Before the Supreme Court - Copyright Protection of the Design of Uniforms in the US Court of Appeal

In the light of the pending US Supreme Court decision regarding copyright protection in the design of cheerleaders' uniforms, this writer thought it would be good to set the scene for the decision by discussing the decision handed down by the Court of Appeal. The judiciary rarely takes on design copyright cases, as often their value is negligible or protection is not even sought (especially in the US where copyright registration is an important part of IP).

The case of Varsity Brands Inc. v Star Athletica LLC dealt with the design of a cheerleader uniform, comprising of several different designs, incorporating various colors that divide the uniform into specific shapes and segments (visible here). The designs themselves were of non-functional nature, and were only intended to be of aesthetic value. The original works were produced and sold by Varsity Brands, who noticed that a competitor, Star Athletica, also sold similar outfits in competition with Varsity's uniforms, and took the company to court for copyright infringement and a number of other civil claims in competition.

The Court of Appeal first took on the issue of whether Star Athletica has infringed Varsity Brands' copyright in the uniforms; the designs for which have been successfully registered at the US Copyright Office. After lengthy discussions, the Court did agree that successful registration at the Copyright Office could offer prima facie, although rebuttable, protection and acceptance of copyright in a given work. Star Athletica did, however, argue that the designs were in themselves useful article, and thus not protectable by copyright. The designs therefore would need to be "…identified separately from, and are capable of existing independently of, the utilitarian aspects of the article" for copyright protection to be afforded.

What amounts to a useful article is an article that has a utilitarian function that is not there merely to convey the appearance of the article (i.e. for aesthetic reasons). Following the above, the Court established that this would be determined by a two-prong test: "…first, whether the design for which the author seeks copyright protection is a 'design of a useful article,' and if so, second, whether the design of the useful article 'incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article'".

Alan's Halloween outfit was totally non-functional

The Court then turned to the first prong of the test on separability, meaning that the article would not be a useful one, but only conveys the items appearance.  As illustrated by the Court's discussion, both appellate and first instance courts have struggled to formulate a concise and uniform approach in determining what would amount to a 'useful article'. The Court moved on to applying what they considered to be the correct approach, which would be applying a number of questions based on the Copyright Act itself. These questions are effectively to ask whether the design is "…a pictorial, graphic, or sculptural work", and if so, whether the design is a useful article within the definition above. The Court would then have to ask "…[w]hat are the utilitarian aspects of the useful article", which can include several aspects (for example, aesthetic, functional and non-functional elements).

Once the Court has identified the relevant utilitarian aspects of the design, it would then finally move onto assessing whether "…the viewer of the design [can] identify pictorial, graphic, or sculptural features separately from... the utilitarian aspects of the useful article", and if these features could exist separately from the design itself (i.e. are removable from the design and don't impact its functionality). If either one, or both, of the final questions fails, the design is not protected by copyright.

The Court subsequently moved onto its consideration of the copyright protection for Varsity Brands' designs. They quickly answered the first two questions in the affirmative, expanding on the second question that the designs, represented in sketches of the uniforms, have an "intrinsic utilitarian function that is not merely to portray the appearance of [clothing] or to convey information". They then set out the particular utilitarian aspects of the designs, which were to "cover the body, wick away moisture, and withstand the rigors of athletic movements". The Court rejected Star Athletica's assertion that the uniforms, through a decorative function, would not be copyrightable, as, rightfully so, this would cause artworks and other similar works to not be protected by copyright by virtue of their decorative function

Finally, the Court sought to answer the final two questions. In determining the separability of the pictorial, graphic or sculptural features (particularly the arrangement of stripes, chevrons, zigzags, and color-blocking), the Court saw that they could indeed be separated, as they do not enhance the uniform's functionality, and the uniforms remain fully identifiable even in the absence of this stylisation due to its distinctive shape. Additionally, purchasers would be able to distinguish each style from each other, and choose accordingly, making the designs separate and individual and therefore protectable. Even so, would they still exist independently of the utilitarian aspects of the uniforms, even if separable? The Court said yes, as the features could be incorporated into a number of garment styles, even if they are not meant for cheerleaders (meaning the designs are transferable), and do not affect the uniform's functionality for those purposes even if used or not. Following the answers to the questions the Court ultimately determined that the designs were copyrightable.

The Court distinguished this from the design of a dress, which, through its shape rather than a mere graphical addition adorning its surface, as its shape, cut and other features are "…inextricably connected with the utilitarian aspects of clothing" and thus can't be identified separately. This illustrates the difference in protectability for fabric designs and dress designs.

As is clear the US courts desperately need a unifying precedent to determine what the correct test is in relation to useful articles and the extent of copyright protection thereof. The Supreme Court's decision is still forthcoming, and this writer will be curious to see whether they follow the Court of Appeal's test, or formulate a different one entirely.

