Thursday, 6 February 2020

AG Campos in Brompton Bicycle advises CJEU to rule that 'exclusively' functional shapes do not deserve copyright protection

Is a functional shape eligible for copyright protection under the InfoSoc Directive?

This, in a nutshell, is the intriguing issue that the Court of Justice of the European Union (CJEU) has been asked to address in Brompton Bicycle, C-833/18.

As readers might guess, the shape at issue in this case is Brompton's iconic foldable bike, originally created in 1975 and sold in its current form since 1987:

This morning, Advocate General (AG) Campos Sánchez-Bordona issued his Opinion. He advised the Court to rule that, if the shape is exclusively dictated by the technical function of the relevant product, then no copyright subsists in it. 

Whilst this conclusion appears reasonable and in line with existing CJEU case law, including - most recently - the Cofemel decision [here; for a recent application, see here], the Opinion appears to go a bit astray from that, at least in one notable respect (read on).

Let's see a bit more in detail what happened and how the AG reasoned.


This referral from the Tribunal de l’entreprise de Liège was made in the context of copyright infringement proceedings that Brompton had brought against Korean company Get2Get over this bike:
In response to Brompton's claim, Get2Get submitted that the appearance of the Brompton product is dictated by the technical function sought and that it deliberately adopts the folding technique [previously covered by a now expired patent; the referring court did not indicate whether the appearance of the Brompton bike was also protected by a design right] because that is the most functional method. As a result, the defendant's product looks as it does because of technical constraints.

Brompton submitted that other shapes are present on the market, and this would demonstrate the originality of its product: free and creative choices were made in the realization of the Brompton bike.

The court which heard the action was not sure whether copyright could subsist in an object whose shape is necessary to achieve a technical result. Also, should any of the following criteria be relevant to the assessment?
  • The existence of other possible shapes which allow the same technical result to be achieved?
  • The effectiveness of the shape in achieving that result?
  • The intention of the alleged infringer to achieve that result?
  • The existence of an earlier, now expired, patent on the process for achieving the technical result sought?
Hence, the referral to the CJEU.

The AG Opinion

The AG began his assessment noting that any response to the referring court's questions "cannot overlook the difficulties related to cumulative protection", as offered under patents, designs, and copyright, respectively. Copyright cannot be a means to circumvent the time-limited duration of other rights and the overall balance between different rights:
That careful balance — which is most directly reflected in the short protection period granted to an inventor or designer — would be upset if the allotted term were simply extended to reach the generous periods afforded to copyright protection. Designers would lose the incentive to avail themselves of the industrial property system if, in return for lower costs and fewer procedural requirements (inter alia lack of registration), they were guaranteed copyright protection of their creations for a much longer term.
In this sense, AG Campos referred back to the Opinion [not yet available in English] of AG Szpunar in Cofemel [here].

The implications of Cofemel

Whilst it is true that in principle rights cumulation is allowed under EU law, according to AG Campos, the Cofemel judgment contains "a number of clarifications which weaken, so to speak, or reduce the force of the principle of cumulation." This is so because:
  • first, "concurrent protection can be envisaged only in certain situations"; 
  • second, the nature of the protection provided under copyright and designs is different;
  • third, "the obtaining of copyright in subject matter which is already protected by a design right involves certain risks which should not be underestimated. In particular, "the grant of protection, under copyright, to subject matter that is protected as a design must not have the consequence that the respective objectives and effectiveness of those two forms of protection are undermined’";
  • fourth, it is for national court to specify when one of the 'certain situations' which allow the cumulation of IP rights has arisen.
(1) Copyright in a technical shape

Further to these preliminary remarks, the AG turned to consideration of the first question referred and recalled that:
One of the important contributions of the judgment in Cofemel is that it does not allow the originality of the purported ‘work’ (in that case, clothing) to be linked to its aesthetic elements. The Court refused to allow reliance on aesthetic factors as a ground for protection of a design by copyright.
According to the AG, in light of all this, the issue is whether - having excluded aesthetic elements as relevant to the assessment - the achievement of a technical or functional result serves to rule out copyright protection.

He recalled that a similar question has been already answered - in the affirmative - in relation to computer programs: "where the expression of the components of a subject matter ‘is dictated by their technical function, the criterion of originality is not met, since the different methods of implementing an idea are so limited that the idea and the expression become indissociable’." (Bezpečnostní softwarová asociace; in the same sense, see also Football Dataco).  Hence,
It can be inferred from those rulings that, as a general rule, works (objects) of applied arts whose shape is dictated by their function cannot be protected by copyright. If the appearance of a work of applied art is exclusively dictated by its technical function, as a decisive factor, it will not be eligible for copyright protection.
This conclusion, explained the AG, is in line with what happens in the field of trade marks and means that:
[D]esigns whose shape is dictated by technical considerations which do not leave room for the exercise of creative freedom are not eligible for copyright protection. Conversely, where a design merely has a number of functional aspects, that does not deprive it of copyright protection.
But for what the AG called 'mixed designs', that is designs that combine artistic and functional elements, if the latter predominate over the former "to the extent that the latter became irrelevant", then copyright will not be available. 

