Sunday, 12 July 2020

CJEU follows AG and rules that notion of 'address' does not extend to email and IP addresses and telephone numbers

The IPKat has an email address, 
but not a postal one
(Image by Riana Harvey)
Does the notion of ‘address’ only refer to one’s own postal address or does it also encompass one’s own email and IP address, as well as telephone number?

This, in a nutshell, is the question which the Court of Justice of the European Union (CJEU) had been required to answer in Constantin Film v YouTube, C-264/19.

The referral, which Germany’s Federal Court of Justice had made, focused on the interpretation of Article 8(2)(a) of the Enforcement Directive, a piece of EU legislation adopted in 2004.

The background national proceedings had originated from the refusal, by YouTube and its parent company Google, to provide film producer Constantin Film with the email and IP addresses, as well as telephone numbers, of YouTube users who had uploaded on that platform unlawful copies of its films Parker and Scary Movie 5.

A few months ago - as The IPKat reported - Advocate General (AG) Saugmandsgaard Øe advised the CJEU to rule that the notion of ‘address’ is limited to one’s own postal address, but that individual Member States could go beyond the Enforcement Directive (this is only aimed at providing a minimum harmonization between Member States’ law) and provide for more extensive obligations on infringers or other subjects, including online intermediaries and platforms.

Earlier this week, the CJEU issued its ruling, substantially agreeing with AG Saugmandsgaard Øe.

Let’s see more in detail how the Court reasoned.

The notion of 'address'

First, the Court reiterated the AG’s point regarding the lack of reference, in Article 8(2)(a), to the law of individual Member States. Thus means that the concept of ‘address’ in that provision is an autonomous concept of EU, which must be given an independent and uniform interpretation throughout the EU.

Secondly, also like the AG, the CJEU indicated the need to interpret the notion of ‘address’ “in accordance with 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 and, where appropriate, its origins” [para 29]

From this it would follow - as also the AG opined and as seemingly supported by both the travaux to the Enforcement Directive and the context in which the term is used - that the notion of ‘address’ in everyday language would be limited to one’s own postal address, that is “the place of a given person’s permanent address or habitual residence” [para 30]

This conclusion would be also consistent with the purpose of Article 8 and the overall objective of the Enforcement Directive. Whilst it is true that, by adopting this piece of legislation, the EU legislature sought “to apply and implement the fundamental right to an effective remedy guaranteed in Article 47 of the Charter of Fundamental Rights, and thereby to ensure the effective exercise of the fundamental right to property, which includes the intellectual property right protected in Article 17(2) of the Charter” [para 35], the harmonization of enforcement measures pursued therein is limited to narrowly defined information in Article 8(2).

In all this, the directive seeks to establish a ‘far balance’ between IP protection on the one hand, and the interests and fundamental rights of users and the public interest on the other hand. In the specific case of Article 8, the fair balance is between copyright protection and the right to protection of personal data, which is safeguarded under Article 8 of the Charter.

Training for some robust enforcement initiatives

As mentioned, the CJEU decision is in line with the Opinion of AG Saugmandsgaard Øe, yet manages to go beyond it. 

Not only does the judgment refuse to include email and IP addresses, as well as telephone numbers, in the notion of ‘address’, but also adopts a rather narrow definition of address. 

An ‘address’ is in fact only "the place of a given person’s permanent address or habitual residence".

However, as discussed in The IPKat's earlier post on the AG Opinion, the one provided by the AG and the Court is not really what the everyday language understanding of ‘address’ appears to entail.

If we look at the definition provided by the Cambridge Dictionary, the notion of address is not limited to one's own:
  • physical address, as the notion may also refer to “a series of letters and symbols that tell you where to find something on the internet or show where an email is sent to” or “the place where a piece of information is stored in a computer's memory”;
  • place of permanent address or habitual residence, but does rather encompass "the number of the house, name of the road, and name of the town where a person lives or works, and where letters can be sent".
With regard to the notion of address as a physical place, the definition found on the Oxford Learners’ Dictionaries is that of “details of where somebody lives or works and where letters, etc. can be sent”. The same source also confirms that an address may be “a series of words and symbols that tells you where you can find something using a computer or phone, for example on the internet”.

In sum, the considerations undertaken by the AG and the Court are not convincing this time.

