Confusion Is Right - Likelihood of Confusion in a Part of the EU Doesn't (Necessarily) Lead to Pan-EU Injunction

Due to the vastness of the internal market in the EU, the enforcement of rights can be difficult, especially when those rights have been infringed in one Member State, but not necessarily in the rest (or to the same degree as in the original country of issue). The EU trademark gives for EU-wide protection, but in the event that national courts disagree on the interpretation of a degree of similarity between a registered EUTM and a competing mark, is EU-wide protection afforded or would the competing mark escape the clutches of the EUTM system? This question was recently answered by the CJEU in a decision handed down in late September.

The case of combit Software GmbH v Commit Business Solutions Ltd dealt with combit Software, a German software development and marketing company that holds the rights to the EU trademark for the word "combit" for similar goods and services. Commit Business Solutions is an Israeli company that sells software under the brand "Commit", on the web and in a number of countries, including in Germany, selling a German-language version of their Commit software in the country. Due to the similarity of the brands used, combit brought proceedings in Germany aiming to prevent the use of the mark for the marketing of Commit's software (with the matter ultimately being referred to the EU courts). As a peculiar part of the proceedings in Germany the court determined that, indeed, there was a likelihood of confusion in the EU for the German-speaking consumer; however, it also saw that there would be no likelihood of confusion for the English-speaking consumer. The court then referred the matter to the CJEU for ultimate determination, in particular for the lack of confusion for a significant portion of the Union.

What the referring court asked from the CJEU was summarized by the Court as whether "...Article 1(2), Article 9(1)(b) and Article 102(1) of Regulation No 207/2009 must be interpreted as meaning that, where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the European Union whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement of the exclusive right conferred by that trade mark and issue an order prohibiting the use concerned for the entire area of the European Union". This, in essence, is inquiring whether a partial likelihood of confusion in the EU would translate to a pan-EU injunction for the same, irrespective of the actual confusion determined for the other parts of the EU by the national courts.

With the EU being so different, pan-EU
injunctions are night impossible

The CJEU swiftly addressed the point, stating that when an EU trademark court finds "...that the use of a sign creates, in one part of the European Union, a likelihood of confusion with an EU trade mark, whilst, in another part of the Union, that same use does not give rise to such a likelihood of confusion, that court cannot conclude that there is no infringement of the exclusive right conferred by that trade mark". If there exists a likelihood of confusion in one part of the EU, the CJEU saw that it equates to an infringement of the conferred in the EU overall. This follows precedent in instances where a likelihood of confusion exists during opposition proceedings, but only with respect of one part of the EU.

While the above seems straightforward, the CJEU further complicated things. Following the decision in DHL Express France, if a court does not find a likelihood of confusion in a part of the EU (as in the case at hand) for any reason, such as a linguistic one, the mark isn't adversely affected and the scope of the injunction has to be restricted. However, the trade in which the potentially infringing sign is used has to be bona fide for the restriction to apply. The area restricted has to be clearly defined, not merely through linguistic borders, which does set a high threshold for a wider restricted area.

In summary, the CJEU set out that "...[the Articles of the Regulation] must be interpreted as meaning that, where an EU trade mark court finds that the use of a sign creates a likelihood of confusion with an EU trade mark in one part of the European Union whilst not creating such a likelihood in another part thereof, that court must conclude that there is an infringement of the exclusive right conferred by that trade mark and issue an order prohibiting the use in question for the entire area of the European Union with the exception of the part in respect of which there has been found to be no likelihood of confusion".

The finding of the CJEU is peculiar, since its rationale clearly leads in the direction of a pan-EU injunction, but can be restricted to only the areas affected in the EU if no likelihood of confusion arises. One has to wonder whether this would segment the single market, and potentially cause for the EU trademark to cease to function as intended; as an all-encompassing registration to protect an interest in the entire single market. Nevertheless, one can appreciate the rationale put forth by the Court. This writer will wonder whether the case will have bigger impact on the EU trademark, but doubts many courts will be brave enough to set very wide restrictions on any areas not covered by an EU trademark.

Source: IPKat

A Positive Signal - No Liability for Providers of Free WiFi, Says AG Szpunar

As discussed on this very blog over 6 months ago, free public WiFi is something we all take for granted, even if just a little. Having access to the worldwide web at most restaurants, coffee shops and even the Underground in London is nearly ubiquitous in the developed world, and one that presents both opportunity for its users and liability for those who provide it, especially when it comes to the infringement of intellectual property rights. The CJEU has been slated to answer the question of third-party liability for those who provide free WiFi in the case of copyright infringement, and awaiting that the opinion of Advocate General Szpunar has given their answer as to this highly important question.

The case of Tobias McFadden v Sony Music Entertainment Germany GmbH deals with Tobias McFadden, who owned a business selling and renting lighting and sound systems for various events, and offered free WiFi access at his store for any visiting patrons. The Internet connection offered had no password protection, nor did Mr. McFadden monitor the users taking advantage of the free WiFi. In early September 2010 such a user downloaded a song illegally using his WiFi connection, and Sony Music subsequently took him to court for copyright infringement as a liable third party.

