Posts tagged " CJEU "

Reproduction of out-of-print books

19 November 2016

The copyright directive precludes national legislation authorising the digital reproduction of out-of-print books in breach of the exclusive rights of authors. National legislation must guarantee the protection accorded to authors by the directive and ensure, in particular, that they are actually informed of the envisaged digital exploitation of their work, while being able to put an end to it without formalities.

In France, ‘out-of-print books’ are defined as books published before 1 January 2001 which are no longer commercially distributed or published in print or in a digital format. According to the French legislation, an approved collecting society, the SOFIA, is responsible for authorising the reproduction and communication, in digital form, of out-of-print books, it being understood that the authors of those books or their successors in title may oppose or put an end to the exercise of those rights under certain conditions.

Two French authors (Marc Soulier, who is better known as Ayerdhal and has since died, and Sara Doke) requested the annulment of a decree specifying certain aspects of the French legislation, claiming that that decree is not compatible with the copyright directive.1 In particular, those authors submit that the French legislation establishes an exception or limitation, not provided for in the directive, to the exclusive rights guaranteed to authors by the directive. The Conseil d’État français (French Council of State), before which the case has been brought, has referred a question to the Court of Justice on this subject.

In today’s judgment, the Court of Justice notes that, subject to the exceptions and limitations expressly provided for in the directive, authors have the exclusive right to authorise or prohibit the reproduction and communication to the public of their works.

However, it holds that the prior consent of an author to the use of one of his works can, under certain conditions, be expressed implicitly. For the existence of such consent to be accepted, the Court considers, in particular, that every author must be informed of the future use of his work by a third party and of the means at his disposal to prevent it if he so wishes.

The French legislation, as it currently stands, provides that the right to authorise the digital exploitation of out-of-print books is transferred to the SOFIA when the authors do not oppose it within a period of six months after the registration of their books in a database established to that effect.

The Court states that the Conseil d’État has not shown that this legislation included a mechanism ensuring authors are actually and individually informed. It is not therefore inconceivable, according to the Court, that some of the authors concerned are not aware of the envisaged use of their works and, consequently, are not able to adopt a position on it. In those circumstances, a mere lack of opposition on their part cannot be regarded as the expression of their implicit consent to the use of their works, especially since it cannot reasonably be presumed that, without opposition on their part, every author of ‘forgotten’ books is in favour of the ‘resurrection’ of those works, in view of their commercial use in adigital format. The Court adds that the pursuit of the objective enabling the digital exploitation of out-of-print books in the cultural interest of consumers and of society, while compatible with the directive as such, cannot justify a derogation not provided for by the EU legislature from the protection that authors are ensured by the directive.

Furthermore, the Court states that the French legislation enables authors to put an end to the commercial exploitation of their works in digital format either by mutual agreement with the publishers of those works in printed format or alone, on condition that they provide evidence that they alone hold the rights in their works.

The Court declares, in this respect, that the right of the author to put an end to the future exploitation of his work in a digital format must be capable of being exercised without having to depend on the concurrent agreement of persons other than those to whom the author had given prior authorisation to proceed with such a digital exploitation and, thus, on the agreement of the publisher holding only the rights of exploitation of that work in a printed format. Moreover, the author of a work must be able to put an end to the exercise of rights of exploitation of that work in digital format without having to submit beforehand to any additional formalities.

Source: Court of Justice of the European Union Press Release, No 126/16, 16 November 2016

CJEU ruling – reselling of a computer program to a new acquirer

26 October 2016

The initial acquirer of a copy of a computer program, accompanied by an unlimited user licence, may resell that copy and his licence to a new acquirer. However, where the original material medium of the copy that was initially delivered has been damaged, destroyed or lost, that acquirer may not provide his back-up copy of that program to that new acquirer without the authorisation of the rightholder.

