Tuesday, 19 May 2020

Milan court rules against Antonio Marras over unauthorized use of howling wolf photograph

Last month, the Milan Court of First Instance issued a decision (sentenza 2539/2020, available on darts-ip and already commented here) concerning the alleged infringement, by fashion house Antonio Marras, of copyright (both economic and moral rights) in the photograph below, which the latter had used without the photographer’s authorization in its Fall/Winter 2014-15 fashion collection and campaign:

The claimant's work (L) and an item from the Antonio Marras Fall/Winter 2014-15 collection
The court sided with the claimant, having established that his photograph – which has been also registered with the US Copyright Office - would qualify for protection under the ‘ordinary’ copyright regime.

Under Italian law, in fact, photographs may be protected in two ways: on the one hand, there is the ordinary copyright regime, which is available to photographs that display a ‘creative character’ under Articles 1 and 2 No 7 of the Italian Copyright Act; on the other hand, simple photographs (fotografie semplici) are eligible for a 20-year term of protection, in accordance with what is allowed under Article 6 of the Term Directive and the regime in Articles 87-92 of the Italian Copyright Act.

The defendant’s arguments

Defendant Antonio Marras had submitted that the claimant’s photograph would not qualify for copyright protection, it being devoid of “any particular artistic, creative or in any case distinctive [sic] character”. It had also noted that, whilst the photograph had been taken from the internet, it was not eventually used in the campaign. Rather, it was included in the collection’s moodboard as a source of inspiration for the designer.

Additionally, if such photograph was to be protected, the applicable regime would be that of simple photographs rather than copyright. If accepted, this would have meant that no infringement could subsist, since the photograph had been taken in 1993 and the campaign was the one for the 2014-15 season.

The decision

The Court rejected the defendant’s arguments. First, it found that the claimant's photograph had been actually used (see above). Secondly, it established that the claimant’s photograph would qualify for the ordinary copyright regime. 

The Court recalled that, whilst copyright protection is available subject to the photograph at issue displaying the personal touch of the author and their choice and study of the portrayed subject, protection under the simple photographs regime is for photographs that are “a mere representation of reality, albeit that is through particularly refined or complex photographic techniques”.

Focusing on the copyright regime, the Court referred to the decision of the Court of Justice of the European Union (CJEU) in Painer, C-145/10, which held that “an intellectual creation is an author’s own if it reflects the author’s personality. That is the case if the author was able to express his creative abilities in the production of the work by making free and creative choices” (at [88]-[89]).

According to the Milan court, the author’s personality is visible when the choices made are “supported by a clear artistic ability that goes beyond a simple photographic reporting”. However, ‘artistic ability’ is irrespective of the quality of the shot.

Applying these principles to the case at hand, the Court found that the claimant had carefully chosen:
  • the subject of his photograph (the wolf in its natural environment);
  • the precise moment he wanted to capture (the howling wolf);
  • the angle and technique of the photograph, as well as the lighting and the frame, so to evoke precise emotions in the viewer that would go beyond the reality represented in the photograph.
The Court could have stopped here (the Painer CJEU decision only requires consideration of what free and creative choices have been made so that the personal touch of the author is visible in the creative result), but instead – to strengthen its conclusion – deemed it necessary to note: 
  • the US copyright registration; 
  • the inclusion of the photograph in a published book; 
  • the creative quality similar to that of photographs published on magazines like National Geographic and Nikon Learn&Explore
  • the appreciation by commercial operators; 
  • that the claimant's work is one of the first images returned by Google upon searching “howling wolf” or “lupo ululante”.
The Court also recalled that the mere fact that a photograph is publicly available does not mean that it is also in the public domain (😅). It pointed out that, moreover, a fashion business like the defendant could not be unaware of this.

The iconic Falcone and Borsellino photograph
was found to be ineligible for copyright protection

The outcome of this case is not surprising or, rather, should not be surprising. 

However, it may not be a given that a photograph, even a well-known one, is deemed eligible for copyright protection rather than for the simple photographs regime. 

Readers may indeed remember that, not too long ago, the Rome Court of First Instance ruled that an iconic photograph of judges Falcone and Borsellino (left) would not qualify for copyright protection, on consideration that the photographer had merely happened to be in the right place at the right time [Katpost here]

But are the choices made by the photographer of that historical shot very much or - rather - any different from those made by the claimant in the Marras case? Probably not.

