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. 

Background 

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. 


Defences 

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. 

Parody 

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
Comment 

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
Comment

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]

Wednesday, 18 December 2019

Maradona successfully sues Dolce&Gabbana over unauthorized use of his name on a jersey

Readers might remember that, a couple of years ago, this blog reported on a lawsuit filed in Italy by former Argentinean footballer Diego Armando Maradona against Italian fashion house Dolce&Gabbana

The reason? 

The use, by the defendants, of his name on a jersey (below) worn by a model during a fashion show held in Naples in 2009 [Maradona played for Napoli for a few years, and in that city he reached the peak of his career]. The jersey, which was sold neither before nor after the show, carried the number ‘10’, ie the same number used by Maradona while at Napoli, and had the same colour combination as Napoli jerseys. Images of the jersey appeared on general interest media and also on the Dolce&Gabbana website. 


Maradona sued and claimed damages for EUR 1 million (!) due to the unauthorized commercial exploitation of his name. He submitted that Dolce&Gabbana’s use of his name had allowed them to take an unfair advantage of his repute and also likely misled the public into believing that there would be a commercial partnership between himself and the defendants. 

News has reached The IPKat that now the Milan Court of First Instance has issued its decision on the matter, finding in favour of Maradona. The court noted that [the translation from Italian is mine]
Without any doubt, the use of a decorative element which reproduces a third-party distinctive sign or name, leads – to say the least – to the establishment of an association with that person. If the sign is well-known, also and above all in a non-commercial sector, and conveys - like the sign at issue - particular impressions of historical allure and football excellence, it cannot be freely used by third-party undertakings without the permission of the rightholder. 
Maradona playing for Napoli
To this end, the court referred to Article 8 of the Italian Industrial Property Code, which expressly concerns trade mark registration of third parties’s own image, names and well-known signs, to draw the broader teaching that such provision is aimed at reserving the exploitation of the relevant ‘allure’ of a name or sign to its owner, who can then repress any third-party free-riding of their own repute. According to the court, this provision ‘fully legitimizes merchandising, which allows the rightholder to capitalize on the competitive advantages that are inherent to their sign’. 

In conclusion, according to the court the use made by Dolce&Gabbana of Maradona’s name was aimed at misappropriating the prestigious sport history of the latter. 

As regards the damages, the fact that Dolce&Gabbana had not put the jerseys on sale was considered relevant. The determination of the damage was done based on endorsement deals concluded by Maradona. The court awarded damages for a little less than what the claimant had requested, ie EUR 70,000.

Comment

It is well-known that image rights protection in Italy is quite extensive, and courts have issued decisions that have progressively broadened the scope of protection afforded to one's own image, name, likeness, voice, etc.

Not long time ago, for instance, the Turin Court of First Instance ruled that unauthorized use of Audrey Hepburn's likeness on garments infringed her post-mortem image rights. Previously, the Milan Court of First Instance had held that even mere evocation of someone's own image (again, Audrey Hepburn) could be held a violation of image rights.

Kat in Naples
Yet, decisions like the Maradona one increasingly show how the line between misappropriation/free riding and cultural tribute is quite a thin one. 

In the case of Maradona, the expansive reading of Article 8 of the Code served the purpose of establishing a violation of Maradona's image (or rather: name) rights. 

Yet, contrary to the court's reasoning, the context in which the use took place does not necessarily appear to be one in which the end-goal of Dolce&Gabbana was that of free riding on the footballers' own sport history or suggest a partnership between them. 

Rather, the fact that his name was used on a fashionable version of Maradona's own Napoli jersey is indicative of the fact that the intention was to celebrate some of the symbols of Naples as a city, including its historically relevant sports people.

All this said, the take-home point seems to be once again that image rights can go quite far in Italy and that unauthorized use of third-party image, likeness, etc should be done - and handled - with care.