In Latvia, criminal proceedings have been brought against Mr Aleksandrs Ranks and Mr Jurijs Vasiļevičs, who are charged with, inter alia, the unlawful sale, as part of a criminal organisation, of objects protected by copyright and intentional unlawful use of another person’s trade mark. They are alleged to have sold various copyright-protected computer programs published by Microsoft (such as versions of the Microsoft Windows software and the Microsoft Office suite) on an online marketplace in 2004. It is estimated that they sold more than 3 000 copies of programs and the material damage caused to Microsoft by the activities of Mr Ranks and Mr Vasiļevičs has been evaluated at €265 514.

In those circumstances, the Rīgas apgabaltiesas Krimināllietu tiesu kolēģija (Criminal Law Division of the Riga Regional Court, Latvia), before which the case has been brought, asks the Court of Justice whether EU Law must be interpreted as meaning that the acquirer of a back-up copy of a computer program, stored on a non-original material medium, may, under the rule of exhaustion of the rightholder’s distribution right laid down in an EU Directive, resell that copy where (i) the original material medium of that program, acquired by the initial acquirer, has been damaged and (ii) that initial acquirer has erased his copy or ceased to use it.

In today’s judgment, the Court considers that it follows from the rule of exhaustion of the distribution right that the holder of the copyright in a computer program (in the present case, Microsoft) who has sold, in the EU, a copy of that program on a material medium (such as a CD-ROM or a DVD-ROM) with an unlimited user licence can no longer oppose the subsequent resale of that copy by the initial acquirer or subsequent acquirers of that copy, notwithstanding the existence of contractual terms prohibiting any further transfer.

However, the questions referred concern the resale of the used copy of a computer program, stored on a non-original material medium (‘back-up copy’), by a person who acquired it from the initial acquirer or from a subsequent acquirer.

The Court notes that the directive grants the holder of the copyright in a computer program the exclusive right to do or to authorise the permanent or temporary reproduction of that program by any means and in any form, in part or in whole, subject to the specific exceptions laid down in the directive. The lawful acquirer of a copy of a computer program, placed on the market by the rightholder or with his consent, may therefore resell that copy, provided that that sale does not adversely affect the rightholder’s exclusive reproduction right and that any acts of reproduction of that program are authorised by that rightholder or are covered by the exceptions laid down in the directive.

In that respect, the Court points out that the directive provides that the making of a back-up copy by a person having a right to use the computer program may not be prevented by contract in so far as it is necessary for that use. Any contractual provisions contrary to that rule are to be null and void.

The making of a back-up copy of a computer program is therefore subject to two conditions. That copy must (i) be made by a person having a right to use that program and (ii) be necessary for that use.

According to the Court, that rule, which lays down an exception to the exclusive reproduction right of the holder of the copyright in a computer program, must be interpreted strictly.

It follows that a back-up copy of a computer program may be made and used only to meet the sole needs of the person having the right to use that program and that, accordingly, that person cannot — even though he may have damaged, destroyed or lost the original material medium — use that copy in order to resell that program to a third party.

The Court therefore holds that the directive must be interpreted as meaning that, although the initial acquirer of a copy of a computer program accompanied by an unlimited user licence is entitled to resell that copy and his licence to a new acquirer, he may not, however, in the case where the original material medium of the copy that was initially delivered to him has been damaged, destroyed or lost, provide his back-up copy of that program to that new acquirer without the authorisation of the rightholder.

Source: Court of Justice of the European Union Press Release, No 110/16, 12 October 2016

Dynamic IP address can be personal data

26 October 2016

The operator of a website may have a legitimate interest in storing certain personal data relating to visitors to that website in order to protect itself against cyberattacks. The dynamic internet protocol address of a visitor constitutes personal data, with respect to the operator of the website, if that operator has the legal means allowing it to identify the visitor concerned with additional information about him which is held by the internet access provider.