To this end, the AG noted that case law on shapes associated with functional elements in relation to industrial property and trade mark law can provide, by analogy, a number of valid interpretative approaches in respect of copyright. In particular, he referred to the CJEU decision in Lego Juris to conclude that, as the referring court appeared to consider the appearance of the bicycle at issue as necessary to achieve the technical result, meaning that the relationship of exclusivity between appearance and functionality exists, then it is not possible to grant copyright protection to such a shape. 

(2) Criteria to be used

Turning to the second question referred, that is what criteria need to be taken into account to conduct the assessment of copyright subsistence, the AG considered them in turn.

1. The existence of an earlier patent

In principle, this circumstance should not prevent copyright protection from arising, although a registered patent may serve to identify technical constraints which dictated the shape of the product in question, as well as highlighting a close relationship between the shape patented and the result intended. 

2. The existence of other possible shapes which allow the same technical result to be achieved

Here the AG referred to DOCERAM, which held that a court can take this circumstance into account in the field of designs, though it is not a conclusive factor in itself. The same should apply, mutatits mutandis, in respect of copyright.

3. The intention of the alleged infringer to achieve that technical result

This, according to the AG, "is not, in principle, relevant." However:
When examining whether or not there is a right for the object to be protected as a work, the court is entitled to explore the inventor or designer’s original intention rather than that of the person who reproduces his invention or design.
For that purpose, account must be taken of the time when the invention or design was initially conceived in order to assess whether its author was really seeking to achieve his own intellectual creation or whether, instead, he was seeking only to protect an idea applicable to the development of an original industrial product with a view to the mass production and sale of that product on the market. The fact that there has been an industrial application of the invention or design or that a commercial benefit has been obtained from it may provide evidence worthy of attention.
From that perspective, the fact that subsequent recognition of the design may also warrant its exhibition in museums does not appear to me to be relevant. That factor or others like it, such as the receipt of awards in the sphere of industrial design, confirms, rather, that its nature is that of an industrial object deserving of praise, or even admiration, in its own sphere, or that it has a number of important aesthetic components.
4. The effectiveness of the shape in achieving a technical result

As the referring court did not provide enough information to understand the exact meaning of this part of the second question, the AG considered that there was not much to say and that "if the shape which the designer of the product (in this case, a bicycle) planned were not suitable for attaining the desired functionality, the requirement of future industrial application would not be satisfied."

In conclusion

The AG noted that, like AG Saugmandsgaard Øe had argued in his Opinion in DOCERAM, there might be criteria other than those listed by the referring court, but also that "it would not be appropriate to make an exhaustive or non-exhaustive list of those criteria in the abstract when, in reality, that assessment (which is factual in nature) is connected to a set of circumstances which are difficult to recognise a priori." He also added that refusal of copyright protection would not in any case prevent protection under the national laws again slavish or parasitic imitations. 

In a position to "achieve his
own intellectual creation"?

The Brompton Opinion is correct in several respects but also problematic, at least in one key aspect.

Let's start from the good. The considerations concerning rights cumulation and the conclusion re copyright protection of functional shapes are overall in sync with earlier CJEU case law. 

The Opinion is also important because it adopts a functional interpretation of Cofemel, one which could contribute to avoiding that copyright protection is perceived as 'easy' to claim now that extra criteria, eg aesthetic appeal, artistic merit, etc, are out of the window. 

However, the Opinion is also concerning insofar as it considers that account could be taken of the intention that the author had when he/she created the work. The AG considered that, whilst external recognition (eg, exhibition in museums or awards) should not be relevant, internal and subjective elements might be. This is concerning for a number of reasons, of which two in particular stand out.

First, it runs contrary to the Cofemel decision itself: the CJEU said that what is only required is a work that is original. Certainly, the subjective intention of the author should not be taken into account to determine copyright subsistence. What the author thought or wanted to achieve is irrelevant. The assessment should be one based on objective criteria.

Second, it evokes the need for an assessment that is difficult to undertake and may potentially imply a value judgement: eg, only works created by those who felt like that they were 'making art' would be deserving of protection, as would only the works created by those in the 'right' (or, in some cases, 'sober') state of mind to understand what they were trying to achieve. According to this logic, something written in a state like that of Coleridge when he drafted Kubla Khan could not be deserving of protection ... Similarly, cases like Lucasilm (concerning copyright in the Star Wars Stormtrooper Helmet) should be regarded as correctly decided (in my view, it was not). This can't be right: what matters is that a work is the result of an author's free and creative choices, irrespective of whether such choices were made with a certain end goal in mind or in a certain state of mind.

Let's now wait to see what the CJEU thinks.