[Originally published on The IPKat on 18 December 2019]

Wednesday, 4 December 2019

AG Campos advises CJEU to rule that Amazon might be potentially liable for trade mark infringement

Amazon Logistics
Last week, Advocate General (AG) Campos Sánchez-Bordona delivered an important Opinion in Coty Germany v Amazon, C-567/18 [not yet available in English]

He advised the Court of Justice of the European Union (CJEU) to rule that, for the sake of applying Articles 9(2)(b) and 9(3)(b) EUTMR (stocking of goods for the purpose of offering of putting them on the market):
  • if a subject (a) has no awareness/knowledge of the infringing character of the goods which they stock and (b) does not intend to offer or put the goods on the market themselves, then there is no liability for the purpose of this provision. However,
  • if a subject (eg, Amazon) actively contributes to the distribution of said goods, eg through a programme like Amazon Logistics (which allows the stocking of the goods sold by traders through Amazon and their subsequent delivery to purchasers), then they are deemed to stock the goods within the meaning of the provisions. In this sense, it does not matter whether they possess awareness or knowledge of the infringing character of the goods, insofar as it could have been reasonably expected from them to act to detect the infringement.
If the CJEU follows its AG, then - similarly to what has happened in the copyright field - we could have a significant development in the scope and application of direct liability to online platforms, well beyond the classic approach 'safe harbours: YES' / 'safe harbours: NO'.


Let's see more in detail how the AG reasoned.


Background



In 2014, a Coty (licensee of the 'DAVIDOFF' trade mark) ‘mystery shopper’ purchased a ‘Davidoff Hot Water EdT 60 ml’ perfume (in relation to which the trade mark rights had not been apparently exhausted) from a seller who had joined the Amazon Logistics programme.



Subsequently Coty requested Amazon to provide all perfumes stocked on behalf of the seller. 11 of the 30 perfumes delivered by Amazon to Coty had been stocked on behalf of another seller, whose identity Amazon was not able to confirm.



Coty sued Amazon for trade mark infringement in Germany, but without success. In fact, both at first instance and on appeal, the German courts found that Amazon had not directly used the trade mark or stocked the goods to sell them; rather, it had just stocked them on behalf of third parties and was unaware that the trade mark rights had not been exhausted.


On appeal to Germany’s Federal Court of Justice (BGH), a question arose: Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market under Article 9(3)(b) EUTMR, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market? 

The BGH was unsure, though it was inclined to answer in the negative in light of what happens in Germany in the patent field. The court also excluded that Amazon’s behaviour would amount to a ‘use’ of the trade mark within the meaning of Article 9(2) EUTMR. 


Despite all this, a referral was made to the CJEU.


The AG Opinion


AG Campos noted at the outset that, in its observations, the European Commission had considered that Amazon would not ‘use’ the trade mark: this would mean that Article 9(2) could not find application and, because of that, neither would Article 9(3). He opined that the Commission’s approach is the correct one in light of earlier CJEU case law. However, he deemed it necessary to consider what the consequences would be if the conditions in Article 9(2)(b) were satisfied instead.


To this end, he considered the various language versions of the EUTMR, and concluded that the meaning of ‘stocking’ implies the possession of goods for commercial goals. Hence, for a trade mark owner to be able to prohibit this activity, two cumulative requirements need to be fulfilled:
  • a material element, that is the possession (posesión) of the infringing goods;
  • a subjective element, that is the intention to offer the goods on the market through a contract, which includes an offer for sale
IPKat-approved perfume
On the material element: the possession


According to the AG, it is necessary to distinguish the situation of warehouse keeper from that of an online marketplace.



With regard to the former, it appears from TOP Logistics (at [45]) that the “provision of a warehouse service for goods bearing another’s trade mark does not constitute use of a sign identical to that trade mark for goods or services identical or similar to those in respect of which the mark is registered. Inasmuch as such a service provider permits such use by its customers, its role cannot be assessed under Directive 89/104 but must be examined, if necessary, from the point of view of other rules of law.”



Turning to the latter, from L’Oréal it follows that an online marketplace is not even comparable to a warehouse keeper if the activities are of an intermediary nature only.


