish consumers;
(b) the first part of the name Verlados, Verla, refers to the producer of Verlados, Viiniverla Oy;
(c) Verlados is a local product produced in Verla village of which a few hundred litres on average are sold each year in the winery’s own restaurant and a limited amount by order from the State-owned alcohol business referred to in the Law on alcohol;
(d) the words Verlados and Calvados have only one syllable in common (“dos”) out of three, although the last four letters (“ados”) of the words, that is, half of the total number of letter in each word, are identical?

CJ stated, in essence, that the facts a, b and c are irrelevant. 

CJ ruled, as it is stated in its own case-law, that it has to be considered whether the products are similar and the sales names are phonetically and visually identical. Furthermore, any evidence that may show that such a relationship is not fortuitous must be taken into account.

With regard to the fact c, CJ ruled that it is irrelevant that ‘Verlados’ is a local product and mostly sold locally because the Regulation applies, in accordance with Article 1(2), to all spirit drinks placed on the market in the European Union.

With regard to the fact d, CJ specified that the referring court must take into account the fact that 'Verlados' and 'Calvados' both contain eight letters, the last four of which are identical, and the same number of syllables, and that they share the suffix ‘dos’, which confers on them a certain visual and phonetic similarity.

(3) If there is considered to be an “evocation” within the meaning of Article 16(b) of Regulation No 110/2008, may the use of the name Verlados nevertheless be authorised on one of the grounds mentioned above or on other grounds, such as that Finnish consumers at least are unlikely to imagine that Verlados is produced in France?

CJ concluded by stating that the wording of Article 16(b) clearly protects GI's from any kind of evocation, even in the absence of any likelihood of confusion. Therefore, the use of the name 'Verlados' can not be authorised if the referring court finds that there is evocation within the meaning of Article 16(b). 

The Market Court issued its decision on 31 May. 

The Market Court stated that the name 'Verlados' is used in Finland for products similar to those with the protected GI 'Calvados' and that those products have objective characteristics in common, and they are consumed, from the point of view of the relevant public, on occasions which are largely identical. 

The court then followed the CJ's guidance and affirmed that there was a clear visual and phonetic similarity between the names.

As for any evidence that may show that such a relationship is not fortuitous, the court stated that Viiniverla had mentioned that it had used an expression "aroma distillation similar to calvados", which shows that the company was very aware of a product named 'Calvados'. Moreover, the suffix 'dos' does not have any specific meaning in the Finnish language. 

Therefore, the court ruled that when the average European consumer, reasonably well informed and reasonably observant and circumspect, is confronted with the name 'Verlados' for spirit drinks the image triggered in his mind is 'Calvados', a protected GI. 

The court dismissed the appeal by Viiniverla.

The Supreme Administrative Court: Halva's Licorice Carpet Acquired Distinctiveness Through Use

The shape of a product can be a crucial element in order to gain commercial success. One can protect the shape by using different intellectual property rights. The purpose of the protection is to acquire an exclusive right to prevent the competitors from using a similar shape. Trademark protection for the shape, a three-dimensional trademark, can be a strong asset if the requirements for registrability are fulfilled.

Oy Halva Ab (Halva), founded in 1931, is a well-known confectionery manufacturer in Finland. Its specialty are extruded licorice sweets. One of its most popular products is a licorice carpet. In Halva's own words, "the product that is a result of relentless research and development work is known not only for its great taste but also for its unique shape and the three separate layers of liquorice, that you can enjoy one at a time". According to Halva, the product has been in its catalog since 1951.

Halva's licorice carpet.
Application no. T201103700.

In 2011, Halva applied to register the licorice carpet as a three-dimensional trademark in class 30 for a wide range of goods such as coffee, tea, cocoa, sugar, rice, bread, ice creams, salt, mustard and ice. The Patent and Registration Office (PRH) denied the registration (decision 18 July 2012) because the shape was devoid of any distinctive character under section 13 of the Trademarks Act (7/1964). Halva appealed to the Market Court and in its appeal, it specified that it is seeking registration in class 30 only for licorice.

