The 'Wapperverbod': in for a penny, in for a pound
In the Netherlands this is called a ‘wapperverbod’, which can be roughly translated into a ‘waving (with claims) ban’. If one party claims that his IP rights are being infringed, there should be valid IP rights, and the claim should also be acted upon. In the recent Betsoft v Bubble case the court of the Hague had to put this situation in an international perspective.
Two computer software developers make slot machine games for use on PCs. Betsoft, based in Cyprus, introduced the idea of bringing an icon in the game forward, as if coming towards the player. This was called the ‘Expandicon effect’.
Betsoft claimed it had copyright on the source code of the Expandicon effect, as well as on the look and feel it created. Betsoft had approached many parties around the world, claiming copyright infringement.
These parties were using software which replicates the Expandicon effect. This software was created and sold by Bubble, based in the Netherlands. To prevent possible future claims of infringement by Betsoft in the Netherlands, Bubble requested that Betsoft was given a wapperverbod. The request was granted.
Betsoft appealed, first on the grounds that the judge had no jurisdiction, and second that Betsoft’s copyright claims were genuine. A wapperverbod would therefore not be warranted.
"When the court compared the two codes, it became clear that the original code provided by betsoft was extracted by software used by bubble."
To answer both questions, the court had to examine whether the fear of an unlawful claim (‘wapperen’) by Betsoft was justifiable.
To determine this, the court had to look at the alleged copyright infringement by Bubble. If Bubble was infringing on Betsoft’s copyright, a future claim by Betsoft would be valid and a wapperverbod would not be warranted.
Betsoft claimed copyright on both the source code and the look and feel of the Expandicon effect. According to Betsoft, the source code used by Bubble was an exact copy of Betsoft’s code, proving infringement. When the court compared the two codes however, it became clear that the original code provided by Betsoft was extracted from software used by Bubble.
In other words, the code was compared to itself, making the fact that it was an exact copy no surprise. Betsoft also stated that the code was registered at the US Copyright Office, but the registered code bore no resemblance to the provided code.
In relation to the look and feel of the Expandicon effect, the court considered that Betsoft hadn’t proved that the look and feel created by Bubble’s effect was very similar. The court wasn’t too certain about possible protection under copyright law either, considering that the effect has been used in the movie industry for decades.
Knowing that Betsoft lacked a copyright claim on the Expandicon effect, the fear of unlawful wapperen by Betsoft was justifiable, which was confirmed by the many claims Betsoft had already sent to different parties around the world. There was a reasonable chance Betsoft would approach clients of Bubble in the Netherlands with the same claim, thereby damaging Bubble’s interests.
Since there was a reasonable possibility of a situation resulting in damages arising in the Netherlands, the case fell within the jurisdiction of the court referring to Article 5(3) EEX. Because the damages could have arisen in the Netherlands, Article 4(1) Rome II was also applicable.
The case fell within the jurisdiction of the court and it found the fear for wapperen was justified. The appeal was dismissed.
An interesting conclusion is that it is possible to get a wapperverbod without a party having started claiming its (purported) rights, and it can also result in a costs order against the party. Although Betsoft did not start claiming infringement in the Netherlands, the preceding actions in other countries were taken into account when ordering it to pay for the proceedings.
The important lesson to be learned by parties ‘waving with a ban’, is that if you do so, you should act upon it. One cannot send letters around the world claiming infringement, as Betsoft did, while hoping that someone will take you seriously and give in. Many parties requested more information, but Betsoft never acted upon its claims. This weakened its case against a wapperverbod. As Betsoft now knows: if you’re in for a penny, you’re in for pound.