In a scenario like the one described by the referring court, Amazon would not stock goods for sale within the meaning of Article 9(3)(b) EUTMR.



However, based on the parties’ observations and the CJEU hearing, it might be possible that the scenario be actually more complex than the one described by the referring court: the model could actually be an ‘integrated store’ in which Amazon plays an active role in the selling process. The corollary would be that Amazon has an absolute control over said process.


In such scenario, it is necessary to distinguish between external elements, that is those elements that the average consumer perceives, and internal elements, that is those elements that relate to the relationship between the seller and Amazon. 


From the point of view of an end consumer who buys a product from an Amazon seller, it is not always easy to discern whether the relevant goods come from the trade mark owner, from an undertaking linked to it or an unrelated third party. “This way, a prejudice is caused to the essential function of a trade mark, that is the indication of the origin of the product.” [at [54], my own translation from Italian].


With the Amazon Logistics programme, the companies which are part of the Amazon group do not just stock and transport the goods in a neutral fashion: rather, they undertake a much broader range of activities. These include the preparation of the goods for delivery and their delivery, advertising and promotional activities, information to customers, and the refund of the price of faulty goods. Amazon also receives payment for the goods sold, which it then transfers to the seller’s bank account.


According to the AG,

Such active and coordinated involvement of the companies which are part of the Amazon group in the commercialization of the goods entails the undertaking of significant tasks which are typical of a seller, in respect of which Amazon does the ‘heavy work’, as also highlighted on its Internet website. There one can read, as an incentive to sellers to join the ‘Amazon Logistics’ programme, the following phrase: ‘You bring leadership, we'll bring the rest’. In these circumstances, the role of the Amazon group companies “involves active behaviour and direct or indirect control of the act constituting the use.”” [at [57], referring to Daimler, at [39]; my own translation from Italian] 
According to the AG, if it was confirmed that indeed the Amazon group companies had provided these services (or, at least, the most important ones), then the conclusion would be that – indeed – the behaviour falls within the scope of application of Article 9(3)(b) EUTMR.


Importantly (and correctly), the AG also confirmed that, in the event that Amazon was found directly liable for trade mark infringement under that provision, the safe harbours in Article 14 of the E-commerce Directive would not apply. This is nothing new, pointed out the AG: it was clarified by the CJEU as early as in L’Oréal.


On the subjective element



Article 9(3)(b) also requires the fulfilment of a subjective requirement, that is the intention to stock with the purpose to sell/offer. According to the AG, it would be difficult to deny that also the companies of the Amazon group share this intention if their role was not considered a neutral one. 


Playing innocent or actually innocent?
Liability of companies stocking infringing goods without awareness/knowledge of their infringing character


The AG also addressed the issue raised by the referring court that the company that stocks is not aware of the infringing nature of the goods stocked. Knowledge of the infringement is relevant in various context, including with regard to the applicability of the safe harbours and the calculation of damages, as well as in relation to intermediaries.


However, in the case of companies that perform an active role lack of actual knowledge may not be enough to exclude liability:

The fact that said companies are strongly involved in the commercialization of the products through [the ‘Amazon Logistics’] programme implies that they may be required to exert a particular care (diligence) as regards the control of the lawfulness of the goods that they put in commerce. Indeed because they are aware that, without such control, they could easily serve as a means to sell “unlawful, counterfeit, pirated, or stolen goods, selling goods in an unlawful or unethical manner, violating the proprietary rights of others”, they cannot escape their own responsibility simply by passing it on the seller” [at [82]] 
Comment


Although the Opinion is built through several 'hypotheticals' (including the main one, ie whether Amazon's activity actually falls within the scope of application of Article 9(2) and, so Article 9(3), in the first place), it is relevant well beyond the area of trade marks and seems to actually go beyond the suggestion, by some early reports, that overall “Amazon is not liable for unwittingly stocking trade mark infringing goods for third-party sellers, but should be diligent in checking whether products are legal”.


