Monday, 25 September 2017

Italian Supreme Court confirms availability of copyright protection to TV formats

The TV format at the centre of the case
decided by the Supreme Court
TV formats may be incredibly valuable, and be sold in franchise in several countries. As a result, also disputes relating to TV formats may be complex, lengthy and with uncertain outcomes, as the current litigation relating to The Voice, for example, demonstrates [here and here].

In addition to the complexities of individual cases, a further difficulty is defining what kind of legal treatment TV formats are subject to in the first place. Discussion of the type of protection available has been, in fact, rather contentious in a number of countries. 

On the one hand, there are jurisdictions (like the UK), in which subject-matter like TV formats may not to be really suitable for inclusion in the scope of protection of an IP right like copyright (also for difficulties related to the closed subject-matter categorisation envisaged by the Copyright, Designs and Patents Act). On the other hand, there are countries which have managed to accommodate protection of TV formats within their own copyright regimes. 

An instance of the latter approach is Italy [see here]

As reported by DIMT - Diritto Mercato Tecnologia, in its 2017 decision in RTI Reti Televisive Italiane Spa v Ruvido Produzioni Srl, decision 18633/17 (27 July 2017), the Italian Supreme Court (Corte di Cassazione) confirmed that TV formats can be protected under the Italian Copyright Act (Legge 633/1941), and clarified at what conditions such protection is available.   

The Court recalled that the Italian Copyright Act does not contain a notion of 'format'. However the definition provided in Bulletin 66/1994 of SIAE, which also allows authors of formats to deposit them, should be taken into account. 

The Italian Supreme Court
According to SIAE's document, a work can qualify as a format if it displays - as relevant elements - logical and thematic connections composed of a title, a basic narrative structure, a scenography and fixed characters, which result in a structure that can be repeated. This means that, for instance, a TV programme that mainly consists of improvisations lacks such repetitiveness and cannot be considered a format (Supreme Court, decision 3817/2010).

Other requirements are that the format possesses a programmatic structure that displays a modicum of creativity. This requires the identification of, at least, the structural elements of the story, as well as its space and time collocation, the main characters and their personalities, and the main thread of the plot. Lacking these elements, copyright protection shall not be available, because what one would try to protect is still so vague that it can be regarded as an idea, rather than an expression thereof.

In light of earlier case law, [translation is mine]:

"this Court intends as a format for a TV programme, protectable as an original work under copyright law, a sketch for a programme, a plot outline defined in its essential elements, generally intended for a serial TV production, as resulting from a brief description."

In conclusion, under Italian law a TV format may be protected by copyright if it has both a structure that can be repeated and certain fixed elements, as well displaying a modicum of creativity. With regard to the latter, case law seems consistent in requiring that the TV format is not novel, but rather the personal and individual expression of its author.

[Originally published on The IPKat on 25 September 2017]

Friday, 22 September 2017

German Federal Court of Justice rules that GS Media presumption of knowledge does not apply to Google Images

Is Google responsible for the lawfulness of the images displayed through its Images search service?

According to the German Federal Court of Justice (Bundesgerichtshof - BGH), the answer is NO.

In a judgment delivered yesterday (I ZR 11/16 - Preview III) the BGH relied on the decision of the Court of Justice of the European Union (CJEU) in GS Media, C-160/15 [Katposts here] and dismissed the action that the operator of a photography website had brought against Google and its search engine.

Background

The applicant’s website includes a restricted (password-protected) area to which customers can only access upon payment of a fee. Once there, customers are able to download the photographs placed in this area to their computers.

Some of these photographs were re-uploaded unlawfully by customers onto freely accessible websites. Relevant thumbnails were subsequently indexed on Google Images from such freely accessible sites.

According to the applicant, by indexing and displaying thumbnails of the photographs to which it owns the copyright, Google had infringed its own exclusive right of communication to the public pursuant to § 15(2) UrhG [the German Copyright Act, by which this Member State transposed Article 3(1) of the InfoSocDirective into its own national law].