It is true that individual Member States can provide greater protection to rightholders if so they want. However, how’s that of any consolation when, as the Court writes, what EU law mandates – besides the infringer’s name – is the disclosure of details, which are of no real use to rightholders when enforcing their rights, because uploaders-infringers do not need to provide them to platforms in the first place?
The referring court notes, in that regard, that, in order to upload videos onto the YouTube platform, users must first of all register with Google by means of a user account, the opening of that account requiring only that those users provide a name, email address and date of birth. Those data are not usually verified and the user’s postal address is not requested. However, in order to be able to post onto the YouTube platform videos lasting more than 15 minutes, the user must provide a mobile telephone number to enable him or her to receive an activation code, which is necessary in order to post. Furthermore, according to YouTube and Google’s joint terms of service and privacy policies, users of the YouTube platform consent to server logs, including the IP address, date and time of use as well as individual requests, being stored and to those data being used by participating undertakings.” [at [16]; emphasis added]
There is no need to embark on a ‘dynamic’ interpretation of the law (as the AG pointed out at [45] of his Opinion) to reach the simple conclusion that the everyday language meaning of ‘address’ is not the one eventually adopted. Nor is the definition adopted by the Court one that allows to conclude that the 'fair balance' objective of Article 8 of the Enforcement Directive has been also fulfilled.

[Originally published on The IPKat on 12 July 2020]

Monday, 6 July 2020

When does a communication to the public under EU copyright law need to be to a ‘new public’? A new research article

A public?
Over the past several years, the right of communication to the public in art. 3(1) of the InfoSoc Directive has progressively and consistently taken centre stage in the EU copyright system. This has been so also given the great number of referrals (over twenty since the 2006 decision in SGAE) to the Court of Justice of the European Union (CJEU).

EU law does not define the concept of ‘communication to the public’. Lacking a definition, the CJEU has sought to determine the meaning and scope thereof in light of the objectives pursued by the InfoSoc Directive, notably that of ensuring a high level of protection of intellectual property (recital 24). Like the other economic rights harmonised in the InfoSoc Directive, the right of communication to the public “should be understood in a broad sense” (recital 23).

The two key requirements of art. 3(1) of the InfoSoc Directive are a ‘communication’ directed at a ‘public’. A simple example might be a free-to-air broadcast: the broadcast is an act of communication and it is to the public, because any member of the public with a suitable device can receive the signal and watch/listen to the broadcast. But what if the broadcaster operated online and made available works previously communicated online by the relevant rightholder? Would that activity require a licence? 

The CJEU has indicated that, when the communication at issue concerns the same works as those covered by the initial communication and is made by using the same technical means (as is the case in the example, since both acts are performed on the internet), it is necessary to determine – not whether the communication at issue qualifies as a communication to the public – but rather whether such communication is to a ‘new public’.

By ‘new public’, the Court intends a public not taken into account by the relevant rightholder when they authorised the initial communication. Although the ‘new public’ has been part of CJEU jurisprudence since 2006, it is a concept that has no statutory basis – whether in international or EU law. As a requirement employed by the CJEU in its case law, the ‘new public’ has been widely criticised, especially in the aftermath of the 2014 decision in Svensson.

In a research article which will be published by European Law Review later this year, I investigate the origin of the notion of ‘new public’, its use and development in the case law of the Court, as well as the justifications given for its use. 

The article identifies four distinct groups or phases of decisions in which the concept of ‘new public’ has been employed in different ways. The analysis details the evolution occurred within CJEU case law and shows how the role of the ‘new public’ has changed over time. 

In light of this history, the article agrees with existing scholarship that suggests that the ‘new public’ creates undue complexity in the reasoning of the CJEU in most instances, with only a limited number of cases, that is (some of) those concerning linking to protected content, in which the notion performs a substantial – yet confusing and overall unhelpful – role. However, it does not consider it absolutely necessary for the CJEU to expunge the concept of ‘new public’ from its analysis altogether, also because in most cases the role of the ‘new public’ has not been key. 

What public did they have in mind?
Whilst the abandonment of the ‘new public’ might be desirable in principle, it appears difficult to simply eject it from the analysis of the right of communication to the public lacking a proper re-calibration of the role of other components. In addition, it may be unrealistic as an expectation, also considering that the notion of ‘new public’ has been part of CJEU case law since the very first communication to the public case (SGAE).

The analysis undertaken in this article leads to the overall conclusion that the CJEU should at least cease considering the ‘new public’ as a requirement in instances in which the defendant’s act of communication to the public is in fact a new act communication to the public. If that is the case, art. 3(1) of the InfoSoc Directive applies and it is irrelevant whether the technical means is the same or different and whether the public targeted by said act is also new.

