Thursday, 25 June 2020

ECtHR finds Russian website blocking approach contrary to Article 10 ECHR (freedom of expression and information)

Earlier this week, the European Court of Human Rights (ECtHR) had the opportunity to assess website blocking from the perspective of freedom of expression under Article 10 of the European Convention on Human Rights (ECHR) in its judgment in Vladimir Kharitonov v Russia [see here and here for the commentaries of two of the third-party interveners in the case].


The applicant, Mr Kharitonov, is the owner and administrator of the website Electronic Publishing News (, which features a compilation of news, articles and reviews about electronic publishing.

The website is hosted by DreamHost, a service which hosts multiple websites, all with the same IP address but different domain names.

In late 2012, the applicant became aware that access to his website had been blocked by a number of Russian ISPs as a result of an order of the Russian telecoms regulator (Roskomnadzor) which, in turn, had given effect to a decision of the Federal Drug Control Service. The order was directed at blocking another website, (“a collection of cannabis-themed folk stories”), also hosted by DreamHost and sharing the same IP address as Electronic Publishing News.

On 22 March 2013, the blocking of the IP address ceased.

Mr Kharitonov brought a claim to the Taganskiy District Court in Moscow, arguing that the decision to block the entire IP address had resulted in the undue blocking of his website, which did not contain any illegal information.

The action at both first instance and on appeal failed. In 2014, the Constitutional Court also refused to consider a separate application filed by Kharitonov, who eventually decided to bring his case against Russia to the ECtHR.

His key argument was that Russian authorities’ decision to block access to the offending website by blacklisting its IP address, whilst pursuing the legitimate aim of blocking access to information about the production and use of drugs (which, however, was not what did), had also had the disproportionate collateral effect of blocking access to his website and would thus be contrary to Articles 10 and 13 ECHR.

With particular regard to the Article 10 violation, the ECHR reasoned as follows.

Effective ...
The decision

The Court began its assessment by referring to its prior decision in Ahmet Yıldırım v Turkey. Having noted the importance of the internet to the exercise of freedom of expression and information, the ECtHR recalled that “measures blocking access to websites are bound to have an influence on the accessibility of the Internet and, accordingly, engage the responsibility of the respondent State under Article 10”.

In the present case, the applicant had been prevented from sharing the latest developments and news about electronic publishing (that is: exercising his freedom to impart information), while visitors to his website had had their freedom to receive information compressed. Hence, “such interference will constitute a breach of Article 10 unless it is “prescribed by law”, pursues one or more of the legitimate aims referred to in Article 10 § 2 and is “necessary in a democratic society” to achieve those aims.”

Under domestic law, the legal basis for the blocking had been section 15.1 of the Russian Information Act, which – noted the Court “with concern” – allows targeting an entire website without distinguishing between the legal and illegal content that it may contain:
Reiterating that the wholesale blocking of access to an entire website is an extreme measure which has been compared to banning a newspaper or television station, the Court considers that a legal provision giving an executive agency so broad a discretion carries a risk of content being blocked arbitrarily and excessively [emphasis added]
This said, the requirement of “prescribed by law” is not only fulfilled when the relevant authority acts in accordance with the letter of the law. Rather:
The Court must also ascertain whether the quality of the law in question enabled the applicant to regulate his conduct and protected him against arbitrary interference.
This, concluded the Court, was not the case in the present instance. In addition, the domestic law does not contain any safeguards against abuse, in terms of: 
  • information provided to those whose website would be blocked; 
  • supervision by a court or other independent authority; 
  • ex ante impact assessment of the effects of the blocking; 
  • transparency; and 
  • weighing and balancing of the various interests and rights at hand.
The Court concluded that the applicant’s freedom of expression under Article 10 ECHR had been violated.

... and less effective blocking

As mentioned, the decision afforded the ECHR with the opportunity to review website blocking in light of inter alia Article 10 ECHR. On the one hand, the Court considered that the blocking of an entire website is to be regarded as an “extreme measure”. On the other hand, it did not consider that website blocking orders per se would be contrary to that provision. However, it is necessary that this particular remedy is available within a balanced and carefully drafted legislative framework, which contains a robust and articulated set of safeguards against abuse.