A Piece of Humble Pie - Design of Apple Pie Not Registrable, Says US Court of Appeals

What is more enjoyable than a case involving food and an intellectual property law? This writer for one will freely admit his love of both, and any case that presents a scenario mixing the two is a delight. Many recent cases have touched on the design of various food items, including the recent Kit Kat litigation in the UK (discussed more here) and in the CJEU (discussed more here), and as manufacturers and makers of edible goods compete for marketshare, the shape of these items can become quite valuable and important. One still has to distinguish this from recipes (discussed more here), and while they are much less likely to be protectable, shapes are a different matter altogether. With that said, could you protect the shape of a dish, specifically a pie? The Court of Appeals in the US aimed to answer this question only late last month.

The case of Sweet Sweet Desserts, Inc. v Chudleigh's Ltd dealt with a design of a single-serving apple pie, meaning a whole pie meant for one person in a neat, convenient package. This particular food item was the creation of Scott Chudleigh, the owner of an apple farm and bakery in Ontario, Canada. It consisted of a ball-like shape, with upward facing, spiralling petals that overlap each other, encasing the apple pie filling within. He subsequently filed for a trademark in 2005 (US trademark 2262208, which includes an illustration of the design). The pies where distributed to various companies for resale, including a discussion with Applebee's in the US for the sale of the item in their restaurants, but the negotiations fell through. In 2010 Applebee's approached Sweet Sweet Desserts to create a single-serving apple pie, much akin to the idea conjured by Mr Chudleigh, who developed an "apple pocket" with a pie-like bottom and an overlapping spiral top design, leaving a gap in the top (subjectively quite similar to Chudleigh's apple pie design).  After launch Mr Chudleigh noticed, through online advertising, the similarities of the two designs, and took Sweet Sweet Desserts to court over trademark and trade dress infringement.

Little Jimmy's "floor pie" was received with less enthusiasm

The first issue dealt with by Justice Shwartz was whether Chudleigh's design was merely functional, and thus not registrable as a trademark. 15 USC section 1125(a) prohibits the use of any marks that would deceive a consumer as to the origin of goods or services, potentially including the aforementioned design, provided the design is not only functional and thus not a designation of such an origin. Justice Shwartz further set out that "...in general terms, a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article". Even if a feature were deemed to not be functional, a court can still find against the owner should the mark put competitors "...at a significant non-reputation-related disadvantage", therefore potentially restricting competition in the field (i.e. if a design or shape of a mark is essential or near-essential to the creation or presentation of certain types of goods).

What the Court found was that the design was indeed functional, as "...the shape of the dough is essential to the purpose of an effective single-serving fruit pie, and affects its cost and quality". Arguably this is correct, since the folding of the dough in order to seal the filling into the pie does just that, and does not, at least for the most part, act as purely decorative, clearly designating an origin for those particular pies. Mr Chudleigh admitted to this fact somewhat, stating that the use of the dough in that particular shape was designed to save on cost and to fill a particular market need for single-serving pies. Additionally, the number of 'petals' in the pies would be predominantly as a functional aspect, giving the best results for holding in the filling and baking, again enforcing a lack of decorative purpose and pure functionality. The Court therefore determined the design to be functional, and revoked Mr Chudleigh's registration.

The final claim dealt with by the court was Sweet Sweet Desserts' claim for tortious interference with their relationship with Applebee's through Mr Chudleigh's assertion of his alleged rights (being very similar to groundless threats in the UK). Justice Shwartz quickly ruled against this claim, determining that Mr Chudleigh's cease-and-desist letter, sent to Applebee's after his discovery of the Sweet Sweet Desserts' apple pie, since the letter was an "...objectively plausible effort to enforce rights" and not a sham to extract a settlement from the parties prior to a full case. Even though he failed in the case at hand, losing his rights in the design, does not take away from his legitimate belief at the time as to the existence of these rights. The Court ultimately allowed the application for summary judgment for both parties.

The case, albeit not ground-breaking in any way, is a curious predicament for the law, especially considering the uncertain world of food-related trademarks and rights. This writer would fully agree with the Court, since the design of the pie was purely functional, and any decorative or indicative purposes were either incidental or minor in the grand scheme of things. It is unclear whether Mr Chudleigh could have succeeded in a claim for passing off in the UK, and this writer sure does have his doubts as to this, but the idea would seem to be a novel one as a hypothetical.

Source: JDSupra

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

Metatags and IP Rights, Eh - Infringement of Rights Through Metatags in Canada

The Internet has spawned a great deal of new issues when it comes to intellectual property, even outside of the more obvious problems of piracy and sale of counterfeit goods from overseas. One issue that most would not think about in the context of infringement would be metatags. For the uninitiated, metatags are words or phrases placed in the code of a website that indicate the content of the website and aid in the site's search engine listings when certain terms and words are searched. They can be quite powerful in pulling traffic to a particular site, and are hidden from plain view unless the website's underlying code is observed. As such, metatags can incorporate trademarks or other protected works without displaying them, but resulting in that website appearing when those words are searched (or potentially improving their ranking when non-registered words are searched). With this in mind, could one infringe another's rights through metatags, and if so, to what extent? This question was answered recently by the Canadian Court of Appeal.