Now it was up to the Market Court (decision 4 April 2014, No. 216/14) to decide whether the licorice carpet is registrable. Before arriving at its conclusion, the Court started its analysis under the section 13 of the Trademarks Act.

The article provides that:

"a trademark must be capable of distinguishing its proprietor's goods from those of others. A mark that denotes either alone or with only few alterations or additions, the kind, quality, quantity, use, price or place or time of manufacture of the goods shall not, as such, be regarded as distinctive. Neither shall a mark be regarded as distinctive, if it is solely composed of a form that is characteristic of the goods, necessary for achieving a technical result or that substantially increases the value of the goods. In assessing whether a trademark possesses distinguishing power, all the factual circumstances shall be borne in mind, particularly the length of time and extent to which the mark has been used." 

The court referred to case-law and stated that the criteria of assessing the distinctiveness of shape marks is no different from those for assessing the distinctiveness of other categories of mark. On the other hand, according to the Court, the consumers are not used to perceive the shape of the product as an indication of the origin. Licorice sweets can be categorized as consumer goods and the average consumer does not always pay attention to the shape of these sweets. The Court ruled that the shape of the licorice carpet is not distinctive enough in order to be capable of distinguishing its proprietor's goods from those of others.

Therefore, the licorice carpet is registrable only if it has acquired distinctiveness through use. 

Halva had provided evidence that it had produced carpet look-alike licorice for several decades. The Court ruled that this fact alone did not show that the licorice carpet had a distinctive character amongst a significant proportion of the relevant public.

Halva had also provided statements from retailers. According to those statements, the licorice carpet had acquired distinctiveness in Finland. The Court was not convinced and ruled that these statements are not sufficient because the distinctiveness should be judged through the eyes of the average consumer of the goods.

Halva was not ready to give up and appealed to the Supreme Administrative Court. The Court issued its decision (2519/2016) on 6 June.

The Court agreed with PRH and the Market Court and ruled that the shape of the licorice carpet itself is devoid of any distinctive character. After that, it was still necessary to assess whether the licorice carpet had acquired distinctiveness through use.

This time Halva was ready to provide a market survey as an additional evidence of acquired distinctiveness. According to the market survey, 78 % of the respondents (in total, the survey had 427 respondents) recognized the showed licorice product and 64 % (273 respondents) connected it with some company or product name. From those 273 respondents, as much as 65 % connected the product with Halva. Also 3 % of all respondents mentioned a name 'Lakritsimatto' or 'Lakumatto' (both words mean licorice carpet in Finnish and Halva has registered both of them as word marks in the Finnish trademark register) without mentioning Halva. Therefore, the spontaneous (or unaided) awareness was high.

Moreover, out of 427 respondents 61 were unsure whether they connect the product with some company or product name. From those 61 respondents, 62 % connected the product with Halva i.e. they chose Halva from a list that also had other big licorice sweet producers such as Fazer, Panda, Cloetta/Malaco and Kouvolan lakritsi. Therefore, the prompted (or aided) awareness was also relatively high.

The Court paid attention to the fact that the market survey had been done in December 2013. This was two years after Halva had applied to register the licorice carpet as a trademark. The Court ruled, however, that the market survey was valid because the licorice carpet had been in use for a long time and there was no reason to assume that any significant changes had occurred in the reputation of the mark.

The Court concluded that the market survey, as an additional evidence, showed that the licorice carpet is widely recognized by the general consuming public. Therefore, the mark had acquired distinctiveness through use under section 13 of the Trademarks Act. The Court reversed the earlier decisions and the case was sent back to PRH for the registration of the applied mark.

The Market Court Will Issue Long-Waited and Important Online Piracy Decision on 4 July

In 2015, thousands of Finnish internet subscribers received a settlement letter from Hedman Partners, a law firm representing several tv-show, movie and adult entertainment distributors. In that settlement letter, the law firm provided evidence that copyrighted material was shared from the internet subscriber's internet connection.

The alleged file-sharers were informed in the letter that they have two options. One option is to settle by paying a sum varying between 600 and 3 000 euros. The other option is to do nothing, but then face the risk ending up in court. If they lose the case in the court, the costs are most certainly higher.