Mr Patrick Breyer has brought an action before the German courts seeking an injunction to prevent websites, run by the Federal German institutions that he consults, from registering and storing his internet protocol addresses (‘IP addresses’). Those institutions register and store the IP addresses of visitors to those sites, together with the date and time when a site was accessed, with the aim of preventing cybernetic attacks and to make it possible to bring criminal proceedings.

The Bundesgerichtshof (Federal Court of Justice, Germany) has made a reference to the Court of Justice asking whether in that context ‘dynamic’ IP addresses also constitute personal data, in relation to the operator of the website, and thus benefit from the protection provided for such data. A dynamic IP address is an IP address which is different each time there is a new connection to the internet. Unlike static IP addresses, dynamic IP addresses do not enable a link to be established, by means of files accessible to the public, between a specific computer and the physical connection to the network used by the internet service provider. Therefore, only Mr Breyer’s internet service provider has the additional information necessary to identify him.

Furthermore, the Bundesgerichtshof asks whether the operator of a website must, at least in principle, have the possibility to collect and subsequently use visitors’ personal data in order to ensure the general operability of its website. It observes, in that regard, that most academic commentators in Germany interpret the relevant German legislation as meaning that those data must be deleted at the end of the consultation period unless they are required for billing purposes.

By today’s judgment, the Court replies, first of all, that a dynamic IP address registered by an ‘online media services provider’ (that is by the operator of a website, in the present case the German Federal institutions) when its website, which is accessible to the public, is consulted constitutes personal data with respect to the operator if it has the legal means enabling it to identify the visitor with the help of additional information which that visitor’s internet service provider has.

The Court observes, in that regard, that in Germany there appear to be legal channels enabling the online media services provider to contact the competent authority, in particular, in the event of cyberattacks, so that the latter may take the steps necessary to obtain that information from the internet service provider and subsequently bring criminal proceedings.

Second, the Court states that EU law precludes the legislation of a Member State under which an online media services provider may collect and use a visitor’s personal data, without his consent, only to the extent that it is necessary to facilitate and invoice the specific use of services by that visitor, so that the objective aiming to ensure the general operability of those services cannot justify the use of such data after those services have been accessed.

The Court recalls that, according to EU law, the processing of personal data is lawful, inter alia, if it is necessary to achieve a legitimate objective pursued by the controller, or by the third party to which the data are transmitted, provided that the interest or the fundamental rights and freedoms of the data subject does not override that objective.

The German legislation, as interpreted by the majority of legal commentators, reduces the scope of that principle, by excluding the possibility of balancing the objective of ensuring the general operability of online media against the interest or the rights and freedoms of visitors.

In that context, the Court emphasises that the Federal German institutions, which provide online media services, may have a legitimate interest in ensuring the continued functioning of their websites which goes beyond each specific use of their publicly accessible websites.

Source: Court of Justice of the European Union Press Release, No 112/16, 20 October 2016

Wi-Fi network and copyright infringements?

15 September 2016

The operator of a shop who offers a Wi-Fi network free of charge to the public is not liable for copyright infringements committed by users of that network. However, such an operator may be required to password-protect its network in order to bring an end to, or prevent, such infringements.

Mr Tobias Mc Fadden runs a lighting and sound system shop in which he offers access to a Wi-Fi network to the general public free of charge in order to draw the attention of potential customers to his goods and services. In 2010, a musical work was unlawfully offered for downloading via that internet connection. The Landgericht München I (Regional Court, Munich I, Germany), before which the proceedings between Sony and Mr Mc Fadden were brought, takes the view that he was not the actual party who infringed the copyright, but is minded to reach a finding of indirect liability on the ground that his Wi-Fi network had not been made secure. As it has some doubts as to whether the Directive on electronic commerce 1 precludes such indirect liability, the Landgericht has referred a series of questions to the Court of Justice.

