Friday, 25 October 2019

General Court confirms cancellation of EU trade mark consisting of the shape of famous Rubik's Cube

Did you think that the Rubik's Cube EU trade mark saga was over? Of course not. 

Further to the 2016 judgment (C-30/15 P) of the Court of Justice of the European Union (CJEU) [Katpost hereand the return of the case to the EUIPO, yesterday the General Court (GC) issued yet another ruling (T-601/17).

The GC confirmed that the trade mark registration should be cancelled on consideration that it falls within the scope of application of the absolute ground in what is currently Article 7(1)(e)(ii) EUTMR (the case was decided under the 1994 Regulation).
This provision prevents registration of "signs which consist exclusively of the shape, or another characteristic, of goods which is necessary to obtain a technical result" (the addition of "or another characteristic" occurred in the context of the 2015 reform).


In 1996, Seven Toys filed an application to register the 3-D sign above as an EUTM for ‘three-dimensional puzzles’ in Class 28. The applicant claimed no particular colour for the mark, nor did it provide a description. 

Registration was granted in 1999 (in 2014 the trade mark was transferred to Rubik’s Brand).

In 2006, Simba Toys filed an application for a declaration of invalidity of the mark, on the basis of what are now Articles 59(1)(a) and 7(1)(a)-(c) and (e) EUTMR. The Cancellation Division rejected the application, so that Simba Toys appealed, yet unsuccessfully, to the Second Board of Appeal. 

Among other things, the Second Board of Appeal considered that the mark would not be contrary to Article 7(1)(e)(ii) EUTMR, in that the required assessment is one that only considers the representation of the sign, not ‘alleged or supposed invisible features’.

Further to yet another unsuccessful appeal to the General Court (GC) (T-450/09), as mentioned, in 2016 the CJEU set aside the GC decision in its entirety and gave final ruling on the matter. The CJEU only considered the ground concerning alleged infringement of Article 7(1)(e)(ii) EUTMR, and upheld Simba Toys’s ground of appeal: the GC had interpreted the absolute ground too narrowly. According to the CJEU, the EUIPO and the GC should have taken into consideration, not just the sign's representation, but also non-visible functional elements of the product represented by that shape, such as its rotating capability.

The matter thus returned to the EUIPO. In 2017, the First Board of Appeal invalidated the registration in its entirety and cancelled the trade mark from the register. A further appeal to the GC naturally followed. 

Yesterday’s ruling 

General principles

Having recalled that shapes can be in principle be registered as trade marks, the GC revisited the rationale of the absolute ground in Article 7(1)(e)(ii), relying in particular on the CJEU Lego Juris decision.

The rationale of the ground is twofold. It seeks to prevent trade mark law from: (1) granting an undertaking a monopoly on technical solutions or functional characteristics of a product and (2) unduly supplementing the protection afforded under time-limited, expired IPRs, especially patents

Moving from the consideration that any shape can be functional to some extent, EU legislature limited the application of the absolute ground only to signs consisting ‘exclusively’ of the shape (and now, also, ‘another characteristic’), which is ‘necessary’ to obtain a technical result. 

Then, the CG recalled that, in order to determine applicability of the ground, it is necessary to identify the ‘essential characteristics’, that is the most important elements, of the sign at issue. This should be done on a case-by-case basis, as there is no hierarchy that applies systematically between the various types of elements of which a sign may consist. So, the essential characteristics could be identified on the basis of the overall impression produced by the sign or through an examination of the various components thereof, by means of a simple visual analysis or through a detailed examination which takes into account, eg, surveys, expert opinions, or data relating to earlier IPRs. 

Further to the identification of a sign’s own ‘essential characteristics’, the competent authority needs to determine whether they all perform a technical function with regard to the goods at issue, eg by taking into account previous patents. If there is a non-functional element that plays an important role, then the shape at issue would not fall within the scope of application of Article 7(1)(e)(ii). 

Playing with the Rubik's Cube at 00:00:01 ...