[Originally published on The IPKat on 6 February 2020]

Thursday, 30 January 2020

UK court applies CJEU Cofemel decision for the first time: "complete conformity" with EU law would preclude any requirement of aesthetic appeal

IPKat-approved jacquard fabric
Yesterday, the Intellectual Property Enterprise Court (IPEC, a specialist court which is part of the Business and Property Courts of the High Court of Justice of England and Wales) issued what appears to be the first UK decision tackling the implications of the judgment of the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17 [see hereCofemel was also awarded the prestigious Kat-award 'Copyright Decision of the Year 2019'].


The claimant, Response, is a clothing company; the defendant, EWM, is a major retailer of clothing with about 400 stores in the UK.

Between 2009 and 2012, Response supplied EWM with ladies tops made of a jacquard fabric of a design referred to as a 'wave arrangement'. In 2012, Response attempted to raise the price of the tops, but EWM refused. The latter then provided a sample of Response's top or a swatch of its fabric to other garment suppliers, with an invitation to supply tops made from a similar fabric. A few companies got the order over time, and supplied garments made from jacquard fabric.

Response sued EWM for copyright infringement, claiming that protection would subsist in its wave arrangement as:
  • either a graphic work [see the definition at s4(2) CDPA], or
  • a work of artistic craftmanship [there is no statutory definition of this category]
NOTE: the UK has a closed list of protectable copyright subject-matter. This has traditionally meant that, in order to claim copyright, there should be not just an original work, but also a work of the 'right kind'. In the past, certain types of less conventional subject-matter - including the Star Wars Stormtrooper Helmet and the assembly of a scene - were refused protection, while for works like TV formats uncertainties whether copyright protection would be available have subsisted for a long time.

The fabric as a graphic work?

HHJ Hacon considered whether a fabric could be considered a graphic work, and noted that - whilst the list in s4(2) is not exhaustive - "[i]t does not follow that the definition is endlessly flexible." He found that a fabric would not satisfy the definition of graphic work: the relevant notion cannot be stretched to include a fabric, whether made on a loom or a knitting machine. 

The fabric as a work of artistic craftsmanship?

The judge thus turned to the consideration of whether copyright could subsist in the fabric as a work of artistic craftsmanship. To this end, he began by recalling the history of closed subject-matter categorization and the challenges that EU - or rather: CJEU-driven - harmonization have presented:
The Statute of Anne of 1709 was the world's first copyright statute, although there had been some earlier common law giving rights to authors. The Statute was concerned with literary copyright. Since then, because Parliament has incrementally afforded copyright protection to other types of work, the law has become structured in the form of successive categories of copyright work. In the 300 years since the Statute of Anne a claimant has been required to show that his work falls within at least one of the categories identified for protection in the copyright statute of the day. In recent years, there may have developed a tension between the way this is approached in the 1988 Act and EU copyright directives which have entered into force.
He then noted that, if the fabric at issue could not be considered a work of artistic craftsmanship, then "the design knitted into it is not protected by any other provision of the 1988 Act". This would be so because s1 CDPA is "clear": "a work is only capable of being a copyright work if it falls within one of the three descriptions set out under subsection (1)." 

The judge reviewed case law on works of artistic craftsmanship. He noted that, to determine whether the claimant's fabric qualifies as such, it would be necessary to determine whether the employee who created it "was both (a) a craftsman in that he or she made the fabric in a skilful way, taking justified pride in his workmanship and (b) was an artist in that he or she used their creative ability to produce something which has aesthetic appeal." (Bonz Group (Pty) Ltd v Cooke [1994] 3 N.Z.L.R. 216). He was of the view that the claimant's work could qualify for protection if this was the test. However, if the test was instead that of the House of Lords in George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd [1976] AC 64 (a case decided under the 1956 Copyright Act), the conclusion could be that the claimant's work may not qualify for protection.

At this point, HHJ Hacon turned to EU law and the interpretation given of it by the CJEU.

Applying Cofemel

Before considering Cofemel, the judge recalled the earlier CJEU decision in Levola Hengelo, C-310/17 [here], which clarified that the notion of 'work' is an autonomous concept of EU law. As such, it must receive uniform interpretation and application across the EU.

Turning to Cofemel, the judge recalled that in its decision "[t]he CJEU ruled that national law could not impose a requirement of aesthetic or artistic value." Hence, the judge stated,
I take the view that, subject to my being satisfied that the [claimant's fabric] is original in that its design was its author's own intellectual creation, that design is a work within the meaning of art.2 of Directive 2001/29. If no sufficiently similar design existed before it was created, it must have been the expression of the author's free and creative choices.
He continued noting that:
Pursuant to the Marleasing principle, I am required to interpret the 1988 Act, so far as is possible, in conformity with Directive 2001/29 and therefore in conformity with the way in which that Directive has been interpreted by the CJEU
Clearly both a craftsman and an artist
The issue, the judge explained, was "not whether Directive 2001/29 has the effect of removing all the gaps there may be in copyright protection available from a court at first instance for 'works' within the meaning of art.2 of the Directive, but whether it is possible to interpret s.4(1)(c) of the 1988 Act in conformity with art.2 of Directive 2001/29 such that the [claimant's fabric] qualifies as a work of artistic craftsmanship and thereby its design becomes entitled to copyright protection. In my view it is, up to a point. Complete conformity with art.2, in particular as interpreted by the CJEU in Cofemel, would exclude any requirement that the [claimant's fabric] has aesthetic appeal".