The directive exempts intermediate providers of mere conduit services from liability for unlawful acts committed by a third party with respect to the information transmitted. That exemption of liability takes effect provided that three cumulative conditions are satisfied: (i) the provider of the mere conduit service must not have initiated the transmission; (ii) it must not have selected the recipient of the transmission; and (iii) it must neither have selected nor modified the information contained in the transmission.

In today’s judgment, the Court holds, first of all, that making a Wi-Fi network available to the general public free of charge in order to draw the attention of potential customers to the goods and services of a shop constitutes an ‘information society service’ under the directive.

Next, the Court confirms that, where the above three conditions are satisfied, a service provider such as Mr Mc Fadden, who providers access to a communication network, may not be held liable. Consequently, the copyright holder is not entitled to claim compensation on the ground that the network was used by third parties to infringe its rights. Since such a claim cannot be successful, the copyright holder is also precluded from claiming the reimbursement of the costs of giving formal notice or court costs incurred in relation to that claim.

However, the directive does not preclude the copyright holder from seeking before a national authority or court to have such a service provider ordered to end, or prevent, any infringement of copyright committed by its customers.

Lastly, the Court holds that an injunction ordering the internet connection to be secured by means of a password is capable of ensuring a balance between, on the one hand, the intellectual property rights of rightholders and, on the other hand, the freedom to conduct a business of access providers and the freedom of information of the network users. The Court notes, in particular, that such a measure is capable of deterring network users from infringing intellectual property rights. In that regard, the Court nevertheless underlines that, in order to ensure that deterrent effect, it isnecessary to require users to reveal their identity to be prevented from acting anonymously before obtaining the required password.

However, the directive expressly rules out the adoption of a measure to monitor information transmitted via a given network. Similarly, a measure consisting in terminating the internet connection completely without considering the adoption of measures less restrictive of the connection provider’s freedom to conduct a business would not be capable of reconciling the abovementioned conflicting rights.

Source: Court of Justice of the European Union Press Release, No 99/16, 15 September 2016

Links and copyright

15 September 2016

The posting of a hyperlink on a website to works protected by copyright and published without the author’s consent on another website does not constitute a ‘communication to the public’ when the person who posts that link does not seek financial gain and acts without knowledge that those works have been published illegally. In contrast, if those hyperlinks are provided for profit, knowledge of the illegality of the publication on the other website must be presumed.

GS Media operates the website GeenStijl, which includes, according to information provided by that website, ‘news, scandalous revelations and investigative journalism with lighthearted items and wacky nonsense’ and is one of the ten most visited news websites in the Netherlands.

In 2011, GS Media published an article and a hyperlink directing viewers to an Australian website where photos of Ms Dekker were made available. Those photos were published on the Australian website without the consent of Sanoma, the editor of the monthly magazine Playboy, which holds the copyright to the photos at issue. Despite Sanoma’s demands, GS Media refused to remove the hyperlink at issue. When the Australian website removed the photos at Sanoma’s request, GeenStijl published a new article that also contained a hyperlink to another website on which the photos in question could be seen. That site complied too with Sanoma’s request that it remove the photos. Internet users visiting the GeenStijl forum then posted new links to other websites where the photos could be viewed.

According to Sanoma, GS Media infringed copyright. Hearing the appeal, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) seeks a preliminary ruling from the Court of Justice on this subject. Pursuant to an EU Directive, every act of communication of a work to the public has to be authorised by the copyright holder.1 However, the Hoge Raad notes that the internet is overflowing with works published without the rightholder’s consent. It will not always be easy for the operator of a website to check that the rightholder has given his consent.

In today’s judgment, the Court declares that, in accordance with the directive concerned, Member States are to provide authors with the exclusive right to authorise or prohibit any communication to the public of their works. At the same time, that directive seeks to maintain a fair balance between, on the one hand, the interests of copyright holders and related rights and, on the other, the protection of the interests and fundamental rights of users of protected objects, in particular their freedom of expression and of information, as well as the general interest.

