Friday, 6 April 2018

The EU copyright reform and the legacy of CJEU case law: lip service?

I am attending what every year is a great conference in one of the greatest cities: the Fordham IP Conference in New York City. Now in its 26th edition, every year this event gathers IP enthusiasts from all over the world to “Learn. Debate. Have Fun.” [official hashtag: #fordhamip]

Yesterday I was part of a panel moderated by Ted Shapiro (Wiggin) and composed of Shira Perlmutter (USPTO), Giuseppe Mazziotti (TCD), and Jerker Rydén (National Library of Sweden). The session was devoted to discussing the state of the EU copyright reform debate.

My short talk [slides here] focused on three main points: 

(1) the progress of the EU reform debate and where we stand now at both the Council and European Parliament levels; 

(2) whether what are being called ‘compromise’ proposals may be actually said to be compromises, given that that the discussion remains extremely polarized and such as not to focus really – or just – on the details of the various draft provisions but also the very merits of certain initiatives; and 

(3) whether we are really going towards a Digital Single Market (DSM) and – if so – what kind of  DSM we are paving the way to. In this respect, the points to consider are identifying:

(a) the beneficiaries of the EU proposals, and 
(b) the goals that the EU is trying to achieve with its copyright reform (if we take the case of the press publishers’ right, over the past few months so many different justifications have been advanced for its necessity – ranging from recouping revenue lost to the web, to preserving press freedom and cultural diversity in Europe, to – now with the latest from MEP Voss [see Recital 31] – contrasting fake news).

It's CJEU orders
There is however an aspect of the discussion – that was explored yesterday during the session – that has remained a bit in the background over the past few months. 

What I am referring to is the idea that EU legislature has been attempting to realize a ‘codification’ of the case law of the Court of Justice of the European Union (CJEU), particularly with regard to the proposals for a press publishers’ right (for instance, in its latest compromise proposal the Bulgarian Council presidency refers to Infopaq and its progeny [Recital 34a], while in his proposal MEP Voss recalls GS Media [Recital 33 - Katposts here]) and the value gap proposal (here the reference is to the CJEU case law on the right of communication to the public, including the most recent decision in The Pirate Bay case [Katposts here]).

What has been a bit less at the centre of attention is those instances in which EU policy- and law-makers are not justifying their own choices by saying ‘it’s what the CJEU said’, but are rather departing from – and in doing so attempting to erase - CJEU case law.

I have two examples in mind, both of which likely contrast with the interests of those ‘authors and creators’ that the EU has been saying to want to protect further with its own initiatives, notably through Articles 15, 16 and 16a [see Bulgarian version].

First – and this is no surprise, since the Commission included it in its original 2016 proposal - is Article 12 of the directive, which substantially says that the CJEU decision in Reprobel [Katposts hereregarding the beneficiaries of the fair compensation for private copying was a bad move. The provision, that has not been really discussed with the same intensity as other proposals, basically says – unlike what the CJEU had decided by relying on the author principle as enshrined in the InfoSoc Directive – that it is OK that subjects other than reproduction rightholders are entitled ab initio to receive part of the fair compensation for private copying.

Rescuing the authors?
The second example, which may be found also in the latest Bulgarian compromise proposal, relates to what looks like a ‘weaponized’ extended collective licensing which substantially makes it clear that the CJEU decision in Soulier and Doke [Katposts hereshould not be considered too relevant. 

In that case the Court held that a law like the French law on out-of-commerce books might be contrary to EU law in that EU law (InfoSoc Directive) requires that any reproduction or communication to the public of a work by a third party requires the prior consent of its author. Recital 23 of the proposal (Bulgarian version) states that “Member States should, within the framework provided for in this Directive, have flexibility in choosing the specific type of mechanism, such as extended collective licensing or presumption of representation, allowing for licences for out-of-commerce works to extend to the rights of rightholders that have not mandated a representative collective management organisation, in accordance with their legal traditions, practices or circumstances.”