The judge found that he did not have to go that far, since the fabric did in fact have aesthetic appeal. 

He concluded that the claimant's fabric was protected in accordance with the Bonz Group test and that copyright in it had been infringed.


The decision, as mentioned, appears to be the first time that a UK court considers the CJEU judgment in Cofemel. What is interesting about it is the acknowledgment that, indeed, full compliance with it would probably require granting protection to an original work, irrespective of its aesthetic appeal (and, as I have said a few times on this blog, irrespective of the category it belongs to).

In this particular instance, the judge felt he did not have to go that far, as the fabric did possess such appeal. However, even if this had not been the case, protection should have been acknowledged insofar as the subject-matter at issue qualified as an 'original' 'work' in the sense clarified by the CJEU.

As I wrote hereCofemel in itself did not arguably made any change to the law: it was merely a step in the consistent approach that CJEU case law has had to the requirements for copyright subsistence,  this being a process which began a little over 10 years ago with Infopaq, C-5/08

Overall, the Response decision employs a rather cautious language and confirms that, to be protected, a 'work' must (still) fall - at least formally - under one of the categories in s1 CDPA which - for the time being - must be interpreted in accordance with EU law.

However, after a decade of CJEU case law, it appears preferable and more correct to adopt a less formalistic approach. It is worth recalling that - as early as 2010 - Arnold J (as he then was), in SAS Institute Inc v World Programming Ltd [2010] EWHC 1829 (Ch) (23 July 2010), noted 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. Nevertheless, 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.
[Originally published on The IPKat on 30 January 2020] 

BREAKING: CJEU in Sky v SkyKick rules that a trade mark cannot be declared wholly or partially invalid on grounds of lack of clarity and precision of its specifications

It just a few months ago that this blog reported on the Opinion of Advocate General Tanchev in the important Sky v SkyKick, C-371/18 case.

A referral from the High Court of Justice of England and Wales made by Arnold J (as he then was), the Sky case is probably the most important referral in the EU trade mark field made over the past few years. It asked the Court of Justice of the European Union (CJEU) to clarify:
  • Whether an EU or national trade mark may be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark;
  • In case that answer to the question above is in the affirmative, whether a term like 'computer software' is too general to be considered 'sufficiently clear and precise';
  • Whether it is bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services;
  • If so, whether it is possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services;
  • Whether section 32(3) of the UK Trade Marks Act 1994 is compatible with the EU Trade Mark Directive and its predecessors.
This morning, the CJEU handed down its judgment, ruling as follows:
  • A EU or national trade mark cannot be declared wholly or partially invalid on the ground that terms used to designate the goods and services in respect of which that trade mark was registered lack clarity and precision;
  • A trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark
  • When the absence of the intention to use the trade mark in accordance with the essential functions of a trade mark concerns only certain goods or services referred to in the application for registration, that application constitutes bad faith only in so far as it relates to those goods or services
  • EU law does not preclude a provision of national law under which an applicant for registration of a trade mark must state that the trade mark is being used in relation to the goods and services in relation to which it is sought to register the trade mark, or that he or she has a bona fide intention that it should be so used, in so far as the infringement of such an obligation does not constitute, in itself, a ground for invalidity of a trade mark already registered.
A more detailed analysis will follow shortly.

[Originally published on The IPKat on 29 January 2020]

Wednesday, 1 January 2020

A Kat's 2019 Copyright Awards

The end of 2019 is upon us - a new year (and decade) of IP developments is fast approaching. 

Although the IPKat Team is getting some deserved rest these days (it is well-known that Kats spend most of their time asleep), it is again the time of The IPKat's Copyright Awards!

As it has become tradition, a few (honorary = no cash) prizes are awarded each and every year in a number of categories. For previous editions, see hereherehereherehere, and here.

So, here we go!

Most important copyright decision

Cofemel: not just a judgment 
about jeans and T-shirts
As it has become the norm in the field of copyright, not only have courts become pivotal in defining the scope of protection but, in certain topical instances,  they have also contributed to shaping materially the very foundations of protection. 

In the case of the EU, the latter has been surely the case of the Court of Justice of the European Union (CJEU). Besides being my personal favourite court (and that is no secret), over the past few years the CJEU has become a cornerstone of EU copyright harmonization, and has defined such things as the scope of economic rights, exceptions and limitations, the residual freedom of Member States in areas harmonized at the EU level [see here for an article written a few years ago regarding Member States’ own freedom in the field of copyright]

Recently, the CJEU has been asked by a few national courts questions that are even more basic and – because of this – probably more crucial than the above. They can be summed up as follows: what is needed for copyright protection to arise in the first place?