The one suggested is a solution that is readily implementable without the need to ‘depart’ from earlier case law. It also allows a more streamlined reasoning on the side of the CJEU, which is respectful of the language, content, and aims of both international and EU law provisions. Although the analysis mostly focuses on the case law issued in respect of art. 3(1) of the InfoSoc Directive, the findings are generally applicable to the various rights of communication/making available to the public and public performance under EU and national law, including inter alia the Rental and Lending Rights Directive and the recently adopted DSM Directive.

In sum, the elusive ‘new public’ concept that has dominated CJEU case law on communication to the public since 2006 may not be as key as the Court has instead considered and conveyed it to be.

The full text of the article is available here. Feedback and comments always welcome!

[Originally published on The IPKat on 2 July 2020]

Thursday, 25 June 2020

ECtHR finds Russian website blocking approach contrary to Article 10 ECHR (freedom of expression and information)

Earlier this week, the European Court of Human Rights (ECtHR) had the opportunity to assess website blocking from the perspective of freedom of expression under Article 10 of the European Convention on Human Rights (ECHR) in its judgment in Vladimir Kharitonov v Russia [see here and here for the commentaries of two of the third-party interveners in the case].


The applicant, Mr Kharitonov, is the owner and administrator of the website Electronic Publishing News (, which features a compilation of news, articles and reviews about electronic publishing.

The website is hosted by DreamHost, a service which hosts multiple websites, all with the same IP address but different domain names.

In late 2012, the applicant became aware that access to his website had been blocked by a number of Russian ISPs as a result of an order of the Russian telecoms regulator (Roskomnadzor) which, in turn, had given effect to a decision of the Federal Drug Control Service. The order was directed at blocking another website, (“a collection of cannabis-themed folk stories”), also hosted by DreamHost and sharing the same IP address as Electronic Publishing News.

On 22 March 2013, the blocking of the IP address ceased.

Mr Kharitonov brought a claim to the Taganskiy District Court in Moscow, arguing that the decision to block the entire IP address had resulted in the undue blocking of his website, which did not contain any illegal information.

The action at both first instance and on appeal failed. In 2014, the Constitutional Court also refused to consider a separate application filed by Kharitonov, who eventually decided to bring his case against Russia to the ECtHR.

His key argument was that Russian authorities’ decision to block access to the offending website by blacklisting its IP address, whilst pursuing the legitimate aim of blocking access to information about the production and use of drugs (which, however, was not what did), had also had the disproportionate collateral effect of blocking access to his website and would thus be contrary to Articles 10 and 13 ECHR.

With particular regard to the Article 10 violation, the ECHR reasoned as follows.

Effective ...
The decision

The Court began its assessment by referring to its prior decision in Ahmet Yıldırım v Turkey. Having noted the importance of the internet to the exercise of freedom of expression and information, the ECtHR recalled that “measures blocking access to websites are bound to have an influence on the accessibility of the Internet and, accordingly, engage the responsibility of the respondent State under Article 10”.

In the present case, the applicant had been prevented from sharing the latest developments and news about electronic publishing (that is: exercising his freedom to impart information), while visitors to his website had had their freedom to receive information compressed. Hence, “such interference will constitute a breach of Article 10 unless it is “prescribed by law”, pursues one or more of the legitimate aims referred to in Article 10 § 2 and is “necessary in a democratic society” to achieve those aims.”

Under domestic law, the legal basis for the blocking had been section 15.1 of the Russian Information Act, which – noted the Court “with concern” – allows targeting an entire website without distinguishing between the legal and illegal content that it may contain:
Reiterating that the wholesale blocking of access to an entire website is an extreme measure which has been compared to banning a newspaper or television station, the Court considers that a legal provision giving an executive agency so broad a discretion carries a risk of content being blocked arbitrarily and excessively [emphasis added]
This said, the requirement of “prescribed by law” is not only fulfilled when the relevant authority acts in accordance with the letter of the law. Rather:
The Court must also ascertain whether the quality of the law in question enabled the applicant to regulate his conduct and protected him against arbitrary interference.
This, concluded the Court, was not the case in the present instance. In addition, the domestic law does not contain any safeguards against abuse, in terms of: 
  • information provided to those whose website would be blocked; 
  • supervision by a court or other independent authority; 
  • ex ante impact assessment of the effects of the blocking; 
  • transparency; and 
  • weighing and balancing of the various interests and rights at hand.
The Court concluded that the applicant’s freedom of expression under Article 10 ECHR had been violated.