The BGH held that Google had not infringed the applicant’s copyrights for displaying thumbnails of and links to photographs publicly available on the internet without the applicant’s consent.

Visual map on linking after GS Media, available here
GS Media and the presumption of knowledge for profit-making operators

As mentioned, to reach this conclusion the BGH relied on the CJEU decision in GS Media, according to which the posting of a link to a freely accessible website on which a copyright work is available without the permission of the relevant rightholder falls within the scope of Article 3(1) of the InfoSoc Directive if the link provider knew or could reasonably know that the content linked to had been made available without the rightholder’s consent.

The BGH also recalled that in GS Media the CJEU had stressed the importance of the internet to freedom of expression and of information, and that hyperlinks contribute to its sound operation as well as to the exchange of opinions and information in that network characterized by the availability of immense amounts of information [para 45 of GS Media].

However, in GS Media, the CJEU also stated that if the link provider operates for profit [as is the case of a search engine like Google], then

“it can be expected that the person who posted such a link carries out the necessary checks to ensure that the work concerned is not illegally published on the website to which those hyperlinks lead, so that it must be presumed that that posting has occurred with the full knowledge of the protected nature of that work and the possible lack of consent to publication on the internet by the copyright holder. In such circumstances, and in so far as that rebuttable presumption is not rebutted, the act of posting a hyperlink to a work which was illegally placed on the internet constitutes a ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29.” [para 51 of GS Media]

So?

According to the BGH this presumption does NOT apply to search engines and for links displayed by search engines because of the particular importance of search services for the functioning of the internet. According to the German court, the provider of a search function cannot be expected to check the lawfulness of the images automatically retrieved from publicly accessible websites.

Google Image Search for IPKat
Conclusion

The BGH’s take on GS Media is an interesting one, and it will be important to read the full text of the judgment once it becomes available.

It appears that the German court’s decision was justified by concerns relating to the possible disruptive effects that a strict application of CJEU case law would have on the broader functioning of the internet. In this sense, the decision echoes the tones used – way more vigorously than what the CJEU judgment does – by Advocate General (AG) Wathelet in his Opinion in GS Media [here]. The AG rejected the very idea that linking should fall within the scope of copyright protection at all. Holding otherwise “would significantly impair the functioning of the Internet and undermine one of the main objectives of Directive 2001/29, namely the development of the information society in Europe. Such an interpretation could also distort the ‘fair balance of rights and interests between the different categories of rightholders, as well as between the different categories of rightholders and users of protected subject-matter’.” [para 77 of the AG Opinion].

This said, it does not appear that – after GS Media – CJEU jurisprudence on the right of communication to the public has become less stringent: the decisions in Filmspeler [here] and Ziggo [here] are telling instances.

Finally, with particular regard to the issue of image search engines, readers might remember that last year France adopted a law (LOI n° 2016-925 du 7 juillet 2016 relative à la liberté de la création, à l'architecture et au patrimoine) [this is the version currently in force] that would require search engines displaying thumbnails of copyright works to be part of a compulsory collective management system for the reproduction of photographs and images [here and here].

After France and Germany (and amidst all activity and activism of the CJEU) it will be crucial to see how legislatures and courts - both around the EU and at the EU level - will position themselves in relation to online issues.

[Originallly published on The IPKat on 22 September 2017]

Saturday, 16 September 2017

Maradona sues Dolce&Gabbana over 2016 'MARADONA' jersey

The Dolce&Gabbana
'MARADONA' jersey
A few days ago a number of newspapers (mostly in Italian and Spanish) reported that former Argentinean footballer Diego Armando Maradona has sued Italian fashion house Dolce&Gabbana.

The reason?

According to Corriere della Serathe Pibe de Oro (as Maradona was nicknamed) claims that fashion designers Domenico Dolce and Stefano Gabbana have unduly exploited his name for commercial reasons. 