Whilst a question like this is one that is posed in the first class of any copyright course, answering it has not proved straightforward at all (take note, students!).

Ten years ago, the CJEU issued its seminal decision in Infopaq [Kat-anniversary post here], in which it de fact harmonized the standard of originality beyond what EU legislature had done in relation to software, databases and photographs. 

Since then, the Court has further refined the concept of originality and provided hints that, indeed, the implications of this string of cases would go beyond the key concept of what is ‘original’ [see here for an article that I wrote a few years ago regarding the implications of CJEU case law for subject matter harmonization]. Recently, that this was indeed the case became apparent in Levola Hengelo [Katposts here], in which the CJEU defined the concept of ‘work’. 

This year, the overall process which began with Infopaq has culminated in the judgment in Cofemel [Katpost here]. The CJEU clarified that, indeed, for copyright protection to arise what is only required is (1) a work which (2) is sufficiently original. The judgment, which is not surprising, has immediate implications for copyright protection of designs, but goes well beyond that. 

It is the IPKat copyright decision of the year because, indeed, it makes it apparent once and - hopefully - for all how profound the harmonization carried by the CJEU has been.

Most important piece of legislation

There is no doubt here: it is the Directive 2017/790 on copyright in the Digital Single Market (DSM Directive) [Katposts here], which became law in mid-2019. Now, EU Member States have time until June 2021 to transpose it into their own legal systems. 

As far as the UK is concerned, the big question mark is not whether this soon to be former EU Member State will have to transpose it (under the current Brexit timeframe, it appears that such obligation will not exist), but whether it would wish to do so or, in any case, adopt domestic legislation that mirrors the content of the EU directive.

The Directive is important in that it shows: first, how controversial copyright policy- and law-making can be; second, how difficult it is to reconcile conflicting interests (including, of course business interests); and, finally, how copyright legislation can have an impact on very different fields and sectors.

The text of the directive is not always crystal-clear and this means that the story around it is far from over. It seems unavoidable that uncertainties will arise, in the first place, at the national transposition level (some EU Member States have already begun this process) and then at the application phase. Courts, including the CJEU, will likely be busy for years to come. 

Copyright person of the year

Lord Justice Arnold
This year’s copyright person is someone who: (1) has been pivotal to shaping – inter alia - domestic copyright law; (2) has had a profound and fruitful dialogue with the CJEU on a range of different IP issues over the years; and (3) has influenced other countries’ courts and approaches, particularly with regard to online enforcement.

It is Sir Richard Arnold, who – this year – has been elevated from the High Court to the Court of Appeal of England and Wales, thus becoming Lord Justice Arnold [Katpost here].

Since Newzbin 2 [the first copyright blocking injunction in the UK: Katpost herein 2011, Lord Justice Arnold has shaped the UK IP enforcement landscape. He probably holds the personal record as the individual judge who has referred the highest number of cases to the CJEU (not just in the field of copyright), and his decisions have been studied and have had a profound impact in other jurisdictions, both EU and non-EU ones.

The IPKat wishes to celebrate his much-deserved elevation and looks forward to reading and commenting on future judgments. 

Most important unresolved issue

The B-word is of course something that will continue shaping the IP debate in 2020. Whilst copyright is likely to be less affected - at least immediately - than registered rights, the departure of the UK from the EU and the future relationship between them will have fundamental implications also for this IP right.

Seen from an EU IP perspective, one of the biggest and yet least discussed issues will be the fact that UK courts will likely lose their power to refer cases to the CJEU (see currently s6 of the Withdrawal Act 2018). This will be a loss for all of the EU IP community, considering how attentive, active and engaged the courts of this country have been. 

Most important policy issue for 2020

At the EU level, it seems a fact that a discussion of intermediaries’ safe harbours is coming in 2020, under the umbrella of the Digital Services Act.

Although Article 17 of the DSM Directive already clarifies that online content sharing service providers that communicate to the public are ineligible for the hosting safe harbour in Article 14 of the E-commerce Directive in relation to copyright content, a broader discussion about safe harbours is now part of the conversation, at both the policy and judicial levels [in trade mark law, see the recent and very interesting Opinion of Advocate General Campos in Coty]

Something, ie safe harbours for online intermediaries, that appeared like an untouchable cornerstone of internet law is now increasingly being questioned and, clearly, the outcome of the debate will have profound implications also for copyright.

Most important copyright-protected work

Like last year, also this year we choose something in the artistic field: it is Maurizio Cattelan’s Comedian. A banana duct-taped to a wall, it was on sale in Miami for $120,000.

‘Hungry Artist’ even ate the original banana, but Cattelan’s representatives at the Galerie Perrotin explained that the artwork had not been destroyed since owners are actually allowed to replace the original banana. 