The Regional Court of Munich referred the matter to the CJEU, who had to answer several questions relating to Article 12(1) of the E-Commerce Directive, pertaining to whether the provision of the WiFi would amount to the provider as being a mere conduit, or whether they would be liable for the infringement indirectly.

The Advocate General grouped the questions into two more specific references: "...whether a professional person... who, in the course of business, operates a free, public Wi-Fi network, falls within the scope of application of Article 12 [as a mere conduit]", and therefore is not liable for the infringement of any other parties using that WiFi (questions 1-3); and, if Article 12 does apply, the he needs to interpret the limitation of liability of intermediary service providers in that Article (questions 4-9).

The Scope of Article 12

The scope of Article 12 hinges largely on the potential economic nature of the provision of the service, as defined in Article 2(a) of the same Directive, and the meaning of 'providing' access to a network under Article 12.

A lack of WiFi would cause some issues

The Advocate General addressed the first point by concluding that the provision of free WiFi would indeed be an economic activity, as "...where, in the course of his business, an economic operator offers Internet access to the public, even if not against payment, he is providing a service of an economic nature, even if it is merely ancillary to his principal activity". The Advocate General added onto his point, setting out that the provision of the Internet access necessarily takes place in an economic context, that "[a]ccess to the Internet may constitute a form of marketing designed to attract customers and gain their loyalty. In so far as it contributes to the carrying on of the principal activity, the fact that the service provider may not be directly remunerated by recipients of the service is not decisive.". What remains key here is the ancillary nature of the free WiFi, and this writer agrees, since even if they WiFi is not the focal point of the business, it drives foot traffic and adds value to the provision of the main service, creating a service of economic nature (which is important, since nature does not necessarily mean direct economic benefit)

He then turned to the matter of the meaning of 'providing' access to a network, determining that it means "...that the activity in question enables the public to have access to a network and takes place in an economic context". The intent of projected role of the provider is not relevant, but merely the provision of the service in the above economic context.

The Advocate General then concluded that: "...Articles 2(a) and (b) and 12(1) of [the] Directive... must be interpreted as applying to a person who, as an adjunct to his principal economic activity, operates a Wi-Fi network with an Internet connection that is accessible to the public free of charge".

Interpretation of Article 12

Questions 4-9 concerned the specific interpretation of Article 12, and will be dealt with in more brevity below, although discussed quite extensively by the Advocate General. The questions are, specifically, whether a national court could penalize an intermediary service provider, in the event of infringement through their service, awarding damages, costs or an injunction as the form of the penalty (questions 4-5). Additionally, if this would not be generally possible, whether it would be possible to limit the extent of Article 12 (question 6), or through other unwritten requirements (questions 7-8). Finally, the last question asks for the limits of any injunctions that may be awarded against an intermediary service provider (question 9).

In answering question 4 and 5 the Advocate General saw that the limitations of liability for intermediary service provides would extend to damages and pecuniary claims, such as for costs. In his view this is precluded by Article 12(1), and would have an impact on the development of the service provider's business, irrespective of it being damages or punitive costs. He did, however, accepted the possibility of injunctive relief, and any ancillary penalties thereto. In summary to questions 4 and 5, he stated that "Article 12... precludes the making of any order against a provider of mere conduit services that entails a finding of civil liability against that service provider... [it] therefore precludes the making of orders against intermediary service providers not only for the payment of damages, but also for the payment of the costs of giving formal notice or other costs relating to copyright infringements committed by third parties as a result of the information transmitted. It does not preclude the granting of an injunction, non-compliance with which is punishable by a fine".

In relation to questions 6,7 and 8 (seeking to clarify the possible exclusion of actions taken against intermediary service providers), the Advocate General sought to strike a balance per recital 41 of the Directive. In his opinion, the Advocate General saw that there should be no limitations imposed on actions that can be taken against providers, though taking into account their actions when the infringement is brought to their attention. He also observed that the conditions under Article 12(1) are non-exhaustive, and could be added to with additional unwritten requirements.

Finally, he turned to the final 9th question, which asks whether national courts could impose injunctions on service providers against future infringement on their network. He saw that this was indeed possible, but this injunction could not impose a future obligation of monitoring the network or breach any other EU or national legislation (including the basic human rights afforded in the European Convention on Human Rights). He summarized that the injunction can only issued if the provider cannot, or will not, address the infringement in one of three measures: the termination of the internet connection (of the infringer); password-protection of the connection; or the monitoring the connection, but only to ensure the future infringement of rights using the same connection (observing time limitations on said monitoring).

The ultimate decision of the CJEU is pending, and will potentially impact the provision of free WiFi in the EU should they not follow the AG's opinion in this matter. This writer expects them to follow the opinion, as it clearly shows a practical and functional approach to a complex, and sensitive question. Should they not do so, the provision of free WiFi could be severely hindered, or even ended by some providers, which would be a big problem for those who cannot necessarily afford their own connections. Either way, this writer is anticipating the CJEU's decision with great interest.