... and less effective blocking

As mentioned, the decision afforded the ECHR with the opportunity to review website blocking in light of inter alia Article 10 ECHR. On the one hand, the Court considered that the blocking of an entire website is to be regarded as an “extreme measure”. On the other hand, it did not consider that website blocking orders per se would be contrary to that provision. However, it is necessary that this particular remedy is available within a balanced and carefully drafted legislative framework, which contains a robust and articulated set of safeguards against abuse.

Looking at this ruling from an EU copyright perspective [it might be worth recalling that the ECtHR is not an EU court, nor is the ECHR an EU instrument], the Court’s conclusion is substantially in line with what the Court of Justice of the European Union (CJEU) established in Telekabel [IPKat post here], a referral which considered website blocking orders under Article 8(3) of the InfoSoc Directive.

In that decision, the CJEU specifically conducted an assessment in light of fundamental rights and the principle of proportionality. In considering whether that particular type of intermediary injunction would be compatible with EU law and concluding in the affirmative, the CJEU noted that the rights at issue in a context of this kind would be copyright protection (Article 17(2) of the EU Charter of Fundamental Rights), freedom to conduct a business (Article 16 of the EU Charter), and freedom of expression and information (Article 11 of the EU Charter). 

Overall, the EU court stated that the measures adopted to implement a blocking order must be strictly targeted: they must serve to bring an end to a third party’s infringement of copyright or of a related right but without thereby affecting internet users who are using the provider’s services in order to lawfully access information. Failing that, the interference in the freedom of information of those users would be unjustified in the light of the objective pursued, and it should be possible for a court to repress any abuses thereof.

Finally, it is also worth noticing that, in order to limit the risk of overblocking whilst enhancing the effectiveness of blocking orders, more recently courts in different European jurisdictions have begun issuing dynamic or live blocking orders. This has been, for instance, the case in the UK [here and here], Italy [here], and Sweden [here]. These measures are said to have achieved both objectives and are increasingly preferred to 'old school' blocking injunctions.

[Originally published on The IPKat on 25 June 2020]

Sunday, 21 June 2020

Italian Supreme Court rules that technical regulation (drafted by an IP lawyer) may be *in principle* protected by copyright

Lively drafting session ...
Is an anticounterfeiting service regulation drafted by an IP lawyer protected by copyright?

This, in a nutshell, is the question at the heart of the dispute initially brought by said IP lawyer against the organizers of a trade fair in the Venice area, who had allegedly copied the regulation that he had drafted.

Last month, the Italian Supreme Court ruled (decision 10300/2020, Casucci v Unipol Assicurazioni S.p.A. and Others, also commented in Italian here) that, in principle, a technical work like that one at hand could be eligible for copyright protection, subject to it being original.


At first instance, the IP lawyer prevailed over the defendants. 

However, in 2016, the Venice Court of Appeal ruled in favour of the defendants/appellants, holding that it was not apparent where the originality – and, thus, protectability - of said regulation would lie, since the regulation at hand was found to be a “standard legal text for technical-professional use”. According to the Court of Appeal, said regulation failed to display, on the side of its drafter, “any peculiar or creative elaboration of legal notions, sector-specific rules, his experiences". Rather, it did only display "practical and functional indications". [my own translation from Italian]

The IP lawyer filed one last appeal to the Italian Supreme Court. This, it is worth recalling, is not a court on the merits, and may only be seized for questions concerning the correct interpretation of the law.

The originality of a technical regulation

According to the IP lawyer, the Venice Court of Appeal had inter alia misinterpreted the Italian Copyright Act by excluding his regulation from copyright protection. According to the lawyer, the court had erroneously focused on the content and function of the regulation, rather than on its expressive form, thus reaching the conclusion that a work with a technical function could not be original.

The Supreme Court rejected this argument. 

First, it noted that the one in question would be an assessment that only a court on the merits could undertake. Secondly, and more interestingly, it recalled that the concept of originality means – as the Court of Justice of the European Union (CJEU) recently summarized in Cofemel at [30] [Katpost here– “that the subject matter reflects the personality of its author, as an expression of his free and creative choices”.

In the present case, the Court of Appeal had not excluded tout court that a technical work could be protected by copyright. Instead, that court had ruled out that that particular regulation would be protected because of the way in which the legal concepts, sector-specific rules, the drafter’s own experiences had been contextualized, organized, and arranged.

In sum: the regulation did not display any peculiar and creative elaboration of such elements on the side of its author. To use the language of the CJEU, the work at issue did not show ‘any free and creative choices’ by its author, so that the work did not carry his ‘personal touch’. 

