Friday, 18 January 2019

EUIPO cancels McDonald's 'BIG MAC' trade mark due to lack of genuine use

Can the word EU trade mark (EUTM) 'BIG MAC' owned by McDonald's be revoked for non-use? The answer is 'yes'.

The EUIPO Cancellation Division provided it further to an application for revocation filed by Irish company Supermac (Cancellation No 14 788 C).

What happened?

McDonald's is (or, rather, was) the owner of the word mark 'BIG MAC' for the following goods and services in Classes 29, 30 and 42 of the Nice Classification:


Supermac filed an application under Article 58(1)(a) of the EU Trade Mark Regulation, requesting the revocation - in its entirety - of 'BIG MAC', on grounds that the mark would have not been put to genuine use for a continuous period of 5 years.

In response to the application, McDonald's submitted evidence that 'BIC MAC' would be in use in a number of Member States, including in advertising and on the packaging of relevant products. 

The applicant noted that the evidence submitted by McDonald's would prove genuine use for sandwiches, but not also in relation to the other goods and services for which the registration was obtained. A such, the application was to be upheld.

McDonald's replied noting that the mark was genuinely used in Germany, France, and the UK, and that this would prove genuine use in the EU. Furthermore, use of 'BIG MAC' in relation to sandwiches would also mean use of the trade mark in relation to its ingredients.

The decision

When it comes to revocation proceedings on grounds of non-use, the burden of proof does lie with the trade mark owner, not the applicant. The latter cannot be in fact requested to prove a negative fact, that is non-use of the former's registered sign.

McDonald's submitted the following evidence that the Cancellation Division:
  • 3 affidavits signed by McDonald's representatives detailing sales figures for the period 2011-2016;
  • Brochures and printouts of advertising posters, dated between 2011 and 2016;
  • Printouts from a number of McDonald's websites, dated between 7/1/2014 and 3/10/2016;
  • A printout from a Wikipedia entry (in English) providing information on McDonald's Big Mac.
Proof of 'BIG MAC's genuine use
within The IPKat team
The Cancellation Division deemed this evidence insufficient to prove genuine use during the relevant period of time (11/4/2012 - 10/4/2017). Although all evidence submitted must be appreciated as a whole and entails a degree of interdependence between the relevant factors (time, place, extent and nature of use), in this case the trade mark proprietor had failed to provide evidence that would prove genuine use throughout that period of time. 

Among other things, McDonald's had failed to provide third-party evidence and the brochures did not provide any details regarding how they were circulated and whether they led to any actual or potential purchases. As regards the Wikipedia entry, the Cancellation Division was not impressed by that piece of evidence either, noting that anyone can amend Wikipedia entries. As such, it would have been necessary to have this piece of evidence supported by "other pieces of independent concrete evidence".

The EUIPO concluded that: 
Even if the goods were offered for sale, there is no data about how long the products were offered on the given web page or in other ways, and there is no information of any actual sales taking place or any potential and relevant consumers being engaged, either through an offer, or through a sale. Finally, as far as the relevant services are considered, there is no single piece of evidence that refers to any of the registered services being offered under the EUTM. 
It follows, that an overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used during the relevant period for the relevant goods or services
Comment

The outcome of these proceedings might appear - prima facie - surprising, also considering the notoriety of McDonald's Big Mac. However, it is a useful reminder that, even if one owns a well-known trade mark that might have been clearly in use during the relevant period, one should not overlook the importance of the evidence - and its quality - that needs to be provided to prove such genuine use in the event of an application for revocation.

From reading the decision, it appears that Supermac somewhat also made the point that 'BIG MAC' would be (or was) a trade mark with over-broad class specifications. Also depending on how the Court of Justice of the European Union decides in the pending Sky/SkyKick referral, this might be a further point trade mark owners - whether current or potential - should pay significant attention to.    

[Originally published on The IPKat on 18 January 2019]

Saturday, 12 January 2019

AG Szpunar advises CJEU to rule that quotation exception is not limitless and that there is no fair use in the EU

Volker Beck 
(photo by Mathias Schindler
CC-BY-SA)
After the late 2018 Opinions in Funke Medien [here] and Pelham [here], yesterday Advocate General Maciej (AG) Szpunar - IPKat's copyright person of the year 2018 - issued his Opinion in Spiegel Online, C-516/17 [background here], the third German referral asking the Court of Justice of the European Union (CJEU) to weigh in on, among other things, the interplay between copyright and other fundamental rights.