All this to say what? That sometimes references to CJEU case law are used to justify choices in certain areas (making them look like non-choices), while in other cases policy- and law-makers do not appear too reluctant to re-assess – and 'correct' – the legacy of certain decisions.

[Originally published on The IPKat on 6 April 2018]

Thursday, 29 March 2018

Does the InfoSoc Directive envisage digital exhaustion? Questions in the Tom Kabinet CJEU reference finalized (at last)

Several months ago this blog reported that the longstanding litigation in The Netherlands against second-hand ebook e-book trader Tom Kabinet would result in a reference for a preliminary ruling to the Court of Justice of the European Union (CJEU) asking whether the InfoSoc Directive allows 'digital exhaustion'.

In a 2017 decision the Rechtbank Den Haag (Court of The Hague) held that Tom Kabinet is not liable for unauthorized acts of communication to the public under the Dutch equivalent of Article 3(1) of the InfoSoc Directive. However, that court deemed it unclear whether the defendant could invoke the digital exhaustion of the right of distribution in relation to its e-book business.

Now, The IPKat has learned (again, thanks to @TreatyNotifier) that - at last - the questions for the CJEU have been finalized.

Here they are [WARNING: the translation from Dutch is mine … thanks to Google Translate]:

1. Is Article 4(1) of the InfoSoc Directive to be interpreted as meaning that "any form of distribution to the public of the original of a work or a copy thereof by sale or otherwise" includes the making available remotely by means of downloading for use for an unlimited period of time of an e-book (ie a digital copy of a copyright book) by paying a price that the copyright holder receives as remuneration and which corresponds to the economic value of that copy of the work?

2. If Question 1 is to be answered in the affirmative, is the right of distribution in relation to the original or copies of a work as referred to in Article 4(2) of the InfoSoc Directive exhausted in the Union with the first sale or other transfer of the original or a copy thereof, including the remote downloading of an e-book (ie a digital copy of a copyright book) for use for an unlimited period by paying a price which the copyright holder receives as remuneration and which corresponds to the economic value of that copy of a work, within the Union by the rightholder or with his permission?

3. Is Article 2 of the InfoSoc Directive to be interpreted as meaning that any transfer between subsequent purchasers of a legally obtained copy in respect of which the right of distribution has been exhausted is tantamount to consenting to the acts of reproduction referred to therein, in so far as those acts of reproduction are necessary for the lawful use of that copy and, if so, what conditions would apply?

4. Is Article 5 of the InfoSoc Directive to be interpreted as meaning that the copyright owner cannot oppose the acts of reproduction in relation to a lawfully obtained copy in respect of transfers between subsequent purchasers and in relation to which the right of distribution has been exhausted and, if so, what conditions would apply?

We now have to wait for the assignment of a number to this case and publication of details (as well as an official translation of the questions) on the Curia website: stay tuned!

[Originally published on The IPKat on 29 March 2018]

Wednesday, 28 March 2018

BREAKING: EU Commission publishes paper on consequences of Brexit on copyright

The IPKat has just been alerted that the EU Commission has published today a document detailing the consequences of Brexit on UK copyright.

"Subject to any transitional arrangement that may be contained in a possible withdrawal agreement [a few days ago it appeared that there might be a 21-month period after Brexit day in which the UK will remain subject to EU rules and the jurisdiction of the Court of Justice of the European Union], as of the withdrawal date [30 March 2019], the EU rules in the field of copyright will no longer apply to the United Kingdom."

This, in substance, is the message of the document. 

More specifically, one can learn from the document that - as of the withdrawal date -relevant EU directives and regulations will cease applying to the UK, and the relationships between the EU and the UK (as a third country) will be governed by relevant international treaties to which both are parties, including the WIPO Internet Treaties and TRIPS. 