Although the Italian Supreme Court could not refer to last week’s Brompton Bicycle CJEU judgment [Katpost here] for obvious reasons, it did substantially adopt the same perspective. The present case is one in which the relevant subject matter, whilst dictated by ‘technical considerations’, failed to display that “qualcosa in più” (‘something more’, in the words of the Supreme Court) that goes beyond such considerations and reflects the ‘personality’ of its author.

... with the supervisor's
own finishing, personal touch

The judgment is interesting for a variety of reasons, besides the obvious one that it is relevant to all lawyers – including IP lawyers – drafting documents.

First, the Italian Supreme Court did not exclude that in principle a technical-professional regulation could be eligible for copyright protection, provided that it satisfies the required level of originality. In this sense, it may be worth drawing a comparison with two recent cases tackling copyright protection of somewhat similar types of works, one in Europe and the other in the US. 

In Europe, last March the Lithuanian Supreme Court held (MB “Novus Nexus” v UAB “SOLIDAS”, Case No e3K-3-77-687/2020, 26 March 2020) that draft company documentation adopted in compliance with the EU GDPR would be original and protectable, and would not fall within the exclusion concerning legal acts under Lithuanian law. 

Vice versa, on the other side of the Atlantic, last April the US Supreme Court elaborated upon the  longstanding government edicts doctrine, according to which “no one can own the law”, and ruled (Georgia v Public.Resource.Org.) that annotations of the Official Code of Georgia would be ineligible for copyright protection [Katpost here]

In all this, the Italian Supreme Court’s decision appears to follow an approach that is not too dissimilar from that of the Lithuanian court, though with a different outcome.

In so doing, and as a second point, the Italian Supreme Court substantially adopted the understanding of and approach to originality that is in line with that mandated under EU law. It is true that a technical work may be protected in principle. However, for protection to arise, it is necessary that the author performs free and creative choices that go beyond the choices dictated by technical considerations, rules and constraints, so that the resulting work carries their personal touch.

Finally, it is worth noting that the IP lawyer had further argued in his appeal to the Supreme Court that his regulation would be original also because there would be alternative regulations of the same topic, one produced by the defendants themselves. The Court declared this argument inadmissible.

However, a response to this point can be found in the Brompton Bicycle judgment. There, the CJEU – with specific regard to the existence of other possible shapes which allow the same technical result to be achieved - held (at [35]) that “even though the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, it is not decisive in assessing the factors which influenced the choice made by the creator.” (emphasis added) Mutatis mutandis, the same is true in the context of a legal document.

[Originally published on The IPKat on 21 June 2020]

Thursday, 11 June 2020

BREAKING: CJEU rules that a functional shape may be protected by copyright in so far as it is original

A Brompton Bicycle bike (top) and
its alleged counterfeit (bottom) in the
background national proceedings
Since its seminal ruling Infopaq nearly 11 years ago [Kat-celebration here], the Court of Justice of
the European Union (CJEU) has been contributing fundamentally to both shaping and placing the building blocks of copyright protection in the EU. 

Through a string of decisions (the most important being InfopaqBSAFAPLPainerFootball DatacoSASLevola Hengelo, and Cofemel), the Court has answered the most basic and relevant question: 

When does copyright protection arise?

Today, the CJEU has issued yet another ruling contributing to this very debate.

It did so in the context of a referral from Belgium - Brompton Bicycle, C-833/18 - concerning copyright protection of functional shapes (in the background proceedings, it is the shape of Brompton Bicycle's folding bike) [see here for an explanation of the background to the case].

This referral prompted the Court to: 
  • reflect on the implications of Cofemel, a decision which - in my view - was not surprising at all in light of preceding case law (what was surprising, instead, was the surprise of some commentators 😀[for some early applications in the UK and Italy, see - respectively - here and here]
  • clarify further how the assessment of originality is to be conducted.
A few months ago, Advocate General Campos Sánchez-Bordona offered yet another thought-provoking Opinion [but see some criticisms here; note that the Opinion is not yet available in English], in which he reflected on the above, as well as the evergreen topic of IPR cumulation.

Today's decision

In its 39-paragraph ruling, the CJEU held that copyright protection is in principle available to products whose shape is, at least in part, necessary to obtain a technical result, insofar as "that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality".

In achieving this result, the Court reviewed earlier case law and, in line with the Cofemel holding, it confirmed that - for copyright protection to arise - it is "both necessary and sufficient" that the subject matter at hand is original, in the sense that it is its author's own intellectual creation that results from their free and creative choices and reflects their personality.

