Friday, 23 June 2017

AG Szpunar advises CJEU to rule that a red sole may not be just a colour

Every woman's
dream red soles
Can a colour be considered akin to a shape, so that a sign that consists exclusively of a colour "which gives substantial value to the goods" cannot be registered as a trade mark?

As readers might notice, this question should be phrased differently under the new Trade Mark Directive: Article 4(1)(e) therein prevents in fact registration as a trade mark of any sign that consists exclusively of "the shape, or another characteristic, which gives substantial value to the goods".

However the question of whether a colour is to be regarded as a shape (and not just "another characteristic") is because under the 2008 Directive, Article 3(1)(e)(iii) therein prevents [the general deadline for national implementations of the new directive is 14 January 2019] registration of any sign which consists exclusively of "the shape which gives substantial value to the goods". 

To add further complexity to this issue, the various language versions of the 2008 Directive seem to suggest that a shape may not be just a 3-dimensional object, but also a 2-dimensional one ... this possibly being the case, at certain conditions, of a colour. As this blog reported, in fact, the German, Dutch, French and Italian versions of the 2008 Directive speak of 'Form', 'vorm', 'forme' and 'forma', respectively.

All this is currently being at the centre of a Dutch reference for a preliminary ruling (from the Rechtbank Den Haag) to the Court of Justice of the European Union (CJEU), arisen in the context of longstanding litigation over the validity (or lack thereof) of the (in)famous Louboutin red sole colour mark. The case reference is Christian Louboutin and Christian Louboutin SAS v Van Haren Schoenen BV, C-163/16.

More specifically, the Dutch court is asking the CJEU to answer this question:

“Is the notion of ‘shape’ within the meaning of Article 3(1)(e)(iii) of Directive C (‘Form’, ‘vorm’ and ‘forme’ in the German, Dutch and French language versions of the Trade Marks Directive respectively) limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non three-dimensional) properties of the goods, such as their colour?”

Background
In 2010 Louboutin obtained the registration of a Benelux trade mark for goods in Class 25. Initially the registration was for footwear other than orthopaedic footwear, but in 2013 it was amended so as to limit the goods covered to high-heeled shoes (other than orthopaedic shoes) [interestingly enough, Louboutin also produces red-soled flat shoes].
The trade mark consists "of the colour red (Pantone 18 1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)":
Louboutin brought proceedings against the operator of Dutch shoe retail outlets (Van Haren) over the sale of high-heeled women’s shoes with red soles. Further to an initial judgment in favour of Louboutin, the defendant's is now challenging the validity of Louboutin's trade mark on grounds that it would be a 2-dimensional mark (the colour red) which, when applied to the soles of shoes, conforms to the shape of the shoes and gives them substantial value. 
The Rechtbank Den Haag did not appear entirely persuaded by Van Haren's argument, yet decided to stay the proceedings and ask the CJEU whether the concept of ‘shape’ is limited to 3-dimensional properties of the goods, such as their contours, measurements and volume, thus excluding colours.
The AG Opinion
Yesterday Advocate General (AG) Maciej Szpunar delivered his Opinion