This put an end to discussions that some copyright lawyers had already started regarding potential violation of Cattelan’s VARA rights, Italian moral rights, etc, but did not conclude those concerning whether his Comedian is expressive enough to be a protectable work (is it just a great idea or is it an actual work?) ….

Cattelan is a volcanic artist, and his latest creation reminds us once and for all why we love copyright: brilliant material to work with, endless discussions, provocative stunts, and ... lots of fun.

Happy 2020 and, now, to the next decade of all-things-copyright!

[Originally published on The IPKat on 31 December 2019]

Monday, 23 December 2019

Paris Court of Appeal confirms that Koons’s 'Naked' sculpture infringes copyright in 'Enfants' photograph, rejecting freedom of the arts and parody defences

Last week, the Paris Court Appeal ruled (decision No 152/2019) in favour of the estate of late French photographer Jean-François Bauret in proceedings brought against, inter alia, US artist Jeff Koons (an artist who, as readers will know, has been sued a few times for copyright infringement: see, eg, herehere, and here). 

The action related to the unauthorized reproduction of a photograph (Bauret’s ‘Enfants’, shown below on the left hand side) in a sculpture (Koons's ‘Naked’, below on the right hand side). 

'Enfants' (L) and 'Naked' (R)
The defendants had advanced a number of arguments, including that: 
  1. ‘Enfants’ is not original; 
  2. even if it was, ‘Naked’, would not incorporate any original elements thereof; 
  3. even if prima facie infringement was established, freedom of the arts and parody would prevail over copyright.
The court rejected them all. Let’s see what happened in greater detail. 


In 1970, Bauret realized a black-and-white photograph titled ‘Enfants’. No print of the photograph was sold, but in 1975 the photographer authorized the making of postcards carrying the image of the work. 

In 2014, the Bauret estate found out that Jeff Koons had realized a porcelain sculpture, ‘Naked’, which was similar to the ‘Enfants’ photograph. Koons’s work had been made in 1988 in 4 copies as part of the Banality series, a readymade collection of artworks that contains a mix of pop art and kitsch. 

The sculpture was never exhibited in France, though in 2015 it should have been on display in an exhibition at the Centre Pompidou in Paris. 

The Bauret estate sent a warning letter to both Koons and the museum. For reasons linked to damage during transportation, ‘Naked’ was not included in the exhibition in the end. The museum subsequently also removed the image of the sculpture from the exhibition catalogue. 

A lawsuit followed and, in 2017, the TGI Paris partly ruled in favour of the photographer’s estate. Both parties appealed. 

Aside from issues concerning the personal liability of Koons, the judgment is particularly interesting as far as substantive issues of copyright subsistence and infringement are concerned. 

Originality of ‘Enfants’

As regards the protectability of the photograph, the defendants had submitted that Bauret had failed to express his own personal touch. The choices made were not sufficient for the work to be considered his own intellectual creation, in that the photograph represented a ‘spontaneous pose’ assumed by the two children and the estate had failed to demonstrated where the originality of such creation would lie. 

The court disagreed, and held that Bauret’s work revealed a new concept of nude, which is raw and devoid of any sexual connotation, and such as to disclose the personality of the author. Among other things, the particular use of the light was meant to confer some ‘sculptural’ character to the photograph and the overall composition (including the pose and expression of the children) served to add a ‘geometric’ dimension to the work. According to the court, the latter in particular served to dispel any idea that the pose of the children would be spontaneous: rather, they had been directed by the photographer to assume a certain pose and expression. 

In light of all this, like at first instance, the photograph was found to be original and protectable. 

Prima facie infringement

The claimants pointed to the several similarities between the photograph and challenged the relevance of the argument, made by the defendants, that the different character (real vs fictional) and message (children’s innocence vs Adam & Eve) conveyed by, respectively, the photograph and the sculpture would exclude the recognizability of the former in the latter (it should be noted, however, that Koons never denied that he had had access to the photograph). 

The defendants submitted that the sculpture had not reproduced anything that would confer originality to the photograph, and highlighted the differences between these two, including the colour, dimensions (a 2D photo vs a 3D sculpture) and size ('Naked''s height is 1m), as well as other differences (hair colour, navel, children’s gaze, position of the hands, background, elements in the composition). 

The court disagreed, and found that the sculpture had actually incorporated the “essential features” of the photograph, which constituted its original character. 


Copyright and freedom of expression 

The court also considered an important point: to what extent can freedom of expression – including freedom of artistic expression – restrict or even trump copyright protection? 

To answer this, the court followed a similar approach to the one indicated (correctly) by the Court of Justice of the European Union (CJEU) in its recent Grand Chamber rulings in Funke MedienSpiegel Online, and Pelham [Katposts herehere,  and herenotably that only available copyright exceptions and limitations can be relied upon in an infringement action, and that it is not possible to invoke directly fundamental rights and freedoms or a ‘fair use’ of a work to trump the application of copyright's exclusive rights. 