The case of Red Label Vacations Inc. (Redtag.ca) v 411 Travel Buys Limited dealt with two competing travel service companies; Red Label, established in 2004, and 411 Travel Buys, established four years later in 2008. 411 Travel Buys, upon their establishment, embarked on the creation of a website for the business, hiring a student as an intern to do so, directing her to look at other more established site for inspiration and guidance on what worked (including Red Label's website Redtag.ca). As a result some metatags were copied over from Red Label's website onto the 411 Travel Buys' site, incorporating some of Red Label's registered trademarks (including the phrases "redtag.ca vacations" and "Shop. Compare. Pay less!! Guaranteed"). The phrases were not visible on the page, but were incorporated in the site's metatags in their entirety, among many other words and phrases. Upon discovering this in 2009, Red Label took 411 Travel Buys to court, asserting copyright infringement in the phrases and the infringement of their registered trademarks.

Metadata can be surprisingly revealing

The Court first dealt with Red Label's claim of trademark infringement under section 20 of the Canadian Trade-marks Act. Justice Webb, handing down the judgment of the Court, initially discussed the 'use' of Red Label's trademarks in their incorporation in the metatags, and whether that would indeed be a use under the section. Affirming the judgment at first instance (which can be found here), he saw that the use of the trademarks in the metatags would not, in this instance, amount to infringement, as they were not used for the purpose of distinguishing or identifying 411 Travel Buys' services on their website in connection with Red Label's services. He did, however, accept that there can be the possiblity of such, but rejected it in the case at hand: "...in some situations, inserting a registered trade-mark (or a trade-mark that is confusing with a registered trade-mark) in a metatag may constitute advertising of services that would give rise to a claim for infringement". This needs to be illustrated through further evidence, and specifically in connection with the services provided by both parties (411 Travel Buys did not offer their services online, only via the phone, whereas Red Label did). Justice Webb did not discuss the extent of use or degree of use in any detail, but this writer believes his interpretation might be in the right direction.

The second point (as Justice Webb easily dismissed any claims on passing off, again affirming the first instance judgment) dealt with copyright. The point was brief, agreeing with the Federal Court Judge, who saw that "[w]hile in some cases there may be sufficient originality in metatags to attract copyright protection when viewed as a whole, the substance of the metatags asserted by the Plaintiff in this case does not meet the threshold required to acquire copyright protection in Canada". What the Federal Court Judge deemed was a lack of any degree of skill or judgment used by Red Label, or sufficient originality, to afford the metatags any level of protection through copyright. The Court therefore rejected the appeal as a whole.

Initial interest confusion was discussed in more detail by the judge at first instance, and Justice Dawson, in her concurrent judgment to Justice Webb, briefly touched on this: "The extent to which a trademark may be used in metatags without infringing the trademark is, of necessity, fact specific. These reasons ought not to be read as endorsing the Judge’s remarks relating to “initial interest confusion” or as endorsing every alternate basis on which the Judge dismissed the action".

In the UK metatags have been discussed, although not in many cases, most recently in Interflora Inc v Marks and Spencer Plc, where the High Court (after a CJEU referral) deemed the use of a competitor's trademarks as metatags would infringe their rights in those marks. Going contrary to the Canadian Court of Appeal, they endorsed the initial interest confusion theory, potentially adding an additional lawyer of complexity to metatag cases in the UK. The Court of Appeal disagreed, and remitted the case back to the High Court for retrial (currently still pending). This leaves the situation with metatags unclear in the UK, but remains as insight into the application of IP rights in metatags for the time being.

In the United States the question has not been answered definitely, with different Circuit Courts taking different approaches. In Brookfield Communications, Inc v West Coast Entertainment Corporation metatags were seen as infringing a registered trademark (constituting a use of the mark), even though the tags are not communicated to the public as a part of the website. On the other hand, in S&L Vitamins, Inc v Australian Gold, Inc, it was deemed this was the case, and that the incorporation of metatags would not constitute a use of a mark and therefore infringe it.

As can be seen, the status of metatags and trademarks is quite uncertain, although the Canadian perspective seems a lot more clear. In any event, the use of such tags is a big part of the operation of the Internet and search engines like Google, and thus do carry a great deal of value if used properly. This writer would be for more stricter approaches in protecting certain terms in metatags; however, there should be no monopoly on the use of more 'generic' terms to facilitate a more functional and competitive online marketplace.

Source: JDSupra

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.

Fair and Square - DMCA Takedown Notification Senders Must Consider Fair Use

The DMCA takedown notice has become near universal on the Internet, allowing for those whose rights have been infringed online to have the service provider take down that material or face the music for their ignorance. What this has given rights holders is, arguably, a weapon, which allows them to take down material on a whim with very little or no regard to its actual use or purpose. Often one can accidentally include infringing material, or even use them for a legitimate purpose, yet rights holders have never had to consider these facts, but could assert their rights when ever they wanted to. This changed towards the end of 2015, when the US Court of Appeals addressed the question on what amounts to 'authorization under 17 USC § 512. This writer wanted to discuss this case sooner, and laments his lateness.