Despite the seemingly limited factual information provided by the referring court (this being something that the AG appeared to be critical of throughout his Opinion), AG Campos gave two important indications:
  1. The first is that a platform that plays an ‘active role’ not only would fall in a L’Oréal-like scenario (a secondary/indirect liability scenarios resulting from the inapplicability of the hosting safe harbour), but could actually be considered as directly infringing trade mark rights;
  2. The second is that a platform that is directly liable for IPR infringements is not eligible for the hosting safe harbour in Article 14 of the e-Commerce Directive.
The two points noted above allow the creation of a significant parallel with similar issues that have arisen in the copyright sphere.


With regard to 1., the direct liability of platform operators for copyright infringing-activities has been acknowledged, first, by the CJEU in its Pirate Bay decision [Katposts hereand is now ‘codified’ in Article 17 of the DSM Directive [Katposts here]. In the realm of trade marks, in the context of interim proceedings, a Belgian court has recently considered that Amazon’s advertising and stocking activities qualified as direct use of the applicant’s trade marks. If the CJEU follows the AG when it decides Coty, we’ll likely see more decisions of this kind.



With regard to 2., it is worth recalling that Article 17 of the DSM Directive also spells out that direct  copyright liability makes the hosting safe harbour inapplicable in relation to copyright infringements. The unavailability of the safe harbour limitation in cases of direct liability does not appear surprising. Yet, the majority of academic commentators so far has insisted in suggesting that the safe harbours in the e-Commerce Directive remain available irrespective of the type of liability. Hopefully the CJEU will clarify once and for all that this is not and should not be the case when it decides YouTube and – possibly before that (the issue of safe harbours availability is not among the referred questions though) – Coty.



In all this, the progressively expansive interpretation of what qualifies as direct liability of platforms may not only concern copyright/Article 17 situations. Indeed, if the CJEU follows the Opinion of its AG in Coty, then sophisticated marketplace situations would need to be assessed under lenses other than the one relating to the availability or not of safe harbours, including in trade mark cases. 

[Originally published on The IPKat on 4 December 2019]

Thursday, 28 November 2019

Copyright protection of fictional characters: is it possible? how far can it go?

The IPKat's favourite fictional character
Last year, I was fortunate enough to be invited by Associate Professor Yann Basire (Director-General of CEIPI) to participate in a great (and cool!) conference he organized in Strasbourg on Pop Culture and IP. The topic I was asked to discuss was trade mark protection of fictional characters, and the contribution will be published in 2020 as part of a collection edited by Yann and entitled Propriété Intellectuelle et Pop Culture (LexisNexis, coll. IRPI).

But what about copyright protection of fictional characters: is it possible? how far could it go?

Copyright protection is available to any work in a Berne and, now, EU sense. While no particular issues arise in relation to the literary, artistic or dramatic works that feature certain characters, in that they are regarded as ‘traditional’ copyright subject matter, whether copyright also vests in fictional characters as such has occasionally proved controversial. 

Difficulties are linked to the fact that, first, one might wonder whether a character is to be considered a ‘work’ in a copyright sense and, secondly, assuming that it is, what type of work a character is. While the latter appears to be less fundamental question than the former, it might still be a problematic one to answer in those European jurisdictions that envisage an exhaustive list of protectable works. 

A ‘work’ that is sufficiently ‘original’

There is no statutory definition of ‘work’ in EU copyright directives, including the InfoSoc Directive.

However, recently the Court of Justice of the European Union (CJEU) tackled the notion of ‘work’ in its judgment in Levola Hengelo [Katposts here] (the CJEU confirmed its findings in that case in its more recent decision in Cofemel [Katposts here]).  

Noting that the InfoSoc Directive provides both a set of exclusive rights relating, in the case of authors, to their ‘works’ and relevant exceptions and limitations to such rights but makes no express reference to the laws of individual Member States for the purpose of determining the meaning and scope of the concept of a ‘work’, such concept is to be considered an autonomous concept of EU law. As such, it is to be given a uniform application throughout the EU, in compliance with the principle of autonomy of EU law. 