With regard to EU directives, the document notes that:
  • UK-based broadcasters will no longer benefit from the country of origin principle as enshrined in the SatCab Directive;
  • EU collective management organisations (CMOs) will no longer be subject to the obligation to represent UK-based CMOs for multiterritorial licensing in accordance with the CRM Directive;
  • With regard to orphan works, the mechanism of mutual recognition of the 'orphan work' status provided for by the Orphan Works Directive will no longer apply between the UK and the EU;
  • UK-based blind/visually impaired/print-disabled persons will no longer be able to obtain accessible format copies from authorised entities in the EU under the framework provided for by the recent Directive 2017/1564;
  • UK residents will no longer enjoy from the Online Content Portability Regulation [which enters into force on Sunday] to 'port' their digital content subscriptions when travelling to the EU;
  • UK nationals (unless they have their habitual residence in the EU) and companies/firms formed in accordance with UK law will no longer be entitled to maintain or obtain a sui generis database right in respect of databases in the EU.
[Originally published on The IPKat on 28 March 2018]

Tuesday, 27 March 2018

Right of publicity not a right to control one's own image by censoring disagreeable portrayals, says appeals court in de Havilland case

Olivia de Havilland
Does one have the power to control how his/her own image is portrayed? To what extent do third parties’ free speech rights prevail over the rights of the person portrayed?

These, in a nutshell, have been the core issues at the centre of the important lawsuit initially brought by 101 year-old actor Olivia de Havilland (who famously starred alongside Vivien Leigh and Clark Gable in Gone with the Wind) against FX, the producers of TV miniseries Feud: Bette and Joan. Although the latter focused on the rivalry between film stars Bette David and Joan Crawford, there is also Catherine Zeta-Jones playing Olivia de Havilland, a close friend of Bette Davis.

Background

Olivia de Havilland sued FX in 2017, claiming violation of her statutory right of publicity – California Civil Code section 3344 – and the common law tort of misappropriation (on grounds that de Havilland had not granted FX any permission to use her name, identity or image), as well as false light invasion of privacy (due to the fact that in the TV series her character calls her sister a ‘bitch’, when in fact the term used was ‘dragon lady’).

California Civil Code section 3344(a) states that:

Any person who knowingly uses another's name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of,products, merchandise, goods or services, without such person's prior consent […] shall be liable for any damages sustained by the person or persons injured as a result thereof. […]” (emphasis added)

The Superior Court of Los Angeles County held (BC667011that, because Feud tried to portray de Havilland as realistically as possible, it was not ‘transformative’ and therefore not eligible for protection under the First Amendment to the US Constitution.

The decision was appealed to Court of Appeal of the State of California - Second Appellate District, which yesterday decided to reverse the lower court’s order [the case is Olivia de Havilland v FX Networks, LLC et al, B285629].

Catherine Zeta-Jones
as Olivia de Havilland
Does section 3344 apply to a film?

Starting its substantial analysis from the right of publicity, the Court of Appeal had to determine whether the portrayal of a real person in a creative work constitutes “use” of that persons’ name or likeness “on or in” a product, merchandise or good. 

In its recent decision in Sarver (concerning the portrayal of a US Army sergeant in The Hurt Locker) the 9th Circuit had answered this point in the negative.

Even assuming that Feud was a ‘product, merchandise, or good', and that Zeta-Jones’s portrayal of de Havilland was ‘use’ of her name or likeness within section 3344 of the California Civil Code, the First Amendment would protect the film, said the Court. 

The appellate court recalled in fact the 1979 decision of the California Supreme Court in Guglielmi, a case concerning a TV programme that was a ‘fictionalized version’ of Rudolph Valentino’s life (Valentino had died years earlier). The case was dismissed on ground that, at the time, the right of publicity could not be transmitted mortis causa. In a concurring opining the Chief Justice (joined by three other justices) held that a work made for entertainment enjoys the same constitutional protection as the exposition of ideas. This means that that truthful and fictional accounts are subject to the same treatment. The Guglielmi decision has been cited with approval in many subsequent decisions.