Source: IPKat

Another Break - Justice Arnold Settles the Kit Kat Case After CJEU Decision

After quite an unsatisfying Court of Justice decision earlier in September in the Kit Kat case, many of us invested in the world of IP were waiting for the decision by the High Court of Justice in the UK applying the CJEU's considerations. The case has since been decided by Justice Arnold, finally settling (for now?) the debate around the the-dimensional marks.

By way of a short introduction, the case of Société Des Produits Nestlé SA v Cadbury UK Ltd dealt with the arguably iconic Kit Kat chocolate bar. The bars comprise four individual chocolate wafer fingers connected to each other with a solid chocolate base. Nestle applied to register the three-dimensional shape of the bar as a trademark without the Kit Kat logo embossed on the top of each finger, which was subsequently opposed by Cadbury. The case was referred to the CJEU by Justice Arnold (discussed more here), leading to the decision in question.

Justice Arnold post the CJEU decision (approximation)

The biggest issue in the case was the apparent mistranslation of Justice Arnold's question, who, in essence, asked whether an applicant needed to only prove recognition (and subsequent association to the applicant) of the mark by a significant portion the relevant public, or whether they have to rely on the mark to indicate the origin of the goods for a mark to have acquired distinctiveness. One has to note that this has to be in isolation of any other marks present in that product, and that particular feature has to identify the origin of the goods by themselves (i.e. the shape of the bar rather than the embossed logo on the top of it). The questions were, however, partially mistranslated during the proceedings, with the latter question being changed to a matter of perception rather than reliance.

Both the Opinion of Advocate General Wathelet and the judgment by the CJEU failed to address Justice Arnold's question in full, rejecting the first part of the question but leaving the matter of reliance unanswered.

Having considered the possible answer to his question, Justice Arnold summarized what he perceived the accurate consideration to be: "...in order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present)". (emphasis the court's)

Additionally, he concluded that "...when assessing whether the applicant has proved that a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question, to consider whether such persons would rely upon the sign as denoting the origin of the goods if it were used on its own".

The focus on provenance is therefore on both perception of a particular mark as the indicator of the origin of certain goods or service, and whether the same public subsequently relied on that mark to indicate that very origin, irrespective of any other marks that might be present on those goods.

Justice Arnold then answered the question, agreeing the initial decision of the Hearing Officer. In his mind, although he referred to reliance on the mark, his rationale was in line with the CJEU decision. He correlated reliance with perception, which would fulfill the requirement set by the CJEU. Although survey evidence showed identification of the Kit Kat bar, it merely displayed recognition and not that they perceived it as the exclusive designation of the origin of the goods in question. Therefore he dismissed Nestle's appeal due to a lack of concrete evidence establishing acquired distinctiveness.

The Kit Kat saga has been a curious one, and does highlight some issues that surround CJEU referrals and linguistic nuances. Even so, this writer thinks Justice Arnold applied the law as well as he could in the light of the answer given by the CJEU. This does, however, raise questions on evidence, especially with the survey evidence shown by Nestle and the uncertainty as to what would be sufficient to establish 'perception' and subsequent reliance.

Taking a Break - Kit Kat Decision Issued by ECJ

For all lovers of confectionery goods the name Kit Kat will undoubtedly be a familiar one, even without its highly memorably slogan. The iconic British chocolate bar has been around since the 1930s, and above all else what many will remember is its shape, comprising of five individual chocolate covered wafer 'fingers' connected at the base by a lawyer of chocolate. As such shapes can be protected through intellectual property law, but whether Kit Kat's design is truly distinctive enough to be protected as a trade mark, has been a contested question here in the UK for several years, ultimately being referred to the European Court of Justice by Justice Arnold nearly two years ago in Société Des Produits Nestlé SA v Cadbury UK Ltd [UK High Court of Chancery]. As a result the ECJ handed down its judgment in September this year.

The case of Société Des Produits Nestlé SA v Cadbury UK Ltd [European Court of Justice] dealt with an application for a trademark by Nestle for a three-dimensional representation of the Kit Kat bar, omitting the embossed words "Kit Kat" from the top of the chocolate bar's individual fingers. After the application's publication Cadbury submitted an opposition against its registration, arguing a lack of distinctive character, initially having the mark rejected by the UK Intellectual Property Office, ending in Nestle's appeal to the UK High Court.

Justice Arnold submitted three questions to the ECJ prior to his later judgment applying the Court's consideration.

The ECJ started by answering the second question posed by Justice Arnold. What was asked was seen as "...whether Article 3(1)(e) of Directive 2008/95... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result".

After a very brief consideration of precedent, especially relating to the prevention of any registration monopolizing a technical solution or functional characteristics, the Court determined that "...Article 3(1)(e)... must be interpreted as precluding registration as a trade mark of a sign consisting of the shape of goods where that shape contains three essential features, one of which results from the nature of the goods themselves and two of which are necessary to obtain a technical result, provided, however, that at least one of the grounds for refusal of registration set out in that provision is fully applicable to the shape at issue". What remains key is the refusal of registration based on a single ground under Article 3(1)(e), even if, predominantly, the shape does not fall under all of the grounds. Public interest in the strict enforcement of the grounds of refusal was important in the Court's view, as a contrary position would allow for the monopolization of the very subject matter the Article seeks to disallow. What is uncertain is how this applies to a shape as whole and its respective components. Would a shape be negated as a whole if it contains a part that would fall under the grounds (negating the registrability of the whole design)? Arguably, this would be the case, but the decision leaves this unclear.