[Originally published on The IPKat on 19 May 2020]

Sunday, 10 May 2020

Italian Supreme Court applies CJEU Cofemel decision to makeup store layout

A KIKO store
A couple of years ago, The IPKat reported on the interesting decision of the Court of Appeal of  inter alia, copyright protection of makeup producer and retailer KIKO's store layout under Italian law.
Milan in a case concerning,

The ruling, which upheld the decision at first instance, confirmed that the layout of KIKO concept stores – notably the way in which the various elements used to furnish such stores are combined, coordinated and assembled – is eligible for protection under Article 2 No 5 of the Italian Copyright Act as as an architectural plan. It also found that defendant WYCON’s stores had infringed copyright in it.

Now, the Italian Supreme Court has confirmed the appropriateness of this conclusion [this court is not a court on the merits, and may only be seized on issues concerning the correct interpretation of the law] in a decision published earlier this week (decision 780/2020).

Of the twelve grounds of appeal filed by WYCON, one is particularly interesting and deserving of attention, as it allowed the Supreme Court to assess – in what appears to be the first opportunity for the highest Italian court to do so – the implications of the recent decision of the Court of Justice of the European Union (CJEU) in Cofemel, C-683/17 [Katpost here].

The CJEU Cofemel ruling

As readers will remember, in that seminal ruling, the CJEU held that copyright in a design would only arise subject to the design at issue being original. In so doing, the EU court confirmed what had been in the air during the previous decade of CJEU case law, ie that the only requirements for copyright protection are:
  1. a work, in the sense clarified in Levola Hengelo, C-310/17 [Katpost here] of – I add (though the CJEU has yet to be asked who/what an authors is under EU law) – authorship, which is
  2. sufficiently original, in the sense progressively clarified through a string of decisions, starting with the 2009 decision in Infopaq, C-5/08 [10-year anniversary Katpost here].
Protection of a store layout: copyright or design?

Both at first instance and on appeal, the KIKO store layout had been qualified as an architectural work consisting of a “successful and creative combination” of various elements. However, WYCON had submitted that the architectural plan at issue would not be fully defined in all its formal expressive aspects: rather, it would be a basic indication – subject to variations - of the way in which the various objects should be placed within the individual stores.

The Supreme Court noted that, while ideas are not protectable per se, the decision on appeal had correctly interpreted the law and found that the plan did not consist of a series of “abstract indications”. Rather, the plan had a specific expressive form which included “a series of elements, whose choice, coordination and organization displayed the required creative character.”

WYCON had also submitted that that the Court of Appeal had incorrectly qualified the KIKO concept store layout as a work of architecture. Instead, it should have assessed its protectability as a design under Article 2, No 10 of the Italian Copyright Act.

Whilst Italian copyright law envisages an open-ended list of protectable subject-matter, traditionally – as it was has been the case, at least pre-Cofemel, in several other EU Member States – designs have been held eligible for copyright protection subject to fulfilling an ‘artistic value’ requirement that would go beyond the originality of the object at issue.

A WYCON store
Qualification of a store layout as an architectural work

The Supreme Court noted that – from Cofemel – it descends that, whilst copyright and design protection can subsist simultaneously, they also pursue different objectives and are subjected to different requirements. Hence:
The EU Court has thus confirmed that the subsistence of originality as required under copyright, that is the subsistence of a well-defined and creative expressive form, which reflects the free choices and personality of its author, does not also imply that it produces a visually relevant effect from an aesthetic standpoint, as it is instead required for protection as a design. [my own translation from Italian] 
From all this the Italian Supreme Court derived the following legal principle:
An interior design plan or work, which reflects a unitary project that adopts a well-defined and visually relevant scheme displaying a clear ‘stylistic key’, concerning individual elements that are organized and coordinated to render a certain environment functional and harmonic, that is [something that reflects] the personal touch of the author, is protectable as an architectural work, in accordance with Article 5 No 2 of the Italian Copyright Act[. It is] irrelevant whether such elements are necessarily part of a building or the individual furnishing elements are simple, common or have been already employed in the interior design sector, as long as [the project] results from an original combination, which is not imposed by choices of the author aimed at solving a technical-functional problem. [my own translation from Italian]
To be protectable by copyright, an architectural plan or work needs to be
always identifiable and recognizable from the point of view of its formal expression as an author’s own unitary work, which consists of precise choices concerning the composition of the various elements (eg, the colours of the walls, particular lighting effects, the consistent repetition of decorative elements, the use of certain materials, the size and proportions). Indeed, any exclusive rights vest in the overall combination [of the various elements], the unitary work of space organization, the combined use of the various furnishing elements in accordance with a unitary organizational plan. [my own translation from Italian]
Mirror, mirror on the wall,
who's the fairest of them all?
Relevance of the ruling: copyright and rights cumulation