The case of Lenz v Universal Music Corporation dealt with Stephanie Lenz, who uploaded a video on YouTube of her young kids dancing to the song Let's Go Crazy by Prince, lasting a lengthy 29 seconds. The video comprises of her two kids, specifically her youngest, bopping to the song, which is audible in the background. Upon finding Ms. Lenz's video, Universal Music lodged a removal request with YouTube, who promptly removed the video. Ms. Lenz sent a counter-notification to YouTube, which was defended by Universal as a legitimate request (and in their correspondence, did not discuss or mention fair use, but asserted plain infringement). Ms. Lenz subsequently sought counsel, and the video was reinstated some time after a second counter-notification was sent, and she pursued further action in the matter, asserting a misrepresentation claim under section 512(f).

The heart of the case lies in section 512, and more specifically, the obligations in places on both the notified and the notified party. Under subsection c, the service provider has to 'expeditiously' remove any infringing material brought to its attention so as to benefit from the safe harbor provisions in the same section, and they have to notify the party who placed the infringing material on their service (the same affords them an appeal process to these notifications as well). Finally, should a rights holder abuse this process, subsection f provides that the person whose material has been removed due to this abuse can subsequently claim for damages due to the misrepresentation made by the notifying party.

A big point of contention in the case was whether a rights holder has to consider fair use under 17 USC § 107 before using the notification process. Although the section does not mandate this, it does, however, stipulate that "...the complaining party has a good faith belief that the use of the material in the manner complained of is not authorized by the copyright owner, its agent, or the law". This would potentially encompass fair use, as that would amount to an authorization for the work's use under law, even if the party who controls those rights objects to the use in some way.

Fair use, who would've thought!?

The Court discussed, although fairly briefly, whether fair use would be an affirmative defense that merely excuses infringement (i.e. does not authorize the use, but merely dismisses a later assertion of infringement should one be put forth), or whether it would be a true authorization and not an affirmative defense. The Court dismissed Universal's argument, and asserted that "...for the purposes of the DMCA — fair use is uniquely situated in copyright law so as to be treated differently than traditional affirmative defenses. We conclude that because 17 U.S.C. § 107 created a type of non-infringing use, fair use is "authorized by the law" and a copyright holder must consider the existence of fair use before sending a takedown notification under § 512(c)". This means that when a rights holder intends to send a notice under the section, they have to make a bona fide assessment on the legitimacy of the use of the work under fair use. Failure to do so would be a misrepresentation under section 512(f).

What followed was the Court's determination on whether Universal should have known that the video was fair use. This is an objective assessment, seeking actual knowledge of fair use on part of the notifier, rather than a simple mistake (using the notifier's subjective good faith knowledge at that time, rather than a standard of reasonable belief or knowledge, for example). The Court saw that Universal had not been 'willfully blind' to the existence of fair use or its application to Ms. Lenz's video. Ultimately, no misrepresentation was found, and Ms. Lenz could not recover damages. One has to still note the closing remarks by Judge Tallman, who handed down the majority's judgment: "Copyright holders cannot shirk their duty to consider — in good faith and prior to sending a takedown notification — whether allegedly infringing material constitutes fair use, a use which the DMCA plainly contemplates as authorized by the law".

This writer was truly surprised this point had never been argued at court, but found Judge Tallman's judgment to be correct. Arguably, fair use (and fair dealing here in the UK) is not merely an affirmative defense, but presents an authorization for the use of copyright protected works for those intended purposes, or within the remit of a given similar provision. Leaving it as merely a shield would encumber those using the works with a heavy responsibility for defending their use at court; one that most of them would not necessarily be able to afford. A stricter authorization allows for this use, and puts the burden on those who wish to assert their rights, and rightfully so, since they benefit the most from their works.

Source: JDSupra

Copyright Calm - Yoga Poses Refused Copyright Protection in the US

Many in the legal community could benefit from more relaxation and meditation, and today's fitness culture harbors a great appreciation for activities like pilates and yoga. As many of you will be aware, yoga (and similar forms of exercise) are composed of a variety of poses and movements, allowing for the targeting of specific muscle groups and/or physical (and mental) benefits as a result. If the different poses and exercises were not enough to confuse many, there are several different styles of yoga, all encompassing different methodologies and exercises, such as Ashtanga and Hatha yoga, some of which have been developed fairly recently by modern yogis. One of these is Bikram Yoga, developed by Bikram Choudhury, comprising of 26 poses conducted in a hot, humid environment. As the style has been designed and 'created' by Mr. Choudhury, one could imagine the program or poses could be protected; a fact that Mr. Choudhury has vigorously asserted over the years. To that end, could a yoga pose or series of poses be protected by copyright?

The US Court of Appeals recently took this question on in the case of Bikram Yoga College of India v Evolution Yoga, LLC, which dealt with the aforementioned yoga style. Bikram Choudhury's version of Hatha yoga consists of 26 different 'asanas', or in other words, poses, and two breathing exercises, all collectively known as the Sequence. He also released a book called "Bikram's Beginning Yoga Class" in late the 1970s, and registering its with the US Copyright Office along with a 'compilation of exercises' some time later. The final chapter in the development of his yoga empire was the launch of a Bikram Yoga instructors course in the late 1990s, called the "Bikram Yoga Teacher Training Course", where individuals could learn the Sequence and the underlying philosophy of Bikram Yoga and instruct others in the same. In the early 2000s, Mark Frost and Zefea Samson participated in the course, and subsequently founded Evolution Yoga, where they taught, among other classes, "hot yoga", which was similar to Bikram's take on yoga. Mr. Choudhury subsequently took the two to court, alleging copyright infringement of his copyright protected works.