Terry's take on Halloween was more diabetes inducing

The Court then moved on to the third question, which it saw as asking "...whether Article 3(1)(e)(ii)... under which registration may be refused of signs consisting exclusively of the shape of goods which is necessary to obtain a technical result, must be interpreted as referring only to the manner in which the goods at issue function or whether it also applies to the manner in which they are manufactured". As the wording of the sub-section does not discuss the manner of manufacture for the goods, the Court had to decide whether it implicitly does so. They quickly decided against this, setting out that "...that Article 3(1)(e)(ii)... must be interpreted as referring only to the manner in which the goods at issue function and it does not apply to the manner in which the goods are manufactured". The inclusion of manufacturing methods, in this writer's mind, would encroach onto the territory of patents, and how a product is made does not designate its origin; the primary function of trademarks.

Finally, the Court proceeded to question one, which was set out as "...whether an applicant to register a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... must prove that the relevant class of persons perceive the goods or services designated exclusively by that mark, as opposed to any other mark which might also be present, as originating from a particular company, or whether it is sufficient for that applicant to prove that a significant proportion of the relevant class of persons recognise that mark and associate it with the applicant’s goods".

Again, considering precedent in brevity, the Court saw that "...in order to obtain registration of a trade mark which has acquired a distinctive character following the use which has been made of it within the meaning of Article 3(3)... regardless of whether that use is as part of another registered trade mark or in conjunction with such a mark, the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company". What the question therefore requires is that the proprietor of the mark has to prove that the relevant class of people perceive their mark, in this case "Kit Kat", to only originate from them and not other proprietors selling similar goods, even if the goods contain other registered trademarks (or a design, in this case). The onus would be on Nestle to show that the shape of the chocolate bar, regardless of the inclusion of the words "Kit Kat", would be indicative of the source of the bar by itself (i.e. a distinctive feature). The Court did omit Justice Arnold's question on reliance on the mark, focusing on their 'perception' and 'recognition' of the mark. Arguably reliance does not necessarily follow the two, but this writer thinks, in the Court's mind, their intention is to include reliance through perception, as seeing and knowing a mark in conjunction with another would still carry some weight in the purchase decision, effectively creating a level of 'reliance'.

The case has since been referred back to the High Court for ultimate decision, but this writer thinks, based on earlier considerations, that the shape of the Kit Kat bar might not be enough to distinguish it from other similar ones to allow for the registration of the mark. The ECJ's answers to the questions seemed unsurprising, however leaving many things uncertain or somewhat unanswered, but give more nuanced guidance, which is never too abundant in today's legal sphere. How the case will be applied in the future is uncertain, but hopefully this application will manifest even more clarity as a result.

Source: IPKat

Can You Patent Embryonic Stem Cells? - The ECJ Ends the Fight, For Now

As was discussed quite extensively on this very blog some months ago, the genesis of human life and its formidable times are a topic riddled with controversy and a myriad of viewpoints, yet the topic has not come to contention much in the judiciary. Since the opinion of Attorney General Villalon, discussed by this very writer in the link above, the actual decision of the European Court of Justice has been anticipated by many, especially in light of the potential future of stem cell research in the EU. The ECJ's decision is hugely important in a world-wide context, potentially seeing a precedent which will either hinder or enable other similar jurisdictions to allow or disallow similar patents, even in light of the Myriad Genetics saga in the US.

The case in question, International Stem Cell Corporation v Comptroller General of Patents, Designs and Trade Marks, for the uninitiated, deals with two patent applications, filed by the International Stem Cell Corporation, relating to stem cells; more specifically "...methods of producing pluripotent human stem cell lines from parthenogenetically-activated oocytes and stem cell lines produced according to the claimed methods, and... the isolation of pluripotent stem cells from parthenogenetically-activated oocytes, and product-by-process claims to synthetic cornea or corneal tissue produced by these methods". To put things into more simplistic terms, the applications (GB0621068.6 and GB0621069.4) relate to the usability of stem cells or their production from oocytes (female egg cells). A more detailed expression of the facts and the prior judgments can be found in this writer's article discussing the Attorney General's opinion.

A parent's dream, endless potential (Source: Bizarro Comics)

The Court was therefore faced with the same question posed to the Attorney General: "...whether Article 6(2)(c) of Directive 98/44 must be interpreted as meaning that an unfertilised human ovum whose division and development to a certain stage have been stimulated by parthenogenesis constitutes a ‘human embryo’ within the meaning of that provision" and be unpatentable under the Directive. The interpretation of the Article in question hinges heavily, as discussed by the Attorney General, on the ECJ's earlier decision in Oliver Brüstle v Greenpeace, where the Court saw that "...any human ovum must, as soon as fertilised, be regarded as a ‘human embryo’ within the meaning and for the purposes of the application of Article... since that fertilisation is such as to commence the process of development of a human being". This is a key distinction, as the cells in ISCC's applications would not be capable of development into a human being. Even with this in mind the Court saw that "...a non-fertilised human ovum must be classified as a ‘human embryo’" as the cells, when harvested, are still capable of being fertilized and possess the potential to develop into a human foeatus, thus falling within the meaning of a 'human embryo'.