Also referring to the seminal CJEU decision in Libertel, the AG framed the present case within the specific issues presented by signs (shape and colour marks, but also position, motion, sound, olfactory or taste marks) which are indissociable from the appearance of the goods, notably their potential anti-competitive effects. It is essentially for this risk that it is important that the interest in keeping certain signs in the public domain is taken into account when they are examined with a view to registration [para 26].
Classification of the contested mark
Having said so, the AG turned to the classification of the contested mark. While noting that it is for the referring court to make a determination in the specific case at hand, the AG stated that to this end "the referring court should carry out an overall assessment, taking into account the graphic representation and any descriptions filed at the time of application for registration, as well as other material relevant to identifying the essential characteristics of the contested mark, where applicable." [para 34] 
However, the fact that a mark has been registered as a figurative mark does not mean that other classifications are not possible. [para 35]. It is in fact necessary "to consider whether the mark at issue seeks protection for a certain colour per se, not spatially delimited, or whether, on the contrary, such protection is sought in conjunction with other characteristics relating to the shape of the goods." [para 36] The fact that the colour is applied to a well-defined part of the goods (eg a shoe sole) does not represent an obstacle to considering that, although the proprietor of the mark does not claim protection for the contours of the goods, protection is actually sought for something other than just a colour. 
More specifically, "what must be determined is whether the sign derives its distinctive character from the colour in respect of which protection is sought per se, or from the exact positioning of that colour in relation to other elements of the shape of the goods." [para 38, the latter being possibly the case of the mark at issue]
AG Szpunar concluded that it is necessary "in examining the essential characteristics of the contested mark, to take into account the colour as well as the other aspects of the goods in question. The mark should therefore be equated with one consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se."
Not Louboutins,
but every little girl's
dream red shoes
Applicability of Article 3(1)(e) and the wording of the new Directive
Nonetheless, the AG considered both options (ie the mark considered as a colour, or as a colour and a shape) to determine the applicability of Article 3(1)(e). 
While he considered the analysis in Libertel to be informed by the same rationale underlying Article 3(1)(e), the AG concluded that if the contested mark were to be classified as a ‘mark consisting of a colour per se’, it would be appropriate to hold that it did not fall within the scope of Article 3(1)(e). Things would be different if the contested mark were to be considered as a mark consisting of a signs in which the colour is integrated into the shape of the goods. 
The AG recalled that in any case the absolute grounds for refusal contained in Article 3(1)(e) do not prevent the registration of a sign which, although consisting of a shape of goods, also incorporates a significant non-functional element. It follows that "the question of whether or not, in a shape and colour mark, colour is a functional element, must be considered as part of the overall assessment of the sign, from the point of view of Article 3(1)(e) of Directive 2008/95. Furthermore, it is apparent from that case-law that, conversely, the provision in question applies to a shape of goods which incorporates another element where that element is functional." [para 60]
Interestingly, the AG at this point referred to the wording of the new Directive (ie the reference to "the shape, or another characteristic [of the goods]"), and held that that it does not represent a change of the law, but rather a mere clarification of existing law [paras 63-64]
In conclusion "the mark at issue should be regarded as sign of that type, combining colour and shape, the mark would potentially be caught by the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95." [para 66]
The interpretation of ‘shape which gives substantial value to the goods’
Finally, the AG addressed ("for the sake of completeness") the circumstances in which Article 3(1)(e)(iii) is applicable. 
He held that its application "is based on an objective analysis, the purpose of which is to show that the aesthetic characteristics of the shape at issue affect the attractiveness of the goods to such an extent that the reservation thereof to a single undertaking would distort competition on the market concerned. The consumer’s perception of the shape concerned is not the decisive criterion in that analysis, which potentially includes a range of factual matters. Furthermore, the analysis relates exclusively to the intrinsic value of the shape, and must take no account of attractiveness of the goods flowing from the reputation of the mark or its proprietor." [paras 69-70]
Comment
Beside the reference to the wording of the new Directive, an interesting aspect that the AG referred to in the final paragraph of the Opinion is also that the concept of a shape which ‘gives substantial value’ to the goods relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account.
If the CJEU follows the AG, not only will it be likely bad news for Louboutin, but potentially might create some uncertainties regarding the registrability of less conventional signs which, at least in the intentions of the 2015 EU legislature, could have become easier to register.

[Originally published on The IPKat on 23 June 2017]

Monday, 19 June 2017

BREAKING: US Supreme Court holds provision preventing registration of disparaging trade marks unconstitutional

The Slants
Can signs which are offensive and disparaging be registered as trade marks?

Similarly to EU trade mark law, which prohibits registration of signs "which are contrary to public policy or to accepted principles of morality" [Article 4(1)(f) Trade Mark Directive; Article 7(1)(f) Trade Mark Regulation], the US Lanham Act contains a provision that prevents registration of certain signs on similar grounds.

More specifically, among other things §1052(a) provides that "No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—(a) Consists of or comprises ... matter which may disparage".

Readers will remember that the issue of disparaging trade marks has been at the centre of attention in the US for a while, also following the refusal, by the US Patent and Trademark Office (PTO), to register "THE SLANTS" as a federal trade mark. Readers will also recall that the issues facing disparaging trade marks are not limited to this case: back in 2014, for instance, the PTO cancelled the Redskins' trade mark registrations on the same grounds.

The application to register "THE SLANTS" as a trade mark was made by Simon Tam, lead singer of rock group “The Slants”. The band chose this name [a slang, derogatory term used for persons of Asian descent] to “reclaim” the term and drain its denigrating force as a derogatory term for Asian persons. 