The case stems from the idea-expression dichotomy, which separates the protection of ideas without an expressive manifestation in a tangible form. The Court therefore had to assess whether the Sequence would amount to a mere idea, or whether it would be a form of expression protected by copyright.

Yoga isn't always all fun and stretches

Under 17 U.S.C. § 102(a), many different forms of works are covered by copyright; however subsection (b) specifically excludes protection from "...any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work". Judge Wardlaw, handing down the Court of Appeals' judgment, extensively considered precedent dealing with the Court's view on the division of ideas and expression. Baker v Selden, dealing with the protection (or lack thereof) for a book-keeping system, and Palmer v Braun, dealing with the protectability of meditation exercises, illustrate the unavailability of copyright protection for ideas, even if they are 'expressed' in some sort of tangible form.

Ultimately, the Sequence was deemed to be not protected by copyright. Even though Mr. Choudhury's Sequence promotes health and the development of human mental and physical well-being, the Court determined it fell short from copyright's remit. Judge Wardlaw did, however, remark that "...if it is entitled to protection at all, that protection is more properly sought through the patent process". The prevention of competition was also a consideration for the Court, as they saw that "[c]onsumers would have little reason to buy Choudhury's book if Choudhury held a monopoly on the practice of the very activity he sought to popularize. Rather than "stimulat[ing] artistic creativity for the general public good," copyright protection for the Sequence would prevent the public from engaging with... [the] idea and building upon it".

Mr. Choudhury also argued that the Sequence should be protected as a compilation work under 17 U.S.C. § 103. Judge Warlaw quickly rejected this argument, as, for a work to be awarded protection under section 103, it would first have to qualify as a protectable work under section 102; something that, as the above shows, it failed to do. The argument was based on Mr. Choudhury's arrangement and organization of the poses and exercises within the Sequence, but this still does not extend copyright to subject matter that it did not protect to begin with. This makes sense, as it seeks to prevent the protection of non-qualifying works, since the extension of compilation protection to works not covered by section 102 could open the floodgates for works not contemplated by the legislature in drafting the law.

Finally, the last argument dealt with by the Court was whether the Sequence would be protected as a choreographic work under 17 U.S.C. § 102(a)(4). Similarly to the above, the claim fails due to a lack of protection as a qualifying work under section 102 from the very beginning. As settled by Judge Wardlaw: "[e]ven if the Sequence could fit within some colloquial definitions of dance or choreography, it remains a process ineligible for copyright protection".

The case remains a novelty in the sphere of copyright, and offers very little that was not known already. Yet, it does highlight an important aspect of intellectual property law: the importance of picking your form of protection. Should Mr. Choudhury sought patent protection for the Sequence, he could have potentially used it to prevent others from using his Sequence, or teaching similar routines at non-affiliated yoga studios. Even so, he did not, and fell foul of copyright and its remit.

Source: JDSupra

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

Knowledge for All - Google Books is Fair Use

Information, and access to it, is an incredibly powerful tool to create progression, social mobility and to affect even the biggest nations in wondrous ways. True or not, this writer is a firm believer in the dissemination and sharing of knowledge (even through blogging), and many initiatives have strived to give access to knowledge and information to those who cannot do so themselves. One such initiative is Google Books (in some ways), although clearly still laced with the sub-text of corporate gain, allowing for "...people everywhere [to be] able to search through all of the world’s books to find the ones they’re looking for". By no means altruistic, yet quite useful, the project aims to scan all of the world's books into one database, using it to allow people to find information quickly, effectively and inter-connectively (this writer notes this is not a sales pitch, even if it sounds like one). The project came under fire some time ago, prevailing initially, but the case since moved on to the US Court of Appeals, which handed down its judgment only last week.

To give this story some color, the case of Authors Guild v Google Inc dealt with the aforementioned project, where snippets of books (in image form or not) are presented to a user who searches the database for a word, phrase or sentence, with the results containing one or more instances of the search terms used in brief context. Some participating research libraries have also allowed Google to retain digital copies of some works under strict contractual terms. The Authors Guild did not accept this use of its authors' works (many of which act as plaintiffs in the matter), and took Google to court for copyright infringement.

The crux of the case lied in whether Google's use in the provision of its snippets and its search facility in seeking out the relevant content in the books amounted to fair use under 17 USC section 107 (and the four factors used to assess whether a use of a work amounts to fair use). The Court of Appeals proceeded, therefore, to apply the four factors of fair use to Google's service.

Gary struggled to find what he was looking for.
If only there was a better way...