The Opinion, which is not yet available in English, advises the CJEU to rule that, among other things:
  1. The exception within Article 5(3)(d) of the InfoSoc Directive requires one to consider the purpose of the quotation at issue, and 
  2. Fundamental rights like freedom of expression do not allow EU Member States to go beyond the catalogue of exceptions in Article 5 therein to envisage new exceptions or even introduce a general fair use clause.
Background

As readers might remember, this referral originated in the context of litigation initiated by a German politician (Volker Beckwho, in 1988, authored a work about “sexual acts of adults with children”. The publisher apparently edited the manuscript without the author's consent and the resulting publication was, according to the author, a distortion of his views.

The original manuscript was found in an archive in 2013, and the author submitted it to several newspapers to demonstrate what he had actually written. Although he did not authorize publication of the manuscript or extracts thereof, he consented to newspapers linking to a statement he published on his own website.

The publisher also released a press report on its own portal, Spiegel Online, to support its view that the original manuscripts had not been distorted. To this end, the publisher included a link that allowed users to download both the original manuscript and the resulting publication. No link to the author’s website was provided.

The politician argued successfully at both first instance and on appeal that all this would amount to copyright infringement.

The case is currently pending before Germany's Federal Court of Justice, which has stayed the proceedings and asked the CJEU to clarify, among other things, how far the 'quotation' exception can go and what discretion EU Member States enjoy when transposing and applying relevant EU copyright directives.

The AG Opinion

AG Szpunar started by noting the relevance of freedom of expression (which has been recognized as a fundamental freedom since the 1789 Declaration of the Rights of the Citizen) and freedom of the press in a democratic society. However, the drafters of the 1789 Declaration itself were also aware of how freedom of expression could limit third-party rights and freedoms. As such, Article 4 therein provides that
Liberty consists in being able to do anything that does not harm others: thus, the exercise of the natural rights of every man has no bounds other than those that ensure to the other members of society the enjoyment of these same rights. These bounds may be determined only by Law.
Freedom of EU Member States

This said, the AG tackled the question of Member States' discretion when transposing relevant exceptions within Article 5 of the InfoSoc Directive into their own laws, and noted how this is a similar issue to the one at stake in Pelham.

Like in his Opinion in that case, AG Szpunar reiterated that - while EU Member States are free to determine the means for transposing relevant EU directives into their own laws - they are bound to achieve the objectives of those directives. In the case of the InfoSoc Directive, these include providing a 'high level of protection' of economic rights.

Article 5(3)(c)

The referral also includes a question concerning the exception within Article 5(3)(c) of the InfoSoc Directive, in particular whether the making available to the public of copyright works on the web portal of a press undertaking does not fall within its scope because it was possible and reasonable for the press undertaking to obtain the author’s consent before making his works available to the public (this is the approach under the German news reporting exception).

According to the AG, such a limitation of the exception would not be problematic from an EU law standpoint because it is Article 5(3)(c) itself that limits reproductions 'to the extent justified by the informatory purpose'. Accordingly [the translation from Italian is mine]

It is my view that such limitation does not only concern the extent of the authorized reproduction and communication, but also those situations in which the exception applies, that is those in which the author of the report could not be reasonably required to request the authorization of the author of the work reproduced and communicated in the context of said reporting. As such, in my view, a limitation of the exception at issue like the one under German law, not only does not contravene the relevant provision in Directive 2001/29, but is actually in line with the nature and objective of said exception. 

According to the AG, the reason why this exception would not apply in the present case is different, and lies in the fact that the EU provision should be read in light of Article 10bis(2) of the Berne Convention. This provision states that:
It shall also be a matter for legislation in the countries of the Union to determine the conditions under which, for the purpose of reporting current events by means of photography, cinematography, broadcasting or communication to the public by wire, literary or artistic works seen or heard in the course of the event may, to the extent justified by the informatory purpose, be reproduced and made available to the public. 
The exception is limited to 'works seen or heard in the course of the event' subject to the reporting. This is not the case of the background proceedings, as the work reproduced is a literary work which one needs to read, rather than just view or hear.

Kat quotation
Article 5(3)(d)

This said, the key issue in this case relates to the scope of the quotation exception. The AG noted that:
  • The exception in principle is not limited to certain types of work only, and 
  • The methods for including a qutotation into one's own work and identifying the quotation might differ depending on the situation. Also the provision of a link might be appropriate for the sake of making a quotation.
The problem is not, however, how that quotation may be realized but - rather - the extent of what may be quoted. In the present case what the defendant reproduced is the entirety of the claimant's work.