As the CJEU had held in earlier case law, originality is not fulfilled where the realization of a subject matter has been exclusively dictated by technical considerations, rules or other constraints which have left no room for creative freedom. Indeed:
a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices.
This also follows from the consideration that copyright extends to the expression of ideas, not ideas per se:
the criterion of originality cannot be met by the components of a subject matter which are differentiated only by their technical function. It follows in particular from Article 2 of the WIPO Copyright Treaty that copyright protection does not extend to ideas. Protecting ideas by copyright would amount to making it possible to monopolise ideas, to the detriment, in particular, of technical progress and industrial development (see, to that effect, judgment of 2 May 2012, SAS Institute, C‑406/10, EU:C:2012:259, paragraphs 33 and 40). Where the expression of those components is dictated by their technical function, the different methods of implementing an idea are so limited that the idea and the expression become indissociable (see, to that effect, judgment of 22 December 2010, Bezpečnostní softwarová asociace, C‑393/09, EU:C:2010:816, paragraphs 48 and 49).
As regards the shape of the folding bike at issue in the background proceedings, the CJEU noted that it is for the referring court to determine both whether that product is a 'work' and whether such shape is exclusively dictated by technical considerations, rules or other constraints, which have left no room for creative freedom.

Other criteria?

The referring court had also asked the CJEU to clarify whether, in order to assess whether a shape is necessary to achieve a technical result, account is to be taken of the following criteria:
  1. The existence of other possible shapes which allow the same technical result to be achieved
  2. The effectiveness of the shape in achieving that result
  3. The intention of the alleged infringer to achieve that result
  4. The existence of an earlier, now expired, patent on the process for achieving the technical result sought
The CJEU held that 1. is "not decisive" and 3. is "irrelevant". 

Disclaimer: not a Brompton bike
Turning to 2. and 4., the Court held that "they should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned."

In any event, it must be noted that, in order to assess whether the folding bicycle at issue in the main proceedings is an original creation and is thus protected by copyright, it is for the referring court to take account of all the relevant aspects of the present case, as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product.

The decision appears in line with earlier case law of the CJEU and builds nicely upon the most recent ruling in this field, this being Cofemel.

The most significant aspects, in my view, are the following.

First, the CJEU rejected the proposal of the Advocate General to take into account, not the intention of the infringer, but rather the intention of the author. As I discussed here, following this approach would have been both an odd departure from earlier CJEU case law and truly undesirable.

Secondly, in line with Cofemel and - in the trade mark field - the recent Gömböc judgment [see here and here- the decision adopts an 'open-minded' approach to IPR cumulation. In the latter case, the Court recalled that each IPR has its own subsistence requirements and the analysis required to determine eligibility for a certain type of right is different from that under other rights. In today's Brompton Bicycle ruling, the Court pointed out that, to determine copyright subsistence, account is only to be taken of the relevant requirements under this right, "as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product", including earlier protection under other IPRs.

[Originally published on The IPKat on 11 June 2020]

Tuesday, 19 May 2020

Milan court rules against Antonio Marras over unauthorized use of howling wolf photograph

Last month, the Milan Court of First Instance issued a decision (sentenza 2539/2020, available on darts-ip and already commented here) concerning the alleged infringement, by fashion house Antonio Marras, of copyright (both economic and moral rights) in the photograph below, which the latter had used without the photographer’s authorization in its Fall/Winter 2014-15 fashion collection and campaign:

The claimant's work (L) and an item from the Antonio Marras Fall/Winter 2014-15 collection
The court sided with the claimant, having established that his photograph – which has been also registered with the US Copyright Office - would qualify for protection under the ‘ordinary’ copyright regime.

Under Italian law, in fact, photographs may be protected in two ways: on the one hand, there is the ordinary copyright regime, which is available to photographs that display a ‘creative character’ under Articles 1 and 2 No 7 of the Italian Copyright Act; on the other hand, simple photographs (fotografie semplici) are eligible for a 20-year term of protection, in accordance with what is allowed under Article 6 of the Term Directive and the regime in Articles 87-92 of the Italian Copyright Act.

The defendant’s arguments

Defendant Antonio Marras had submitted that the claimant’s photograph would not qualify for copyright protection, it being devoid of “any particular artistic, creative or in any case distinctive [sic] character”. It had also noted that, whilst the photograph had been taken from the internet, it was not eventually used in the campaign. Rather, it was included in the collection’s moodboard as a source of inspiration for the designer.

Additionally, if such photograph was to be protected, the applicable regime would be that of simple photographs rather than copyright. If accepted, this would have meant that no infringement could subsist, since the photograph had been taken in 1993 and the campaign was the one for the 2014-15 season.

