A PUZZLING DECISION: FREEDOM ON TOYBLOCKS PRODUCTION MARKET vs LEGO’S PROTECTION

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

HAPPY EASTER EVERYONE FROM IPlens

“To Sample, Or Not To Sample, That Is The Question”

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.

Matteo Falcolini

Chapman v. Maraj No. 2:18-cv-09088-VAP-SS (C.D. Cal. Sept. 16, 2020)

What happens when copyright protection expires? Trade mark/copyright intersection and George Orwell’s ‘Animal farm’ and ‘1984’

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.

Comment

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).

‘Angry Boy’ by Gustav Vigeland, Vigeland park, Oslo, photo by Alina Trapova

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 concludes thatit 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.

Alina Trapova

Chip patents infringement: Texas jury orders Intel to pay $2.18 billion

On March 2, 2021, a Texas jury (US District Court for the Western District of Texas, Waco), has handed down a verdict ordering Intel Corporation to pay $2.18 billion as a result of the infringement of two patents held by the company VLSI Technology LLC. (full jury’s verdict form available here).

The jury’s verdict was given against Intel after losing a patent-infringement trial over technology related to computer microprocessors (chips).

The jury, through Questions 6, 7 and 8 of the verdict amounted a lump sum of $1.5 billion for the infringement of U.S. Patent No. 7,523,373 and $675 million for the infringement of U.S. patent No. 7,725,759.

VLSI Technology affirmed that Intel was “willfully blind” of the existence of the patents in the infringement. Interestingly, while the jury found Intel guilty of such violation, it denied the existence of a “willful” infringement from Intel (Question 4). In such case, District Judge Alan Albright would have been able to raise the amount up to three times of the amount set by the jury.

A compensation of $2.18 billion is a very considerable amount, given the fact that VLSI profits are not generated from the exploitation of the patent. If endorsed, such verdict will be one of the largest patent damages given in United States history.

Alessandro Gai

US District Court for the Western District of Texas, Waco Division, jury verdict of March 2, 2021, VLSI Technology LLC v. Intel Corp, Case No. 6:21-cv-00057-ADA.




CJEU Rules: Access to Data From Electronic Communications Is Permitted Only to Combat Serious Crime and Only With Adequate Procedural Safeguards.

The Court of Justice of the European Union (“Court”) recently published a decision regarding article 15 of Directive 2002/58/EC, on privacy and electronic communications (“Directive”) stating the existence of a serious interference between data access and fundamental rights that implies the irrelevance of the amount of data accessed and the necessity for Member States to set safeguards in case such access must be nevertheless accorded to state authorities.

It must be said that the Grand Chamber substantially confirms its own case law making express reference to the judgments Tele2 Sverige (C‑203/15 and C‑698/15), La Quadrature du Net (C‑511/18, C‑512/18 and C‑520/18) but it also gives some clarifications.

The case at stake is based on a criminal conviction relying – among other things – on data generated in the context of the provision of electronic communications services. The Riigikohus (Supreme Court, Estonia), expressed doubts as to whether the conditions under which the investigating authority had access to those data were compatible with EU law – in particular article 15 of the Directive – and referred three different questions to the Court.

The first regards the relevance, in the proportionality test, of the period to which the retained data accessed by the authorities relate. The second regards the need to assess the proportionality between the amount of data to which the authorities may have access to, the seriousness of the criminal offence and the tolerated interference with fundamental rights. The third regards the quality of independence of the authority that can be competent for the prior review of the data access request. 

Regarding the first two questions, the Court holds that the Directive, read in the light of the Charter, precludes national legislation that allows public authorities to have access to traffic or location data without restrictions on the merit of the procedures, that should instead be limited to serious crimes or threats to public security. What is morethe length of the period in respect of which access to data is sought and the quantity or nature of the data available are irrelevant circumstances in the assessment of legality of the data access, being the interference with the fundamental rights in any event serious per se

With reference to the independence principle, the Court holds that that the Directive also precludes national legislation that recognises to the public prosecutor’s office the power to authorise access to data for the purpose of conducting a criminal investigation.

Indeed, even if it is for national law to determine the conditions under which access to data must be granted, the legislation must set minimum safeguards in order to avoid risk of abuse and to reconcile the various interests and rights at issue. It follows that the requirement of independence of the authority entrusted with carrying out the prior review of legitimacy of data access requests implies that the said authority must be a third party in relation to the one filing the request. This is not the case for the public prosecutor’s office when it directs the investigation and also performs the subsequent public prosecution. 

Andrea Giulia Monteleone

Case C‑746/18 – H. K. v Prokuratuur – Judgment of the Court (Grand Chamber), 2 March 2021

Guess Who’s in the Kitchen? (Vorwerk v. Lidl)

The Commercial Court No. 5 of Barcelona, specializing in patent law, delivered a Judgement on January 19, 2021 (in Spanish) connected to proceedings 1231/2019 (Judgement), involving German company Vorwerk & Co. Interholding GmbH (Vorwerk), manufacturer of the kitchen machine known as Thermomix, against the Spanish subsidiary of Lidl supermarkets (Lidl), distributor of the kitchen machine known as Monsieur Cuisine Connect (MCC) under Silvercrest brand.