First Amendment protection

The Court of Appeal thus held that Feud is entitled to First Amendment protection, and deemed it irrelevant to such conclusion the fact that its creators did not purchase or otherwise procure de Havilland’s rights to her name or likeness. While there might be various reasons for one to seek to clear such rights, “the First Amendment simply does not require such acquisition agreements”.  

The Court also dismissed all other de Havilland’s claims, and concluded – citing with approval Comedy III – that “[T]he right of publicity cannot, consistent with First Amendment, be a right to control the celebrity’s image by censoring disagreeable portrayals.”

Comment

While de Havilland's attorneys have already announced that they will appeal the ruling, unsurprisingly filmmakers and film studios have welcomed the outcome of this case, with MPAA stating that the decision "represents a major legal victory for filmmakers and creators of all kinds, re-affirming their First Amendment right to tell stories about and inspired by real people and events in genres including docudramas, biopics, historical fiction, and documentaries [...] It’s this right that has allowed filmmakers to make movies from ‘Citizen Kane’ to ‘The Devil Wears Prada’ to ‘Primary Colors’ to ‘The Social Network’ to ‘Hidden Figures,’ among countless others."

The outcome seems reasonable, also considering the nuances added by the court in its analysis. 

The right of publicity is not, however, the only IP issue that might come on the way of creators of docudramas, biopics, etc. 

IPKat readers may for instance recalls instances in which copyright has also played a significant role, sometimes up to the point of compelling filmakers to 're-write' history. For instance critically acclaimed Selma, a film about Rev Dr Martin Luther King Jr starring David Oyelowo, does not really contain the exact words pronounced by King. For instance, during the scene at the funeral of civil rights demonstrator Jimmie Lee Jackson Oyelowo/King gives a rousing oratory, asking the crowd, "Who murdered Jimmie Lee Jackson?". In real life, King asked, "Who killed him?". In another scene, Oyelowo/King rallies protestors with the words, "Give us the vote," while in reality King said, "Give us the ballot." The reason for this is that "Dr. King’s heirs did not grant permission for his speeches to be quoted in “Selma,” and while this may be a blow to the film’s authenticity, [the film director] turns it into an advantage, a chance to see and hear him afresh." [On copyright restrictions and fair use see further this IPKat post]

To be (likely) continued ...

[Originally published on The IPKat on 27 March 2018]

Sunday, 25 March 2018

French court finds appropriation of photograph not sufficiently 'transformative' and therefore infringing

One of Malka's Flair photographs
A few days ago this blog reported on an interesting decision of the Swedish Supreme Court that held that unauthorized 'appropriation' of a substantial part of a photograph for use in a painting did not amount to copyright infringement, as the meaning of the defendant's work was different from the original work.

A few days ago, also a French court (Versailles Court of Appeal) had the opportunity to decide a case (Malka v Klasen, RG No 15/06029, 16 March 2018) with a similar factual background. 

Unlike the Swedish Supreme Court, the Versailles Court of Appeal held that the defendant had infringed the claimant's copyright. It found that the defendant could neither invoke the parody defence under French copyright law nor freedom of (artistic) expression under the European Convention on Human Rights (ECHR).

Let's see what happened.

Background

Photographer Alix Malka authored three portrait photographs of a model with make-up on that were published in 2005 in the beauty section of Italian women’s magazine (now discontinuedFlair together with an indication of his name.

Malka later discovered that reproductions of these photographs had been incorporated (without his authorization) in a number of paintings by Peter Klasen.

Malka sued for copyright infringement. In 2012 the TGI Paris (Court of First Instance) dismissed his action, but the following year the Paris Court of Appeal reversed the decision and awarded damages for EUR 50,000.

The case eventually reached the French Supreme Court, which in 2015 noted that a fair balance must be struck between copyright protection and the protection of third parties’ freedom of expression, which includes artistic expression. According to France’s highest judicature the Court of Appeal had failed to undertake properly this assessment and explain in what sense freedom of expression could be compressed within Article 10(2) ECHR. This provision sets the conditions on the basis of which freedom of expression may be restricted. Therefore, the court sent the case to the Versailles Court of Appeal for a new assessment.