In this sense, like the CJEU, the Paris court confirmed that the balance between different rights and freedoms is internal to the copyright system, and has been undertaken by legislature when envisaging available copyright exceptions and limitations. 

In all this, the court also considered that the unlicensed use of the photograph by Koons was not “necessary” for the exercise of his own freedom of expression. 


The defendant had also raised an argument that the use at issue could qualify as parody. The court referred to the 2014 CJEU Deckmyn decision [Katposts hereand the requirements that, for a work to be considered a parody, first, it must evoke an existing work while being noticeably different from it and, second, it must constitute an expression of humour or mockery. 

The court considered that neither requirement would be fulfilled in the case at issue. 

'Chats', by Merpel

The decision appears correct from a substantial standpoint and is also compliant with case law of the CJEU. The court correctly applied the Painer test (though it did not expressly refer to that decision) for determining originality of a photograph, by considering the ‘free and creative choices’ that the photographer had made in the pre-shooting phase, when taking the photograph, and in the post-production phase.

It also appropriately applied (again, without mentioning them expressly), the CJEU holdings in Funke MedienSpiegel Online, and Pelham

In all this, the most interesting aspect of the decision probably relates to the application of the CJEU Deckmyn decision. As mentioned, one of the characteristics of a parody is that it must constitute an expression of humour or mockery. The CJEU did not clarify whether this requirement is fulfilled when an alleged parody pursues a humorous intent, or whether it is also required that it achieves it (as the Advocate General had suggested in his Opinion). 

If the test was ‘intent’, then the exception under Article 5(3)(k) of the InfoSoc Directive would be broader than if a humorous ‘effect’ was also required. Above all, requiring just intent would be better compliant with the need to safeguard parody as a means to exercise freedom of expression. As I discus at greater length here, the difficulties that might arise should a humorous effect be required, lead to the conclusion the correct test under Deckmyn is that of a humorous ‘intent’. 

In its decision the Paris Court of Appeal suggested that both intent and effect might fall within the concept of ‘expression of humour or mockery’ when it stated that: “La parodie doit aussi présenter un caractère humoristique, faire oeuvre de raillerie ou provoquer le rire” (“The parody must also have a humorous character, make fun of or provoke laughter”). So, an acceptable parody might perhaps be both one that makes fun without necessarily provoking laughter and one that provokes laughter without necessarily making fun. This might be an interesting take worth elaborating further in future case law. In all this, however, neither was the case of ‘Naked’.

[The IPKat thanks Stéphanie Legrand, who represented the Bauret estate in the proceedings, for kindly providing a copy of the decision of the Paris Court of Appeal]

[Originally published on The IPKat on 23 December 2019]

Thursday, 19 December 2019

BREAKING: CJEU rules that the provision of ebooks is an act of communication to the public (so there is NO digital exhaustion under the InfoSoc Directive)

Does EU copyright law allow the establishment of second-hand markets for subject matter (other
than software) in digital format? 

This is the question that the Court of Justice of the European Union (CJEU) substantially answered this morning when it handed down its much-awaited judgment [not yet available on the Curia website] in Tom Kabinet, C-263/18.

The answer of the Court is that there is NO such thing as 'digital exhaustion' of the right of distribution under Article 4 of the InfoSoc Directive. More specifically, the provision of ebooks falls within the scope of the right of communication to the public, in relation to which there is no possibility of exhaustion (see Article 3(3)).

The decision substantially follows the Opinion that Advocate General (AG) Szpunar issued a little over 3 months ago [Katpost here].

As explained in the official press release:
The Court found that the supply by downloading, for permanent use, of an e-book is not covered by the right of ‘distribution to the public’ provided for by Article 4(1) of Directive 2001/29, but that it is covered by the right of ‘communication to the public’ provided for in Article 3(1) of that directive, in which case exhaustion is excluded under paragraph 3 of that article
In support of that finding, the Court concluded in particular from the World Intellectual Property Organisation (WIPO) Copyright Treaty underlying that directive, and from the travaux préparatoires for the directive, that the EU legislature had intended that rule of exhaustion to be reserved for the distribution of tangible objects, such as books on a material medium. By contrast, the application of that rule of exhaustion to e-books would be likely to affect the interests of rightholders in obtaining appropriate reward much more than in the case of books on a material medium, since dematerialised digital copies of e-books do not deteriorate with use and are, therefore, perfect substitutes for new copies on any second-hand market. 
As regards more specifically the concept of ‘communication to the public’, the Court indicated that this should be understood in a broad sense covering all communication to the public not present at the place where the communication originates and, thus, any such transmission or retransmission of a work to the public by wire or wireless means. That concept involves two cumulative criteria, namely an act of communication of a work and the communication of that work to a public. 
As regards the first criterion, it is apparent from the explanatory memorandum in the proposal for Directive 2001/29 that ‘the critical act is the “making available of the work to the public”, thus the offering [of] a work on a publicly accessible site, which precedes the stage of its actual “on-demand transmission”’, and that ‘it is not relevant whether any person actually has retrieved it or not’. Thus, according to the Court, the making available of the works concerned to anyone who is registered with the reading club’s website must be considered a ‘communication’ of a work, irrespective of whether the person concerned avails himself or herself of that opportunity by actually retrieving the e-book from that website. 
So far as concerns the second criterion, account should be taken not only of the number of persons able to access the same work at the same time, but also of how many of them may access it in succession. In the present case, according to the Court, the number of persons who may have access, at the same time or in succession, to the same work via the reading club’s platform is substantial. Consequently, subject to verification by the referring court taking into account all the relevant information, the work in question must be regarded as being communicated to a public. 
The Court also held that, in order to be categorised as a communication to the public, a protected work must be communicated using specific technical means, different from those previously used or, failing that, to a new public, that is to say, to a public that was not already taken into account by the copyright holders when they authorised the initial communication of their work to the public. In the present case, since the making available of an e-book is generally accompanied by a user licence authorising the user who has downloaded the e-book concerned only to read that e-book from his or her own equipment, it must be held that a communication such as that effected by Tom Kabinet is made to a public that was not already taken into account by the copyright holders and, therefore, to a new public.
Analogically exhausted Kat