As I also discuss here, this conclusion on the side of the CJEU is not surprising, also considering its frequent use in copyright case law: the CJEU has indeed often employed this interpretative standard in its copyright case law, with the practical effect of strengthening harmonization of copyright laws across the EU.

The CJEU considered that two cumulative conditions must be satisfied for subject matter to be classified as a ‘work’ within the meaning of the InfoSoc Directive. First, the subject matter concerned must be original in the sense that it is the author’s own intellectual creation, in accordance with the decision in Infopaq and subsequent case law. Second, only something which is the expression of the author’s own intellectual creation may be classified as a ‘work’ within the meaning of that directive. Recalling both the wording of Article 2(1) of the Berne Convention and the idea/expression dichotomy in Articles 2 of the WIPO Copyright Treaty and 9(2) of the TRIPs Agreement, the Court concluded that
for there to be a ‘work’ as referred to in Directive 2001/29, the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.
In the case of a fictional character, the definition of ‘work’ may be satisfied when the character at issue appears in a single work and its features are identifiable in accordance with the CJEU criteria. The assessment, however, might be potentially more complex when the character is one with a longstanding history and which has appeared and changed to some extent over time. Would it be possible to identify with sufficient precision and objectivity the protectable expression which renders such character a ‘work’? 

Under US law, the answer appears to be in the affirmative, insofar as certain requirements are satisfied. In 2015, the U.S. Court of Appeals for the Ninth Circuit was called to decide whether defendant Mark Towle had infringed DC Comics’ exclusive rights under a copyright when he built and sold replicas of the Batmobile, as it appeared in the 1966 television show Batman and the 1989 film BATMAN. “Holy copyright law, Batman!”, noted Circuit Judge Ikuta at the beginning of his opinion. 


The court considered whether the Batmobile itself could a protected character under US law by adopting a 3-part test: 
  1. the character must generally have physical as well as conceptual qualities; 
  2. the character must be sufficiently delineated to be recognizable as the same character whenever it appears (this requires the presence of identifiable character traits and attributes, but the character does not need to have a consistent appearance); 
  3. the character must be especially distinctive and contain some unique elements of expression, meaning that it cannot be a stock character such as a magician in standard magician garb. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard.
Applying this test, to the case at issue, the court concluded that the Batmobile would be protected by copyright and that the defendant had infringed it. 

It appears that, even if this test is only directly applicable under US law, it could be useful also in a European context. We could indeed consider that fulfilment of all requirements of the test is substantially what is required under EU law to identify a ‘work’ that is sufficiently ‘original’. Indeed, whilst the first and third step seem to relate to the originality of the character and, thus, what makes it its ‘author’s own intellectual creation’, the result of their ‘free and creative choices’ and ultimately what carries their ‘personal touch’, the second step entails the consideration of whether such character is “identifiable with sufficient precision and objectivity” and is, thus, a ‘work’ in the sense clarified in Levola Hengelo

A work of the ‘right kind’

In European jurisdictions that envisage a closed list of protectable subject matter, an additional difficulty surrounding copyright protection of fictional characters relates to their classification: what types of works are they? A question of this kind, whose compatibility with EU law (or, rather: CJEU case law) is highly questionable, remains formally a fundamental one to answer, in that impossibility to determine what category a work belongs to (usually) leads to a finding that copyright protection is not possible. 

So, under UK law (a jurisdiction in which copyright protection is only available to a limited number of works), leading commentaries explain that a ‘work’ is "a thing which satisfies the statutory description of a literary, dramatic, etc. work."

