We already referred to a case concerning Lego, and, in particular, concerning Lego mini-figures and their possibility to be registered as shape marks (see here).
Now, after filing an application for registration of a Community Design with the European Union Intellectual Property Office (EUIPO) to be applied in Class 21.01 of the Locarno Agreement of 8 October 1968 with the following description: “Building blocks from a toy building set”, Lego A/S (“Lego”) got a big surprise by Delta Sport Handelskontor GmbH (“Delta”) which decided to “raise its concerns”.
Specifically, on December 8, 2016, Delta decided to challenge the validity of Lego’s application on the basis of the fact that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product and, for that reason, were excluded from protection; the claims were mostly grounded on Article 25(1)(b) of Regulation No 6/2002, along with Articles 4 to 9 of that same Regulation.
In the first instance, on October 30, 2017, EUIPO’s Cancellation Division rejected the invalidity claim while, in appeal, the ruling was overturned and the design was invalidated (by decision of the Board of Appeal – April 10, 2019) (texts of both decisions are available here under section “Decisions”).
At this point, Lego decided to bring the case in front of EU’s General Court claiming (i) the annulment of the contested decision and (ii) the upholding of the decision of the Cancellation Division.
The EU’s General Court, on March 24, 2021, annulled the appeal decision, specifying, inter alia, what follows (full text available here):
The Board of Appeal failed to assess whether the design met the requirements of the exception provided for in Article 8(3) of Regulation No 6/2002 for which “the mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection”. Since it failed to do so, it erred in law.
In order to assess whether a design product should be invalidated, all the features and/or elements of the same should be dictated by technical function, but if at least one of the features is not imposed exclusively by technical functions, the design cannot be declared invalid. In that regard, the General Court notes that the fact that the LEGO brick has a smooth surface of the upper face of the product is not present among the characteristics identified by the Board of Appeal, even though it is a feature of the appearance of the brick itself; and that
with reference to the above, the burden of proof should rely on the applicant of the invalidation query and then be ascertained by EUIPO.
Maria Di Gravio and Francesca Di Lazzaro
General Court (Second Chamber), 24 March 2021, LEGO A/S vs EUIPO, Case T‑515/19
On 16th September 2020 the United States District Court for the Central District of California had to decide if the use by an artist – known as Nicky Minaj – of the recording of lyrics and melodies of a musical work “Baby Can I Hold You” by the artist Tracy Chapman (hereinafter the “Work”) for artistic experimentation and for the purpose of securing a license from the copyright owner is fair use (full decision here). Nicky Minaj was aware that she needed to obtain a license to publish a remake of the Work as her remake incorporated many lyrics and vocal melodies from the Work. Minaj made several requests to Chapman to obtain a license, but Chapman denied each request. Minaj did not include her remake of Sorry in her album. She contacted DJ Aston George Taylor, professionally known as DJ Funk Master Flex, and asked if he would preview a record that was not on her album.
The Court recognized fair use based on the following assessments:
· the purpose of Minaj’s new work was experimentation. Since Minaj “never intended to exploit the Work without a license” and excluded the new work from her album, Minaj’s use was not purely commercial. In addition, the Court noted that “artists usually experiment with works before seeking licenses, and rights holders usually ask to see a proposed work before approving a license” The Court expressed concern that “the eradication … [these] common practices would limit creativity and stifle innovation in the music industry“;
· the nature of the copyrighted work, did not favor fair use because the composition is a musical work, which is “the type of work that is at the core of copyright’s protective purpose“;
· the amount of the portion used in relation to the work as a whole, favored fair use. Although Minaj’s new work incorporated many of the composition’s lyrics and vocal melodies, the material used by Minaj “was no more than necessary to show Chapman how [Minaj] intended to use the composition in the new work“;
· the effect of the use on the potential market or value of the copyrighted Work, favored fair use because “there is no evidence that the new work usurps any potential market for Chapman“.
Considering the factors together, the Court found that Minaj’s use was fair and granted partial summary judgment in favor of Minaj that her use did not infringe Chapman’s right to create derivative works. The Court determined that Chapman’s distribution claim has to be tried and resolved by a jury, but a settlement eliminates the need for a trial. Minaj has paid a significant sum (450.000,00 Us dollar) to settle and avoid the risk of trial. If on one hand, this case confirm that private sampling should be protected as fair use, on the other hand it sounds like a warning for artists on sampling matter. Obtaining a preliminary license – also in the land of fair use – is always the best practice, although creativity and experimentation needs – in the opinion of the writer – to be protected to empower the spread of different music genre and contribute on cultural renaissance, especially regarding hip hop music, that is historically based on sampling.
The decision offers an interesting comparison with the Pelham case (CJEU – C-476/17 Pelham GmbH and others) in order to analyze how the two different systems are evolving on sampling matter. Actually, the agreement between these two decisions is only partial.
Indeed, in Pelham the CJEU recognized the admissibility of “unrecognizable sample“. According to the CJEU “where a user, in exercising the freedom of the arts, takes a sound sample from a phonogram in order to use it, in a modified form unrecognizable to the ear, in a new work, it must be held that such use does not constitute ‘reproduction’ within the meaning of Article 2(c) of Directive 2001/29.”
Furthermore, in Pelham CJEU argue that the reproduction of a sound sample, even if very short, constitutes a reproduction that falls within the exclusive rights granted to the producer of phonogram. Considering that the US Court stressed that “not only (…) the quantity of the materials used, but about their quality and importance, too” has to be considered, according to Campbell, 510 U.S. at 587, this is probably one of the main gaps between the two decisions.
Indeed, the logical-argumentative process of the US Judge moves from a deep context analysis that implies an interpretation of sampling based on the purpose and character of the uses, according to the common-law tradition of fair use adjudication that always preferes a case-by-case analysis rather than bright-line rules.
Instead, the CJEU chose a different approach, arguing that the “free use” is a derogation not provided by the Infosoc Directive, so any reproduction act is subject to the reproduction rights notion mentioned by art.2 of each Directive. This “static” approach also (and especially?) depends on the pending – and unsolved – harmonization process of the European system of exceptions and limitations provided by the Infosoc Directive.