The Supreme Court's decision is equally important under Italian and EU copyright law.

Starting with the former, it brings clarity regarding the requirements of protection for works, like architectural ones, which result from creative and functional considerations and choices alike.

Turning to the latter, the judgment confirms a reading of the CJEU Cofemel ruling which is in line with the first national application thereof, that is the English Intellectual Property Enterprise Court (IPEC) decision in Response Clothing [commented on The IPKat here].

In addition, the KIKO judgment also contains valuable remarks regarding cumulation of IP rights, notably trade marks and copyright.

The Supreme Court recalled in fact that the CJEU had acknowledged – in Apple, C-421/13 [IPKat post here– that a store layout could be in principle registered as a trade mark insofar as it possesses distinctive character.

In 2016, the EUIPO First Board of Appeal confirmed refusal to register KIKO store layout as a trade mark due to lack of distinctive character.

According to the Supreme Court, all this should not be relevant to determine copyright subsistence, as the requirement of distinctive character under trade mark is different and is assessed differently from that of originality under copyright law.

This conclusion, which appears both appropriate and correct, is also in line with the position of the CJEU itself. It is sufficient to recall that, only a few days ago, in its important judgment in Gömböc, C-237/19 [IPKats posts here and here], the CJEU held that each IP right has its own subsistence requirements and the analysis required to determine protection under one right is different from that mandated under other rights. The EU court considered that, whilst prior IP protection is not irrelevant, it should not lead to the "systematic" conclusion that an object cannot be protected by other IP rights because of that. 

Mutatis mutandis, in the KIKO case, the Italian Supreme Court made it clear that prior refusal to protect the KIKO store layout by means of a trade mark would not exclude protection of the same under copyright.

[Originally published on The IPKat on 10 May 2020]

Saturday, 2 May 2020

The non-systematic relevance of earlier IP rights: from Gömböc to Brompton Bicycle

mathematical discovery
and a trade mark at once?
A few days ago, the Court of Justice of the European Union (CJEU) issued its judgment in the important Gömböc referral (C-237/19) [see here for a discussion of the background].

The decision, which is analyzed in detail on The IPKat here and has been also discussed in the context of the Journal of Intellectual Property Law & Practice’s first EU trade mark live webinar [from 1:06:00; for the dates of the next webinars, see here], is equally relevant to trade mark law (it was indeed a trade mark case concerning protection of 3D marks) and other IP rights (IPRs), including copyright.

Assessment of functionality

As far as trade marks are concerned, the most valuable aspect of the judgment is perhaps the one concerning how the assessment of ‘technical’ and ‘aesthetic functionality’ is to be conducted under what is currently Article 7(1)(e) EUTMR/4(1)(e) EUTMD.

Indeed, as discussed at greater length here, pre-Gömböc case law did not exhaustively clarify to what extent a combination of different objective elements (starting from the graphic representation and the accompanying description) and subjective elements (including the consumers’ perception and the reputation enjoyed by the product), should be considered and what the hierarchy (if any) between them is or should be.

With particular regard to the latter, the question of how both the role/perception of the average consumer and the relevance of reputation are to be assessed has remained uncertain for a long time, with some relevant insights being provided recently more by Advocates General (notably in the Opinions in Hauck and the two Louboutin Opinions) than the CJEU.

In Gömböc, the CJEU answered that the relevant public’s own perception of the sign matters, though it may matter differently when appreciating technical functionality vis-à-vis aesthetic functionality, and also clarified - substantially in line with, e.g., the First Opinion of Advocate General (AG) Szpunar in Louboutin - that account must not be taken of the attractiveness of the goods as flowing from the reputation of the mark or its proprietor.