The first factor looks at what the purpose and character of the secondary use of the work was, i.e. whether Google's use of the copyright protected works was in any way 'transformative'. The Court quickly saw that Google's search capability was highly transformative, as "...the purpose of Google's copying of the... books is to make available significant information about those books, permitting a searcher to identify those that contain a word or term of interest, as well as those that do not include reference to it. In addition, through the ngrams tool, Google allows readers to learn the frequency of usage of selected words in the aggregate corpus of published books in different historical periods". What Google's service allows for users to do is very different than the character and purpose of the books themselves, making their use of the works quite transformative. They also saw that the snippets added something more to the search function, and is in itself also transformative, allowing for a more in-depth assessment of context and relevance when searching for information to the user. Google's commercial motivation did not negate this finding.

The Court determined, briefly, that the second factor (nature of the protected work) played very little part in the assessment of fair use.

When looking at the third factor (the amount and substantiality of what was copied), Judge Leval, handing down the majority's judgment, determined that as no full copies were made available to the public by Google of the scanned books, the search function did not copy a substantial amount. The snippets shown in the results did not, in Judge Level's mind, give enough material to the reader to substitute the protected works, as only very small amounts of text are revealed to each individual user.

Judge Leval finally looked at the fourth factor, assessing the effect of the works' use upon the potential market for or value of the copyrighted works. Although the Court did recognize that there could be an impact on the works or their potential market, albeit a small one, it still had to be "...a meaningful or significant effect" for there to be an issue under the fourth factor. Even if the snippets display some facts or information, and thus detract from a need to purchase the works, they still offer very little in the form of a substitute to the original works and would not cause much of an impact in the works' potential market.

Google's Books project was therefore deemed to fall under fair use.

What the decision in hand showed us is a clear need for there to be more direct interference in an author's use of a work, and their monetary gain from it through its intended purpose (loosely said, at least). What Google created was a tool, not a substitute, that by no means superseded the original works, but allowed for them to be searched and reviewed partially, while leaving much to the original that needed to be looked through to understand the bigger, more accurate picture. The decision came as no surprise to this writer, as Google Books is nothing more than that, yet still very useful for those seeking to find a snippet of information or a factoid. Whether the matter will go to the Supreme Court remains to be seen, but the Authors' Guild has promised to take the matter further, and this writer will await the granting (or denial) of certiorari by the Supreme Court with interest.

Source: IPKat

Online Blasphemy - YouTube Wins Round Two of Performance Right Kerfuffle

After the decision in Garcia v Google (discussed on this very blog here) last year the question of whether an actor (or actress) has a copyright interest in their respective performance, no matter how short, has been debated hotly. The decision was appealed, and the Court of the Ninth Circuit decided to hear the matter again en banc; a decision that many of us involved in IP have waited for with anticipation. The decision was finally handed down nearly two months ago, and this writer, in shame, only now had time to discuss the case.

For the uninitiated Garcia v Google dealt with a low-budget independent movie called "Desert Warrior", in which Ms. Garcia appeared. Post filming the title and narrative of the movie was drastically changed, finally being called the "Innocence of Muslims"; a movie that arguably was quite blasphemous and offensive towards those of the Islamic faith. Ms. Garcia's appearance was a brief 5 second clip, and her performance was dubbed over in post-production. The movie incited violence and disapproval in the Middle East, with Ms. Garcia also facing several death threats as a result of her appearance in the movie.

The main crux of the case lies in Ms. Garcia's claim in a copyright interest in her performance, allowing for an injunction to be issued against Google for the movie's broadcast on their YouTube platform (and potential other platforms as well). This injunction was issued at first instance.

The Court raised the alarm right from the start, stating that "...Garcia’s theory of copyright law would result in... splintering a movie into many different “works,” even in the absence of an independent fixation", or in other words, every actor or actress in a given movie would have a copyright claim in it. Also, Ms. Garcia's part in the movie would fall under the work-for-hire doctrine, which passes on the copyright interest to the employer, leaving her with no copyright claim in the work. Ms. Garcia did not, as a final barrier to her copyright claim, fix her work in any tangible form; a requisite element under copyright in the United States for an interest in the work to arise. Through the Court's rationale, albeit quite aggressive as such, Ms. Garcia's claim was quickly dissected and dismissed and she was deemed to have no copyright claim in the work.

Free speech online; a precious commodity

Finally, the Court addressed Ms. Garcia's claim under irreparable harm. Her claim does not manifest itself through any tort-based cause of action, but through copyright and her interest in the work as an author. The Court did have sympathy for Ms. Garcia, but her action was rotten at the root, as the Court described: "This relief is not easily achieved under copyright law. Although we do not take lightly threats to life or the emotional turmoil Garcia has endured, her harms are untethered from -and incompatible with - copyright and copyright’s function as the engine of expression". One has to agree with the Court's judgment, as rightfully so copyright protects expression and not human life or its safety. While one has to appreciate that the movie has brought a significant amount of distress to her, and as such those problems should be addressed, but the way to address them is not through copyright. In the end, her claim failed under irreparable harm, as no harm was caused to the work or her claimed interest in the work as an author.