According to the law firm, the copyrighted material was shared by using BitTorrent file-sharing application. BitTorrent is a peer-to-peer file-sharing protocol which is used to distribute data, especially larger files, over the internet. The IP address of the internet subscriber was logged by a technology company that had monitored the BitTorrent traffic. After that the law firm, acting on behalf of rightsholders, asked the Market Court to order the relevant internet service providers to give up the personal details of alleged file-sharers.
Obviously many people are not eager to pay those sums mentioned in the settlement letters. In October 2015, the law firm took three cases to the Market Court as civil disputes. Two of them were settled out of the court with a confidentiality clause. One of the cases proceeded all the way to the main hearing which was held in the beginning of May 2016.

Now we know that the decision in that case will be issued on 4 July.

The key points of that case are 1) identification of the infringer and 2) reasonable amount of compensation.

Identification of the infringer

The defense argued that the mere IP address does not provide a sufficient evidence that the internet subscriber was in fact behind the infringing act. For example, one can have a wireless connection which is not secured or password-protected. Anyone in the internet subscriber's apartment or even the neighbors or bypassers could have used the internet subscriber's wireless connection.

The plaintiffs were, however, ready to provide some additional evidence that the internet subscriber was the infringer.

For example, the plaintiffs showed messages posted by the internet subscriber on two separate online discussion boards. In those messages, the internet subscriber has, in the plaintiffs' opinion, confessed the infringing acts. According to the plaintiffs, the writer of those messages has to be the internet subscriber because the messages included an image of a settlement letter that had many identical details as the settlement letter that the defendant had received.

The plaintiffs also stated, inter alia, that the infringing activity was so long-lasting, regular and active that the internet subscriber should have noticed if someone else than him was using the wireless connection.

The plaintiffs also hired a private investigator to find out whether the subscriber's wireless connection was open as he had claimed. According to the investigator, the wireless connection was password-protected. Interestingly enough, the private investigator carried out his research eight months (!) after the last time the internet subscriber's IP address was logged by the technology company who monitored the BitTorrent traffic. The infringing acts occurred between 3 January and 29 March. The investigator carried out his research on 3 December.

"This Wi-Fi has a password!"
Image courtesy of Piotr Siedlecki at publicdomainpictures.net

Reasonable amount of compensation

If the Market Court is convinced that the sued internet subscriber is in fact the infringer, it has to also determine the reasonable amount of compensation under Section 57 of the Copyright Act (1961/404).

The Finnish Supreme Court has stated in its decisions 2010:47, 2007:63 and 1998:91 that the purpose of the reasonable compensation is to effectively prevent copyright infringements. The Court has also stated that the basis of the reasonable compensation should be the price of the work in a distribution channel that is the most similar to the infringing conduct. If no evidence is provided of those prices, it is appropriate to determine the reasonable compensation based on an overall consideration of the case. The overall consideration has to take into account the characteristics of the case, such as the purpose of the infringing use and how damaging the use was.

It is important to mention that in this case the plaintiffs are not seeking compensation for the reproduction of the works. It was agreed by both parties that the compensation is going to be determined only in the context of making the works available to the public.

According to the plaintiffs, the alleged file-sharer shared the movie A Walk Among the Tombstones and ten episodes of the tv-show Black Sails. The plaintiffs argued that the amount awarded as a reasonable compensation should be 1 000 euros for the movie A Walk Among the Tombstones and 750 euros for a single Black Sails tv-show episode. Altogether, the plaintiffs demand for 8500 euros in compensation and this does not include the court costs. Obviously the defense argued that the compensation should be smaller.

This year the law firm has continued to send settlement letters on behalf of right holders and the rightsholders have sued more alleged file-sharers to the Market Court. The upcoming Market Court decision will most probably have a big impact on how efficient and profitable the sending of these settlement letters and taking the cases to the court is.