The Attorney General saw things differently in his interpretation of the law, and the Court in the case in hand agreed with him: "...a non-fertilised human ovum must necessarily have the inherent capacity of developing into a human being" to fall under the definition of a 'human embryo', contrary to Brüstle. ISCC's patents cover the use of cells in a state where they cannot possibly be fertilized and multiply, thus not, under the Court's current considerations, be classified as a 'human ebryo', and be exempt from patenting. The Court then summarized its position very well: "...where a non-fertilised human ovum does not fulfil that condition, the mere fact that that organism commences a process of development is not sufficient for it to be regarded as a ‘human embryo’... [and] [b]y contrast, where such an ovum does have the inherent capacity of developing into a human being, it should... be treated in the same way as a fertilised human ovum, at all stages of its development".

In the end the ECJ rejected the notion that ISCC's patents would encompass a 'human embryo', and accepted the patenting of stem cells, so long as they are truly incapable of development, either inherently or through genetic manipulation (which ISCC indicated it would be doing to the cells in their applications). What this decision demonstrates is a much more open approach to patenting stem cells, and in this writer's opinion, represtents a healthy and morally correct approach to stem cells and patents, especially in light of potential future developments in the field and a correct application of the law. 

Whether the courts will face any new cases dealing with different, potentially more nuanced and 'grey' approaches to stem cells or genetics in general in the future remains to be seen, but the potential dvelopment in the area is exciting, both from a human perspective and a legal one as well. 

Source: IPKat

Chuckles or No - European Court of Justice Takes on Parody

European fair dealing is ever so slowly growing into its big boy shoes, and amidst that growth there are some growing pains that need to be sorted out by the guardians, the judiciary. With new fair dealing exceptions only days away from coming into force here in the United Kingdom, it seems only pertinent that the most influential court in Europe deals with an issue that is so close to this new set of fair dealing exceptions; parody and satire. Although the UK's cousins across the pond in the United States and Australia have accepted parody as a form of fair dealing or use prior to the old Kingdom, the UK will face challenges to this new regime in the coming years - for which European consideration is always welcome.

The case in question is Deckmyn v Vandersteen , decided only a few weeks ago, which dealt with a drawing relating to a recent election in Belgium, which was released in a calendar edited by Mr. Deckmyn, who is also a member of the Vlaams Belang party. During an event Mr. Deckmyn handed out the aforementioned calendars, on the cover of which was the picture at issue in the matter; an image which highly resembled that of the book "De Wilde Weldoener", an edition of the famed Suske en Wiske comic books. As explained by the court: "...[the] drawing is a representation of one of the comic book’s main characters wearing a white tunic and throwing coins to people who are trying to pick them up. In the drawing at issue, that character was replaced by the Mayor of the City of Ghent and the people picking up the coins were replaced by people wearing veils and people of colour". Subsequently the Vanderseteens, relatives of the comics' creator and holders of the copyright, among others, brought an action against Mr. Deckmyn asserting copyright infringement.

Under the Belgian Law on Copyright and Neighboring Rights, a copyright protected work is not infringed "[o]nce a work has been lawfully published, its author may not prohibit... caricature, parody and pastiche, observing fair practice". Mr. Deckmyn argued that his use of the comic's cover would be protected from infringement as a fair use under parody, yet the questions posed to the ECJ were:

"1. Is the concept of “parody” an autonomous concept of EU law? 
 2. If so, must a parody satisfy the following conditions or conform to the following characteristics: display an original character of its own (originality); 
display that character in such a manner that the parody cannot reasonably be ascribed to the author of the original work; 
seek to be humorous or to mock, regardless of whether any criticism thereby expressed applies to the original work or to something or someone else; 
mention the source of the parodied work? 
3. Must a work satisfy any other conditions or conform to other characteristics in order to be capable of being labelled as a parody?" 

The ECJ was faced with the definition of what amounts to parody, and whether this concept was truly autonomous within the EU law, more specifically Directive 2001/29.

The court quickly established that the concept of 'pardy' was indeed an autonomous concept in European law, as the Directive made no express mention of any national laws, giving the law a uniform interpretation within the Union, although Member States as still very much able to limit or extend the exception beyond its Union interpretation.

The second and third questions took the bulk of the ECJ's judgment, effectively determining the definition of a parody in European law. The court first established that, as the term is not defined in the Directive, that its interpretation would be "...determined by considering its usual meaning in everyday language, while also taking into account the context in which it occurs and the purposes of the rules of which it is part". This in the court's judgment, while agreeing with the Attorney General's definition, is "...first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery". This writer would like to further add that, in most cases, national courts would also assess whether the parody itself, or the mockery or humor, is actually a genuine expression of mockery, rather than just a guise to prevent the courts from finding infringement.