The US Court, instead of being based on a parameter of appreciation such as the “recognizability of hearing”, comes to the balance through an analysis of context aimed at preserving the freedom of artists to experiment, demonstrating – even in the (apparent) identity of results – more courage, as opposed to the practical approach of the European Court of Justice. The CJEU has not – in the opinion of the writer – taken the opportunity to move more decisively towards a grater balance between exclusive rights and fundamental freedoms, which should be considered the freedom to experiment for artists.
The 1st of January of each calendar year marks not only the days full of new years’ hope, resolutions, and promises, but also the public domain day. 1 January 2021, a moment full of hope with the anti-COVID vaccine rolling out, is no different for copyright law purposes. On the 1st of January, many copyright protected works fell in the public domain.
This year marked the falling into the public domain of the works of George Orwell. Born in 1903, under the real name of Eric Arthur Blair, he has authored masterpieces such as ‘1984’ and ‘Animal Farm’, which in recent years have become extremely topical and relevant. In early 2017, the sales of ‘1984’ went so high up that the book became a bestseller once again. Some have suggested this is a direct response to the US Presidency at the time in the face of Donald Trump.
Orwell passed away in 1950, which means that, following the life of the author plus seventy years rule as per Article 1 of the Term Directive, copyright in Orwell’s works expired on 1 January 2021. Despite this, in the last several years an interesting trend has prominently emerged. Once copyright in famous works, such as those at issue, has expired, the body managing the IPRs of the author has often sought to extend the IP protection in the titles by resorting to trade mark applications. At the EUIPO, this has been successful for ‘Le journal d’Anne Frank’ (31/08/2015, R 2401/2014-4, Le journal d’Anne Frank), but not for ‘The Jungle Book’ (18/03/2015, R 118/2014-1, THE JUNGLE BOOK) nor ‘Pinocchio’ (25/02/2015, R 1856/2013-2, PINOCCHIO).
This is the path that the ‘GEORGE ORWELL’, ‘ANIMAL FARM’ and ‘1984’ signs are now following. The question of their registrability as trade marks is currently pending before the EUIPO’s Grand Board of Appeal. This post will only focus on the literary work titles – ‘ANIMAL FARM’ and ‘1984’, as the trade mark protection of famous authors’ personal names is a minefield of its own, deserving a separate post.
The first instance refusal
In March 2018, the Estate of the Late Sonia Brownell Orwell sought to register ‘ANIMAL FARM’ and ‘1984’ as EU trade marks for various goods and services among which books, publications, digital media, recordings, games, board games, toys, as well as entertainment, cultural activities and educations services. The Estate of the Late Sonia Brownell Orwell manages the IPRs of George Orwell and is named after his second and late wife – Sonia Mary Brownwell.
The first instance refused the registration of the signs as each of these was considered a “famous title of an artistic work” and consequently “perceived by the public as such title and not as a mark indicating the origin of the goods and services at hand”. The grounds were Article 7(1)(b) and 7(2) EUTMR – lack of distinctive character.
The Boards of Appeal
The Estate was not satisfied with this result and filed an appeal. Having dealt with some preliminary issues relating to the potential link of ‘ANIMAL FARM’ to board games simulating a farm life, the Board turned to the thorny issue of registering titles of literary works as trade marks. The Board points out that while this is not the very first case of its kind, the practice in the Office and the Board of Appeal has been diverging. Some applications consisting of titles of books or of a well-known character are registered as marks since they may, even if they are well-known, still be perceived by the public also as an indicator of source for printed matter or education services. This was the case with ‘Le journal d’Anne Frank’. Other times, a famous title has been seen as information of the content or the subject matter of the goods and services being considered as non-distinctive and descriptive in the meaning of Article 7(1)(b) and (c) EUTMR. This was the case for ‘THE JUNGLE BOOK’, ‘PINOCCHIO’ and ‘WINNETOU’. The EUIPO guidelines on this matter are not entirely clear. With that mind, on 20 June 2020, the case has been referred to the Grand Board of Appeal at the EUIPO. Pursuant to Article 37(1) of Delegated Regulation 2017/1430, the Board can refer a case to the Grand Board if it observes that the Boards of Appeal have issued diverging decisions on a point of law which is liable to affect the outcome of the case. This seems to be precisely the situation here. The Grand Board has not yet taken its decision.
The EUIPO’s Grand Board is a bit like the CJEU’s Grand Chamber – cases with particular importance where no harmonised practice exists are referred to it (Article 60, Rules of Procedure, CJEU). The Grand Board has one specific feature which the other five ‘traditional’ Boards lack. Interested parties can submit written observations, the otherwise known ‘amicus curiae’ briefs (Article 23, Rules of Procedure of the EUIPO Boards of Appeal). In fact, in this specific instance, INTA has already expressed its position in support of the registration of the titles.
It must be observed here that when the trade marks were filed, back in March 2018, ‘Animal farm’ and ‘1984’ were still within copyright protection (but not for long). Indeed, the Estate underlines in one of its statements from July 2019 that “George Orwell’s work 1984 is still subject to copyright protection. The EUIPO Work Manual (ie, the EUIPO guidelines) specifically states that where copyright is still running there is a presumption of good faith and the mark should be registered”. While this is perfectly true, what is also important to mention here is that trade mark registration does not take place overnight, especially when it comes to controversial issues such as the question of registering book titles as trade marks.
The topic of extending the IP life of works in which copyright has expired has seen several other examples and often brings to the edge of their seat prominent IP professors, as well as trade mark examiners and Board members. Furthermore, several years ago, the EFTA court considered the registrability as trade marks of many visual works and sculptures of the Norwegian sculptor Gustav Vigeland (see the author’s photo below).