Friendly Settlement in Beer Name Dispute

After a trademark is registered and advertised in the trade marks journal, the opposition period begins for anyone who has an interest to oppose the applied mark. Sometimes, during the opposition proceedings, the parties are able to reach a settlement that puts an end to opposition. This was the case in a beer name dispute between a couple months old brewery company Mustan Virran Panimo Oy (MV Panimo) and one of the largest Finnish brewery companies, Olvi Oyj (Olvi). 

MV Panimo is a company located in the city of Savonlinna in the southeast of Finland. The company wanted to use a mark 'Olavi' for beers, because it wanted to recreate a piece of the city's history. A beer with the same name was brewed in Savonlinna in the beginning of the 20th century. According to MV Panimo, the beer name 'Olavi' has its origins in the medieval stone fortress Olavinlinna, located in Savonlinna. Furthermore, the name has its origins in St. Olaf, King of Norway in 1015-1028.*

In December 2015, MV Panimo applied to register a word mark 'Olavi' in class 32 for beers. The registration was granted in February 2016 and the registration was published in the Finnish Trademark Gazette in the end of the same month. Shortly after, a big Finnish brewery company Olvi filed a notice of opposition based on its earlier word mark registration 'Olvi' in classes 32 and 33, registered in 1995. In 2008, the word mark 'Olvi' was also accepted in the list of trademarks with a reputation, established by the Finnish Patent and Registration Office.

Comparison of the marks.

After the opposition, both parties were eager to comment the dispute in media. Olvi said that a one letter difference in the marks is not enough and therefore the marks are confusingly similar. MV Panimo, on the other hand, announced that it will be using a name 'St. Olaf' for its beers and postponed the plans of using 'Olavi' until the dispute is over.* MV Panimo also applied to register a word mark 'OLAF' in class 32 for beers in the beginning of May 2016.

The beginning of the dispute had a slight David and Goliath resonance. The marketing director of MV Panimo even gave a statement in which he said that they must think how long a small company like them can fight against Goliath.*

In the beginning of June 2016 the parties reached an agreement. According to this agreement, MV Panimo is going to continue using the name 'St. Olaf' for its beer, instead of the mark 'Olavi'. Olvi thanked MV Panimo in a press release for the understanding in this issue. Also MV Panimo gave a positive statement. The parties even mentioned that there could be collaboration possibilities in the future.*

Despite the outcome, this dispute was not all bad for MV Panimo. The dispute had quite a lot of media coverage in Finland and the young and small brewery company received publicity and supporters. Therefore, there is a reason to think that the launching of the St. Olaf beer should go pretty well.

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* SOURCE: Bhose, Cilla (2016, May 11). Olvi ja pienpanimo kiistelevät tuotemerkistä - "Yhden kirjaimen ero ei riitä". Kauppalehti. [online] Available at: http://www.kauppalehti.fi/uutiset/olvi-ja-pienpanimo-kiistelevat-tuotemerkista---yhden-kirjaimen-ero-ei-riita/MBddheFU [Accessed 8 Jun. 2016].

* SOURCE: Ibid.

* SOURCE: Saarinen, Juhani (2016, May 12). Olvi vastaan Olavi – panimot kiistelevät, ovatko nimet liian lähellä toisiaan. Helsingin Sanomat. [online] Available at: http://www.hs.fi/talous/a1463016742873 [Accessed 8 Jun. 2016].

* SOURCE: Olvi, (2016, June 6). Osapuolet Sovintoon. [online] Available at: http://www.olvi.fi/web/fi/uutiset/uutinen/view/199785 [Accessed 8 Jun. 2016].

Welcome to the FinnIPR blog!

What is this blog?

This blog will provide updates regarding the intellectual property rights (IPR) in Finland.

Why does this blog exist? 

I have to admit that the main reason for this blog is quite selfish. I want to improve my knowledge of IPR and writing about them is one of the best ways to accomplish that goal. I have a great interest in IPR and I feel that writing about them would be both interesting and meaningful to me.

Another reason for this blog is that I believe that there is room for a blog that provides English updates regarding IPR in Finland. It would be amazing if this blog could help non-Finnish-speaking IPR enthusiasts with their appetite for knowledge.

Who is the writer of this blog?

The writer of this blog is a Master of Laws graduate from Finland with a great interest in IPR.