Although the CJEU appears to have allowed the possibility of quoting a photographic work in its entirety (in Painer), it has also spoken of 'reproduction of extracts' (Painer, para 135). The Berne Convention originally spoke of short quotations, while the current text states that the extent of a quotation must not exceed what is justified by the purpose. A similar formulation can be found in Article 5(3)(d). It follows that a quotation may be also of a work in its entirety, insofar as the aim pursued justifies it.

In any event, a quotation must not compete with the original work. Holding otherwise would allow one to elude the economic rights of an author over their work, rendering them devoid of any content thereof:
the quotation exception may not be applied in situations in which, lacking the authorization of the author, a work is made available to the public on the internet, in its entirety, in the form of an accessible and autonomously downloadable file.
In addition, allowing a quotation that was a substitute for the original would also be contrary to the three-step test in Article 5(5) of the InfoSoc Directive and Article 9(2) of the Berne Convention, notably the requirement that an exception does not conflict - whether actually or even just potentially - with a normal exploitation of the work

Fundamental rights: no fair use in Europe


Having excluded that the exceptions within Article5(3)(c) and (d) would apply, the AG considered whether the use made by the defendant of the claimant's work might be nonetheless justified in light of Article 11 of the Charter of Fundamental Rights of the EU (freedom of expression/information and freedom of the press). This is also a question at issue in Funke Medien and Pelham.

In line with his Opinions in those cases, the AG proposed to rule that normally it is necessary to respect the choices made by legislature, considering that copyright already contains limitation and exceptions aimed at reconciling the exclusive rights of authors with third-party freedoms and rights, including freedom of expression/information.

Holding that it might be possible to supplement the exceptions and limitations provided for in Article 5 of the InfoSoc Directive with further exceptions and limitations would also run contrary to the harmonization objectives of the EU. Above all:
such possiblity would be tantatmount to introducing into EU law some sort of "fair use clause", in that basically any use of a work that infringes copyright could rely, in one way or another, on freedom of expression. This way, the protection actually available to the rights of authors would depend on the sensitivity of the judges in each Member State towards freedom of expression, thus transforming any harmonization effort into an unattainable goal.
Comment

The Opinion of AG Szpunar might appear restrictive to some - especially with regard to the scope of quotation and the take on fair use - but it is not at all surprising, also considering earlier CJEU case law and the wording of the InfoSoc Directive.

That quotation is not borderless appears correct, considering the wording of the Berne Convention and the InfoSoc Directive, as well as the three-step test. This said, consideration of the circumstances at issue is key: the AG was correct in reiterating that a quotation might be also of a work as a whole, but whether that might be the case depends on the purpose of said quotation. 

Finally, the fundamental rights assessment also appears correct and - even if the Opinion does not mention it, it is in line with the case of law of the European Court of Human Rights which has tackled the interplay between copyright and freedom of expression, eg Ashby Donald [here]The Pirate Bay [here] (see also here). 

Let's now see what the CJEU rules. One will have an idea of the fate of Funke MedienPelham and Spiegel Online as soon as the first of these three decisions is out.

[Originally published on The IPKat on 11 January 2019]

You can't buy love ... nor can you prevent others from using it in their trade marks

The Cartier's LOVE trade mark
"Can anyone have a monopoly over love?"

This is an interesting and deep question ... and perhaps even more so in a trade mark context, as the Singapore IP Office recently discovered. 

In a decision issued on 20 December last, this IP Office had to consider this very question in the context of an opposition filed by Cartier: 
More precisely, can a trader prevent other traders from registering a trade mark which includes the word “LOVE” for use on jewellery? 
Cartier filed an opposition, relying on its earlier 'LOVE' figurative trade mark (in which the O is replaced with the device of Cartier's iconic slotted screw head e the E is in lower case) for, inter alia, jewellery. The opposition related to MoneyMax Jewellery's application to register the signs below as Singapore trade marks for jewellery in Class 14, and retail and other services relating to jewellery in Class 35:
The first Cartier 'LOVE' piece was designed in 1969: it is the famous bracelet that can only be removed using a gold screwdriver that is sold together with the bracelet. A “modern love handcuffs”, it is intended to symbolize the attachment between two lovers. 

The Hearing Officer noted that Cartier is not the only owner of a 'LOVE' trade mark. In dismissing the opposition, the decision also stresses how the word 'love' is commonly used by jewellery traders and should not be monopolized by any trader. 