At stake here was a potential trade mark protection for an artistic work in which copyright had expired. One of these is the famous ‘Angry Boy’ sculpture shown here. The Municipality of the city of Oslo had sought trade mark registration of approximately 90 of Vigeland’s works. The applications were rejected. The grounds included not only the well-known descriptiveness and non-distinctiveness, but also an additional objection on the grounds of public policy and morality. Eventually, the case went all the way up to the EFTA court. The final decision concludesthat “it may be contrary to public policy in certain circumstances, to proceed to register a trade mark in respect of a well-known copyright work of art, where the copyright protection in that work has expired or is about to expire. The status of that well known work of art including the cultural status in the perception of the general public for that work of art may be taken into account”. This approach does make good sense as it focuses on the specific peculiarities of copyright law (e.g., different to trade mark law, copyright protection cannot be renewed), but it also considers re-appropriation of cultural expression as aggressive techniques of artificially prolonging IP protection – something, Justice Scalia at US Supreme Court has labelled as “mutant copyright” in Dastar v. Twentieth Century Fox in 2003.
In the EU, the public policy/morality ground has been traditionally relied on to object to obscene expression. The focus has been on the whether the sign offends, thus tying morality to public policy (See also another Grand Board decision on public policy and morality: 30/01/2019, R958/2017-G, ‘BREXIT’). A notable example is the attempt to register the ‘Mona Lisa’ painting as a trade mark in Germany. The sign was eventually not registered, but not due to clash with public policy and potential artificial extension of copyright through the backdoor of trade marks, but because the sign lacked distinctiveness. Consequently, the EU understands the public policy and morality ground in a rather narrow and limited manner, namely linked only to offensive use.
Overlap of IPRs happens all the time: a patent turns into a copyright claim (C-310/17 – Levola Hengelo and C-833/18 – Brompton Bicycle), whereas design and copyright may be able to co-habit in the same item (C-683/17 – Cofemel). All would agree that an unequivocal law prohibiting overlaps of IPRs is not desirable from a policy perspective. Yet, you may feel somehow cheated when your favourite novel is finally in the public domain due to copyright expiring (which, by the way, already lasts the life of the author plus seventy years), but protection has been “revived” through a trade mark. Trade marks initially last for 10 years, but they can be renewed and thus protection lasts potentially forever (what a revival!). Therefore, there may be some very strong policy reasons against this specific type of IP overlap and extension of IPRs. Like the European Copyright Society has said in relation to Vigeland, “the registration of signs of cultural significance for products or services that are directly related to the cultural domain may seriously impede the free use of works which ought to be in the public domain. For example, the registration of the title of a book for the class of products including books, theatre plays and films, would render meaningless the freedom to use public domain works in new forms of exploitation”. To that end, Martin Senftleben’s new book turns to this tragic clash between culture and commerce. He vocally criticises the “corrosive effect of indefinitely renewable trademark rights” with regard to cultural creativity.
As for ‘Animal farm’ and ‘1984’, the EUIPO’s first instance did not go down the public policy grounds road. This is unfortunate as lack of distinctiveness for well-known titles such as ‘Animal Farm’ and ‘1984’ is difficult to articulate as the Board of Appeal itself underlines – the Office’s guidelines are confusing (some titles have been protected and others not). Besides, lack of inherent distinctiveness can be saved by virtue of acquired distinctiveness (something the Estate of the Late Sonia Brownell Orwell has explicitly mentioned they will be able to prove, should they need to). Considering that the rightholder here would be the Estate of the Orwell family, proving acquired distinctiveness of the titles for the requested goods and services would not be particularly difficult. On that note, a rejection on the ground of public policy/morality can never be remedied through acquired distinctiveness. Thus, it would perhaps have been more suitable to rely on public policy and establish that artificially extending the IP life of these cultural works is not desirable.
Well, the jury is out. One thing is for sure – the discussion at the Grand Board will be heated.
“This article was automatically written by Tencent Dreamwriter robot”
Nanshan’s Court got certainly worldwide noticed for a pivotal decision, namely “Shenzhen Tencent Computer System Co., Ltd. (“Tencent”) vs Shanghai Yingxu Technology Co., Ltd. (“Yingxu Technology”)” (full text available here).
With this judgement, the Chinese Court ruled in favor of recognizing protection to AI-generated content under Copyright Law.
In August 2018, Tencent published an article on the Shangai stock exchange index on its website, which terminated with the following statement: “This article was automatically written by Tencent Dreamwriter robot”;
The article was written with the support of the software Dreamwriter;
Tencent claimed that Dreamwriter computer software was a data set and algorithm-based intelligent writing assistance system, independently developed by Tencent Technology (Beijing) Co., Ltd (an affiliate of Tencent), then licensed to Tencent (see claimhere);
Yingxun Technology published the same article on the Shangai stock exchange index on its website;
Tencent claimed, inter alia, copyright infringement since, according to its point of view, the article on Shangai stock exchange was protectable under copyright law and the rights were attributable to it;
The Chinese Court (specifically, the Court of Nanshan) ruled in favor of recognizing protection to an article written with the support of an AI under Chinese Copyright Law, sustaining – in brief – that the article (a) could be included within the scope of protection being a literary work and that (b) “creative choices” were made by the team who selected the data to be included in the AI which then was involved in the making of the work.
The decision here addressed represents a pivotal decision with reference to AI-generated content protection.
Notwithstanding the above, please note that of course the discussion on protectability and ownership of AI-generated content is still open at a worldwide level.
Francesca Di Lazzaro and Maria Di Gravio
Court of Nanshan (District of Shenzhen) 24 December 2019 – Case No. (2019) Yue 0305 Min Chu No. 14010, Shenzen Tencent Computer System Co., Ltd. vs Shanghai Yingxu Technology Co., Ltd.
Affectionate readers of this blog will already be familiar with the Italian rules on the reproduction of cultural heritage as well as with two 2017 Court decisions that dealt with unauthorized reproductions of, respectively, the Teatro Massimo of Palermo and the David by Michelangelo (see here) (for an earlier dispute over a controversial picture of the David “bearing arms”, see here).
Among the many Italian public entities having the right to authorise the reproduction of their cultural heritage assets, those having rights on the David by Michelangelo in particular seem to be the most aware of their prerogatives, as in early 2019 the Court of Florence was called to rule on yet another case involving this Renaissance masterpiece (the full decision is available here).