Looking at this ruling from an EU copyright perspective [it might be worth recalling that the ECtHR is not an EU court, nor is the ECHR an EU instrument], the Court’s conclusion is substantially in line with what the Court of Justice of the European Union (CJEU) established in Telekabel [IPKat post here], a referral which considered website blocking orders under Article 8(3) of the InfoSoc Directive.

In that decision, the CJEU specifically conducted an assessment in light of fundamental rights and the principle of proportionality. In considering whether that particular type of intermediary injunction would be compatible with EU law and concluding in the affirmative, the CJEU noted that the rights at issue in a context of this kind would be copyright protection (Article 17(2) of the EU Charter of Fundamental Rights), freedom to conduct a business (Article 16 of the EU Charter), and freedom of expression and information (Article 11 of the EU Charter). 

Overall, the EU court stated that the measures adopted to implement a blocking order must be strictly targeted: they must serve to bring an end to a third party’s infringement of copyright or of a related right but without thereby affecting internet users who are using the provider’s services in order to lawfully access information. Failing that, the interference in the freedom of information of those users would be unjustified in the light of the objective pursued, and it should be possible for a court to repress any abuses thereof.

Finally, it is also worth noticing that, in order to limit the risk of overblocking whilst enhancing the effectiveness of blocking orders, more recently courts in different European jurisdictions have begun issuing dynamic or live blocking orders. This has been, for instance, the case in the UK [here and here], Italy [here], and Sweden [here]. These measures are said to have achieved both objectives and are increasingly preferred to 'old school' blocking injunctions.

[Originally published on The IPKat on 25 June 2020]

Sunday, 21 June 2020

Italian Supreme Court rules that technical regulation (drafted by an IP lawyer) may be *in principle* protected by copyright

Lively drafting session ...
Is an anticounterfeiting service regulation drafted by an IP lawyer protected by copyright?

This, in a nutshell, is the question at the heart of the dispute initially brought by said IP lawyer against the organizers of a trade fair in the Venice area, who had allegedly copied the regulation that he had drafted.

Last month, the Italian Supreme Court ruled (decision 10300/2020, Casucci v Unipol Assicurazioni S.p.A. and Others, also commented in Italian here) that, in principle, a technical work like that one at hand could be eligible for copyright protection, subject to it being original.


At first instance, the IP lawyer prevailed over the defendants. 

However, in 2016, the Venice Court of Appeal ruled in favour of the defendants/appellants, holding that it was not apparent where the originality – and, thus, protectability - of said regulation would lie, since the regulation at hand was found to be a “standard legal text for technical-professional use”. According to the Court of Appeal, said regulation failed to display, on the side of its drafter, “any peculiar or creative elaboration of legal notions, sector-specific rules, his experiences". Rather, it did only display "practical and functional indications". [my own translation from Italian]

The IP lawyer filed one last appeal to the Italian Supreme Court. This, it is worth recalling, is not a court on the merits, and may only be seized for questions concerning the correct interpretation of the law.

The originality of a technical regulation

According to the IP lawyer, the Venice Court of Appeal had inter alia misinterpreted the Italian Copyright Act by excluding his regulation from copyright protection. According to the lawyer, the court had erroneously focused on the content and function of the regulation, rather than on its expressive form, thus reaching the conclusion that a work with a technical function could not be original.

The Supreme Court rejected this argument. 

First, it noted that the one in question would be an assessment that only a court on the merits could undertake. Secondly, and more interestingly, it recalled that the concept of originality means – as the Court of Justice of the European Union (CJEU) recently summarized in Cofemel at [30] [Katpost here– “that the subject matter reflects the personality of its author, as an expression of his free and creative choices”.

In the present case, the Court of Appeal had not excluded tout court that a technical work could be protected by copyright. Instead, that court had ruled out that that particular regulation would be protected because of the way in which the legal concepts, sector-specific rules, the drafter’s own experiences had been contextualized, organized, and arranged.

In sum: the regulation did not display any peculiar and creative elaboration of such elements on the side of its author. To use the language of the CJEU, the work at issue did not show ‘any free and creative choices’ by its author, so that the work did not carry his ‘personal touch’. 