The Versailles decision

The substantial analysis of the court began with an assessment of whether the claimant’s photographs could be regarded as protectable, ie sufficient original in the sense of being their author’s own intellectual creation.

Originality of the claimant’s works

The standard of originality for photographs has been expressly harmonized at the EU level by Article 6 of the Term Directive. The Court of Justice of the European Union (CJEU) has had the opportunity to clarify the meaning of the phrase ‘author’s own intellectual creation’ on a number of occasions. With particular regard to photographs (and portrait photographs) the most enlightening decision remains the one in Painer, in which the CJEU spoke of the need for: (1) ‘free and creative choices’ that can be done at different stages of the production of a photograph; and (2) a creative result that ultimately displays the ‘personal touch’ of its author.

The Versailles court recalled that it is for the claimant to demonstrate where the originality of his/her work lies [in this respect, readers might recall a fairly odd case concerning an iconic photograph of Jimi Hendix realised by Gered Mankowitz, which initially was denied the status of copyright-protected work]. Malka was considered as having demonstrated the original character of his creations, which were found to carry his own personal touch. The court dismissed the defendant’s argument that the photographs at issue would be devoid of originality, and also noted that it would make no difference if the original works were used for advertising purposes or simply to illustrate an article detailing beauty trends.

One of Klasen's paintings
The parody defence

Having established this, the court turned to consideration of whether the defendant could escape a finding of liability by relying on the parody defence within Article L 122-5 No 4 of the French IP Code

Once a work is published, the author cannot in fact prevent “La parodie, le pastiche et la caricature, compte tenu des lois du genre.” [it is arguable that after the CJEU decision in Deckmyn, however, requiring compliance with the laws of the genre may be no longer compatible with EU law, as the CJEU ruled out that a parody would be subject to any conditions other than those it indicated in its judgment; see further here]

Klasen argued in fact that his use of the claimant’s photographs would be protected as a parody, because with his work he had sought to denounce the excesses of consumerism and the ‘advertising subculture’ through the image of women in the media. He also added that no confusion or association could occur between his own work and the works of the claimant.

The Versailles court did not accept the defendant’s argument. It held that no distortion of the original works had taken place. [In Deckmyn the CJEU held that a parody has two essential characteristics: first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery.]

The additions by Klasen did not really alter the meaning of the original photographs. Even if the photographs had been ‘appropriated’ and incorporated into the new work, no parody or derision could be discerned.

Freedom of expression

Finally, the Versailles court addressed the interplay between copyright protection and freedom of expression under the ECHR [it is worth recalling that the EU Charter of Fundamental Rights, which has rank of primary source of EU law, also mandates protection of both intellectual property as a fundamental right within the right to property (Article 17(2)) and freedom of expression (Article 11)].

To this end, Klasen invoked the decision of the European Court of Human Rights (ECtHR) in Ashby Donald v France [here and here; this is frankly quite an odd move, especially considering that in that case the ECtHR concluded that there had been no undue interference with the applicants' freedom of expression and that French copyright laws and their application had not repressed freedom of expression in a way that would exceed the limits of Article 10(2) ECHR…]

The Versailles court rejected Klasen’s argument, and stated that it was rather up to him to set a fair balance between the protection of his own freedom of expression and the fact that permission is generally required to use someone else’s work, especially if the use is of such works without any substantial alteration.

The court also rejected Klasen’s argument that appropriation art is such that permission cannot be obtained to use third-party objects and images. The analogy with Andy Wharol’s representation of the Campbell Soup cans was not appropriate - said the court - as in the case of Wharol nothing suggested (as was instead the case of Klasen) that he was responsible for the graphics of the Campbell Soup cans. In other words, in the present case appropriation was not apparent.