Justice Samuel Alito
Further to the PTO's refusal to register the sign as a trade mark, Tam took the case to federal court, where the en banc Federal Circuit ultimately found the disparagement clause in the Lanham Act facially unconstitutional under the First Amendment’s Free Speech Clause

The US Supreme Court accepted to consider the issue of disparaging trade marks, and earlier today it issued its judgment. Delivering part of the Court's opinion, Justice Alito announced the judgment, which affirms the Federal Circuit's judgment.

Among other things, Justice Alito held that: 

"The disparagement clause violates the First Amendment’s Free Speech Clause. Contrary to the Government’s contention, trademarks are private, not government speech. Because the “Free Speech Clause . . . does not regulate government speech,” Pleasant Grove City v. Summum, 555 U. S. 460, 467, the government is not required to maintain viewpoint neutrality on its own speech. This Court exercises great caution in extending its government-speech precedents, for if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints."


A more detailed analysis will be provided as soon as possible.

[Originally published on The IPKat on 19 June 2017]

Wednesday, 14 June 2017

BREAKING: CJEU says that site like The Pirate Bay makes acts of communication to the public

Is there a communication to the public within the meaning of Article 3(1) of the InfoSoc Directive by the operator of a website [The Pirate Bay, TPB], if no protected works are available on that website, but there is a system therein by means of which metadata on protected works is indexed and categorised for users, so that these can trace and upload and download the protected works? Does Article 8(3) of the InfoSoc Directive allow the issuing of an injunction against an ISP ordering it to block access for its users to an indexing site like The Pirate Bay?

These were the important questions that the Dutch Supreme Court (Hoge Raad der Nederlanden) had referred to the Court of Justice of the European Union (CJEU) in Stichting Brein v Ziggo, C-610/15 (also known as The Pirate Bay case).

The AG Opinion

In his Opinion in February last 
[commented herehere, and to some extent here] Advocate General (AG) Szpunar answered both questions in the affirmative. 

With particular regard to the first question the AG, while holding the view that the present case would be different from the (at the time) most immediate 'precedent' 
[formally, there is no system of precedent at the CJEU level], ie GS Media [Katposts here], also appeared to embrace a broader understanding of what amounts to an act of communication to the public. 

In particular, in line with the December 2016 
Opinion of AG Campos Sánchez-Bordona [here] in Filmspeler, C-527/15 [subsequently confirmed by the CJEU: here and here], AG Szpunar construed Article 3(1) of the InfoSoc Directive in a broader way than what, for instance, both AG Wathelet and the CJEU had done in GS Media

In fact - similarly to AG Campos Sánchez-Bordona in Filmspeler - AG Szpunar moved away from a (strict) requirement of 'indispensable intervention' towards an idea of communication to the public as 'facilitation'. Not only those whose intervention to make copyright works available to the public is indispensable could be regarded as making an act of communication the public, but also those whose intervention merely facilitates the finding of such works.

From this 'relaxation' of the notion of who can be regarded as making an act of communication to the public, the AG reached the conclusion that TPB operators would indeed facilitate the finding of copyright works unlawfully made available by third parties. Their acts would therefore fall within the scope of Article 3(1) of the InfoSoc Directive. From the point of view of a national court, TPB operators would be thus primarily liable for copyright infringement.

[For a more detailed discussion of the relationship between GS Media, and the AG Opinions in Filmspeler and Ziggo as regards the construction of the right of communication to the public, see this longer contribution of mine here]

The CJEU decision

This morning the CJEU held the making available and managing an online platform for sharing copyright-protected works may constitute an infringement of copyright. Even if the works in question are placed online by the users of the online sharing platform, the operators of that platform play an essential role in making those works available.

The decision is not yet available on the Curia website, but according to the press release:

“In today’s judgment, the Court holds that the making available and management of an online sharing platform must be considered to be an act of communication for the purposes of the directive.

The Court first draws attention to its previous case-law from which it can be inferred that, as a rule, any act by which a user, with full knowledge of the relevant facts, provides its clients with access to protected works is liable to constitute an ‘act of communication’ for the purposes of the directive.

In the present case it is common ground that copyright-protected works are, through ‘The Pirate Bay’, made available to the users of that platform in such a way that they may access those works from wherever and whenever they individually choose.