Such ‘thing’ must be, first, a production in the Berne sense and, second, fall within one of the categories provided by the Copyright, Designs and Patents Act 1988 (CDPA). Categorization has implications not just for determining whether a certain work may be actually protected by copyright under UK law, but also what rights attach to such work. So, for instance, section 21(1) CDPA excludes the right of adaptation for artistic works, while providing expressly for it in relation to literary, dramatic and musical works. Similarly, section 17(3) includes conversion of a work into a three-dimensional form within the scope of the right of reproduction only for artistic works, not also literary works. In addition, differences between the various categories subsist also in relation to the topic of infringement. While copyright in a literary, dramatic, musical or artistic work may be infringed without copying the medium on which the work was recorded by the author or published by the publisher, copyright in sound recordings, broadcasts, published editions and films may only be infringed by reproducing the medium produced by the author. 

In UK copyright case law, there have been a few instances in which works have been denied copyright protection due to the very impossibility of placing such works within one of the categories provided by the CDPA. Examples include the assembly of a scene (the scene was that which would be photographed for the cover of Oasis’s Be Here Now album) and the Stormtrooper Helmet from the Star Wars films. Until recently, uncertainties have also surrounded the protectability of TV formats by means of copyright, due to uncertain categorization thereof [Katpost here]

The same difficulties of categorization seem likely to subsist also in relation to fictional characters: are they a literary work? a dramatic work? an artistic work? 

All this said, as mentioned, it is highly questionable whether an approach of this kind is (still) allowed under EU law. Most recently, in Cofemel, the CJEU considered that the notion of work solely presupposes the fulfilment of two cumulative requirements: first, it implies the existence of an original object, in the sense that said object is the intellectual creation of its author; second, the notion of work is reserved to those elements which are the expression of such creation. When an object is a ‘work’ in this sense, “it shall be eligible, in this respect, for copyright protection, in compliance with Directive 2001/29”. 

All this rather clearly suggests that no other criteria can be imposed to determine copyright subsistence, not even the requirement that the work at issue is one of the right kind. This conclusion is also in line with certain enlightened UK case law, which has noted how – in light of a number of CJEU rulings – 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) CDPA 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.

Which and how many copyrights?

Copyright protection of a character (if available) is in principle limited in time; in Europe, it will last for the life of the author and seventy years after their death. This means that in principle, upon falling in the public domain, it will become possible to use a character without the need for a licence to, eg, create a new adaptation of the story featuring said character. 

So, if we take the example of Sleeping Beauty in the version by Charles Perrault (as also subsequently collected and printed by the Brothers Grimm), both the story and the characters are no longer protected by copyright. However, subsequent adaptations of the public domain stories would warrant their own copyright protection, insofar as they are original. 

The same is true with regard to the relevant characters: so, if we apply the criteria mentioned above, this means that, eg, Disney’s version of Sleeping Beauty as a character with a certain appearance and personality would enjoy its self-standing copyright protection and the same would be true of Dreamworks’s own version, which also has an original appearance and personality. Insofar as no original features of a copyright-protected character are reproduced, it remains possible to use a third-party character to create, eg, new adaptations of well-known story. 


Conclusion

Different IP rights are available for the protection of fictional characters. As far as copyright is concerned, doubts may subsist regarding the classification of characters as self-standing works which enjoy copyright protection separate from the works in which they are contained. In addition, copyright protection is limited in time and encompasses the external appearance of such characters. 

Other types of IP rights, including trade mark protection, might thus present a certain attractiveness, due to the fact that (in the case of trade marks) protection could be virtually perpetual and relate to elements that are not necessarily connected with the external appearance of the character (eg, their name). 

However, it is doubtful whether trade mark registration could be effectively pursued in each and every instance, particularly on consideration of the applicability of the absolute grounds for refusal or invalidity concerning distinctiveness, public policy and morality and aesthetic functionality. In addition, the scope of protection – where available – would go only as far as allowing the trade mark owner to repress third-party uses of identical or similar signs, insofar as such uses are uses in a trade mark sense and affect the functions of the registered trade mark (the latter is true also in double identity scenarios, as the CJEU considered in Arsenal). 

All this suggests that the most effective way to protect a fictional character through IP is a comprehensive strategy that relies on different rights allowing the pursuit of different objectives of exclusivity, but is also conscious of the limitations that are inherent to each and every right.

[Originally published on The IPKat on 28 November 2019]