Parodies can evoke a multitude of feelings

The court then assessed the conditions posed in the reference to the ECJ and whether they should be treated as a part of the exception in its application. As the provision is there to safeguard legitimate uses of copyrighted content, the court heavily empathizes that its scope "...of that provision... [should not be] restricted by conditions... which emerge neither from the usual meaning of ‘parody’ in everyday language nor from the wording of that provision". A much less restricted interpretation facilitates both the freedom of expression and a public interest in legitimate parody, as noted by the court.

The exceptions application has to be balanced, even in the light of its much less restricted interpretation, as noted by the court: "...the exception for parody... must strike a fair balance between, on the one hand, the interests and rights of persons... and, on the other, the freedom of expression of the user of a protected work who is relying on the exception for parody". This assessment has to take into account all circumstances in each instance, and should not be a mere prima facie 50/50 assessment.

The ECJ then relayed the final decision to the Belgian national courts, but did however express a need to assess the work on potential racial impacts, and negative connotations on such ground, as the work did indeed depict individuals of certain ethnic background in a very compromising light.

The UK government has already issued some guidance on the new exceptions coming into force next Wednesday, which helps in the future assessment of parody in this new regime. In their definition: "[t]he words “caricature, parody or pastiche” have their ordinary dictionary meanings. In broad terms, parody imitates a work for humorous or satirical effect, commenting on the original work, its subject, author, style, or some other target. Pastiche is a musical or other composition made up of selections from various sources or one that imitates the style of another artist or period. A caricature portrays its subject in a simplified or exaggerated way, which may be insulting or complimentary and may serve a political purpose or be solely for entertainment". Yet again this writer would have to point out that the use of a work under such a definition would still entail an assessment of whether the parody, pastiche or satire is well and truly such a work, and not just a faint attempt at parody purely to use the work at no cost.

All-in-all the ECJ's definition makes sense, at least to this humble writer, and does afford genuine parodies a wide shield in protecting their legitimate expression. Should conditions be set on the application of parody, such as in Belgium, the hurdles could become nearly insurmountable, and curb any real interest or willingness to create parody works. How the UK courts will apply this new exception remains to be seen; however the ECJ's considerations will undoubtedly serve as a great starting point.

Source: The 1709 Blog

Can You Infringe Copyright by Browsing the Internet?

Browsing the web can be full of pitfalls, both legally and in terms of your own safety. It's this world that we endeavor to navigate on our times surfing, but often don't think about the unknown issues or are blissfully unaware of the implications of our digital actions. It's because of this many things can slip through the cracks. Web browsers have made temporary copies of the content we read, look at and watch for years, more often than not without our knowledge, and this can present legal issues when dealing with copyrighted content, whether we want it or not. Whether just innocent surfing can infringe copyright is an interesting question, and this writer for one automatically thought the answer would be obvious, yet one would be surprised about the nuances behind the answer.

The case which dealt with this interesting conundrum was Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Ltd, having been referred to the European Court of Justice by its UK counterpart earlier on in 2013. The Public Relations Consultants Agency (PRCA) is an association public relations professionals, who among other duties monitor the news for their clients, clearly to safeguard or preempt any potential PR disasters. The members of this association used a service provided by the Meltwater group of companies; one which used software to automatically compile an index of words used by newspapers in their content online. To better utilize this service Meltwater's clients provide them with a list of search terms which interest them, which are then used to create an index which is oriented around those key words. In the service's results the opening words of the article, the key word and a few surrounding words and a hyperlink are provided for the client, allowing them to find the article containing their desired content more easily. The service does not circumvent any paywalled articles, and the client will have to pay for that specific content should they wish to view it. The respondents of the appeal objected to this use of their content, and took the Agency to court, culminating in the UK Supreme Court in the earlier part of 2013.

The button that all internet users wished existed for certain purposes

The question faced by the ECJ therefore was, as iterated by the Supreme Court: "The question which arises on this appeal is whether [Internet users reading the an article online] are nonetheless infringing copies unless licensed by the rights owner [by creating temporary copies of those works]". More specifically whether this infringes Directive 2001/29/EC, and through which the Copyright, Designs and Patents Act 1988.

Under Article 5 of the Directive incidental copies are treated as not infringing copyright should they be "... temporary, transient or incidental, which are an integral and essential part of a technological process and whose sole purpose is to enable... a transmission in a network between third parties by an intermediary, or a lawful use... and has no independent economic significance". Arguably, on the face of it, the matter is quite clear-cut, as temporary copies are essential to how the internet functions and how we both conserve and make internet traffic more efficient. Nonetheless, the matter is still not that simple, at least from a legal perspective.