Whilst it accepts that the works in question are placed online by the users, the Court highlights the fact that the operators of the platform play an essential role in making those works available. In that context, the Court notes that the operators of the platform index the torrent files so that the works to which those files refer can be easily located and downloaded by users. ‘The Pirate Bay’ also offers — in addition to a search engine — categories based on the type of the works, their genre or their popularity. Furthermore, the operators delete obsolete or faulty torrent files and actively filter some content.

The Court also highlights that the protected works in question are in fact communicated to a public.

Indeed, a large number of Ziggo’s and XS4ALL’s subscribers have downloaded media files using ‘The Pirate Bay’. It is also clear from the observations submitted to the Court that the platform is used by a significant number of persons (reference is made on the online sharing platform to several tens of millions of users).

Moreover, the operators of ‘The Pirate Bay’ have been informed that their platform provides access to copyright-protected works published without the authorisation of the rightholders. In addition, the same operators expressly display, on blogs and forums accessible on that platform, their intention of making protected works available to users, and encourage the latter to make copies of those works. In any event, it is clear from the Hoge Raad’s decision that the operators of ‘The Pirate Bay’ cannot be unaware that this platform provides access to works published without the consent of  the rightholders.

Lastly, the making available and management of an online sharing platform, such as ‘The Pirate Bay’, is carried out with the purpose of obtaining a profit, it being clear from the observations submitted to the Court that that platform generates considerable advertising revenues.”

A more detailed analysis will be provided when the text of the judgment becomes available: stay tuned!

[This post was originally published on The IPKat on 14 June 2017]

Thursday, 8 June 2017

French Counseil d'État invalidates decrees implementing law on out-of-commerce works

The late Marc Soulier
In late 2016 the Court of Justice of the European Union (CJEU) issued its decision in Soulier and Doke, C-301/15 [commented here and here].

As readers will remember, this was a reference for a preliminary ruling from the French Council of State, asking the CJEU to clarify the compatibility of the the 2012 French law on the digital exploitation of out-of-print 20th century books with the InfoSoc Directive.

As I discussed more at length herethe new Chapter IV in the French Code de la Propriété Intellectuelle (CPI) vested approved collecting societies with the right to authorise the reproduction and representation in digital form of out-of-print books published in France before 2001, while allowing the authors of those books (or their successors in title) to oppose or put an end to that practice subject to certain conditions. 

In its 53-paragraph decision the CJEU substantially followed the Opinion [here] of Advocate General Wathelet, and stated that the system of the InfoSoc Directive is one of broad and preventative rights. Although national initiatives on out-of-commerce works are not against the directive per se, the Court clarified that nonetheless authors - not collecting societies that do not have any direct mandate from them - must consent to third-party uses of their works.

Sara Doke
In this post I expressed the view that the CJEU decision in Soulier and Doke would likely have far-reaching consequences. A first direct effect is the ruling of the Council of State earlier this week, which has declared the decrees implementing the provisions in Chapter IV CPI [Articles 134-1 to 134-9] invalid due to misuse of powers (excès de pouvoir).

As noted by a learned and technological Katfriend, it is unclear (in the sense that the Council of State's decision does not say) whether the invalidity thus declared has retroactive effects (invalidity ex tunc) or just effects for the future (invalidity ex nunc).

If one wished to draw a parallel with the UK copyright world, a similar problem arose when Green J quashed the short-lived private copying exception ('personal copies for private use': s28B) [here]. In its ruling, the High Court of England and Wales declined in fact to make any determination as to whether or not the Regulations adopting s28B should be void ex tunc. This was on consideration that a declaration to this effect would raise "potentially complex and far reaching issues which it is appropriate to address in the circumstances of private law litigation between a specific rightholder and an alleged infringer. It will be for a defendant in future proceedings to explore and raise this issue, including whether the effect of the fact that they relied at the time upon Section 28B creates some species of estoppel, legitimate expectation or fair use defence in private law and whether, if such exists, this goes to the cause of action or the remedy or both." [para 19]

But what do readers, especially French ones, think?  

[Originally published on The IPKat on 8 June 2017]

Thursday, 1 June 2017

BREAKING: German courts make two (very important) copyright references to the CJEU

This morning the Bundesgerichtshof (BGH, the German Federal Court of Justice) has referred not one - but two - copyright cases to the Court of Justice of the European Union (CJEU) for guidance, respectively, on:
  • To what extent EU copyright allows sampling, ie the taking of part of a sound recording for re-use as an instrument or sound recording in a different song or piece [readers with an interest in hip-hop will know that sampling in this genre is very frequent and in the US has caused quite a few IP-related headaches to the likes of Kanye West and Jay Z]; and
  • What role fundamental rights play in the copyright sphere. More specifically, what is the relationship between copyright protection, freedom of the press, and freedom of information?
    WARNING: I do not speak German, and have tried to make a sense of these new cases by reading the relevant press releases; please let me know if I have misunderstood anything.