Although the Italian Supreme Court could not refer to last week’s Brompton Bicycle CJEU judgment [Katpost here] for obvious reasons, it did substantially adopt the same perspective. The present case is one in which the relevant subject matter, whilst dictated by ‘technical considerations’, failed to display that “qualcosa in più” (‘something more’, in the words of the Supreme Court) that goes beyond such considerations and reflects the ‘personality’ of its author.

... with the supervisor's
own finishing, personal touch

The judgment is interesting for a variety of reasons, besides the obvious one that it is relevant to all lawyers – including IP lawyers – drafting documents.

First, the Italian Supreme Court did not exclude that in principle a technical-professional regulation could be eligible for copyright protection, provided that it satisfies the required level of originality. In this sense, it may be worth drawing a comparison with two recent cases tackling copyright protection of somewhat similar types of works, one in Europe and the other in the US. 

In Europe, last March the Lithuanian Supreme Court held (MB “Novus Nexus” v UAB “SOLIDAS”, Case No e3K-3-77-687/2020, 26 March 2020) that draft company documentation adopted in compliance with the EU GDPR would be original and protectable, and would not fall within the exclusion concerning legal acts under Lithuanian law. 

Vice versa, on the other side of the Atlantic, last April the US Supreme Court elaborated upon the  longstanding government edicts doctrine, according to which “no one can own the law”, and ruled (Georgia v Public.Resource.Org.) that annotations of the Official Code of Georgia would be ineligible for copyright protection [Katpost here]

In all this, the Italian Supreme Court’s decision appears to follow an approach that is not too dissimilar from that of the Lithuanian court, though with a different outcome.

In so doing, and as a second point, the Italian Supreme Court substantially adopted the understanding of and approach to originality that is in line with that mandated under EU law. It is true that a technical work may be protected in principle. However, for protection to arise, it is necessary that the author performs free and creative choices that go beyond the choices dictated by technical considerations, rules and constraints, so that the resulting work carries their personal touch.

Finally, it is worth noting that the IP lawyer had further argued in his appeal to the Supreme Court that his regulation would be original also because there would be alternative regulations of the same topic, one produced by the defendants themselves. The Court declared this argument inadmissible.

However, a response to this point can be found in the Brompton Bicycle judgment. There, the CJEU – with specific regard to the existence of other possible shapes which allow the same technical result to be achieved - held (at [35]) that “even though the existence of other possible shapes which can achieve the same technical result makes it possible to establish that there is a possibility of choice, it is not decisive in assessing the factors which influenced the choice made by the creator.” (emphasis added) Mutatis mutandis, the same is true in the context of a legal document.

[Originally published on The IPKat on 21 June 2020]

Thursday, 11 June 2020

BREAKING: CJEU rules that a functional shape may be protected by copyright in so far as it is original

A Brompton Bicycle bike (top) and
its alleged counterfeit (bottom) in the
background national proceedings
Since its seminal ruling Infopaq nearly 11 years ago [Kat-celebration here], the Court of Justice of
the European Union (CJEU) has been contributing fundamentally to both shaping and placing the building blocks of copyright protection in the EU. 

Through a string of decisions (the most important being InfopaqBSAFAPLPainerFootball DatacoSASLevola Hengelo, and Cofemel), the Court has answered the most basic and relevant question: 

When does copyright protection arise?

Today, the CJEU has issued yet another ruling contributing to this very debate.

It did so in the context of a referral from Belgium - Brompton Bicycle, C-833/18 - concerning copyright protection of functional shapes (in the background proceedings, it is the shape of Brompton Bicycle's folding bike) [see here for an explanation of the background to the case].

This referral prompted the Court to: 
  • reflect on the implications of Cofemel, a decision which - in my view - was not surprising at all in light of preceding case law (what was surprising, instead, was the surprise of some commentators 😀[for some early applications in the UK and Italy, see - respectively - here and here]
  • clarify further how the assessment of originality is to be conducted.
A few months ago, Advocate General Campos Sánchez-Bordona offered yet another thought-provoking Opinion [but see some criticisms here; note that the Opinion is not yet available in English], in which he reflected on the above, as well as the evergreen topic of IPR cumulation.