The facts of the case are rather simple: Brioni, a prestigious Italian menswear couture brand, launched an advertising campaign (consisting of a video and some pictures) centred on a full-scale marble replica of the David by Michelangelo wearing a tailor made suit from Brioni’s couturiers.
The replica had been manufactured by an Italian sculpture workshop in 2002 and then used for a couple of other projects before being lent for free to Brioni for their campaign in 2018.
The Italian Ministry of Cultural Heritage and Activities started urgency proceedings before the Court of Florence against both Brioni and the workshop asking, inter alia, for an interim injunction against the use of the David’s image for profit purposes.
Upon commencement of the proceedings, the advertising campaign was immediately withdrawn, and the sculpture workshop undertook not to further use the replica for future events without the Ministry authorization.
The Court to Florence therefore rejected the petition for interim relief on grounds of lack of urgency. That said, in a meaningful obiter dictum, the Court briefly touched upon some of the substantive issues that were at stake.
According to the Court, among these issues were in particular (i) “the exact scope of the concept of “reproduction” [and] of its object pursuant to Articles 106-108 of the Code of Cultural Heritage”; and (ii) whether the contested use of the David constituted a “creative re-elaboration” pursuant to Art. 4 of the Italian Copyright Law – rather than a reproduction. The Court of Florence did not provide an answer to those questions; but the very fact that the Court felt the need to mention them, made it clear that the answer would have been far from obvious.
The first of these issues appears to be of capital importance and is arguably linked to the second one.
The scarce case-law that dealt with cases of reproduction of Italian cultural heritage seems to have taken it for granted that the notion of reproduction pursuant to Art. 107 of the Code of Cultural Heritage could be borrowed from copyright law.
This was in fact confirmed in 2013 by the Court of Cassation, which in a case involving the sale of replicas of the fossilized skull of a Neanderthal (the Altamura Man – see picture below), ruled that, in principle, “it is indeed possible to refer to the provision of copyright law that defines the concept of reproduction”, i.e. Art. 13 of the Italian Copyright Law according to which “the exclusive right of reproduction concerns the multiplication of copies of the work in all or in part, either direct or indirect, temporary or permanent, by any means or in any form, such as copying by hand, printing, lithography, engraving, photography, phonography, cinematography, and any other process of reproduction” (Italian Court of Cassation, decision no. 9757/2013).
Eventually, however, the Court of Cassation concluded that no reproduction had taken place in that case, because the replica had been created without reproducing the actual shape of the skull (which was for the most part embedded in a cave and therefore not even visible), but with “an hypothetical reconstruction, based on a series of scientific findings and reconstructive hypotheses, of what could be the entire cranial structure”. According to the Court of Cassation, this resulted in “a new work which, as such, is the subject of autonomous protection under copyright law”.
It seems possible to read the Court of Cassation decision as follows: where a given cultural heritage asset is not literally copied but independently recreated in the context of a new creative work, this does not constitute a reproduction pursuant to the Code of Cultural Heritage.
Indeed, it has been noted that “the copies obtained by a specific (moulded) impression of the original piece are reproductions, and the ones obtained by a free sculpting or shaping operation (creation) represent different actions. In the latter case, the work is certainly closer to an independent artistic action than to a copying act. Digital models share the same difference: any digital 3D model may be the result of the reproduction of an existing object (through laser scanners or the process of photogrammetry), or the result of a modelling (creation from scratch) operation (see here).
In this perspective, in the 2019 Court of Florence case, Brioni had defended itself by claiming that the advertising campaign did not reproduce the original David by Michelangelo, “but rather a different asset, created by a sculpture workshop, in combination with a tailor’s work”.
Plainly transposing copyright law notions into cultural heritage law could have spiralling consequences. Especially if one considers that the Code of Cultural Heritage also provides for criminal penalties against “anyone who, in order to profit from it, […] reproduces a work of painting, sculpture or graphics, or an object of antiquity or of historical or archaeological interest” (Art. 178).
Should Matt Groening be jailed for up to 4 years? (Matt Groening being the creator of the animated TV series “The Simpsons” where the following image comes from).
Probably not. In fact, in regard of this criminal provision, the Court of Cassation has been more categorical: “reproduction shall mean copying the work in such a way that the copy can be confused with the original” (Court of Cassation, decision no. 29/1996).
Mr. Groening can breathe a sigh of relief, this time (criminally speaking, at least).
Another related issue, which to our knowledge has not been expressly tackled by case-law yet, is whether the Code of Cultural Heritage provides for an exclusive negative right, allowing rightsholders to prevent any third party from reproducing its subject matter (again, just like copyright law) or merely for a right to a compensation in case a reproduction takes place (as maintained by POJAGHI, Beni culturali e diritto d’autore, Dir. aut., 1/2014, 153).
Policy considerations could suggest the latter. In the vast majority of cases, cultural heritage assets are part of the public domain (at least in a copyright perspective). Why leave it to the unquestionable discretion of various public entities to authorise their reproductions? Shouldn’t rightsholders at least prove some kind or reputational damage to stop the unauthorised use of a given reproduction?
It has also been argued that, the Code of Cultural Heritage being a text of public law, the only possible consequences in case of a violation of its provisions would be administrative sanctions – not injunctions or other remedies typical of intellectual property law (see here).
In the past, the Court of Florence seems to have – perhaps too hastily – borrowed from the copyright/IP regime of remedies. Specifically, it did not hesitate to issue a (pan-European) interim injunction against the unauthorised photographic reproduction of the David by Michelangelo in the promotional materials of a travel agency. This was done on the grounds that “the indiscriminate use of the image of cultural assets is liable to diminish their attractiveness” (which is particularly counterintuitive, considering that the travel agency was using the materials to promote guided visits to the actual David). Furthermore, it also issued additional – and rather afflicting – orders of withdrawal of all the promotional materials from the market, destruction of those materials, destruction of all instruments used to produce or market those materials, publication of the decision on several national newspapers and magazines, as well as online, and – for every single order – very high penalties in case of non-compliance (see the 2017 decision mentioned at the beginning of this post).