During a fashion show held in the city centre of Naples [Maradona played for Napoli for a few years, and in that city he reached the peak of his career] in 2016, a model wore a jersey bearing the number 10 [ie the number that Maradona used to have] and the word 'MARADONA'. The jersey itself also had the same colour combination of Napoli's jerseys, ie light blue and white.

The complaint filed before the Milan Court of First Instance is not publicly available, so it is not entirely clear on what grounds the proceedings have been brought. 

What seems clear, however, is that Stefano Gabbana has not taken the news of the lawsuit very well. A few days ago, on Instagram he called Maradona a "morto di fame" [literally, "starved", but see here for further explanations and examples].

The question that arises is whether an action of this kind has any likelihood of succeeding.

Maradona's
Napoli time
It should be stated at the outset that claims of (mis-)appropriation are not uncommon in the fashion world, and some argue [eg here and herethat cultural misappropriation is actually necessary in this sector. 

What's in a name?

In the case of Maradona, the main complaint seems to relate to the misappropriation and misuse of his name. 

Article 6 and 7 of the Italian Civil Code expressly recognize the right to one's own name. In particular, Article 7 states that a person who may suffer a prejudice from the undue use of their name by a third party can request a court order that would put an end to such use, as well as the compensation of any damages. 

As regards the notion of 'prejudice', Italian case law seems oriented in the sense of including also prejudices that are merely potential. However, case law also suggests that prejudice may not subsist in relation to the use of a name that is well-known.

In addition, while the notion of 'use' includes direct uses of one's own name, eg cases of impersonation, and uses of one's own name for a business, product, or fictional character, it is unclear whether use of one's own name on a product without any apparent intention to use the name for designation purposes [as it would appear to be the case here] would fall under the scope of Article 7 of the Civil Code. 

All this does not exclude that there is plenty of situations in which celebrities and athletes license the use, not just of their likeness, but also voice and name. These scenarios appear to relate, however, more to situations in which the celebrity at issue somewhat endorses a certain product, service, or activity. 

Stefano Gabbana's Instagram feed
Other grounds?

Other claims might relate to Maradona's trade marks. From a search on TMView, it would appear that Maradona himself owns a valid 'DIEGO MARADONA' registered trade mark. However, one might wonder whether use of 'MARADONA' by Dolce&Gabbana could be regarded as use in a trade mark sense and such as to infringe the 'DIEGO MARADONA' trade mark. 

Similarly, any claims of unfair competition under the Italian Civil Code (Article 2598) by Maradona and/or Napoli (considering also the fact that the Dolce&Gabbana jersey intends to recall a Napoli jersey - incidentally, any design rights vesting on the jersey are likely expired) would require - in the case at hand - a demonstration that: 

(1) use, by Dolce&Gabbana, of Maradona's name is likely to create confusion with the products or activity of the claimant(s) in their capacity as a competitor, or 
(2) such use is contrary to the principles of professional fairness and likely to damage the claimant(s)'s business activity.

Italian law also expressly provides for the protection of one's own image (Article 10 of the Italian Civil Code). In the past there have been decision that have held that Article 10 can come into consideration also in cases in which one's own image is not used but merely evoked [as, for instance, it was with Audrey Hepburn's image in the decision commented here]. However, it is doubtful whether this is the case here.

In conclusion, the action at issue presents a series of challenges that might eventually lead to its dismissal. It will be interesting to see how the case unfolds and what decision the Milan Court of First Instance reaches. In the meantime: what do readers think?

[Originally published on The IPKat on 16 September 2017]

Thursday, 7 September 2017

AG Szpunar advises CJEU on cloud-based recording and private copying exception

Does EU law prohibit a commercial undertaking from providing - without the authorisation of the relevant copyright owner - private individuals with cloud computing services for the remote video recording of private copies of works protected by copyright, by means of that commercial undertaking’s active involvement in the recording?