Today's decision

In its 39-paragraph ruling, the CJEU held that copyright protection is in principle available to products whose shape is, at least in part, necessary to obtain a technical result, insofar as "that product is an original work resulting from intellectual creation, in that, through that shape, its author expresses his creative ability in an original manner by making free and creative choices in such a way that that shape reflects his personality".

In achieving this result, the Court reviewed earlier case law and, in line with the Cofemel holding, it confirmed that - for copyright protection to arise - it is "both necessary and sufficient" that the subject matter at hand is original, in the sense that it is its author's own intellectual creation that results from their free and creative choices and reflects their personality.

As the CJEU had held in earlier case law, originality is not fulfilled where the realization of a subject matter has been exclusively dictated by technical considerations, rules or other constraints which have left no room for creative freedom. Indeed:
a subject matter satisfying the condition of originality may be eligible for copyright protection, even if its realisation has been dictated by technical considerations, provided that its being so dictated has not prevented the author from reflecting his personality in that subject matter, as an expression of free and creative choices.
This also follows from the consideration that copyright extends to the expression of ideas, not ideas per se:
the criterion of originality cannot be met by the components of a subject matter which are differentiated only by their technical function. It follows in particular from Article 2 of the WIPO Copyright Treaty that copyright protection does not extend to ideas. Protecting ideas by copyright would amount to making it possible to monopolise ideas, to the detriment, in particular, of technical progress and industrial development (see, to that effect, judgment of 2 May 2012, SAS Institute, C‑406/10, EU:C:2012:259, paragraphs 33 and 40). Where the expression of those components is dictated by their technical function, the different methods of implementing an idea are so limited that the idea and the expression become indissociable (see, to that effect, judgment of 22 December 2010, Bezpečnostní softwarová asociace, C‑393/09, EU:C:2010:816, paragraphs 48 and 49).
As regards the shape of the folding bike at issue in the background proceedings, the CJEU noted that it is for the referring court to determine both whether that product is a 'work' and whether such shape is exclusively dictated by technical considerations, rules or other constraints, which have left no room for creative freedom.

Other criteria?

The referring court had also asked the CJEU to clarify whether, in order to assess whether a shape is necessary to achieve a technical result, account is to be taken of the following criteria:
  1. The existence of other possible shapes which allow the same technical result to be achieved
  2. The effectiveness of the shape in achieving that result
  3. The intention of the alleged infringer to achieve that result
  4. The existence of an earlier, now expired, patent on the process for achieving the technical result sought
The CJEU held that 1. is "not decisive" and 3. is "irrelevant". 

Disclaimer: not a Brompton bike
Turning to 2. and 4., the Court held that "they should be taken into account only in so far as those factors make it possible to reveal what was taken into consideration in choosing the shape of the product concerned."

In any event, it must be noted that, in order to assess whether the folding bicycle at issue in the main proceedings is an original creation and is thus protected by copyright, it is for the referring court to take account of all the relevant aspects of the present case, as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product.

The decision appears in line with earlier case law of the CJEU and builds nicely upon the most recent ruling in this field, this being Cofemel.

The most significant aspects, in my view, are the following.

First, the CJEU rejected the proposal of the Advocate General to take into account, not the intention of the infringer, but rather the intention of the author. As I discussed here, following this approach would have been both an odd departure from earlier CJEU case law and truly undesirable.

Secondly, in line with Cofemel and - in the trade mark field - the recent Gömböc judgment [see here and here- the decision adopts an 'open-minded' approach to IPR cumulation. In the latter case, the Court recalled that each IPR has its own subsistence requirements and the analysis required to determine eligibility for a certain type of right is different from that under other rights. In today's Brompton Bicycle ruling, the Court pointed out that, to determine copyright subsistence, account is only to be taken of the relevant requirements under this right, "as they existed when that subject matter was designed, irrespective of the factors external to and subsequent to the creation of the product", including earlier protection under other IPRs.

[Originally published on The IPKat on 11 June 2020]