Rubik’s Brand submitted that the Board of Appeal had incorrectly stated that a ‘reasonably discerning observer’ would perceive that one face of the cube shows little squares pictured in white, and the rest of the faces are differently hatched in order to suggest different colours. Furthermore, in only considering the graphic representation of the sign, the Board had erred in finding that the ‘differences in the colours on the six faces of the cube’ constituted an essential characteristic of the contested mark. 

The GC agreed with the applicant in relation to the latter point, finding that the Board of Appeal had clearly intended to state that the six faces of the cube were covered by six different colours. This, however, could not be inferred from the representation of the sign alone (as mentioned, the application carried no description). 

Hence, the essential characteristic of the sign “are limited to the overall cube shape, on the one hand, and to the black lines and little squares on each face of the cube, on the other.” 

All this said, however, this error of assessment of the Board would not affect the legality of its decision. Among other things, in line with the Philips judgment, the GC rejected the argument put forward by the applicant that there are alternative geometrical shapes capable of achieving the same intended technical result as that of the actual goods concerned. In fact,
the registration as a trade mark of a shape is likely to allow the proprietor of that trade mark to prevent other undertakings not only from using the same shape, but also from using similar shapes. A significant number of alternative shapes might therefore become unusable for that proprietor’s competitors
Following a lengthy analysis, the GC summed up the test to that should be applied as follows: 
the absolute ground for refusal provided for in Article 7(1)(e)(ii) of Regulation No 40/94 may apply to signs consisting of the shape of goods the graphic representation of which does not reveal all the elements which are necessary for the implementation of the technical solution concerned, provided it is shown that the implementation of that technical solution cannot be effective without the essential characteristics which are visible in that graphic representation. Moreover, such a consideration underpinned the decision of the Court of Justice to set aside the original judgment in the judgment on appeal. It is apparent from that judgment on appeal that the fact that the rotating capability of the vertical and horizontal lattices of the ‘Rubik’s Cube’ resulted from a mechanism internal to the cube, that is, an element which was not visible in the graphic representation of the contested mark, did not prevent the Board of Appeal from being able to have regard to that rotating capability in its analysis of the functionality of the essential characteristics of that mark. 
As EUIPO also quite rightly points out, if the prohibition under Article 7(1)(e)(ii) of Regulation No 40/94 only applied to shapes the graphic representation of which reveals all the characteristics allowing a product to perform its technical function, it could easily be circumvented. It would be sufficient to omit, in the graphic representation, a characteristic without which that technical function could not be achieved, notwithstanding the fact that that function requires the presence of all the essential characteristics displayed in the sign at issue. If this were the case, the provision referred to above would not safeguard the public interest in competitors being able to use technical solutions which are not, or no longer, protected by a patent. 
In the present case, given that the two characteristics of the contested mark which have been correctly identified as essential by the Board of Appeal, in the present case the overall cube shape, on the one hand, and the black lines and the little squares on each face of the cube, on the other, are necessary to obtain the intended technical result of the actual goods concerned (see paragraphs 85 to 90 above), it must be concluded that that mark falls within the ground referred to in Article 7(1)(e)(ii) of Regulation No 40/94.
In conclusion, the GC confirmed that the mark should be cancelled in that it is a sign that consists exclusively of the shape of goods which is necessary to obtain a technical result.

... and at 00:02:00

The interpretation of the absolute grounds for refusal in Article 7(1)(e) EUTMR/4(1)(e) EUTMD has often proved problematic and uncertain.

Despite the relatively intuitive justification for such exclusions, the laconic wording of the law, together with the plethora of contradictory decisions issued, even in relation to the same shape (the Rubik's Cube trade mark is a clear example), have made it difficult to define the correct application of the grounds, as well as their relevant limitations.

Similarly, uncertainties have arisen in relation to how the assessment is to be conducted. The fact that the case law (including this decision) has considered that this depends on the circumstances at issue and that the relevant examination can be conducted in different ways has reinforced an idea of 'variability' in the application of the grounds.