The court quickly saw that the temporary copies made through the viewing of websites indeed do satisfy the first requirement under Article 5, as the copies are lost once the user moves on from the website and other content is subsequently brought in to replace the temporary copies of the prior page. This makes those copies wholly temporary in nature. The court then moved on to the third requirement, under which the copies have to be essential for the technology to work properly; or as presented in Infopaq International v Danske Dagblades Forening: "...first, the acts of reproduction are carried out entirely in the context of the implementation of a technological process and, secondly, the completion of those acts of reproduction is necessary, in that the technological process could not function correctly and efficiently without those acts". As the user has to say (mostly) in the creation or deletion of these copies, the technology needs for those copies to be created in order to function as intended, as they are a part of its process. The copies are, as said above, essential to the internet's proper function and help prevent excess volumes of traffic, which would undoubtedly choke the internet beyond use. The court seemed quite satisfied with the technology satisfying the second requirement, meaning that the technology is needed for the process to function properly and efficiently, and therefore satisfies the third requirement.

Under the second requirement the copies have to be transient or incidental, and as the copies, as stated above, are deleted once the user switches to a different page, they are transient, even if there is some level of human intervention in their deletion. Finally, the copies are created as a part of the technology which uses them, and do not by themselves exist independent of it nor have a purpose outside of it, making the copies incidental for the purposes of Article 5. The court therefore saw that the temporary copies created during web browsing do not infringe copyright and are excluded as a part of Article 5.

As one can see the ECJ's decision was one of pragmatism and common sense. The prevention of transient copies in the viewing of content on the web would be detrimental to how the internet functions today, potentially even causing issues in its overall usability. As said above the answer to the question seemed obvious, and quite frankly, should not have even been argued in court this far. The matter will be passed onto the Supreme Court to decide on ultimately; however the ECJ's word is a powerful one and clearly demonstrates an unwillingness to compromise the net as we know it for the sake of copyright.

Source: The Guardian

Ties to Free Content - European Court of Justice Rules on Hyperlinks

Hyperlinking is arguably one of the most important developments in the evolution of the Internet since being introduced by Tim Berners-Lee in 1989, creating what he would call the World Wide Web. Through this content within the newfangled Internet could be connected more fluidly than in its directory system prior to hyperlinking's integration. Arguably it has made the Internet better, easier to use, and more convenient. Although linking in its many forms has been an issue of some dispute in the legal world, one could have imagined it has mostly seen its heyday in the courts. In a rather interesting turn of events, a new case was recently decided by the European Court of Justice based on a case in Sweden, addressing this very topic earlier this year.

The case in question was Svensson v Retriever Sverige AB, concerning a number of Swedish journalists who regularly posted their journalistic content on the Göteborgs-Posten newspaper and on the Göteborgs-Posten website. The defendant in the case, Retriever, offered a service to its clients by gathering and sending them lists of articles on other websites in clickable link form. Although the articles in question were freely available on the newspaper's website for all to view the journalists argued that when the clients were provided the lists of articles, it was not clear to them that these links would lead to content on other websites; in other words, could be lead to believe Retriever provided them with this content. The journalists then sued Retriever for copyright infringement, arguing they had made use of their articles without prior authorization and sought compensation. The case was rejected by the Stockholm District Court (Stockholms tingsrätt) at first instance, and on appeal to the Svea Court of Appeal (Svea hovrätt) deferred the question to the ECJ for further assistance.

What the journalists argued was that Retriever had illegally made their content available to the public under the Swedish Act on Copyright in Literary and Artistic Works (a copy in Swedish can be found here). The ECJ's concern was how this act would be interpreted under Directive 2001/29/EC, more specifically Article 3(1).

The questions posed to the ECJ were (1) whether the provision of a link to another by a third-party, without the authorization of the copyright holder, would constitute a communication to the public under the Directive; (2) would this assessment be affected if the content is freely available to all on the website to which the link refers to; (3) should a distinction be made between the link showcasing the content on its original website, or if the content is shown in such a way to create the impression that it is appearing on the actual website when it is not; and (4) can a Member State give more protection to copyright holders by enabling communication to the public to cover a wider range of acts than is provided under Article 3.

The Swedish courts are not the only Swedes potentially blocking things

Through previous considerations in ITV Broadcasting and Others the ECJ saw that, for there to be a communication to the public under Article 3(1), there has to be "... an ‘act of communication’ of a work and the communication of that work to a ‘public’". The assessment of whether there has been an act of communication has to be done broadly, and with respect to Article 3(1) more directly: "..it is sufficient, in particular, that a work is made available to a public in such a way that the persons forming that public may access it, irrespective of whether they avail themselves of that opportunity". Under the ECJ's judgment the mere provision of links to content would be an act of communication under the Directive, as the content is made readily available to a public through Retriever's service. Whether this communication is done to a public, the ECJ has deemed that "...by the term ‘public’, that provision refers to an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons". Arguably Retrieve's service does offer content to a large, indeterminate number of people, and falls under the Article.