    Sampling, free use, a 'right' to quote, and fundamental rights

    The first reference (I ZR 115/16 - Metal auf metal III) has been made in the context the longstanding and complex [at some point the case even ended up in front of the German Constitutional Court] Metall auf Metall litigation concerning the unauthorised sampling by music producer Moses Pelham of a 2-second rhythmic sequence from Kraftwerk's 1977 song 'Metall auf Metall' for use in his own 1997 'Nur Mir'. The sample features in 'Nur Mir' (performed by Sabrina Setlur) as a continuous background loop.

    Following a number of lower courts' decisions [the first one was issued in 2004], as well as the already mentioned instalment before the Constitutional Court, the case is now pending before the BGH.

    Today, this court decided to stay the proceedings and seek guidance from the CJEU on the correct interpretation of EU law. More specifically - and as explained in the relevant press release - the BGH is asking:
    • Guidance on the notion of reproduction in part in relation to phonograms as per Article 2(c) of the InfoSoc Directive [readers will recall that the CJEU has already interpreted generously the notion of 'reproduction in part' in its seminal decision in Infopaq] in order      to determine whether a 2-second sample may fall within the scope of the right of reproduction; and 
    • whether a phonogram sampling an earlier phonogram is a copy of it within the meaning of Article 9(1)(b) of the Rental and Lending Rights Directive.

    Moses Pelham
    Should the answer be in the affirmative, then the BGH is asking:
    • Whether the widely discussed German 'free use' exception within Section 24(1) of the German Copyright Act ("An independent work, created in the free use of the work of another person, may be published and exploited without the consent of the author of the work used.") is compatible with EU law; 
    • Should the defendants be unable to rely on the 'free use' exception, whether the quotation exception within Article 5(3)(d) of the InfoSoc Directive might nonetheless shield them from liability [readers with an interest in this defence will be aware that there is hardly an EU quotation exception, as different Member States have transposed Article 5(3)(d) in very different ways: see for instance this discussion of whether GIFs could be regarded as quotations]. In particular, the defendants in the national proceedings are arguing that quotation is a 'right', rather than just an exception. Although I am only relying on the press release, I suspect that the defendants' argument might be also based on the language of Article 10(1) of the Berne Convention, which - especially in its French version - seems to suggest a mandatory quotation exception [see further here, pp 19 ff];
    • What role the rights granted by the Charter of Fundamental Rights of the European Union plays: in particular, what is the relationship between copyright protection (Article 17(2)) and freedom of the arts (Article 13)? 

    Can freedom of the press and freedom of information trump copyright protection?

    The second reference (I ZR 139/15 - Afghanistan Papiere) has been made in the context of litigation between the German Government and German newspaper WAZ over the unauthorised publication by the latter of the so called 'Afghanistan Papers', ie confidential military reports on the operations of the Germany armed forces in the region in the period 2005-2012.

    According to the relevant press release, the BGH has stayed the proceedings and asked the CJEU to clarify whether and to what extent the assessment of prima facie copyright infringement and the applicability of the exceptions in favour of the press (Article 5(3)(c) of the InfoSoc Directive) and for quotation (Article 5(3)(d) of the same directive) is informed by a fundamental rights analysis. 

    In particular, can copyright protection bet trumped by the need to safeguard freedom of the press and freedom of information? Or can fundamental rights be even directly invoked to prevent enforcement of copyright?

    There is probably no need to note that this question goes to the very heart of copyright protection, and will revive the longstanding discussion around the scope of protection. 

    [Originally published on The IPKat on 1 June 2017]

    Sunday, 28 May 2017

    Appointed Person issues first appeal decision in a design case

    Union Jack Kat
    Readers with an interest in UK design law will remember that the Intellectual Property Act 2014 introduced a new appeal regime for designs. 

    The system of appeals to an Appointed Person, as an alternative to the route of appealing to the High Court in heavier and more complex cases, was intended to mirror the longstanding system of appeals to an Appointed Person (AP) in trade mark appeals. In fact, the relevant rules for design appeals are modelled on those for trade mark cases.