The Hearing Officer relied extensively on the judgment in Love & Co Pte Ltd v The Carat Club Pte Ltd [2009] 1 SLR(R) 561. In that case the Singapore High Court invalidated the defendant’s plain word mark 'LOVE' which was registered in respect of jewellery, precious stones and precious metals in Class 14, on grounds that it both lacked distinctive character and was an indication which may serve to designate the intended purpose of jewellery (that is, showing love).

Let's see a bit more in detail how the Hearing Officer reasoned.

Cartier's LOVE
bracelet ...
Comparison of the signs

Considering the relative grounds within section 8 of the Singapore Trade Marks Act, the Hearing Officer found that it was first necessary to identify which elements of the opponent's sign would be distinctive. 

Certainly this would not be the case of the word 'LOVE' as such in relation to jewellery. Rather, the distinctive elements of the sign are the screw-head device and possibly the use of a small letter 'e'.

Neither of these elements are present in the applicant's sign.

Hence, the signs should be considered dissimilar. 

Distinctiveness of the applicant's sign

Cartier also attempted to rely on the High Court's Love decision to argue that the applicant's sign should not be registered, it being devoid of distinctive character.

... and an IPKat-approved alternative
for lovers on a budget
The Hearing Officer rejected this argument, and held that the combination of the Chinese words (which mean 'love gold'), enclosed in a rectangular device, with the words 'LOVE' and 'GOLD', and the arrangement of each of these features as depicted in the application, render the sign as a whole distinctive [really?].

Conclusion

The Hearing Officer concluded as follows:
A bracelet may represent a metaphorical shackle of a person’s loved one. The word “LOVE”, however, should be free for traders to incorporate into their trade marks for jewellery.
In other words: you might need the gold screwdriver to free your beloved from their Cartier bracelet ... but freeing 'LOVE' from trade mark protection (at least for jewellery) might be easier.

[Originally published on The IPKat on 5 January 2019]

Saturday, 22 December 2018

A Kat's 2018 Copyright Awards

Kat Awards!
The end of 2018 is fast approaching and, if you've not been stranded at Gatwick Airport due to the drone chaos (I have), you might have already begun your Holidays. 

As it has become sort of a tradition for this blog, also this year The IPKat is conferring a number of (symbolic) copyright prizes. For previous editions, see herehere, here, hereand here.

2018 has been an eventful copyright year, with Europe playing a key role on the global arena, also due to the ever-heated discussions concerning the EU copyright reform, most notably with regard to the proposal for a Directive on copyright in the Digital Single Market [Katposts here]. As readers know, the proposal is now approaching the end of its legislative iter, having both the Council and the European Parliament adopted their own versions of the directive and with trilogue negotiations currently ongoing. The final text of the directive will possibly see the light sometime in the first quarter of 2019.

In addition to this, the European copyright scene has been also significant due to judicial developments, with the Court of Justice of the European Union (CJEU) deciding or being referred interesting and important cases, ranging from the interplay between copyright and fundamental rights (Afghanistan PapersMetall auf MetallSpiegel Online) to the issue of digital exhaustion under the InfoSoc Directive, from sensory copyright to the direct liability of platforms like YouTube for the making available of user-uploaded content.

In all this, uncertainties underlying the future of IP rights, including copyright, post-Brexit remain.

On the topic of enforcement, it is relevant to notice how the approach to online issues has been developing, also due to courts in different countries (eg, UKItalySingapore) considering new forms of blocking orders. In this sense, also in 2018 it is apparent that the involvement of intermediaries in the online copyright enforcement process has remained central. 

As far as the UK is concerned, a potentially significant development relates to cost allocation in intermediary injunctions: traditionally the rule in copyright has been that, while rightholders bear the costs of application for an injunction, intermediaries have to cover the costs of implementation thereof. Following the UK Supreme Court's decision in Cartier last June - which related to injunctions under s37(1) of the Senior Courts Act, that is a different legislative basis for intermediary injunctions from the one used in copyright (s97A CDPA) - it will be interesting to see how far the 'new' rule on cost allocation (rightholders to cover all costs) goes and whether it would lead to a rethinking of the overall approach to intermediary injunctions, also in copyright cases.

Anyway, without further ado, here are The IPKat 2018 copyright prizes:


Most important copyright decision

The final chapter in the ReDigi saga in the US, concerning the issue of digital first sale, is surely significant, but in my view the most important judgment of the year is the CJEU decision in Levola Hengelo, C-310/17 [here]


Despite its seemingly odd subject matter (the taste of a spreadable cheese), the issues referred to the CJEU were not odd at all, since they relate to the very core of what copyright protects, that is 'works'. 