Ehm ... not such a 'discreet' make-up,
to say the least
Conclusion

The Versailles court concluded that Klasen had infringed Malka’s economic and moral rights, and ordered him to pay damages for EUR 50,000.

Comment

The decision of the Versailles court is not particularly surprising, although it would have been interesting to review the availability of defences other than parody. Overall, it appears that the court's assessment of parody is in line with the CJEU decision in Deckmyn

It is quite striking to see how cases with similar backgrounds, ie the Swedish and French ones, ultimately had diverging outcomes. In this sense, what has appeared crucial is the fact that the Versailles court did not find any use of the claimant's works that could be regarded as really transformative. But: transformative in what sense? Since the focus was on parody, the degree of transformation was considered from this perspective. Should the lens have been different (eg quotation, criticism/review), perhaps a different outcome might have been possible.

Finally, reliance on freedom of expression alone appears reserved to quite exceptional cases, and the Versailles court seemed to confirm this point.

[Originally published on The IPKat on 25 March 2018]

Thursday, 22 March 2018

National and EU text and data mining exceptions: room for coexistence?

If only all mining activities
were these cheerful!
A few days ago this blog reported that Irish Government has recently proposed the introduction into Irish law (new section 53A of the Copyright Act) of a copyright exception for text and data mining (TDM).

From an EU standpoint, the most interesting aspects of the Irish proposal are probably the following:
  • First, its timing: while it is true that a TDM exception was first proposed in the 2013 Modernising Copyright Report, an actual initiative of that Member State's Government comes at a time when discussion is well underway to introduce a mandatory TDM exception at the EU level [Article 3 of the Proposal for a Directive on copyright in the Digital Single Market - on the EU proposal see further here and here]
  • Secondly, the different scope of the Irish exception [which would be derived from Article 5(3)(a) of the InfoSoc Directive] and the EU exception, in the sense that the former – while only allowing non-commercial TDM – would not limit the catalogue of beneficiaries. The EU exception – at least in the version proposed by the EU Commission - would instead be available to ‘research organisations’.
Following the publication of the IPKat post, I have engaged in some discussions on whether and to what extent national TDM exceptions – having a different scope from the EU one – would survive after the introduction of an EU exception. Another question would be whether EU Member States could continue to rely on Article 5(3)(a) of the InfoSoc Directive to introduce their own TDM exceptions following the introduction of an EU exception.

These questions do not have an easy answer, especially if one looks at the text of the directive as originally proposed by the EU Commission.

Dreaming of freedom ...
The Commission’s version

Arguably, the text of the original Commission’s proposal does not leave room for national TDM exceptions.

If in fact one looks at Recital 5, the goal seems to be one of maximum harmonization, in the sense that other directives – including the InfoSoc Directive and its TDM exception under the umbrella of the research exception – would only apply to “uses not covered by the exceptions or the limitation provided for in this Directive [ie the Directive on copyright in the Digital Single Market]”. 

This might mean that, as the new directive covers TDM, there will be no room for national transpositions of Article 5(3)(a) of the InfoSoc Directive to allow TDM that bypass the Directive on copyright in the Digital Single Market.

This conclusion appears reinforced if one also considers Recital 14, which highlights the shortcomings of TDM exceptions rooted within the InfoSoc Directive alone.

The Council’s latest version

However, things may be different if the version of the EU TDM exception eventually adopted was the one most recently proposed by the Council.

In fact, in this version (which would appear the last instance in which the Council has touched upon TDM), what is interesting is the wording of Recital 5 and Article 17.

First, Recital 5 states that “[t]he exceptions and limitations existing in Union law should continue to apply, including to text and data mining, education and preservation activities, as long as they do not limit the scope of the mandatory exceptions laid down in this Directive and on condition that their application does not adversely affect nor circumvent the mandatory rules set out in this Directive”. 

This would suggest that national TDM exceptions could survive after the adoption of this new directive, as long as certain conditions are satisfied. In a way, this solution appears to have points of resemblance with the grandfather clause in Article 5(3)(o) of the InfoSoc Directive.