Although the ECJ saw that Retriever's service would therefore be under the definition of Article 3(1), the matter was not that straightforward. The communication has to be done to a 'new' public, one which the copyright holders would not have foreseen the content being communicated to when they authorized that content's communication. As the journalists' articles were already freely available potentially to every Internet user, it would not be possible for them to have not anticipated Retriever's users to not be able to access that content. As such, in the ECJ's decision, no authorization is required under Article 3(1), and Retriever would not infringe the journalists' rights in communicating their works. This would be the same even if the content is displayed as to imply its existence on the original website when it is not, as the content is still very much available to all. The ECJ did specify that should the content be made only available to subscribed users, and the service, such as Retriever's, would circumvent that pay-wall, it would clearly be beyond the anticipation of the copyright holders when authorizing the communication of their works.

The ECJ also rejected the potential of allowing Member States to widen their range of what can be seen as a communication to the public, as it would create uncertainty within the Union as to what would entail communication to the public if every Member State would have a varying degree of protection.

The Svensson decision was very important in how the Internet would function on a much larger scale, and had the potential to restrict its operation within the European Union. If hyperlinks were to have been deemed to infringe copyright in the event that they link to freely available content, it would be much harder for the end-user to find content relevant to their interests or new content altogether, as external links would infringe copyright and be a liability for third-parties. This writer for one is glad the decision allowed for the linking to outside content, as this very blog does so regularly, and would prefer not to be in hot water as a result.

Source: JDSupra

Retrospective - What is a Trademark?

Image and association through that image is a very powerful thing in the success of a product in addition to its sustainability as a strong brand. Trademarks have always aimed to protect that image, functioning as an indicator of certain qualities, value or consistency, giving the customer or client reassurance as to their expectations. Even though arguably self-explanatory or even obvious, what a trademark truly is is often left in the dark to the layman and even some legal practitioners. Trademarks encompass a wide array of possible marks which can be registered in the common law, yet they all share a common purpose in their registration and existence. This purpose was discussed under current EU, and subsequently applying to UK legislation, after the introduction of the EU's very first Directive dealing with trademarks.

The case in question was Canon v Metro-Goldwyn-Mayer, initially dealt with in the German Federal Court of Justice (Bundesgerichtshof) and then referred to the Court of Justice of the European Communities for further clarification in 1998. The case dealt with the mark "CANNON", which was applied for registration by MGM in Germany in relation to films recorded onto cassettes and their subsequent uses in distribution and production for example. MGM's application was then objected to by Canon under the old German Trademark Law (Warenzeichengesetz), arguing that their registered trademark "CANON" would be infringed should MGM be allowed to register the word "CANNON". Initially MGM's mark was rejected by the German Patent Office (Deutsches Patentamt) due to the marks being analogous; however a second examiner at the Patent Office dismissed the initial decision and rejected Canon's opposition for lack of similarity. The case was further appealed to the German Federal Patent Court (Bundespatentgericht), where the Court rejected Canon's appeal, deciding the two marks were not similar. The case was then ultimately brought to the aforementioned Federal Court of Justice, from where the case was brought to the European Court of Justice.

Tony proudly carried his badge

Under Directive 89/104/EEC the Union sought to unify the Member States' approaches to trademarks, under which the German laws were amended. The Directive also applies to the UK, which enacted the Trade Marks Act 1994 to bring their legislation in-line with the EU regulations. Relating to the case, the Federal Court of Justice referred this question to the European Court of Justice: "May account be taken, when assessing the similarity of the goods or services covered by the two marks, of the distinctive character, in particular the reputation, of the mark with earlier priority (on the date which determines the seniority of the later mark), so that, in particular, likelihood of confusion within the meaning of Article 4(1)(b) of Directive 89/104/EEC must be taken to exist even if the public attributes the goods and/or services to different places of origin?"

The question can be seen in simpler terms: would the judiciary have to take into account the reputation of an earlier existing mark (in this case CANON) when assessing the registerability of a newer mark (in this case CANNON), even if the public would understand the different origins of the two competing items bearing their respectable marks? What the European Court of Justice emphasized was the tenth recital of the Directive, which states that "...the function of [of a registered trademark]... is in particular to guarantee the trade mark as an indication of origin". This, in the Court's decision: "...enabl[es] [the consumer], without any possibility of confusion, to distinguish the product or service from others which have another origin", adding that "...it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality". In the Court of Justice's decision, answering the German Federal Court, the earlier mark's reputation has to be taken into account and just the risk of confusion would mean that there is a likelihood of confusion even if the two products have two distinct origins.

A trademark therefore offers a guarantee of quality and origin to the consumer, and has to be protected as such to prevent any confusion to the consumer as to this fact; a badge of origin, as it is often referred to as. Should other marks be allowed to be registered the consumer could be confused, at a quick glance at least. This position has been fully accepted in the UK under the Trade Marks Act 1994, and even in Canada the Canadian Supreme Court in Kirkbi AG v Ritvik Holdings saw that a trademark is "...a symbol of a connection between a source of a product and the product itself"; creating a similar description to what the European Court of Justice did.

As one can clearly see, trademarks offer a unique type of protection and a specific function. The origin of a product or services can be the deciding factor between the consumer purchasing your product rather than the other, and enabling that consumer to fully understand what they are buying is imperative. Trademarks offer this guarantee, protecting both the consumer and the owner of the trademark, making them incredibly valuable to all parties involved.