Going back to the Rubik's Cube ... was yesterday's decision the end of the story? This may be a question that is as difficult to answer as solving the famous puzzle.

[Originally published on The IPKat on 25 October 2019]

Sunday, 20 October 2019

A European perspective on paparazzi photographs of celebrities and lawsuits against celebrities over the posting of photographs of themselves

Over the past few months several media outlets have been reporting on a series of copyright lawsuits filed in the US against celebrities over their social media (in particular: Instagram) feeds [Katposts by Hayleigh herehere, and here]

Whilst some of these lawsuits concerned fairly straightforward issues, that is the publication of third-party photographs portraying third parties [eg, Versace publishing a photograph of Jennifer Lopez wearing Versace: here; or super-model Gigi Hadid posting a picture of her boyfriend Zayn Malikhere], others are potentially more intriguing in that they relate to the publication by celebrities of photographs of themselves. 

The first of this series of recent lawsuits is the one concerning the publication, by Gigi Hadid on her Instagram account, of this photograph of herself taken by a paparazzo: 

The complaint was eventually dismissed because plaintiff had failed to comply with the registration requirement under US copyright law. Indeed, “the registration requirement is “[a] statutory condition” under which a plaintiff must obtain registration of a copyright in a work “before filing a lawsuit” based on infringement of that work.” 

From a substantial standpoint, the first Gigi Hadid copyright infringement case was interesting for the variety of arguments raised by the defendant model, ranging from publicity to fair use and implied licence issues. 

In the wake of this case, some commentators have raised the question whether Hadid could have made an additional argument, that is that she would be the joint author of the work on grounds that she did contribute sufficient authorship to the creation of the photographer’s work. Apparently, as of today, there has been no case decided by a US court regarding a joint authorship claim as relating to paparazzi photographs. 

What would happen, however, if a case like the Hadid one was litigated in Europe? Let's consider some preliminary issues in this post, concerning in particular copyright subsistence in a paparazzo photograph and the question of authorship.

A European perspective on celebrities posting photographs of themselves without authorization

(1) Originality 

The first aspect to clarify in a case in which the photograph at issue is a paparazzo photograph would  - or, more likely, should - be whether, indeed, a work of this kind could even enjoy copyright protection at all. 

It is apparent that the concept of originality mandated by EU law (or, rather, case law of the Court of Justice of the European Union (CJEU)) requires (way) more than just skill, labour or effort, that is all elements that might be present in a photograph taken by a paparazzo who has waited for a long time for the target celebrity to arrive in a specific place, etc. 

What the CJEU case law mandates is that the work at issue is ‘its author’s own intellectual creation’, in the sense that it is the result of ‘free and creative choices’ and ultimately carries the author’s own ‘personal touch’. 

The CJEU recently summarized 10 years of EU case law on originality in its decision in Funke Medien [Katpost here]
[I]t is for the national court to ascertain whether […] the author was able to make free and creative choices capable of conveying to the reader the originality of the subject matter at issue, the originality of which arises from the choice, sequence and combination of the words by which the author expressed his or her creativity in an original manner and achieved a result which is an intellectual creation […], whereas the mere intellectual effort and skill [is] not relevant in that regard 
With specific regard to portrait photographs, in Painer the CJEU considered that an author can make ‘free and creative choices’ at different stages of the production of a photograph: 
In the preparation phase, the photographer can choose the background, the subject’s pose and the lighting. When taking a portrait photograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the one he wishes to adopt or, where appropriate, use computer software. 
Arguably, very few (if any) of these elements are actually ‘chosen’ by the paparazzo when taking a photograph on the street, as his/her actions depend on where the celebrity at issue decides to appear and how he/she decides to behave. It is the celebrity who decides the pose and expression that he/she wishes to assume. 

In sum, the unauthorized reposting of a paparazzo photograph might not be even an infringement of copyright due to the fact that copyright would not even subsist in such work. 