In its decision the CJEU touched upon a number of issues, and most importantly (yet unsurprisingly) it held that the notion of 'work' is an autonomous concept of EU, which must not be interpreted having regard to Member States' own laws. The Levola Hengelo decision raises a number of questions:
  • If the notion of 'work' is EU-wide, then protection should be granted across the EU to all subject matter deemed to be a work, irrespective of the category such subject matter belongs to. If this is true, then certain national approaches (like the one in the UK, which has a closed and very formalistic list of protectable categories) might be deemed incompatible with EU law;
  • The CJEU envisaged a requirement of 'objectivity' in copyright law, and Advocate General (AG) Wathelet in his Opinion [here] expressly referred to the Sieckmann decision, concerning the graphic representation requirement in trade mark law: do the requirements for different IP rights overlap? If so, to what extent?
  • Did the CJEU envisage a fixation requirement, which under international law is a matter reserved to individual signatories?
  • Did the CJEU close the door on copyright protection of 'sensory' subject matter tout court, including perfumes? Probably not ...
Overall, cases like this serve to highlight how 'unconventional' subject matter has been stretching the boundaries of traditional IP rights. This is true for copyright and, perhaps even more clearly, for trade mark law. 

Most important piece of legislation

Outside Europe, in the US the most significant development has likely been the adoption of the Music Modernization Act. In Australia developments in website blocking legislation have been also significant. 

However, the prize goes to something which is not law yet: the draft Directive on copyright in the Digital Single Market. 

If nothing else, this is so for the heated discussions that it has been attracting and the emotional tones used at all levels, with commentators taking things very personally and attacking those with different views calling them (rather than their ideas) 'disingenuous' (to say the least). Of course, the more aggressive, the more likes on social media. Chill pill, anyone?

AG Szpunar
Copyright person of the year
It is suggested that EU copyright is where the most significant developments have been occurring lately. In this sense, the CJEU has been playing a central role, and it is indeed someone from this institution who deserves the prize of 'Copyright person of the year'.
It is AG Maciej Szpunar, and the reason is threefold. 
First, because of his active presence on the copyright referrals scene, with quite a few Opinions being issued in respect of topical areas, including communication to the public (eg The Pirate Bay case, on which see here) and - more recently - copyright and fundamental rights (he is the AG in all the three German referrals detailed above). 
Second, because his Opinions are never banal and - importantly - are never ideological (neither is a given in copyright law): it is very refreshing to see how, each time, the AG approaches the questions referred from national courts in a learned and interesting fashion. Examples in this sense are the recent Opinions in Afghanistan Papers [here] and Metall auf Metall [here].
Third, because the AG has had the merit of stressing the need for dynamic interpretations of the copyright acquis, in light of the rationale of relevant EU directives and also to take into account technological advancements. In his Opinions in both Vereniging Openbare Bibliotheken [here] and Verwertungsgesellschaft Rundfunk [here], the AG expressed the view that "it is imperative to give legal acts an interpretation which takes into account developments in technology, markets and behaviour and not to fix such acts in the past by adopting too rigid an interpretation": a dynamic interpretation of the provisions of law, which is capable of adapting the wording thereof to the changing conditions, allows in fact the objective sought by the provisions at issue to be attained.
Most important unresolved issue

This is an issue that, rather than being unresolved, remains highly contentious. It relates to the direct liability of platforms for user-uploaded content. As readers know, back in 2017 the CJEU ruled that the operators of The Pirate Bay could be regarded as directly liable for users' infringements. However, it is not entirely clear to what extent this conclusion could be applied to less egregious scenarios.

This is no mundane issue, of course, and is currently central to two areas. The first one is Article 13 of the draft Directive on copyright in the Digital Single Market (the 'value gap' proposal) which is rooted within the idea that platforms communicate to the public. The second one is the referral from the German Federal Court of Justice (mentioned above), which has recently asked the CJEU to rule on this very point under existing legislation and in relation to YouTube (the case has now been numbered and it is C-682/18).

In all this, what is also controversial is whether a platform that is deemed to do directly acts restricted by copyright may be nonetheless eligible for the safe harbour protection in Article 14 of the E-commerce Directive. In respect of the initial formulation of Article 13, this appeared to be the case, but later versions excluded it. It will be interesting to see what the final version of the provision states in this regard.