The Court of Milan, on the other hand, has proven to be more cautious. In a 2015 case involving the unauthorized photographic reproduction in e-books of a number of drawings from the Fondo Peterzano (which is part of the Italian cultural heritage), it ruled that “in the absence of any appreciable prejudice deriving from the publication of the reproductions, […] the request for an injunction from further commercialisation must be rejected” (see here).
All in all, the interpretation of the Italian rules on the reproduction of cultural heritage is not 100% clear yet, but the increasing awareness of the subject by public entities will most likely lead to other disputes in the near future, which could shed more light on this topic.
Emanuele Fava – Nicoletta Serao
Court of Florence, 2 January 2019, MIBAC vs. Brioni S.p.a., case Docket No. 15147/2018
Svenskt Tenn, as trademark and copyright holder over a renowned design pattern of a furnishing fabric, filed a lawsuit against Textilis, a UK company that sells textiles in the UK, arguing infringement of its rights and asking for an injunction prohibiting such sales.
Textilis in turn filed a counterclaim arguing for the invalidation of the EUTM on the grounds of lack of distinctiveness (Article 7(1)(b) EUTMR) and since it would consisted of a shape which gives substantial value to the goods (Article 7(1)(e)(iii) EUTMR).
On March 22, 2016 the Stockholm District Court found that Textilis was guilty of trade mark and copyright infringement. The court noted that Textilis had not provided any evidence that the trade mark in question lacked distinctiveness. In relation to Article 7(1)(e)(iii), the court dismissed the claim simply based on the fact that the contested trade mark does not consist of “a shape” within the meaning of Article 7(1)(e)(iii) of EUTMR.
Textilis then appealed that decision before the Court of Appeal, Patents and Market division, in Stockholm.
The Swedish Court of Appeal focused on the interpretation of Article 7(1)(e)(iii) of Reg. 207/2009. In particular, the CJEU was asked to rule on the meaning of the wording “consist exclusively of the shape” (used both in the original text of the EUTMR provision and in the new Regulation No 2015/2424 (“EUTMR as amended”) which entered into force on March 23, 2016) and whether its scope encompasses a sign consisting of the two-dimensional representation of a two-dimensional product, such as the fabric decorated with the sign in question.
The CJEU observed that, since the EUTMR does not provide any definition of the term “shape”, its meaning must be established with reference to its usual meaning in everyday language, while also considering the context in which it occurs and the purposes of the rules to which it belongs.
The CJEU affirmed that “it cannot be held that a sign consisting of two-dimensional decorative motifs is indissociable from the shape of the goods where that sign is affixed to goods, such as fabric or paper, the form of which differs from those decorative motifs”.
The CJEU recalled its previous Louboutin decision (Case C‑163/16), where it established that the application of a particular color to a specific location of a product does not mean that the sign in question consists of a “shape” within the meaning of Article 3(1)(e)(iii) of Directive 2008/95. This is because what the applicants intended to protect through the trademark registration in Louboutin was not the form of the product or part of the product on which it may be affixed, but only the positioning of that color in that exact location.
The Court also added that the fact that the drawings covered by the Trademark enjoy copyright protection does not affect this finding in any way.
Therefore, the CJEU concluded that the exclusion from registration established in Article 7(1)(e)(iii) of EUTMR is not applicabletothe sign at issue in the main proceedings on the grounds that “a sign such as that at issue in the main proceedings, consisting of two-dimensional decorative motifs, which are affixed to goods, such as fabric or paper, does not ‘consist exclusively of the shape’, within the meaning of that provision”.
Judgment of the Court (Fifth Chamber) of 14 March 2019, Textilis Ltd and Ozgur Keskin v Svenskt Tenn Aktiebolag, Case C-21/18
On November 13 2018, the Court of Justice of the European Union (CJEU) has handed down its judgment in the case Levola Hengelo BV v. Smile Foods BV(C-310/17, ECLI:EU:C:2018:899) answering to a request for a preliminary ruling referred by the Regional Court of Appeal, Arnhem-Leeuwarden, Netherlands, concerning whether copyright could vest in the taste of a spreadable cream cheese called ‘Heksenkaas’ and produce since 2007.
The request for preliminary ruling was made in a proceedings concerning an alleged infringement of intellectual property rights relating to the taste of such a product by Smilde, a company manufacturing a taste-alike product called ‘Witte Wievenkaas’.
Until this judgement, there was wide divergence in the case-law of the national courts of the European Union Member States when it comes to the question as to whether a scent may be protected by copyright.
While countries as Italy and the Netherlands accepted in principle the possibility of recognising copyright in the scent of a perfume (see. judgment of 16 June 2006, Lancôme, NL:HR:2006:AU8940), other countries such as France or Great Britain has rejected such possibility (Cour de Cassation, judgment of 10 December 2013,FR:CCASS:2013:CO01205).
This is the first time that the CJEU rules on the copyright of the taste of a food product.
Until now, the Court has taken a position only in respect of smells’ registration as trademarks in Europe. The CJEU held in Sieckmann v Deutsches Patent- und Markenamt(Case C-273/00, 12 December 2002) that “smells” are capable of performing the function of a trademark, but they are not capable of registration, since they cannot be represented in a trademark register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner.
In the present case, the CJEU ruled that a company should not have the right to copyright the flavour of a food product on very similar grounds.
Following the AG Melchior Wathelet’ s Opinion, the Court stated that the flavour of food can not be regarded as a “work” under Directive 2001/29.
For there to be a ‘work’ as per Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
“That is because, first, the authorities responsible for ensuring that the exclusive rights inherent in copyright are protected must be able to identify, clearly and precisely, the subject matter so protected. The same is true for individuals, in particular economic operators, who must be able to identify, clearly and precisely, what is the subject matter of protection which third parties, especially competitors, enjoy”.
“Secondly, the need to ensure that there is no element of subjectivity –– given that it is detrimental to legal certainty –– in the process of identifying the protected subject matter means that the latter must be capable of being expressed in a precise and objective manner” (decision, para. 41).
“Unlike, for example, a literary, pictorial, cinematographic or musical work, which is a precise and objective form of expression, the taste of a food product will be identified essentially on the basis of taste sensations and experiences, which are subjective and variable since they depend, inter alia, on factors particular to the person tasting the product concerned, such as age, food preferences and consumption habits, as well as on the environment or context in which the product is consumed” (decision para. 42).