Rights cumulation

Another key aspect, the relevance of which extends well beyond the realm of trade marks, concerns pre-existing IPRs (in that case, design protection) and their role to determine protection under other IPRs. 

It is sufficient to think, in fact, that currently there is a copyright case pending before the CJEU, Brompton Bicycle (C-833/18), asking indeed about copyright protection of technical shapes [see herehere and here, and here]. In the background national proceedings, the shape at issue is that of Brompton Bicycle’s folding bike.

In Gömböc, the referring court had asked inter alia whether the substantial value ground “must be applied systematically … where the appearance of that product enjoys protection under the law relating to designs”.

Disclaimer: not a gömböc
The answer, in principle, is in the negative: nothing prevents IPR cumulation. Although the objective of the absolute grounds in Article 7(1)(e) EUTMR/4(1)(e) EUTMD is “to prevent the exclusive and permanent right that a trade mark confers from serving to extend indefinitely the life of other rights in respect of which the EU legislature has sought to impose time limits …, such an objective does not mean that EU intellectual property law prevents the coexistence of several forms of legal protection.” (at [50])

Each IPR has its own subsistence requirements and the analysis required to determine whether, e.g., a design possesses individual character is different from that that serves to establish whether the sign at issue consists exclusively of a shape or another characteristic which gives substantial value to the goods.

It thus follows that:
the ground for refusal of registration provided for in that provision must not be applied systematically to a sign which consists exclusively of the shape of the product where that sign enjoys protection under the law relating to designs or where the sign consists exclusively of the shape of a decorative item. (emphasis added; at [62])
Relevance of the CJEU’s position beyond the realm of trade marks

Even if historically the cumulative protection of the same object under different IPRs was disallowed in certain jurisdictions on consideration of the demarcation between the subject matter protected by patent, copyright and trade mark law (see, e.g., the discussion here), shapes (or other characteristics) are currently not precluded from being simultaneously protected by different rights and no impediments subsist for a shape protected by a certain IPR (whether expired or not) to be also protected by means of another IPR.

Overlaps in IP protection are also the result of the progressive expansion of the scope of the various rights beyond their original remit and are not necessarily problematic per se, considering the multifaceted nature of many objects or invention or creation, the different rationale underlying the various rights, as well as the different protection available under each of them. 

In light of the foregoing, the CJEU conclusion in Gömböc appears neither surprising nor inappropriate.

In Hauck the CJEU had also suggested that prior IP protection is one of the factors that might weigh in favour of a finding that the shape or characteristic at issue confers a substantial value to the goods [for a practical application, see the English London Taxi case, discussed here].

What is however significant about this latest judgment is the emphasis placed on the fact that the assessment to be conducted requires consideration of, first, the different requirements that need to be fulfilled to receive protection under different IPRs and, second, the fact that an object protected by an earlier right is not “systematically” disqualified from protection under another right.

Brompton Bicycle (top) and
allegedly infringing shape (bottom)
In the pending Brompton Bicycle referral, one of the issues for the CJEU to address is the relevance of the existence of an earlier IPR (an expired patent) to the determination of copyright subsistence in the object covered by it. In his Opinion, AG Campos reviewed CJEU trade mark case law and considered that – to establish copyright protection – it might be necessary to take into account, inter alia, the prior existence of a patent or design right and, closely linked to that, the intention of the author/inventor/designer.

Also in light of what the CJEU established in Gömböc, whilst prior IP protection is not irrelevant, it should not lead to the systematic conclusion that an object cannot be protected by other IP rights because of that. In addition, it would be also incorrect to suggest that everything that is described in, e.g., a patent application as contributing to the functionality of the object at issue automatically disqualifies a finding of originality in relation to such features. It would be inappropriate to merge and confuse the requirements for patent registration and those for copyright protection.

Another incorrect approach would be to consider relevant, as instead AG Campos did in his Opinion, the intention of the author/inventor designer. I have already criticized this part of the Opinion here. In this context, I would also add that, taking into account the intention of the author, e.g., the fact that they applied for a patent or a design right, could lead to the undue systematic exclusion of protection of the same object through a right other than the one originally applied for. After Gömböc, there is further support as to why this approach should not be adopted.

[Originally published on The IPKat on 2 May 2020]