The decision

The Court rejected the defendant’s arguments. First, it found that the claimant's photograph had been actually used (see above). Secondly, it established that the claimant’s photograph would qualify for the ordinary copyright regime. 

The Court recalled that, whilst copyright protection is available subject to the photograph at issue displaying the personal touch of the author and their choice and study of the portrayed subject, protection under the simple photographs regime is for photographs that are “a mere representation of reality, albeit that is through particularly refined or complex photographic techniques”.

Focusing on the copyright regime, the Court referred to the decision of the Court of Justice of the European Union (CJEU) in Painer, C-145/10, which held that “an intellectual creation is an author’s own if it reflects the author’s personality. That is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices” (at [88]-[89]).

According to the Milan court, the author’s personality is visible when the choices made are “supported by a clear artistic ability that goes beyond a simple photographic reporting”. However, ‘artistic ability’ is irrespective of the quality of the shot.

Applying these principles to the case at hand, the Court found that the claimant had carefully chosen:
  • the subject of his photograph (the wolf in its natural environment);
  • the precise moment he wanted to capture (the howling wolf);
  • the angle and technique of the photograph, as well as the lighting and the frame, so to evoke precise emotions in the viewer that would go beyond the reality represented in the photograph.
The Court could have stopped here (the Painer CJEU decision only requires consideration of what free and creative choices have been made so that the personal touch of the author is visible in the creative result), but instead – to strengthen its conclusion – deemed it necessary to note: 
  • the US copyright registration; 
  • the inclusion of the photograph in a published book; 
  • the creative quality similar to that of photographs published on magazines like National Geographic and Nikon Learn&Explore
  • the appreciation by commercial operators; 
  • that the claimant's work is one of the first images returned by Google upon searching “howling wolf” or “lupo ululante”.
The Court also recalled that the mere fact that a photograph is publicly available does not mean that it is also in the public domain (😅). It pointed out that, moreover, a fashion business like the defendant could not be unaware of this.

The iconic Falcone and Borsellino photograph
was found to be ineligible for copyright protection

The outcome of this case is not surprising or, rather, should not be surprising. 

However, it may not be a given that a photograph, even a well-known one, is deemed eligible for copyright protection rather than for the simple photographs regime. 

Readers may indeed remember that, not too long ago, the Rome Court of First Instance ruled that an iconic photograph of judges Falcone and Borsellino (left) would not qualify for copyright protection, on consideration that the photographer had merely happened to be in the right place at the right time [Katpost here]

But are the choices made by the photographer of that historical shot very much or - rather - any different from those made by the claimant in the Marras case? Probably not.

[Originally published on The IPKat on 19 May 2020]

Sunday, 10 May 2020

Italian Supreme Court applies CJEU Cofemel decision to makeup store layout

A KIKO store
A couple of years ago, The IPKat reported on the interesting decision of the Court of Appeal of  inter alia, copyright protection of makeup producer and retailer KIKO's store layout under Italian law.
Milan in a case concerning,

The ruling, which upheld the decision at first instance, confirmed that the layout of KIKO concept stores – notably the way in which the various elements used to furnish such stores are combined, coordinated and assembled – is eligible for protection under Article 2 No 5 of the Italian Copyright Act as as an architectural plan. It also found that defendant WYCON’s stores had infringed copyright in it.

Now, the Italian Supreme Court has confirmed the appropriateness of this conclusion [this court is not a court on the merits, and may only be seized on issues concerning the correct interpretation of the law] in a decision published earlier this week (decision 780/2020).

Of the twelve grounds of appeal filed by WYCON, one is particularly interesting and deserving of attention, as it allowed the Supreme Court to assess – in what appears to be the first opportunity for the highest Italian court to do so – the implications of the recent decision of the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17 [Katpost here].

The CJEU Cofemel ruling

As readers will remember, in that seminal ruling, the CJEU held that copyright in a design would only arise subject to the design at issue being original. In so doing, the EU court confirmed what had been in the air during the previous decade of CJEU case law, ie that the only requirements for copyright protection are:
  1. a work, in the sense clarified in Levola Hengelo, C-310/17 [Katpost here] of – I add (though the CJEU has yet to be asked who/what an authors is under EU law) – authorship, which is
  2. sufficiently original, in the sense progressively clarified through a string of decisions, starting with the 2009 decision in Infopaq, C-5/08 [10-year anniversary Katpost here].
Protection of a store layout: copyright or design?