Moreover, “it is not possible in the current state of scientific development to achieve by technical means a precise and objective identification of the taste of a food product which enables it to be distinguished from the taste of other products of the same kind” (decision para. 43).
It must therefore be concluded that the taste of a food product cannot be pinned down with precision and objectivity and, consequently, “cannot be classified as a ‘work’ within the meaning of Directive 2001/29” (decision para. 44).
This case is particularly interesting as the CJEU attempt for the first time to harmonise the meaning of “works” at EU level, giving to it “an autonomous and uniform interpretation throughout the European Union”.
This should limit the ability for national courts to assess autonomously the protectability of non-conventional categories of work (such as the smell of perfume) and contribute to favour a uniform application of EU law.
While the author shares the CJEU’s concerns about granting copyright protection to smells which cannot be identified precisely, doubt remains about whether copyright protection should be granted to them, when the available technology should make it possible such objective identification in the next future.
Likewise in the Sickmann case, it seems that the CJEU would have preferred to provide a non-definitive response to the issue.
CJEU, 13 November 2018, Levola Hengelo BV v. Smile Foods BV, C-310/17, ECLI:EU:C:2018:899
Cloud Service Providers (CSPs) are relatively new intermediaries acting as “service providers” within the meaning of the Directive 2000/31/EC (i.e. any natural or legal person providing an information society service). They are commonly intended as the suppliers of the virtualized technical infrastructures where digital contents can be stored, distributed or communicated to the public and where computing resources can be shared between a number of clients. Thus, CSPs are usually not involved into responsibilities for illicit activities conducted through their means, since their role is considered merely passive in providing the technical infrastructure used by the clients.
It is worth noting that in some recent EU case law (see CJEU, C-265/16, V-CAST case) and in the process of approval of the a new EU Copyright Directive in the Digital Single Market (see the draft text approved last September by the European Parliament here and our comments here and here) are emerging signs of evolutions in the categorization of the CSPs, with a distinction between “active” CSPs and “passive” CSPs. This process seems not different from what has already happened in the context of the categorization of hosting service providers, where an higher level of responsibility is requested to those providers which play an “active” role (see our previous posts here, here and here).
Definition of Cloud Service Providers
Since there is no legal definition of CSPs available at EU level, the notion of CSP has to be reconstructed in different sources of law, at national and international level (see here). In the Italian legal system AgID – Agenzia per l’Italia Digitale introduced (see here) a legal definition of Cloud as “a set of remote technical resources utilized as virtual resources for memorization and elaboration in the context of a service”. According to this definition, the main features of the Cloud are that: (a) it entails a set of technical resources that are remotely available (this means essentially via online connection); (b) the resources are considered as virtual resources (this means only for their overall processing capacity and not as the sum of single hardware and software); (c) the resources are used for offering specific services (this means that there is a clear distinction between the services offered and the equipment used for providing such services).
There are some differences between this definition and other definitions available at international level. According to the NIST, the US National Institute of Standards and Technologies, “Cloud computing is a model for enabling ubiquitous, convenient, on-demand network access to a shared pool of configurable computing resources (e.g., networks, servers, storage, applications, and services) that can be rapidly provisioned and released with minimal management effort or service provider interaction.” According to the EU Communication on the European Cloud Initiative dated 19th April 2016– COM (2016) 178, “the Cloud can be understood as the combination of three interdependent elements: the data infrastructures which store and manage data; the high-bandwidth networks which transport data; and the ever more powerful computers which can be used to process the data.”
The NIST definition is more oriented to describe functional aspects of Cloud and the advantages in terms of accessibility and modularity of Cloud services, while the EU Commission definition focuses on structural and network aspects of Cloud. The AgID definition sounds pretty generic and does not mention some peculiar features of Cloud, such as the share of resources, the access on demand, the minimal management effort, the connection with high-bandwidth networks; the absence of such features entails that a wider variety of services can be considered Cloud services under the AgID Rules, even if they do not necessarily have some peculiar features of Cloud services.
The V-Cast case and the distinction between “active” and “passive” Cloud Service Providers
In the recent EU case law between V-Cast and RTI, the CJEU has ruled on a video-recording service of TV broadcasts through Cloud storage. The main result of this judgment of the Court is that V-Cast video-recording service has been found illicit in light of the Infosoc Directive. More in detail, the Court ruled that the Infosoc Directive, in particular Article 5(2)(b) thereof, must be interpreted as precluding national legislation which permits a commercial undertaking to provide private individuals with a Cloud service for the remote recording of private copies of works protected by copyright, by means of a computer system, by actively involving itself in the recording, without the rightholder’s consent. An interesting aspect of this decision seems to be the distinction drawn by the Court between “active” and “passive” Cloud Service Providers. Indeed, by describing the conditions under which the active CSP can be found liable, the Court seems implicitly enucleating also the conditions under which the passive CSP cannot be considered liable.
V-Cast is a company incorporated in the UK which makes available to its customers via the Internet a video-recording system, in storage space within the Cloud, for terrestrial programmes of the Italian broadcaster RTI, among others. The user selects a programme on the V-Cast website, which includes all the programming from the television channels covered by the V-Cast service. The user can specify either a certain programme or a time slot. The system operated by V-Cast then picks up the television signal using its own antennas and records the time slot for the selected programme in the Cloud data storage space indicated by the user. The storage space in the Cloud is purchased by the user from another provider.
More in detail, according to the CJEU under Article 5(2)(b) of the Directive 2001/29/CE, Member States may provide for exceptions or limitations to the reproduction right in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial. Moreover, Article 5(5) of this Directive states that the exceptions and limitations provided for, inter alia, in Article 5(2) of the Directive will only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject matter and do not unreasonably prejudice the legitimate interests of the rightsholder.