The Court recalls its earlier case-law in accordance with which the concept of ‘communication to the public’ requires an individual assessment, which must take account of several complementary criteria. Those criteria include, first, the deliberate nature of the intervention. Thus, the user makes an act of communication when it intervenes, in full knowledge of the consequences of its action, in order to give access to a protected work to its customers. Secondly, the concept of the ‘public’ covers an indeterminate number of potential viewers and implies a fairly large number of people. Thirdly, the profit-making nature of a communication to the public is relevant.

The Court specifies that its earlier case-law2 concerned only the posting of hyperlinks to works that have been made freely available on another website with the consent of the rightholder, and that it cannot, therefore, be inferred from that case-law that the posting of such hyperlinks would be excluded, as a matter of principle, from the concept of ‘communication to the public’ when the works at issue have been published on the other website without the rightholder’s consent.

As regards that latter situation, the Court emphasises, however, that the internet is of particular importance to freedom of expression and of information and that hyperlinks contribute to its sound operation and to the exchange of opinions and information as well. In addition, it accepts that it may prove difficult, in particular for individuals who wish to post such links, to ascertain whether the works involved are protected and, if necessary, whether the copyright holders of those works have consented to their publication on the internet.

Having regard to those circumstances, the Court holds that, for the purposes of the individualised assessment of the existence of a ‘communication to the public’, it is necessary, when the posting of a hyperlink to a work freely available on another website is carried out by a person who, in so doing, does not pursue a profit, to take account of the fact that that person does not know and cannot reasonably know that that work had been published on the internet without the consent of the copyright holder. Indeed, such a person, does not, as a general rule, intervene in full knowledge of the consequences of his conduct in order to give customers access to a work illegally posted on the internet.

In contrast, where it is established that such a person knew or ought to have known that the hyperlink he posted provides access to a work illegally published, for example owing to the fact that he was notified thereof by the copyright holders, the provision of that link constitutes a ‘communication to the public’. The same applies if that link allows users to circumvent the restrictive measures taken by the site where the protected work is posted in order to restrict the public’s access to its own subscribers.

Furthermore, when hyperlinks are posted for profit, it may be expected that the person who posted such a link should carry out the checks necessary to ensure that the work concerned is not illegally published. Therefore, it must be presumed that that posting has been done with the full knowledge of the protected nature of the work and of the possible lack of the copyright holder’s consent to publication on the internet. In such circumstances, and in so far as that presumption is not rebutted, the act of posting a clickable link to a work illegally published on the internet constitutes a ‘communication to the public’.

In the present case it is undisputed that GS Media provided the hyperlinks to the files containing the photos for profit and that Sanoma had not authorised the publication of those photos on the internet. It appears from the facts, as stated in the Hoge Raad’s request for a preliminary ruling, that GS Media was aware of the illegal nature of that publication and that it cannot, therefore, rebut the presumption that it posted those links in full knowledge of the illegal nature of that publication. Subject to the checks to be made by the Hoge Raad, by posting those links, GS Media therefore effected a ‘communication to the public’.

Source: Court of Justice of the European Union Press Release, No 92/16, 8 September 2016

Judgment of the CJEU: Tommy Hilfiger

29 July 2016

The operator of a physical marketplace may be forced to put an end to trademark infringements committed by market-traders.

The company Delta Center is the tenant of the marketplace ‘Pražská tržnice’ (Prague market halls). It sublets to market-traders the various sales areas in that marketplace.

Manufacturers and distributers of branded products discovered that counterfeits of their goods were regularly in Prague market halls. On that basis, they asked the Czech courts to order Delta Center to stop renting sales areas in those halls to people who committed such infringements. The intellectual property directive1 allows trademark holders to bring an action against intermediaries whose services are used by a third party to infringe their trademarks.

The trademark holders consider that, like the operators of online marketplaces covered by the judgment in L’Oréal,2 the operator of a physical marketplace may, pursuant to the directive, be forced in law to bring trade mark infringements committed by market-traders to an end and to take measures in order to prevent new infringements.