The case relates to the infringement of European Patent EP 1269 898, validated in Spain through Spanish Patent ES 201589. Lidl, which commercialized its kitchen robot MCC in Spain from June 2018 would have infringed the “Thermomix patent“, owned by Vorwerk. As a result, Vorwerk launched the relevant proceedings for patent infringement against Lidl, who counterclaimed patent invalidity as a defence, arguing that ES 201589 patent: (i) extended the protection conferred pursuant 123(3) European Patent Convention (EPC); (ii) lacked novelty pursuant Art. 54 EPC; and it was not susceptible of industrial application pursuant Art. 57 EPC – also, the relevant Spanish Patent Law provisions were invoked.

Albeit the decision involved many other aspects, the debate focused on the food weighing function protected under patent EP 1269 898. This function, having an independent circuit from the circuit that controls the movement of the mixing bowl, allows Thermomix weighing the food while the machine works, therefore having two different circuits for mixing and weighing.

The Court dismissed the invalidity counterclaim filed by Lidl and found there was an direct infringement of European Patent EP 1269898, validated in Spain as Spanish Patent ES 201589.

In the Judgement Lidl was ordered to, inter alia: (i) cease any import, storage, commercialization -even through its distributors-, or advertising of the kitchen machine MCC; and (ii) pay damages, to be calculated in the enforcement phase of the Judgement, once the decision becomes final.

However, the enforcement of the Judgement – including the withdrawal of allegedly infringing products- will have to wait, since Lidl recently filed an appeal to the above mentioned decision. Now, the Court of Appeals of Barcelona shall decide on the merits of a case that, without a doubt, may have a paramount impact on the ability to commercialize the MCC, not only within the Spanish territory, but in other member States of the European Patent Office where EP 1269898 patent was validated.

Rubén Cano

Commercial Court N. 5 of Barcelona, January 19, 2021 – Proceedings 1231/2019 (Vorwerk & Co. Interholding GmbH v. Lidl Supermercados S.A)

“This article was automatically written by Tencent Dreamwriter robot”

“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.  

Specifically:

  • 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 claim here);
  • 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.

“It’s not the gay coat that makes the gentleman”: The Court of Florence rules once again on promotional materials portraying the David by Michelangelo (all dressed up, this time) and misses a chance to “unveil” the meaning of cultural heritage reproduction

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

The recent Italian trademark reforms: between Europe and homeland nostalgia

Some important reforms have recently concerned our Code of Industrial Property.

First, the Italian legislator has implemented Trademark Directive 2015/2436/EU (previous comments on this blog about this Directive here and here) adopting Legislative Decree No. 15 of February 20, 2019 (text here; some comments here and here).

The Legislative Decree at issue came into force on March 23, 2019 and introduced in our Code of Industrial Property some important amendments, among which:

  • Abolishment of the “graphic” representation requirement of signs registrable as trademark. It can be now registered as trademark any sign which is distinctive and capable of being represented in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the relevant proprietor. As a result, this provision has expanded the scope of the signs eligible to be registered as trademark, such as signs composed both of images and sounds.

The Italian PTO has technically adjusted its online filing platform with a view to allowing users to file applications for signs represented also in not graphic manners by means of .mp3 and .mp4 files, as explained in Circular of the Ministry of Economic Development No. 605 of March 29, 2019 (here).

  • Extension of shape marks’ absolute grounds of refusal to signs consisting of “another characteristic of the goods”. Given the abolishment of the “graphic” representation requirement, this provision aims at preventing that the registration of unconventional marks may confer on the relevant proprietor exclusive rights on characteristics of the goods with a technical function, substantial value or resulting from the nature of the goods, such as a colour or a sound. 
  • Additional grounds for opposition: (i) earlier reputed mark; (ii) earlier well-known mark under Article 6-bis of Paris Convention for the Protection of Industrial Property; (iii) earlier designation of origin or geographical indication or earlier application for designation of origin or geographical indication.

The implementing Legislative Decree does not provide any transitional provision on the applicability of these new grounds of opposition. In particular, it is not clear whether or not the ground of reputation applies to oppositions proceedings against trademark applications filed/published before the entry into force of the Decree at issue.

Although there would be room to maintain that an opposition may be grounded on reputation irrespective of the date of filing/publication of the contested application in light of the fact that the relevant younger mark could be considered invalid on the basis of the same ground, the issue remains questionable. What is certain is that this law uncertainty is detrimental to trademark rights enforcement.