The Court has clarified that, in order to apply the exception for private copying, it is not necessary that the technical means used for reproduction purposes are directly available to the private users but they can be provided also by third party operators. The core element to figure out the correct legal interpretation is the type of activity offered by V-Cast to its users. In the Court’s opinion, such activity cannot be considered as a mere supply of Cloud storage, also because the storage itself is not provided by V-Cast but by another provided on behalf of V-Cast. V-Cast was offering a more comprehensive service, inclusive of the (unauthorized) access to the RTI broadcasts over DTT, their reproduction and conversion into another format for distribution over the Internet and their storage, on user’s request, in a Cloud storage service for subsequent access by users.
The service offered by V-Cast does not amount only to a violation of the reproduction right, since no private copying exception is applicable to such service, but can also be considered illicit according to Article 3 of the Directive 2001/29/CE, which prohibits any unauthorized communication to the public, including the making available of a protected work or subject matter, given that, as is apparent from recital 23 of the Directive, the right of communication of works to the public should be understood in a broad sense covering any transmission or retransmission of a work to the public by wire or wireless means, including broadcasting.
Even if the Court’s judgment is very specific and tailor-made for the V-Cast service, it is also interesting to understand what can be arguable reading this judgment a contrario. The mere provision of Cloud storage services of audio-visual contents, with reproductions made on individual requests of end-users, could be considered, at certain conditions, covered by the private copying exception since: (i) it is not a necessary requisite the fact that the users possess the reproduction means or equipment, given that such reproduction can be made also via means or equipment made available by third-party operators (§ 35 of the judgment); (ii) the provider which merely organizes the reproduction on behalf of the users could be considered within the limits of the private copying exception, where the provider does not play an active role and does not interfere with other exclusive rights, such as the communication to the public (§ 37-38 of the judgment).
The proposal of amendments to the EU Copyright Directive: the role of passive CSPs
The distinction between active and passive CSPs is part of the discussions around the proposal of a new Copyright Directive in the Digital Single Market, at least according to the Amendments to such Directive adopted by the European Parliament on 12 September 2018. With the Amendment 143 for introducing a new Recital 37 a, the European Parliament has proposed to introduce the definition of an Online Content Sharing Service Provider, which should encompass those Providers the main purposes of which is to store and give access to the public or to stream significant amounts of copyright protected content uploaded / made available by its users, and that optimise content, and promote for profit making purposes, including amongst others displaying, tagging, curating, sequencing, the uploaded works or other subject-matter, irrespective of the means used therefor, and therefore act in an active way.
The definition of Online Content Sharing Service Provider is relevant also because such Providers should not benefit from the liability exemption provided for in Article 14 of Directive 2000/31/EC (i.e. the safe harbour provision for hosting providers). What is relevant for excluding certain providers from the safe harbour regime is the fact that certain providers play an active role, in different ways (but mainly with an intervention aimed at creating added value in the supply of user generated contents), since the safe harbour regime was originally thought for mere technical service providers (in Recital 32 of the E-Commerce Directive is made clear that the role of the ISP which can enjoy limitations to liability “… is of a mere technical, automatic and passive nature, which implies that the information society service provider has neither knowledge of nor control over the information which is transmitted or stored”).
In its proposal of amendments, the European Parliament has expressly mentioned that also “Providers of cloud services for individual use which do not provide direct access to the public … should not be considered online content sharing service providers within the meaning of this Directive”. This provision, if approved, should be for the benefit of mere Cloud storage services, such as Dropbox o iCloud, where the request of reproduction is made by the private users and also the access to the stored contents is limited to the users with an account associated to those stored contents. This approach seems not far from the conclusions of the CJEU in the V-Cast case, at least considering what are the features of an active CSP in the opinion of the Court, and is the clear sign of the emerging distinction from a legal standpoint between active and passive Cloud Service Providers.
CJEU – Judgment of the Court (Third Chamber) of 29 November 2017; VCAST Limited v RTI SpA; ECLI:EU:C:2017:913
Amendments adopted by the European Parliament on 12 September 2018 on the proposal for a directive of the European Parliament and of the Council on copyright in the Digital Single Market (COM(2016)0593 – C8-0383/2016 – 2016/0280(COD))
In yesterday’s session, the European Parliament approved the proposed Directive on Copyright in the Digital Single Market [see our previous comments here, here, and a more detailed position paper, here]. MEPs voted 438-226 with 39 abstentions.
Here is the text passed – a compromise solution that slightly changes from the previous version rejected by the European Parliament back in July.
Among the most controversial provisions:
the text and data mining (TDM) exception has been confirmed in its original structure (limited to research organizations). The new version adds an optional additional TDM exception (Article 3a) that applies in favor of lawful users except such TDM usage has been expressly reserved by the right holder.
the ancillary right for press publishers (art. 11) has been slightly amended:
1. Member States shall provide publishers of press publications with the rights provided for in Article 2 and Article 3(2) of Directive 2001/29/EC so that they may obtain fair and proportionate remuneration for the digital use of their press publications by information society service providers.
1a. The rights referred to in paragraph 1 shall not prevent legitimate private and non-commercial use of press publications by individual users.
2a. The rights referred to in paragraph 1 shall not extend to mere hyperlinks which are accompanied by individual words.
4. The rights referred to in paragraph 1 shall expire 5 years after the publication of the press publication. This term shall be calculated from the first day of January of the year following the date of publication. The right referred to in paragraph 1 shall not apply with retroactive effect.
Recital 33 specifies that “the protection shall also not extend to factual information which is reported in journalistic articles from a press publication and will therefore not prevent anyone from reporting such factual information”. This seems a bit in contrast with the provision of 2a that allows reporting only “individual words”.
As regards article 13, filtering obligations have been only apparently removed, since in case right holders are not happy to license their contents, UGC platforms shall cooperate to block such contents
1. Without prejudice to Article 3(1) and (2) of Directive 2001/29/EC, online content sharing service providers perform an act of communication to the public. They shall therefore conclude fair and appropriate licensing agreements with right holders.
2. Licensing agreements which are concluded by online content sharing service providers with right holders for the acts of communication referred to in paragraph 1, shall cover the liability for works uploaded by the users of such online content sharing services in line with the terms and conditions set out in the licensing agreement, provided that such users do not act for commercial purposes.