    Readers will also remember that Sir Richard Arnold had advocated the extension of the Appointed Person appeal route for registered designs instead of the appeal route to the Patents County Court, which was enacted but never brought into force in place of the Registered Designs Appeal Tribunal.

    Now via Sir Richard Arnold comes the news that last week Martin Howe QC issued the first decision of an AP in a registered design (Appeal O/253/17).

    The appeal concerned a request to invalidate two registered designs (both consisting of a garment on the chest of which a somewhat modified Union Jack flag) on the ground that they lacked novelty or individual character under section 1B(1) of the Registered Designs Act 1949, as amended. 

    Valid design?
    The argument was that similar designs have been sold in the London souvenir market for many years prior to the application dates for the concerned designs and, as a result, their owner "had registered existing generic designs, hijacking the London souvenir market." 

    Despite the lack of systematic evidence, the Hearing Officer relied on two (a photograph published on Facebook and two witness statements) of the many items produced to conclude that - on the balance of probabilities - these had been made available to the public prior to the concerned designs. Following a comparison of the designs at hand, she concluded that those registered were invalid.  

    The decision was appealed to the AP together with a request to introduce additional materials, as well as allegation of fraud and forgery against the publication date of the Facebook photograph. 

    Martin Howe QC dismissed such requests, and upheld the Hearing Officer’s findings on the evidence that the Facebook photograph and the garment identified in the two witness statements were prior art as against the two registered designs in suit. 

    However, the AP found that the Hearing Officer’s comparison of the designs in suit to the prior art had incorrectly characterised the features of the designs in suit. Nonetheless, having carried out the comparison myself, the AP came to the same conclusion that the two registered designs lack individual character in the light of the above prior art. As a result, he dismissed the appeal.

    [This post was first published on The IPKat on 28 May 2017]

    Wednesday, 24 May 2017

    Is there copyright in the taste of a cheese? Sensory copyright finally makes its way to CJEU

    Heks'nkaas
    Readers with an interest for copyright in unusual or, rather, less conventional 'objects' [I will explain below why the word 'works' might not be appropriate] will know that for quite some time it has been disputed whether IP protection - particularly in the form of copyright - is available to, say, perfumes or culinary creations.

    So far proponents of sensory copyright have not been really met with widespread approval [for the sake of a debate organised in London a while ago by IPKat founder Jeremy Phillips and BLACA, I supported the motion that there is indeed such thing as sensory copyright - my slides are available here; Jeremy's report can be read here].

    Not long time ago, contrary to some lower instances' decisions, the French Supreme Court dismissed for instance the idea that copyright could subsist in a perfume [herehere for a Dutch take on the matter], and in 2015 a Dutch court (Gelderland District Court) refused to acknowledge that copyright would subsist in the taste of a cheese, Heks'nkaas [see here and here].

    Speaking of cheese, the Dutch saga of Heks'nkaas is - thankfully - not over.

    The case is in fact making its way to the Court of Justice of the European Union (CJEU) for guidance on whether EU law allows copyright protection in taste (in this case, the taste of a cheese). 

    Despite its subject-matter this new reference is anything but cheesy. 

    The content of the CJEU reference

    As explained by Amsterdam-based Syb Terpstra (De Brauw Blackstone Westbroek N.V), counsel to one of the parties in the Heks'nkaas case, yesterday the Arnhem-Leeuwarden Court of Appeal issued an interim decision, in which it held that guidance from the CJEU is needed to determine:

    1. Whether EU law [read: the InfoSoc Directiveallows copyright protection in taste;
    2. If so, what requirements must be met in order to determine subsistence of copyright protection? 

    The actual questions are available (in Dutch) here [thanks to @TreatyNotifier for providing the link].

    Mac'n'cheese
    Why this reference is important

    This new case promises to be a very interesting and important one, if the CJEU deems it admissible. 

    The reason is essentially that the CJEU will need to clarify at last what is meant by 'work', thus revisiting and elaborating further on its earlier case law, notably Infopaq and its progeny [particularly BSA and FAPL].