... and freedom
Article 17(2)(b) requires that the InfoSoc Directive is amended, to the effect that exceptions adopted pursuant to Article 5(3)(a) will be without prejudice to the exceptions and the limitation provided for in the new directive … including TDM. 

This might suggest that, even after the introduction of an EU TDM exception, Member States could retain the freedom to introduce their own national (non-commercial) TDM exceptions, without any particular limitations as regards the types of beneficiaries.

While an approach of the kind suggested by the Council would have the merit of retaining some flexibility and national freedom as regards possible approaches to and regulation of TDM activities, it could also impair the goals of harmonization, including underlying internal market-building goals. In any case, an EU action of this kind would achieve minimum harmonization in the area of TDM (especially if the resulting EU exception was only aimed at research organisations), while substantial disparities might remain in place (or subsequently arise) at the EU level.

Next steps

The Bulgarian presidency of the Council is expected to continue its work and find compromise solutions that meet the approval of Member States. 

In parallel, the European Parliament is also working on the text of the directive, and the JURI Committee Rapporteur – MEP Voss – is expected to issue his Report sometime soon, the vote in that Committee being now scheduled for late April.

[Originally published on The IPKat on 22 March 2018]

Thursday, 15 March 2018

General Court confirms that ‘La Mafia se sienta a la mesa’ cannot be a trade mark on public policy grounds

Can ‘La Mafia se sienta a la mesa’ [‘se sienta a la mesa’ means ‘takes a seat at the table’] be registered as a figurative EU trade mark (EUTM) [see right] for a variety of goods and services in Classes 25, 35 and 43 of the Nice Agreement (including clothing and a restaurant chain) or would a registration of this kind be contrary to accepted principles of public policy and morality?

This morning the General Court (GC) held that the latter is the correct approach in its decision in La Mafia Franchises v EUIPO, T-1/17.

Background

In 2006 an application for registration of the ‘La Mafia se sienta a la mesa’ in the Nice classes above was filed, and the trade mark was registered in 2007.

In 2015 Italy filed an application with the EUIPO for a declaration that the contested mark was invalid in respect of all of the goods and services for which it had been registered. According to the Italian Republic this mark was contrary to what is now Article 7(1)(f) of Regulation 2017/1001 (public policy or accepted principles of morality).

Italy submitted that the word element ‘Mafia’ refers to a criminal organisation and its use in the contested mark to designate a restaurant chain would: (1) evoke deeply negative emotions; (2) impair the positive image of Italian cuisine; and (3) trivialise this criminal organisation.

In 2016 both EUIPO Cancellation Division and the First Board of Appeal of EUIPO sided with Italy and declared the trade mark invalid.

La Mafia Franchises thus appealed the decision to the GC, but without success.

Today’s decision

Arguments of La Mafia Franchises

In support of its action La Mafia Franchises maintained the view that:

  •      First, neither the organisation known as Mafia nor its members are included in the list of terrorist persons and groups in the Annex to Council Common Position on the application of specific measures to combat terrorism, to which EUIPO’s examination guidelines refer for the purpose of illustrating the prohibition of registration of EU marks that are contrary to public policy.
  •      Secondly, the fact that the mark refers to the word element ‘Mafia’ is not sufficient to conclude that it is perceived by the average consumer as intending to promote or support that criminal organisation. On the contrary, the other elements that make up that mark rather imply that it is perceived as a type of parody or reference to the Godfather series of films.
  •      Thirdly, the goods and services covered by the mark are not ‘communicative’ services. It would follow that the mark was not registered to be insulting, shocking or abusive.
  •       Finally, there are many EU and Italian trade marks registered that include the word ‘mafia’. 