2a. Member States shall provide that where right holders do not wish to conclude licensing agreements, online content sharing service providers and right holders shall cooperate in good faith in order to ensure that unauthorised protected works or other subject matter are not available on their services. Cooperation between online content service providers and right holders shall not lead to preventing the availability of non-infringing works or other protected subject matter, including those covered by an exception or limitation to copyright. […]
Article 2(4b) sets out a very complex definition of the UGC platforms affected, taking into account the CJEU case law: “‘online content sharing service provider’ means a provider of an information society service one of the main purposes of which is to store and give access to the public to a significant amount of copyright protected works or other protected subject-matter uploaded by its users, which the service optimises and promotes for profit making purposes“. Recital 37a adds that this is “including amongst others displaying, tagging, curating, sequencing, the uploaded works or other subject-matter, irrespective of the means used therefor, and therefore act in an active way.” It then excludes from the definition of online content sharing service providers microenterprises and small sized enterprises, as well as service non-commercial providers such as online encyclopaedia or providers of online services where the content is uploaded with the authorisation of all right holders concerned, such as educational or scientific repositories.
Article 12a protecting sport event organizers has been introduced at a later stage (with no impact assessment).
This compromized version shows some slight improvements, despite the original defects of the Proposal still remain unsolved. Now the trilogue negotiations amongst the Parliament, the Council and the Commission will start.
Algorithms are often used for managing complex administrative proceedings where multiple data and parameters have to be analysed to produce a result. Since algorithms can be protected under copyright laws as software (including their source code), it is questionable whether copyright protection might limit the right to access of interested parties in administrative proceedings. In two recent cases (here and here), the Italian Administrative Court of Lazio (TAR Lazio) has clarified the nature of the electronic administrative document and the scope of the right to access pursuant to Law n. 241/1990with regard to the source code of an algorithm compiled by a software house on request by the Public Administration. The cases at stake have been promoted by a number of Italian trade unions against the Ministry of University and Education (“MUIR”) with the purposes of gaining access to the source code of the algorithm used by MUIR to manage the territorial relocation of school professors under mobility procedures.
Upon first request, the MUIR refused access to the source code of the algorithm developed by a software house on MUIR’s request on basis of the following arguments: (i)the source code itself cannot be considered part of the electronic administrative document and, consequently, does not imply the right to access of interested parties in administrative proceedings, and (ii)the source code enjoys the copyright protection as software and the access to the source code would prejudice the intellectual property rights of the software house. More in detail, MUIR has held that the disclosure of a document describing the way of functioning of the algorithm could be considered sufficient protection for the trade unions and that the Legislative Decree n. 97/2016 (Art. 6) on the civic right to access (for preventing corruption and enhancing transparency in the public sector) expressly excludes access to the acts of the Public Administration when the access could prejudice the economic interest of private parties, thus included their intellectual property rights.
In the Administrative Court’s opinion, the MUIR must allow access to the source code of the algorithm since it can be considered part of the administrative proceeding subject to the right to access of interested parties. MUIR has requested the software house to compile the algorithm with the specific purpose of managing in electronic form the public procedure of territorial relocation of school professors under mobility, according to public rules and collective employment agreements. From a structural point of view, the outputs of the algorithm: (i) are the results of the combination/elaboration of data collected in various endoprocedural acts and (ii) make application of the public rules on territorial mobility.
Taking into consideration the ratio of the right to access in administrative procedures, also the source code of the algorithm enjoys the nature of electronic administrative document and such nature implies that right to access should be allowed also with regards to algorithm. Reasoning to the contrary will lead to the unacceptable consequense that the right to access could be automatically excluded by decision of the Public Administration to manage the administrative proceeding by electronic means. TAR Lazio further clarified the notion of electronic administrative document which, in the Court’s opinion, should not include only those administrative documents formed via electronic means (for the purpose of documentation) but should also include those administrative documents where the elaboration of contents and data (for the purpose of issuing an output) are taken into account.
Also the copyright protection of software (which encompasses also the source code) has not been considered by the Court as an argument for excluding the right to access to the algorithm. First of all, TAR Lazio acknowledges that software can be protected under copyright laws not only as an informatic language but also as a creative work resulting from the use of a certain informatic language. In the case at stake, the algorithm is a software created for a specific purpose of the Public Administration and, in the absence of any indication to the contrary in the agreement between the PA and software house, can be assumed that the software house has transferred to the PA all the economic rights in the algorithm. In the Court’s opinion, the nature of creative work of the algorithm should not interfere with the right to access in the administrative proceedings of interested parties, since the right to access does not prejudice the right to exploitation of intellectual properties (any reproduction made by the interested parties is functional to the exercise of rights to control the administrative proceeding only and not to the commercial exploitation of the algorithm).
In addition, TAR LAZIO considered that is not relevant for excluding the right to access to the source code of the algorithm the fact that: (i) the source code is a pure informatic language unreadable by the public officers and written by a private company (i.e. the software house on behalf of the PA) and (ii) the source code is compiled for the mere application of public rules and collective labour agreements, which are accessible themselves even without direct access to the source code. The Court ruled in favour of the right to access to the source code also on the basis that what impact the giuridical position of private individuals are the outputs of the algorithm.
These interesting administrative rulings offer a clear and deep reconstruction of the notion of electronic administrative document (expanding such notion to include also algorithms) but should be subject to further analysis with regards to the asserted strike of balance between the right to access and the protection under copyright laws of the source code, exspecially taking into consideration possible future cases where the PA should make use of algorithms: (a) not specifically developed for a single administrative proceeding (under the assumption of a complete transfer of intellectual property rights) and/or (b) based on more sophisticated technologies licensed to the PA under a proprietary scheme.
TAR Lazio, case No. 3742/2017, 21 March 2017, CISL, UIL, SNALS Vs MUIR (President of the Court: Hon. R. Savoia; Judge-Rapporteur Hon. M.C. Quiligotti)
TAR Lazio, case No. 3769/2017, 22 March 2017, Gilda Vs MUIR (President of the Court: Hon. R. Savoia; Judge-Rapporteur Hon. M.C. Quiligotti)