This - in essence - is the issue at stake in VCAST Limited v R.T.I. SpA, C-265/16, a reference for a preliminary ruling to the Court of Justice of the European Union (CJEU) from the Turin Court of First Instance.

This morning Advocate General (AG) Szpunar answered the question in the affirmative in his Opinion 
[not yet available in English].

Background

This reference was made in the context of proceedings concerning the unauthorised making available by VCAST (a UK company that calls itself a "video cloud recorder") of a cloud-based recording service that allows the recording of free-to-air TV programmes, including those of RTI (which is part of the Mediaset Group).

VCAST users are able to select the relevant network and time of recording. VCAST is then able to identify the TV signal through its antennae, while the actual recording is done by independent providers. Users are able to enjoy the recordings through ad-based or paid-for and ad-free subscriptions.

VCAST sued RTI before the Turin Court of First Instance, seeking a judgment that would acknowledge the lawfulness of its activities. VCAST's argument is substantially that its activities fall within the scope of Articles 71-sexies and -septies of the Italian Copyright Act, ie the Italian private copying exception. This would be so because it would be users, rather than VCAST, to make the recordings. VCAST would only provide the tools for the making of such recordings.

The Turin court was not sure about the correct interpretation of the relevant provisions under EU copyright law, ie Article 5(2)(b) of the InfoSoc Directiv[the reference also raises issues of compatibility with the E-Commerce Directive, but AG Szpunar excluded that this would be relevant], and whether Italian law would be compatible with the EU framework. Thus, it decided to stay the proceedings and refer the case to the CJEU.

The AG Opinion

Further to an explanation of the nature of cloud computing, AG Szpunar noted that the present case requires the CJEU to consider whether the private copying exception is applicable in a context in which the act of reproduction is not done directly by the beneficiary of the exception [ie a “natural person”], since copying requires the intervention of a service provider [para 3]

More broadly, this case is about exploring the boundaries of the private copying exception [para 4; this is something that the CJEU has been asked to do in a string of cases: besides those requiring consideration of systems private copying levies, the Court has explored the scope of Article 5(2)(b) in ACI Adam - Katposts here - and the recent Filmspeler case - Katposts here].

In this sense, existing CJEU case law suggests that the exception (and the payment of the relevant compensation) is applicable to those who make copies using third-party media and devices. This would be also applicable to cloud computing recording services [para 24].

More generally, according to the AG the exclusion of any reproduction that involves the intervention of a party other than the direct beneficiary would be unjustified [para 25]. As long as the natural person/user takes the initiative of the reproduction and defines subject and modalities of the reproduction, there is no difference with reproductions made through devices and media that the user controls.

Kat-cloud
Having said so, however, for the applicability of the exception in Article 5(2)(b) of the InfoSoc Directive it is required that the user has lawful access to the work that he/she copies. 

This condition would not be satisfied in the case of VCAST [para 29]. The user in fact would be able to use VCAST’s service without having also access to the TV programs on the Italian territory [para 36]. This means that the reproduction done through VCAST might be the only way for the user to access the work reproduced [para 38].

AG Szpunar also pointed out that VCAST does both a communication to the public and a reproduction [para 39]. According to the AG, VCAST makes available to the public audiovisual works without the authorisation of relevant rightholders. Although those at hand are free-to-air TV programs, VCAST’s service is not limited to the Italian territory [para 43]. Furthermore, VCAST makes the works available to a ‘new public’ [para 45]. According to the AG, the ‘AKM exception’ [a case that the AG labelled as "not entirely clear": para 53] would not be applicable [para 53].

Finally, AG Szpunar referred to the three-step test in Article 5(5) of the InfoSoc Directive. He noted that the conditions therein would prevent the applicability of the private copying exception to a subject like VCAST.

Let’s now wait to hear from the CJEU: stay tuned!

[Originally published on The IPKat on 7 September 2017]