The Nejvyšší soud (Supreme Court, Czech Republic), before which the case is now pending, asks the Court whether it is actually possible to order the operator of a physical marketplace to put an end to trademark related infringements committed by market-traders and to take measures seeking to prevent new infringements.

In today’s judgment, the Court finds that an operator which provides a service to third parties relating to the letting or subletting of pitches in a marketplace, and which thus offers the possibility to those third parties of selling counterfeit products in that marketplace, must be classified as an ‘intermediary’ within the meaning of the directive. The Court states that whether the provision of a sales point is within an online marketplace or a physical marketplace is irrelevant because the scope of the directive is not limited to electronic commerce.

Consequently, the operator of a physical marketplace may itself also be forced to put an end to the trade mark infringements by market-traders and to take measures to prevent new infringements.

Similarly, the Court states that the conditions for an injunction issued by a judicial authority against an intermediary who provides a service of letting sales points in market halls are identical to those applicable to injunctions addressed to intermediaries in an online marketplace.

Thus, not only must those injunctions be effective and dissuasive, but they must also be equitable and proportionate. They must not therefore be excessively expensive and must not create barriers to legitimate trade. Nor can the intermediary be required to exercise general and permanent oversight over its customers. By contrast, the intermediary may be forced to take measures which contribute to avoiding new infringements of the same nature by the same market-trader. In addition, the injunctions must ensure a fair balance between the protection of intellectual property and the absence of obstacles to legitimate trade.

Source: Court of Justice of the European Union Press Release, No 72/16, 7 July 2016

Judgment of the GC: Future Enterprises v. McDonald’s

29 July 2016

According to the General Court, the repute of McDonald’s trade marks makes it possible to prevent the registration, for foods or beverages, of trade marks combining the prefix ‘Mac’ or ‘Mc’ with the name of a foodstuff or beverage

In 2008, the company Future Enterprises, of Singapore, applied for registration of the EU trade mark MACCOFFEE for foodstuffs and beverages, which was granted in 2010 by EUIPO (European Union Intellectual Property Office, formerly OHIM). The American company McDonald’s then applied to have the trade mark declared invalid on the basis of its earlier EU trade mark McDONALD’S as well as 12 other trade marks which it held for fast food restaurant services and which included the word elements ‘Mc’ or ‘Mac’ as prefixes1. In 2013, EUIPO granted McDonald’s application, in view of the reputation of the McDONALD’S trade mark for restaurant services and the link that the public could establish between the contested trade marks (and Future Enterprises could thereby take unfair advantage of the repute of the McDONALD’S trade mark). Future Enterprises requests the General Court to set aside the decision of EUIPO.

By today’s judgment, the General Court dismisses the action brought by Future Enterprises and thus confirms the decision of EUIPO.

The General Court notes, at the outset, that the trade mark MACCOFFEE and the McDonald’s protected trade marks have a certain degree of phonetic and conceptual similarity, resulting from their respective initial part, namely the ‘mac’ and ‘mc’ elements.

Moreover, the General Court validates the assessments of EUIPO according to which, because of the combination of the element ‘mac’ with the name of a drink in the MACCOFFEE trade mark, in particular, the relevant public can associate that trade mark with the McDonald’s ‘Mc’ family of trade marks and mentally establish a link between the trade marks at issue. The element ‘mac’ in MACCOFFEE is perceived as identical or equivalent to the initial element ‘mc’ of the McDonald’s trade marks. Furthermore, the structure of the MACCOFFEE trade mark is very similar to that of the Mc family of trade marks, which combines the prefix ‘Mc’ with the name of a foodstuff.

