27 February, 2018

Doesn't Pose a Threat - Can You Have Copyright in a Pose?

The arrangement of a picture can hugely affect its effect on the viewer, and potentially its artistic merit. This includes the various poses that any subjects in the picture have, which often are intended to convey certain emotions, thoughts and commentary the artist had in mind. We discussed the potential rights that one might have in yoga poses some time ago, and after a recent action in the US courts, a similar case has pushed its way into the Court of Appeal. In the light of this, can you have copyright in poses?

The case of Folkens v Wyland Worldwide LLC concerned an illustration created by Mr Folkens titled "Two Tursiops Truncatus" or otherwise known as "Two Dolphins", in the late 1970s. In the illustration two dolphins cross each other in an underwater scene, one swimming vertically and the other horizontally. No other marine animals are in the illustration. Mr Wyland created his own work in 2011 titled "Life in the Living Sea", which consisted of an underwater scene, including three dolphins, two of which cross each other similarly to Mr Folken's work, and other marine animals and flora. Having learned of Mr Wyland's work sometime after its creation, Mr Folkens took him to court for copyright infringement.

The matter hinged on whether the pose exhibited by the two dolphins could be protected by copyright.

As set out in Feist (discussed more here), to prove infringement the claimant has to show "…ownership of a valid copyright and the copying of constituent elements of the work that are original". Should no evidence exist as to copying, a claimant can prove this by showing "…that the defendant had access to the plaintiff's work and that the two works are substantially similar". The defendant agreed that they had access to the work, but contended that they were not substantially similar.

Tom's poses were always on point
For there to be copying, the Court did first have to assess whether the two dolphins crossing element would be one that can be protected. What also plays an element in this is whether the pose struck by the dolphins is one that could occur in nature.

Judge Gould, handing down the Court's judgment, set out that "…ideas, first expressed in nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them". This would arguably include the natural movements of dolphins. They did, however, emphasise that, as was set in Satava v Lowry, "…an artist may obtain a copyright by varying the background, lighting, perspective, animal pose, animal attitude, and animal coat and texture, but that will earn the artist only a narrow degree of copyright protection". This generally would exclude depictions of ideas first expressed by nature, but any original expression contributed to these ideas could potentially be protected, albeit narrowly.

 The Court concluded that, following the above, a depiction of two dolphins crossing under sea, one in a vertical posture and the other in a horizontal posture, is an idea first expressed in nature and as such is within the common heritage of humankind. The behavior exhibited in the image is something that social animals such as dolphins would normally do. Other examples would be ants marching in a straight line or birds flying in a V-shape.

The rights held by Folkens are much narrower than what is sought, i.e. in a very specific expression of the natural behavior. In his image this includes "…the [dolphins'] exact positioning, the stippled light, the black and white depiction, and other specific and unique elements of expression". His rights were not infringed by Wyland by exhibiting the same behavior in a different setting.

The Court therefore dismissed the appeal, and upheld the District Court's summary judgment on the matter.

The case is by no means ground-breaking, but does illustrate the difficulty in protecting common, natural elements, such as poses and animal behavior. The more common the pose, the harder it is to protect it, albeit it is possible via the unique expression of that idea.

Source: Written Description

20 February, 2018

A Sole of Color - Louboutin Red Shoe Sole Potentially Possible to Register as TM, Says AG Szpunar

After discussing the Louboutin shoe sole case some time ago, one envisioned the matter going ahead to the CJEU without a hitch. Unbeknownst to this writer, the CJEU decided to assess the case in the Grand Chamber (essentially en banc), and therefore the matter went into further hearings. Having concluded, the case was then passed onto Advocate General Szpunar for his opinion, which he handed down very recently. Even though the AG had given their opinion before, this is still an important consideration ahead of the Grand Chamber decision in the future.

As a quick primer, the case of Christian Louboutin v Van Haren Schoenen BV dealt with a registered Benelux trademark owned by Louboutin (TM No. 0874489) for a high-heeled shoe with a red sole. The mark only encompassed the sole, not the entire shape of the shoe. Van Haren had been selling a similar shoe since 2012, and was sued for trademark infringement by Louboutin. Van Haren then counterclaimed for invalidity.

The crux of the case falls on whether the red sole is a registrable trademark, and therefore enforceable.

In his initial opinion last year the AG considered that a sign combining colour and shape, like the Louboutin red sole, is potentially caught by the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95. This meant that the Article should be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. Even so, he did determine that the mark in question should be "…equated with a sign consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se". The ultimate classification of the mark, however, should be made by the referring court, and not the CJEU.