Judge Kozinski, who gave the judgment at first instance, handed down a dissenting judgment, as he saw there indeed was a claim under copyright in Ms. Garcia's small part in the movie. Through his Honor's argument, Ms. Garcia's claim stems from the acting itself, and its fixation on film. Without this, in judge Kozinski's mind "[i]f Garcia’s scene is not a work, then every take of every scene of, say, Lord of the Rings is not a work, and thus not protected by copyright, unless and until the clips become part of the final movie". This writer, in his humble opinion, argues against judge Kozinski here, as the mere recording of an actor or actress does not necessarily create a 'work' unto its own under copyright. Should one follow this logic the movie in question could consist of hundreds, if not thousands of distinguishable works, which would lead to copyright being untenable in the film industry.

Judge Kozinski further argues that Ms. Garcia has an interest as an author, and thus should be protected from irreparable harm. Although, under precedent, an author does not themselves have to affix the work to be considered as such, an actor or actress plays no part in the fixation of a work, but merely act as a part of its fixation for another. This does not create an interest as an author, or a separate author within one work. As she is not an author she cannot face irreparable harm, even if her life is at stake, as his Honor points out at the end of his dissenting judgment.

Overall the case has been a very interesting one, and whether it goes on further remains to be seen; however, this author does not see a need for it to go beyond its current route. Whether Ms. Garcia has a copyright interest in the work is, at least arguably, an equivocal no, and her case, although very serious in nature, would create an overreaching right in copyright beyond its intended purpose.

Source: BBC News

Retrospective - Geographical Indicators and Trademarks

As many wine connoisseurs can clearly tell you, there is a vast amount of difference in the origin of a wine, be it from Southern France or Northern Italy, the specific region where the product is produced lends itself to create a nuanced flavor profile only achievable from that particular region. While this writer has no knowledge of such differences (he distinguishes his wines based on color), they illustrate a very important aspect of protection for some products and their geographical origins. Be it Feta cheese, Parmigiano Reggiano, or Scotch whisky, where the products come from is often as important, or at times more important, than the quality of the product, giving each item its 'signature' taste and feel. With this specific taste and feel (at least prima facie) comes a need for protection, lest we allow for the production and sale of Parma ham produced all over the world, clearly therefore not being from Parma at all, potentially deceiving the public as to its origins. That said, does the geographical origin of a product confer a protectable right, and if so, how wide-reaching is the right?

A decision seeking to answer this question was faced by the then-named House of Lords in the UK in the early part of the 21st century in Consorzio Del Prosciutto Di Parma v Asda Stores Limited and Others. The case concerned the packaging and sale of Parma ham, specifically by Asda (a large chain of UK supermarkets), which had been sliced and packaged in Wiltshere in the UK by Hygrade Foods Ltd. Although the ham had been produced in Parma and subsequently sent to Hygrade, the act of slicing and packaging the meat had occurred in the UK; something that went against the Italian law (accessible here in Italian) protecting Parma ham and its processing specifically, and the sale thereof. Upon identifying this the Parma Ham Association sued Asda and Hygrade for selling the ham.

The law relied upon by the Association is European in origin, specifically European Council Regulation No. 2081/92. Under the Regulation the European Commission can register a name, upon the satisfaction of criteria set out in Article 4 of the Regulation, as a "protected designation of origin" or a "protected geographical indication", which, as explained by the court, are: "...[a] PDO is the name of a place used to describe a product, originating in that place, with characteristics that are due to its particular environment. A PGI is similar to a PDO except that the causal link between the place of origin and the quality of the product may be a matter of reputation rather than verifiable fact". Parma ham was registered as a PDO in 1996. 

Clucky didn't care if it was from Parma or not

After some deliberation by Lord Justices Hoffamn and Scott, the Lords could not answer the question posed to them as to the direct enforceability of the Regulation within Member States' domestic courts, and therefore referred the question to the European Court of Justice for further deliberation: "As a matter of Community law, does [the Regulation]... read with Commission Regulation (EC) No 1107/96 and the specification for the PDO “Prosciutto di Parma” create a valid Community right, directly enforceable in the court of a Member State, to restrain the retail sale as “Parma ham” of sliced and packaged ham derived from hams duly exported from Parma in compliance with the conditions of the PDO but which have not been thereafter sliced, packaged and labelled in accordance with the specification?"

The decision of the ECJ was given two years later. The ECJ answered the House of Lords' question after long deliberation of the Regulations application to Member States, and whether a PDO can be enforced against economic operators, including its specification as to slicing and packaging:

"[the Regulation]... must be interpreted as not precluding the use of a protected designation of origin from being subject to the condition that operations such as the slicing and packaging of the product take place in the region of production, where such a condition is laid down in the specification. Where the use of the protected designation of origin ‘Prosciutto di Parma’ for ham marketed in slices is made subject to the condition that slicing and packaging operations be carried out in the region of production, this constitutes a measure having equivalent effect to a quantitative restriction on exports within the meaning of Article 29 EC, but may be regarded as justified, and hence compatible with that provision. However, the condition in question cannot be relied on against economic operators, as it was not brought to their attention by adequate publicity in Community legislation."