Back in 2012, the CJEU issued its UsedSoft judgment, ruling that it is possible to resell lawful copies of computer programs downloaded from the internet, if the contractual operation at issue is tantamount to a sale (it was formally a 'licence' in the background national proceedings, though with the characteristics of a 'sale').

In the aftermath of UsedSoft - which, in itself, appeared a rather bold decision on the side of the Court - a question arose whether the same conclusion could be reached for other copyright subject matter in digital format, including e-books, audiobooks, music and audiovisual files, etc. That is: works protected under the InfoSoc Directive, rather than the Software Directive (the interpretation of which was at issue in UsedSoft).

In 2014, the Court of Appeal of Hamm (Germany) excluded that the right of distribution under the InfoSoc Directive, as transposed into German law, could be exhausted in the case of audiobooks. 

Taking a different view, in that same year the District Court of Amsterdam ruled at first instance in Tom Kabinet and concluded that the right of distribution would be exhausted following the first lawful sale of copies of e-books. The decision of the Amsterdam court was appealed to the Court of The Hague. This court held that the provider of second-hand e-books, Tom Kabinet, would not be liable for unauthorized acts of communication to the public under the Dutch equivalent of Article 3(1) of the InfoSoc Directive. However, it is unclear whether it could invoke the digital exhaustion of the right of distribution in relation to its e-book trade. Hence, the court in The Hague decided to seek guidance from the CJEU.

In my view, today's CJEU decision is correct from a legal standpoint for a number of reasons.

First, Recital 28 in the preamble to the InfoSoc Directive appears to link the right within Article 4 of the InfoSoc Directive to the ‘right to control distribution of the work incorporated in a tangible article’ (emphasis added). 

Second, Recital 29 in the preamble to the same directive clarifies that ‘[t]he question of exhaustion does not arise in the case of services and on-line services in particular’. In relation to this recital, in its follow-up to the 1995 Green Paper, the European Commission noted how ‘a large consensus exists that no exhaustion of rights occurs in respect of works and other subject matter exploited on-line, as this qualifies as a service.’ 

Third, in relation to the right of communication/making available to the public, Article 3(3) of the InfoSoc Directive rules out that this right be subject to exhaustion. 

Fourth, it should be recalled once again that, by adopting the InfoSoc Directive, EU legislature transposed into the EU legal order the WIPO Internet Treaties. The agreed statements to Article 6 of the WIPO Copyright Treaty provide that the expressions ‘copies’ and ‘original and copies’ in the context of the right of distribution exclusively refer to fixed copies that may be put into circulation as tangible objects.

Finally, since its early case law, the CJEU has been careful in drawing a distinction between the right of distribution, which would be subject to exhaustion, and other rights for which no exhaustion would occur. For instance, in Coditel, the Court did not find that requiring payment of a fee for each public performance of a film would be contrary to EU law. A similar distinction between the consequences of the first sale of a copyright work or a copy thereof for the exhaustion of the right of distribution and other economic rights was also made in Warner Brothers and Metronome Video and Tournier

As I discuss at greater length in Copyright and the Court of Justice of the European Union, some indirect guidance re the lack of digital exhaustion under the InfoSoc Directive can be also drawn from more recent case law, including Art & Allposters International [Katposts here] and Vereniging Openbare Bibliotheken [Katposts here], as well as some tax cases. Indeed, in Commission v France [Katpost here], the CJEU considered that ebooks may be classified as services, rather than goods under the VAT Directive. For the purpose of Article 98(2) of that directive, an ebook is not a good, but rather an ‘electronically supplied service’. This may suggest that, indeed, the provision of an ebook qualifies as an act of communication to the public, rather than as an act of distribution.

A more detailed analysis will follow after the text of the judgment becomes available.

[Originally published on The IPKat on 19 December 2019]