Similarly, the decision on whether the mark exclusively 'gives substantial value' to the goods, which is prevented from being registered under Article 3 above, is for the referring court. The AG did clarify this and considered that the matter "…relates exclusively to the intrinsic value of the shape and must take no account of the attractiveness of the goods… and does not permit the reputation of the mark or its proprietor to be taken into account".

The AG wanted to expand on his considerations on a number of points, including the classification of the mark, applicability of Article 3 and classification of the mark with reference to Article 3.

In his view the shape is not "…wholly abstract or of negligible importance, which could justify the finding that the mark at issue seeks protection for a certain colour per se, without any spatial delimitation". The focus is on the shape of the sole. The AG doubts that the color red can perform the essential function of a trade mark and identify its proprietor where that colour is used out of context, i.e. the shape of the sole. He concluded that, following his earlier opinion, that "…the mark… should be equated with a sign consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than as a trade mark consisting of a colour per se".

The AG then moved onto his additional considerations in relation to the applicability of Article 3(1) of the Directive to signs consisting of the shape of the goods and a certain colour.

Dave's shoe innovations definitely skirted the line of registrability
The point revolved around whether the mark can be classified as a 'position mark' under the Implementing Regulation 2017/1431, and whether this prevents the mark from falling under Article 3(1) of the Directive. As the Article does not define what 'shapes' fall in its remit, position marks would not be excluded from being invalid under the provision. The AG considered that this had no bearing on his earlier opinion.

The second main point dealt with by the AG related to the scope of Article 3(1) when compared to Article 4(1)(e)(iii) of Directive 2015/2436.

The 2015 Directive replaced the 2008 Directive, and with no transitional provisions over both, the AG considered that they would cover the same marks (although the former did make changes e.g. to the provisions around the 'own name' defence). The AG determined that any changes would not interfere with the mark's registrability under the 2008 Directive, with Article 3(1) still "…being interpreted to the effect that that provision applies to signs consisting of the shape of the goods which seek protection for a certain colour".

The AG had to then expand on the rationale underlying the ground for refusal or invalidity in Article 3(1).

Following new arguments from both sides, while sympathetic to the pro-registrant argument, the AG set out that, as per the decision in Hauck GmbH & Co KG v Stokke A/S, the assessment to determine whether a shape 'gives substantial value to the goods "…involves account being taken of the average consumer’s perspective [of the aesthetic characteristics]". This perception isn't, however, the decisive element in the assessment, but "…account must be taken both of the perception of the sign at issue by the relevant public and the economic effects which will result from reserving that sign to a single undertaking".

It is important, in the AG's mind, for "…a characteristic to remain available for all market participants over the period during which that characteristic has a particular effect on the value of the goods". Once interest has weaned, it is possible for that characteristic to be registrable as a trademark and not fall under Article 3(1). Unlike the two other prohibitions in Article 3(1), this prohibition is dependent on external factors, e.g. interest and the public's perception of value in the shape, and could catch even a registration of a shape for a certain color.  This would, however, "…exclude the characteristics linked to the reputation of the trade mark or its proprietor" as a part of the assessment. This would shift the assessment from one that includes reputation, to one where the value of the shape of the mark is the only factor that matters, i.e. a more notable brand could still register marks like the sole in question.

In summary: "…the reference to the public’s perception as a factor which, among others, determines the characteristics giving substantial value to the goods argues in favour of Article 3(1)… being interpreted as meaning that that provision applies to signs consisting of the shape of the goods and seeking protection for a colour in relation to that shape".

Finally, the AG moved onto the classification of the mark with reference to Article 3(1)(b) of the 2008 Directive.

The AG considered that this would be useful for the CJEU in case they find that Article 3(1)(e) cannot be applied in this case. In summary, the AG determined that "…when analysing the distinctive character of a sign which is indissociable from the appearance of the goods in question, it is necessary to assess whether the registration of that sign would run counter to the general interest that the availability of the characteristics represented by that sign should not be unduly restricted for other operators offering for sale goods or services of the same type. However, Article 3(1)(b)… cannot fully assume the role of Article 3(1)(e)(iii) of that directive, since it is possible to derogate from that first provision in accordance with the detailed rules laid down in Article 3(3) of that directive". This means that, when assessing a mark's distinctiveness under Article 3(1)(b) that cannot be separated from the goods it is used on (like the bottom sole of a shoe), one has to keep in mind whether it could be an anti-competitive registration of goods of a similar type.