All in all the Regulation does create an enforceable right through a PDO, but only if the stipulations within it as to specific packaging, slicing or other measures, have to be expressly stated within the registered PDO. Geographical indicators, therefore, act very similarly to trademarks, and do offer an route of enforcement ensuring the quality of the goods themselves within the European Union. Geographical indicators are also protected outside of the EU through a variety of agreements between the EU and other nations, with the addition of agreements between World Trade Organization members. They are by no means an answer to a lack of a trademark, but offer an avenue through which distinct origins (and quality) can be protected, especially when its derived from tradition and strict rules on the above.

Retrospective - IP Infringement and Free Speech

Almost as holy as expression in its many forms, is the fact that, in most countries at least, expression is largely free of limitations, and that even dissenting opinions can, and should be voiced. With this vast freedom, especially in the United States, one can argue that the freedom of expression can be misused and utilized for nefarious means, or to harm others or their more intangible assets such as reputation or notoriety. In any instances where one's reputation is harmed through the freedom of expression (assuming that expression falls within the letter of the law), those parties would clearly want to prevent that speech through any means necessary; even more questionable ones. The attempted curtailment of speech has been discussed on this blog before, but that still leaves the question of can intellectual property rights be used to prevent freedom of expression? A case in the US Court of Appeals attempted to face this very question some decades ago.

The case in question was Rogers v Grimaldi, decided in the late 80s, which concerned a movie made by Frederico Fellini for the defendants in 1986. The subject matter of the movie, wonderfully titled as "Ginger and Fred", were two fictional cabaret dancers, Pippo and Amelia, who were known for their imitation of both Ginger Rogers (an Academy Award winning actress in the 1940s, and the plaintiff in the case), and Fred Astaire, who Ms. Rogers often co-starred with in various productions. The cabaret dancers were known as "Ginger and Fred" to their viewers in Italy, and the movie's title, and subsequent plot, refers to their reunion after years of retirement. After distribution within Europe and the US the movie was received rather negatively, and undoubtedly in the wake of this negative publicity, Ms. Rogers sued and claimed false designation of origin under 15 USC section 1125 and a violation of her common law rights to publicity.

Effectively what the case is assessing is a balance between free speech and the protection of an individual's (or entity's) rights in their trademarks, albeit more in the context of passing off than registered trademarks (more on which can be found here). Justice Newman presented the question well in the majority's opinion: "Poetic license is not without limits. The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product. Thus, it is well established that where the title of a movie or a book has acquired secondary meaning — that is, where the title is sufficiently well known that consumers associate it with a particular author's work — the holder of the rights to that title may prevent the use of the same or confusingly similar titles by other authors".

Frank was worried he would not be heard

In answering this question, the Court of Appeal approached the matter through a balance of public interest and those of any affected parties: "We believe that in general [15 USC 1125] should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work". What Justice Newman's opinion states, is that the potentially misleading title has to apply to the work it represents, or in other words, has to showcase or illustrate the work somehow, and not merely mislead a person to pay for the work thinking it is connected to a potentially affected party such as Ms. Rogers. Arguably this approach is sensible, as the use of IP rights to protect those rights has to be legitimate, just as much as the use of those rights in conjunction with newer works is. Free speech should be promoted through legitimate use, and not stifled merely to further shallow interests such as fame.

The Court of Appeal lengthily discuss the nuances of this approaches application, yet, what remains relevant is the use and applicability of those rights to the underlying work, and the legitimacy of that use. Ms. Rogers relied heavily on survey and anecdotal evidence in establishing a claim of false advertising of designation of origin; however this was dismissed handily by the Court: "...the title "Ginger and Fred" surpasses the minimum threshold of artistic relevance to the film's content. The central characters in the film are nicknamed "Ginger" and "Fred," and these names are not arbitrarily chosen just to exploit the publicity value of their real life counterparts but instead have genuine relevance to the film's story". No amount of confusion, arguably at least, will counteract freedom of speech, so long as the use of a name or names is relevant to the underlying work. As such the Court of Appeal dismissed Ms. Rogers' appeal.

Freedom of expression poses an interesting balancing act of human rights and commercial interests (or even other human's rights against said expression). The European Court of Human Rights weighed on the issue of copyright interfering with freedom of expression in the case of Ashby Donald and Others v France (case text only in French), and deemed that "...a conviction based on copyright law for illegally reproducing or publicly communicating copyright protected material can be regarded as an interference with the right of freedom of expression and information under Article 10 of the European Convention". Even so, the case saw that the copyright interests asserted did trump the appellants' human rights, as their interests were purely commercial and did not contribute to a specific expression or discussion of opinion. As such, the case can be seen to align with the view that intellectual property rights should not hinder legitimate expression, but can, and should, be used to protect commercial interests.

Overall one can appreciate that freedom of speech is seen as a valuable tool for discussion and a strong point of public interest, yet it should not overshadow the protection of some rights, at least in some instances. A blatant use of copyrighted material, or trademarks, for the purposes of making a quick buck should be dissuaded; however one man's folly should not silence a nation.

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