The applicant submitted that
the mark intended to evoke 
The Godfather
Assessment of public policy/morality

The GC began its analysis by outlining the rationale of and test for assessing the absolute ground for refusal based on public policy/morality. In this sense, the analysis should be undertaken from the point of view of ‘a reasonable person with average sensitivity and tolerance thresholds’, and should not be limited to the public to which the goods and services in respect of which registration is sought are directly addressed. Rather, it should include also those consumers that may encounter the sign incidentally. Finally, it should be borne in mind that the perception of a sign as contrary to public policy or morality may not be the same across the EU, also due to linguistic, historic, social, and cultural reasons.

It follows that the assessment to undertake is one that takes account of both the circumstances common to all EU Member States and those that are relevant in individual Member States.

Application

The GC confirmed the conclusion of the Board of Appeal that the word element ‘La Mafia’ dominates the composite sign.

In addition, it found the argument that Mafia is not listed in the group of terrorist persons and groups irrelevant: first, the purpose of that list is not to set out the subjects involved in criminal activities other than terrorism; secondly, the list is any case a non-exhaustive one.

This said, the GC noted that the word element ‘la Mafia’ is understood world-wide as referring to a criminal organisation originating in Italy, whose activities extend beyond the Italian territory. Mafia usually resorts to intimidation, physical violence and murder in carrying out its activities, which include, inter alia, drug trafficking, arms trafficking, money laundering and corruption.

The Slants (Matal v Tam)
According to the GC such criminal activities breach the very values on which the EU is founded, in particular the values of respect for human dignity and freedom as laid down in Article 2 TEU and Articles 2, 3 and 6 of the EU Charter of Fundamental Rights. The word element ‘la Mafia’ has also deeply negative connotations in Italy.

The Court rejected the argument that the purpose of the registration of the contested mark is not to shock or offend, but rather only to allude to the Godfather film series. When a sign is particularly offensive or shocking, it must be judged in its isolation: the purpose only to allude to the Godfather film series (which, by the way, is not clearly referred to in the sign) – as advanced by the applicant – is irrelevant to the negative perception of the mark by the relevant public. The Court stressed that “[t]he fact that there are many books and films on the subject of the Mafia in no way alters the perception of the harm done by that organisation.”

Finally the mark, by using a rose and the phrase ‘se sienta a la mesa’, conveys the idea of conviviality and relaxation: this, according to the GC, trivialises the illicit activities of the criminal organisation. Hence:

“the contested mark, considered as a whole, refers to a criminal organisation, conveys a globally positive image of that organisation and, therefore, trivialises the serious harm done by that organisation to the fundamental values of the European Union … The contested mark is therefore likely to shock or offend not only the victims of that criminal organisation and their families, but also any person who, on EU territory, encounters that mark and has average sensitivity and tolerance thresholds.” [para 47]

One of the ads at stake in Sekmadienis
The GC therefore upheld the decision of the Board of Appeal, also deeming it irrelevant the argument that there are other registered trade marks containing the word ‘mafia’.

Comment

The interplay between trade mark protection and accepted principles of public policy and morality is not new, but what may be interesting to note is the seemingly different approaches to acceptable levels of ‘contrariety to public policy’ or ‘immorality’.

It may be worth recalling that only recently we have had the free speech-rooted decision of the US Supreme Court in Matal v Tam and – albeit in the different context of advertising – the freedom of expression-rooted decision of the European Court of Human Rights (ECtHR) in Sekmadienis v Lithuania (Appl No 69317/14) [Katpost here]. Possibly in contrast with the outcome of those cases are recent decisions at the EUIPO and GC levels: beside today’s judgment in La Mafia, one can for instance recall that not long time ago the GC confirmed that the sign ‘Fack Ju Göhte’ cannot be registered as trade mark [here].

Finally, if we look at these cases, it may be also worth highlighting that, while both the ECtHR in Sekmadienis and the GC in La Mafia relied upon fundamental rights – whether those in the European Convention or the EU Charter – the outcome of the balancing exercise was different, this being possibly proof of the fact that this operation may be anything but straightforward.

[Originally published on The IPKat on 15 March 2018]