The opinion lays down the foundation for the CJEU's decision later this year, but doesn't by any means close the door on Louboutin's registration. Ultimately this will be determined by the guidelines set by the CJEU, and should the proprietor's reputation be separated from the assessment of value, it is possible for the mark to not be invalid under Article 3(1). This writer keenly awaits the CJEU's decision, as it will undoubtedly have a big impact on similar registrations in the future.

09 February, 2018

Limited Harbor Space - When Does an ISP Lose Safe Harbor Protection in the US?

Safe harbor provisions for intermediaries on the Internet are the cornerstone of keeping it functional, open and above all fair. Without protection for intermediaries, including ISPs, many entities could create an environment of monitoring and control by service providers, which would undoubtedly hinder the functionality of the Internet as we know it. Even so, safe harbor provisions should be a shield, and not deflect all responsibility from providers where they could be, arguably, deemed as complicit with illegal activities.  With that in mind, when could an ISP be deemed liable for the copyright infringement of its users? The US Court of Appeals took on this question earlier this month.

The case of BMG Rights Management (US) LLC v Cox Communications dealt with Cox who are an internet service provider for roughly 4.5 million users. Some of these users shared copyright protected files on Cox's service, including music, using the BitTorrent protocol.  Cox's service agreement with their users prevents, among other things, the sharing of infringing content using their service, but has very little by way of automated infringement prevention systems (e.g. through automated notifications and a thirteen-strike policy to suspend a repeat offender's service temporarily). BMG identified that several of their copyright protected works were shared using Cox's service, and used a third-party service provider to send notices to Cox (who had, before this, blocked the third-party provider), with the ISP never receiving those notices. BMG then took Cox to court for copyright infringement via its users.

The Court first dealt with the matter of safe harbor protection for Cox under 17 USC section 512. For an ISP to be covered under the provision, it has to show it "…adopted and reasonably implemented… a policy that provides for the termination in appropriate circumstances of subscribers… who are repeat infringers". This would mean any user who, in short, repeatedly infringes copyrights. Even if those infringements would be mere alleged infringements (i.e. they have not gone to court or been admitted to), the provision would still apply as a requirement.

Timmy's ISP knew about the evil inside of him
The need to have a reasonably implemented policy on termination also necessitates the meaningful enforcement of that policy. Cox, through their thirteen-strike policy, never terminated users' accounts even after repeat offenses. Through this they avoided the policy's reasonable implementation. In internal correspondence representatives in the Abuse division at Cox would dismiss the termination of users' accounts, and reinforced their reactivation for DMCA notices.

Even in the light of this, Cox contested that they had no "actual knowledge" of their users' infringing activities. The evidence discussed above contradicted this point, and even though the stance was changed internally later on, the Court still deemed them to have clear knowledge of users' infringements and that they actively ignored correspondence on the same by rightsholders. This also contradicted their stance on active implementation of the policy, as almost no users were terminated. Cox therefore failed to qualify for safe harbor protection.

The matter then turned to jury instructions on contributory infringement, particularly what the jury were instructed to consider. Cox contended that, as the product they sold (Internet service) is "…capable of substantial non-infringing use", it cannot be deemed to be infringing. The Court quickly rejected this, and determined that even if the technology can be substantially used for non-infringing purposes, it doesn't give them immunity from contributory infringement.

Secondly, Cox argued that the instructions issued, to consider the intent necessary for contributory infringement, were wrong. The jury were instructed to impose liability if "…Cox knew or should have known of such infringing activity". The Court agreed with Cox on this point, considering that the instructions were incorrect and the court erred in giving them. To prove contributory infringement one has to, according to the Court, provide proof of "…at least willful blindness [and that] negligence is insufficient". Saying the party 'should have known' is too low of a standard. A note the Court makes is that the wilful blindness has to relate to specific instances of infringement, e.g. where they have been notified of infringement and choose to ignore the notices.

Cox's appeal was dismissed, but due to errors in jury instructions the matter was remanded and sent for a new trial.

The case is very interesting, and amends the standard that juries will have to assess contributory infringement against. Clearly, had Cox responded to notices sent to them, most likely they would have been protected by safe harbour provisions. They wilful ignorance of the notices and issues, in addition to their lack of enforcing their own policy on termination, was their undoing. The case does raise a red flag for all ISPs to ensure that they indeed do implement a policy against infringers and enforce it to enjoy safe harbor protection. While the case is still going to be decided on in the future after remittance, it still is an important consideration ahead of the forthcoming decision.

Source: IPKat