This said, however, simple photographs like paparazzi photographs could be still protected by applicable sui generis national rights (where available), in accordance with what Article 6 of the Term Directive expressly allows

(2) Authorship and joint authorship

Assuming that the photograph at issue is sufficiently original, one could consider more closely the argument raised that the celebrity portrayed in the photograph is to be considered joint author of that work. 

(Unfortunately), authorship and joint authorship are not (yet) areas of copyright in respect of which the EU (or the CJEU) has undertaken a general harmonization (there has only been some limited harmonization for certain types of works). Recital 14 of the Term Directive sums it up rather bluntly: 
The question of authorship of the whole or a part of a work is a question of fact which the national courts may have to decide. 
If we take the case of the UK, very recently the Court of Appeal of England and Wales revisited the issue of joint authorship in Kogan v Martin, adopting a somewhat different approach from the one envisaged at first instance [Katpost here]. In its decision, the Court of Appeal revisited the law – or, rather, the case law – on joint authorship and spelled out that there are three key criteria that need to be satisfied:
  • First, there must be a collaboration between the authors, in the sense of a ‘joint project’; 
  • The second element is authorship. By relying on the position adopted by Laddie J in Cala Homes, the court rejected the view that only those ‘who pushed the pen’ are joint authors: “It is the skill and effort involved in creating, selecting or gathering together the detailed concepts or emotions which the words have fixed in writing which is protected”;
  • Finally, the contribution made by a joint author must be an 'authorial' one.
The position of the court is intriguing: whilst in the case of a celebrity photographed on the street without any prior warning, it appears unlikely that a collaboration could be envisaged, things might be different at, eg, red carpets, film premieres, awards ceremonies etc, that is in all those situations in which a celebrity knows that there will be photographers and actually accepts to pose for them. In all these instances, in fact, it might not be impossible to advance successfully the view that, indeed, the celebrity at issue is joint author of the photograph:

(3) Image rights 

An additional point to consider is not one relating explicitly to copyright, but rather image rights. As readers know, this is a profoundly un-harmonized area of the law, and different approaches are in place across different EU Member States. 

Whilst continental European jurisdictions have long-standing histories of image rights protection (and often image rights are also included in national copyright statutes), this is not the case of jurisdictions like the UK, in which protection is only available on a fragmentary basis through reliance on different causes of action, including inherently flexible actions like passing off (as in the Rihanna case [here], the outcome of which heavily depended on the background facts), breach of confidence, and – more recently – misuse of private information, etc. 

Kats (with celebrities)
(source: Zimbio)

This post has focused on preliminary copyright issues, notably the question of originality and authorship/joint authorship of celebrity paparazzi photographs (issues like licensing and copyright exceptions and limitations have been left out of the analysis). 

Generally speaking, it may be questionable that copyright protection could be successfully invoked for all photographs whose only merit appears to be that of being at the right place at the right. In his decision in the Red Bus case, Judge Birss QC (as he then was) suggested that one thing is a photograph whose composition also includes elements arising from being at the right place at the right time and another thing is a 'mere photograph', that is "an image which is nothing more than the result of happening to click [one's own] camera in the right place at the right time." While the former situation might give rise to originality, the latter would not be enough for copyright protection to arise. In the case of paparazzi photographs taken in the street, where indeed it is mostly about 'being in the right place the right time', the same might be argued.

As discussed, arguments relating to joint authorship, especially in photographs for which the celebrity at issue has actually willingly posed, might not be unconceivable to advance, also considering that the inclusion of the celebrity at issue is what makes the photograph actually 'original' (and valuable): it is not really the background, the lighting, the angle, etc.  

What do readers think?

[Originally published on The IPKat on 20 October 2019]

Wednesday, 2 October 2019

New CJEU referral on right of communication to the public ... this time on seeding and de minimis threshold

A different type of 'seeding' ...
The IPKat has just learned that a new referral on, inter alia, the interpretation of Article 3(1) of the InfoSoc Directive has just been made to the Court of Justice of the European Union in relation to 'seeding'. 