    In that string of cases the CJEU held that under EU law copyright protection should arise any time a work is 'its author’s own intellectual creation', ie a work is sufficiently original. In FAPL, for instance, the CJEU had to determine whether football matches as such can be eligible for copyright protection. The court denied that that would be the case of football matches because they "cannot be classified as works. To be so classified, the subject-matter concerned would have to be original in the sense that it is its author’s own intellectual creation." [paras 96 and 97]

    There is no legislative definition of 'work'. I argued elsewhere that CJEU case law appears to suggest that the notions of 'originality' and 'work' conflate, in the sense that the assessment of originality entails that of whether a certain 'object' is to be regarded as a 'work'. Possibly the reason for this is that in the Infopaq line of cases (and even in BSA), the focus of the questions referred to the CJEU was more on what originality means, rather than what a work is. In this sense, the Heks'nkaas case will be to some extent different [at least as long as the CJEU does stick to the text of the questions as referred, instead of re-writing them]. The focus will be primarily on defining the notion of 'work' and then perhaps re-visit the topic of originality.

    Guidance as to what a 'work' is - at least in the context of the InfoSoc Directive - must be found outside the body of EU law, possibly in Article 2 of the Berne Convention. The InfoSoc Directive, in fact, implemented into the EU legal order the WIPO Internet Treaties; the WIPO Copyright Treaty mandates compliance with Articles 1 to 21 of the Berne Convention.

    The Berne Convention adopts an open-ended definition of 'literary and artistic works'. Article 2(1) does not define the term ‘works’, although it clarifies that such expression “shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”. 

    According to the relevant WIPO Guide, from the general tone of the Convention it follows that “these must be intellectual creations (the words appear in paragraph (5) of Article 2).” The same Guide adds that “[f]or this reason many national laws … provide that, to enjoy protection, the works must be original in the sense that they possess creativity.” 

    In general terms, it may be said that “[t]he term ‘production’ … only indicates that the protected object must have emerged from the mind of a person, left the sphere of the mind and become realized. This coincides with the term ‘expression’ also contained in the definition.” [§5.66]

    Does the taste of a cheese fall within such definition of 'work'? 

    'Say cheese'
    Why this reference could have been is important for the UK

    An additional profile of relevance of this new CJEU case is that there is the potential for the CJEU to hold - particularly, but not necessarily only, if it acknowledges the possibility of sensory copyright - that EU law envisages an open-ended subject-matter categorisation.

    While this is already the case of continental copyright traditions (relevant statutes do not limit the types of works in which copyright can subsist), the same is not true for the UK.

    The Copyright, Designs and Patents Act 1988, in fact, envisages a closed list of eligible copyright subject-matter [see also my guidance for students here]. As UK-based readers know, this has proved challenging for less conventional works, in the sense that not always a suitable category can be identified. This has resulted in denying copyright protection in, say, the assembly of a scene (Creation Records) or the Stormtrooper helmet (Lucasfilm).

    In a piece published on GRURInt I argued that EU law - or, rather, CJEU case law - mandates the opening up of UK subject-matter list. Although 1709 Blog readers did not agree with this proposition, in his judgment in SAS v WPL, Arnold J [at para 27] held that: "In the light of a number of recent judgments of the CJEU, it may be arguable that it is not a fatal objection to a claim that copyright subsists in a particular work that the work is not one of the kinds of work listed in section 1(1)(a) of the Copyright, Designs and Patents 1988 and defined elsewhere in that Act." At the same paragraph, however, referring to Infopaq the learned judge added that: "it remains clear that the putative copyright work must be a literary or artistic work within the meaning of Article 2(1) of the Berne Convention ... While the definition of "literary and artistic works" in Article 2(1) is expansive and open-ended, it is not unlimited."

    With hard Brexit [ie a situation in which the UK will be no longer bound by EU law and CJEU judgments] on the horizon, some might think that the Heks'nkaas case will have a more limited relevance for the UK. However:

    • According to latest CJEU statistics [the average duration of CJEU proceedings in the context of references for a preliminary ruling is 14.7 months: see p. 28], when the Heks'nkaas case is decided the UK will be still part of the EU;
    • As clarified by UK Government in its White Paper accompanying the Great Repeal Bill, this bill "will provide that historic CJEU case law be given the same binding, or precedent, status in [UK] courts as decisions of [UK] Supreme Court" [p. 14].

    In conclusion

    The Heks'nkaas case is one to watch. Not only will it determine to what extent copyright protection can be stretched [let's not forget that since Sieckmann, trade mark protection has not been really available to sensory 'signs', and things will not really change in my view with the disappearance of the graphic representation requirement], but also what system of copyright categories EU law or, rather, the CJEU envisages.

    [Originally published on The IPKat on 24 May 2017]