  • Introduction of administrative invalidity/revocation actions before the Italian PTO. These actions are not immediately available. We shall wait for the relevant Ministry of Economic Development implementing regulation for they to come into force (as known, Member States have until January 14, 2023 to implement the actions at issue in their national laws).
  • Introduction of certification marks. Any natural or legal person, including institutions, authorities and bodies having law requirements to guarantee the origin, nature or quality of certain products or services may apply for the registration of a sign as certification mark provided that it does not carry out any business involving the supply of products or services of the kind certified.

Unlikely the EU certification mark, the national certification mark may consist in signs or indications which may serve, in trade, to designate the geographical origin of the goods or services certified. The Italian PTO may refuse registration to such mark where it may cause situations of unjustified privilege or prejudice the development of similar initiatives whatsoever in the same area. The certification mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such geographical signs or indications, provided that third party uses them in accordance with honest practices in industrial or commercial matters.

The implementing Legislative Decree has provided for a transitional period of one year as from its entry into force for the conversion of the collective marks filed/registered under the previous law into collective or certification marks governed by the new law subject to their revocation.

***

Second, the Italian legislator has adopted Legislative Decree No. 34/2019, the so called “Decreto Crescita”, converted into law, with amendments, by Law No. 100 of June 28, 2019 (text here), including, among others, amendments to our Code of Industrial Property (some comments here and here).

The “Decreto Crescita” has introduced a new category of mark under Article 11 ter of our Code: the “historic mark of national interest”. This is a sign that has been registered/used as mark for at least fifty years in relation to products/services of a national undertaking of excellence which has been historically linked with the national territory. Any proprietor or licensor of this kind of mark may apply for its recordal in the newly established special register of “historic mark of national interest”. This recordal entitles these subjects to use the new public logo “historic mark of national interest” in their marketing and promotional activities.

The identification of this new kind of mark seems to be not easy in the practice. Proving continuous use of a mark for at least fifty years is certainly too burdensome for a proprietor or licensor; moreover, the legal requirements of “excellence” of the relevant undertaking and its historic link with our country seems to imply a discretional rather than a legal assessment.

The legislator has also introduced some economic measures related to this new mark.

The proprietor or licensor of a mark recorded in the above-mentioned new register or that anyway meets the legal requirements provided by Article 11 ter that intends to close its Italian production site for (i) cessation of its activity or (ii) delocalization of the same outside the national territory, both implying a collective redundancy, shall inform of this the Ministry of Economic Development as well as of, among others, the possible actions to find new buyers and the chances for employees to launch a takeover bid or to recover the assets anyway. As a result, the Ministry shall initiate formal proceedings aimed at determining appropriate public interventions into the venture capital of the relevant undertakings through the newly established economic “Fund for the safeguard of historic mark of national interest”.

These new economic measures – that in the wording of the law are meant to safeguard the “historic mark of national interest” as well as the employment levels and the continuation of business in Italy – do actually introduce a new procedure of management of business crisis involving public institutions and funds, which arises some concerns under EU competition law and the free movement of goods and capitals principles. Moreover, the fact that any subject that meets the (uncertain) legal requirements provided by Article 11 ter irrespective of the recordal of its mark in the register of “historic mark of national interest” is subject to this procedure is particularly worrisome: it seems to leave room for ex-officio economic public interventions clearly not in line with our constitutional law.

Finally, it is worth mentioning also the new provisions that prohibit the registration of signs linked with the police as well as of words, pictures or signs detrimental to the image or reputation of Italy. It seems that these new provisions follow a demagogic political purpose rather than a reasoned trademark legislative policy. As a matter of fact, their application in the practice seems to be rather limited, since our Code of Industrial Property already prohibits the registration of signs that have a public interest or that are contrary to law, public policy or accepted principle of morality without mentioning any national interest.

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The latest step of this package of reforms is the Italian Minister of Economic Development’s Decree of January 10, 2020 (text here), which has established the modalities for recording thehistoric mark of national interest” in the new special register and has instituted the following official logo (press release here; a comment here).

marchiostorico

In conclusion, the recent Italian trademark reforms seem to follow two different directions: the harmonization of our Code of Industrial Property with EU trademark law on one side and an approach that uses the mark as a tool for the political purpose of promoting a generic national interest on the other side.

Ilaria Carrino

| Italian Minister of Economic Development’s Decree of January 10, 2020 | Legislative Decree No. 34/2019 (“Decreto Crescita”), converted into law, with amendments, by Law No. 100 of June 28, 2019 | Circular of the Ministry of Economic Development No. 605 of March 29, 2019 | Italian Legislative Decree No. 15 of February 20, 2019 |

Pattern trademark do not consist exclusively of a shape whenever they are not indissociable from the product

On March 14, 2019, the CJEU ruled on two preliminary questions submitted by the Court of Appeal of Stockholm in the case Textilis – Keskin v Svenskt Tenn (C-21/18).

josef-frank_textile-manhattan-315-linenSvenskt 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 applicable to the 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

Jacopo Ciani