Most important policy issue for 2019

Being a bit banal here ... but the key policy development will be the agreement reached in respect of the draft Directive on copyright in the Digital Single Market. Especially with regard to Article 13, but also Article 11 (press publishers' right), and Article 3 (text and data mining).

This is not the only 'deal' that will matter in Europe in 2019 ...

Most important copyright-protected work

It is Bansky's Girl with Balloon, that (partly) shred right after being auctioned at Sotheby's, and greatly increased in value because of this. 


It stands as a memento that creativity goes beyond images and text, and that we should never stop looking at things with new eyes. New meanings can be created all the time. Is the same true also for copyright law? Should it be?  

Enjoy the Holidays!


[Originally published on The IPKat on 22 December 2018]

Thursday, 20 December 2018

CJEU rules that warehouse storage of counterfeits due for sale falls within scope of distribution right

Gamla stan in Stockholm,
where the defendant's business was located
Back in October The IPKat reported that in Syed, C-572/17 Advocate General (AG) Campos Sánchez-Bordona had advised the Court of Justice of the European Union (CJEU) to rule that the warehouse storage of copyright-infringing items due to be issued to the public is to be considered as an act falling within the scope of the right of distribution within Article 4 of the InfoSoc Directive.

Personally I thought and wrote that, in light of existing CJEU case law on the right of distribution - notably the decision in Dimensione Direct Sales [Katposts here-, the AG Opinion was not at all surprising.

Yesterday, after less than 3 months, the CJEU issued its judgment, which endorses the Opinion of AG Campos.

Let's see how the Court reasoned.

Concept of 'distribution'

The CJEU started by noting the the concept of 'distribution' within the InfoSoc Directive:

  • Should be given the same meaning as ‘making available to the public … through sale’ within Article 6(1) WCT
  • Entails (see Dimensione Direct Sales) "a series of acts going, at the very least, from the conclusion of a contract of sale to the performance thereof by delivery to a member of the public. A trader in such circumstances bears responsibility for any act carried out by him or on his behalf giving rise to a distribution to the public in a Member State where the goods distributed are protected by copyright" (emphasis added). The phrase 'at the very least' means that the acts or steps preceding the conclusion of a contract of sale may also fall within the concept of ‘distribution’. It follows that, not just an actual sale, but also an offer to sell which binds its author might be regarded as an act of distribution.     
  • Does not require the offer for sale to be actually followed by a transfer of ownership to a purchaser of the protected work or a copy thereof.
All these preliminary remarks served the CJEU to hold that:
Although carrying out the sale is not a necessary element for the purpose of establishing an infringement of the right of distribution, it must nonetheless be proven, to that end, that the goods concerned are actually intended to be distributed to the public without the rightholder’s consent, inter alia by their being offered for sale in a Member State where the work at issue is protected
In a case like the one at issue, that is of someone storing infringing goods and selling identical goods in a shop, what needs to be determined is whether the storage is to be regarded as 'an act prior to a sale'.

The answer is yes, "if it is established that those goods are actually intended to be sold to the public without the rightholder’s authorisation". This might or might not be the case of infringing content held in storage. The right of distribution only goes as far as encompassing the storage of content due for sale.


Not everyone is happy
to be held in storage
When does storage amount to distribution?

In order to help the referring court (Swedish Supreme Court) decide on the background proceedings, the CJEU deemed it helpful to offer some guidance.

"As regards the determination of the purpose of the goods considered, account must be taken of all the factors which may demonstrate that the goods concerned are stored with a view to their being sold, without the rightholder’s consent, on the territory of the Member State where the motifs displayed on the goods are protected by copyright.

Although, among those factors, the distance between the storage facility and the place of sale may constitute evidence that can be used in seeking to establish that the goods concerned are intended to be sold in that place of sale, that evidence cannot, on its own, be decisive. It may, on the other hand, be taken into account in a concrete analysis of all the factors likely to be relevant, such as, for example, the regular restocking of the shop with goods from the storage facilities at issue, accounting elements, the volume of sales and orders as compared with the volume of stored goods, or current contracts of sale."

Comment

As discussed at the time when the Opinion was released, such a broad understanding of the concept of distribution is not surprising, both in light of existing case law and the overall approach to the definition of the scope of InfoSoc economic rights.

In particular, over time the CJEU has stressed the importance of granting a 'high level of protection', this being one of the key objectives underlying adoption of the InfoSoc Directive. Reliance on this has led - as an effect and invariably - to a broad understanding of the scope of copyright protection. The right of distribution is no exception.

[Originally published on The IPKat on 20 December 2018]