First of all: what is 'seeding'? As explained by the relevant Wikipedia entry,
In computing and specifically peer-to-peer file sharing, seeding is the uploading of already downloaded content for others to download from. A peer, a computer that is connected to the network, becomes a seed when having acquired the entire set of data it tries to download. This data consists of small parts so that seeds can effectively share their content with other peers, handing out the missing pieces. A peer deliberately chooses to become a seed by leaving the upload task active when content is downloaded. This means that there should be motivation to seed. The opposite of a seed is a leech, a peer that downloads more than they upload.
The case is C-597/19. The questions referred are not yet available on the Curia website, but can be read on the website of the UK Intellectual Property Office:

1(a) Can the downloading of a file via a peer-to-peer network and the simultaneous provision for uploading of parts (‘pieces’) thereof (which may be very fragmentary as compared to the whole) (‘seeding’) be regarded as a communication to the public within the meaning of Article 3(1) of Directive 2001/29, even if the individual pieces as such are unusable? If so,
(b) is there a de minimis threshold above which the seeding of those pieces would constitute a communication to the public?
(c) is the fact that seeding can take place automatically (as a result of the torrent client’s settings), and thus without the user’s knowledge, relevant?
2(a) Can a person who is the contractual holder of the copyright (or related rights), but does not himself exploit those rights and merely claims damages from alleged infringers - and whose economic business model thus depends on the existence of piracy, not on combating it - enjoy the same rights as those conferred by Chapter II of Directive 2004/48 on authors or licence holders who do exploit copyright in the normal way?
(b) How can the licence holder in that case have suffered ‘prejudice’ (within the meaning of Article 13 of Directive 2004/48) as a result of the infringement?

Are the specific circumstances set out in questions 1 and 2 relevant when assessing the correct balance to be struck between, on the one hand, the enforcement of intellectual property rights and, on the other, the rights and freedoms safeguarded by the Charter, such as respect for private life and protection of personal data, in particular in the context of the assessment of proportionality?
Is, in all those circumstances, the systematic registration and general further processing of the IP-addresses of a ‘swarm’ of ‘seeders’ (by the licence holder himself, and by a third party on his behalf) legitimate under the General Data Protection Regulation, and specifically under Article 6(1)(f) thereof?
.... that Kats do appreciate!
As readers know, the CJEU has already clarified that, for there to be an act of communication to the public, what is required is (1) an act of communication to (2) a public. In addition, other interdependent, non-autonomous criteria might also come into consideration depending on the context, eg whether the defendant pursues a profit-making intention in linking cases.

However, the question whether, besides all this, there is also a de minimis threshold that needs to be passed in relation to what is actually communicated is an interesting one. Unlike the right of reproduction in Article 2 of the InfoSoc Directive, in fact, Article 3(1) does not refer to the communication of a work "in whole or in part". Hence, it may not be readily apparent whether there can be a communication also when what is being communicated is not a 'work' as a whole, but rather 'individual pieces' which are unusable.

All this said, what seems required to answer the question is - once again - consideration of what is meant by 'work'. The CJEU recently clarified that in its rulings in Levola Hengelo [hereand Cofemel [here]: for there to be a 'work', "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".

It would appear that the fact that the fact the individual pieces are unusable does not necessarily imply that they cannot be protected, if they are a 'work' as defined above (and are sufficiently 'original'). 

However, in a recent case - Pelham - concerning the right of reproduction of phonogram producers, the CJEU adopted an (odd) distinction [see herebetween samples recognizable to the ear (which the right of reproduction would cover) and samples unrecognizable to the ear (which the right of reproduction would not cover). The Court did not clarify how such recognizability is to be assessed and from the perspective of whom. 

All in all, this referral appears an important one to watch, also considering:
  • the technological implications (what is relevant: is it the process as a whole, or rather its individual parts?)
  • the question relating to the GDPR
  • issues of proportionality and fundamental rights
[Originally published on The IPKat on 27 September 2019]