Both at first instance and on appeal, the KIKO store layout had been qualified as an architectural work consisting of a “successful and creative combination” of various elements. However, WYCON had submitted that the architectural plan at issue would not be fully defined in all its formal expressive aspects: rather, it would be a basic indication – subject to variations - of the way in which the various objects should be placed within the individual stores.

The Supreme Court noted that, while ideas are not protectable per se, the decision on appeal had correctly interpreted the law and found that the plan did not consist of a series of “abstract indications”. Rather, the plan had a specific expressive form which included “a series of elements, whose choice, coordination and organization displayed the required creative character.”

WYCON had also submitted that that the Court of Appeal had incorrectly qualified the KIKO concept store layout as a work of architecture. Instead, it should have assessed its protectability as a design under Article 2, No 10 of the Italian Copyright Act.

Whilst Italian copyright law envisages an open-ended list of protectable subject-matter, traditionally – as it was has been the case, at least pre-Cofemel, in several other EU Member States – designs have been held eligible for copyright protection subject to fulfilling an ‘artistic value’ requirement that would go beyond the originality of the object at issue.

A WYCON store
Qualification of a store layout as an architectural work

The Supreme Court noted that – from Cofemel – it descends that, whilst copyright and design protection can subsist simultaneously, they also pursue different objectives and are subjected to different requirements. Hence:
The EU Court has thus confirmed that the subsistence of originality as required under copyright, that is the subsistence of a well-defined and creative expressive form, which reflects the free choices and personality of its author, does not also imply that it produces a visually relevant effect from an aesthetic standpoint, as it is instead required for protection as a design. [my own translation from Italian] 
From all this the Italian Supreme Court derived the following legal principle:
An interior design plan or work, which reflects a unitary project that adopts a well-defined and visually relevant scheme displaying a clear ‘stylistic key’, concerning individual elements that are organized and coordinated to render a certain environment functional and harmonic, that is [something that reflects] the personal touch of the author, is protectable as an architectural work, in accordance with Article 5 No 2 of the Italian Copyright Act[. It is] irrelevant whether such elements are necessarily part of a building or the individual furnishing elements are simple, common or have been already employed in the interior design sector, as long as [the project] results from an original combination, which is not imposed by choices of the author aimed at solving a technical-functional problem. [my own translation from Italian]
To be protectable by copyright, an architectural plan or work needs to be
always identifiable and recognizable from the point of view of its formal expression as an author’s own unitary work, which consists of precise choices concerning the composition of the various elements (eg, the colours of the walls, particular lighting effects, the consistent repetition of decorative elements, the use of certain materials, the size and proportions). Indeed, any exclusive rights vest in the overall combination [of the various elements], the unitary work of space organization, the combined use of the various furnishing elements in accordance with a unitary organizational plan. [my own translation from Italian]
Mirror, mirror on the wall,
who's the fairest of them all?
Relevance of the ruling: copyright and rights cumulation

The Supreme Court's decision is equally important under Italian and EU copyright law.

Starting with the former, it brings clarity regarding the requirements of protection for works, like architectural ones, which result from creative and functional considerations and choices alike.

Turning to the latter, the judgment confirms a reading of the CJEU Cofemel ruling which is in line with the first national application thereof, that is the English Intellectual Property Enterprise Court (IPEC) decision in Response Clothing [commented on The IPKat here].

In addition, the KIKO judgment also contains valuable remarks regarding cumulation of IP rights, notably trade marks and copyright.

The Supreme Court recalled in fact that the CJEU had acknowledged – in Apple, C-421/13 [IPKat post here– that a store layout could be in principle registered as a trade mark insofar as it possesses distinctive character.

In 2016, the EUIPO First Board of Appeal confirmed refusal to register KIKO store layout as a trade mark due to lack of distinctive character.

According to the Supreme Court, all this should not be relevant to determine copyright subsistence, as the requirement of distinctive character under trade mark is different and is assessed differently from that of originality under copyright law.

This conclusion, which appears both appropriate and correct, is also in line with the position of the CJEU itself. It is sufficient to recall that, only a few days ago, in its important judgment in Gömböc, C-237/19 [IPKats posts here and here], the CJEU held that each IP right has its own subsistence requirements and the analysis required to determine protection under one right is different from that mandated under other rights. The EU court considered that, whilst prior IP protection is not irrelevant, it should not lead to the "systematic" conclusion that an object cannot be protected by other IP rights because of that. 

Mutatis mutandis, in the KIKO case, the Italian Supreme Court made it clear that prior refusal to protect the KIKO store layout by means of a trade mark would not exclude protection of the same under copyright.

[Originally published on The IPKat on 10 May 2020]