In addition, the General Court considers that, despite the difference of the goods and services covered by the trade marks at issue (namely the foodstuffs and beverages for MACCOFFEE and the fast food restaurant services for McDonald’s), there is nevertheless a certain similarity owing to the close links existing between them: thus, the foodstuffs covered by MACCOFFEE may be used and offered in the context of the fast food restaurant services provided by McDonald’s. Some of the foodstuffs designated by MACCOFFEE, such as ice cream, muffins, filled sandwiches and toasted sandwiches, are not simple ingredients serving as the basis for dishes served in fast-food restaurants, but correspond to the goods offered, as such, on the menu of those establishments.

Furthermore, the foodstuffs and restaurant services at issue are directed at the same consumers.

Lastly, the General Court confirms EUIPO’s analysis that the use of MACCOFFEE without due cause takes unfair advantage of the repute of McDonald’s trade marks. Indeed, it is highly probable that MACCOFFEE rides on the coat-tails of McDonald’s in order to benefit from its power of attraction, its reputation and its prestige, and exploits, without paying any financial compensation, the marketing effort made by McDonald’s in order to create and maintain its image. Thus, upon seeing the MACCOFFEE trade mark affixed to goods closely linked to those of McDonald’s, the relevant public could mentally establish a link between the trade marks at issue and could transfer the image of the McDonald’s trade marks to the goods covered by MACCOFFEE.

Source: Court of Justice of the European Union Press Release No 70/16, 5 July 2016.

AG: the lending of electronic books is comparable to the lending of traditional books

20 June 2016

In the view of Advocate General Szpunar, the lending of electronic books is comparable to the lending of traditional books.

A 2006 EU directive concerning, among other things, the rental and lending rights in respect of books provides that the exclusive right to authorise or prohibit such rentals and loans belongs to the author of the work. Member States may, however, derogate from that exclusive right in respect of public lending, provided that authors obtain, at least, fair remuneration.

In the Netherlands, the lending of electronic books does not come within that regime. However, the Vereniging Openbare Bibliotheken (‘VOB’), an association to which every public library in the Netherlands belongs, takes the view that that regime should also apply to digital lending. Within that context, it brought an action against Stichting Leenrecht, a foundation entrusted with collecting the remuneration due to authors, seeking a declaratory judgment to that effect. VOB’s action concerns lending under the ‘one copy one user’ model: an electronic book at a library’s disposal may be downloaded by a user for the lending period, on the understanding that it is not accessible to other library users during that entire period. At the end of that period, the book in question will automatically become unusable for the borrower in question and may then be borrowed by another user.

Seised of the dispute, the Rechtbank Den Haag (District Court, The Hague, Netherlands) considered that its response to VOB’s application depends upon the interpretation of provisions of EU law and it has referred several questions to the Court of Justice for a preliminary ruling.

In today’s Opinion, Advocate General Maciej Szpunar takes the view that the making available to the public, for a limited period of time, of electronic books by public libraries may indeed come within the scope of the directive on rental and lending rights.

The Advocate General considers that the EU legislature did not contemplate the inclusion of the lending of electronic books within the directive’s concept of ‘lending’ because the technology relating to commercially viable electronic books was at that time only in its infancy.

He thus suggests that a ‘dynamic’ or ‘evolving’ interpretation of the directive should be applied, arguing, inter alia, that the lending of electronic books is the modern equivalent of the lending of printed books. According to the Advocate General, such an interpretation alone will be capable of ensuring the effectiveness of the legislation in question in a sector experiencing rapid technological and economic development.

The Advocate General also points out that the main purpose of copyright is to protect the interests of authors. At present, libraries do indeed lend books in electronic form under licensing agreements concluded between libraries and publishers, which is principally of benefit to publishers or other intermediaries in the electronic book trade, whereas no adequate remuneration is received by authors. If, by contrast, digital lending were regarded as coming within the scope of the directive, authors would as a result receive fair remuneration, in addition to that generated by the sale of books and independently of agreements concluded with publishers.

The Advocate General also concludes that an interpretation of the concept of lending which includes the lending of electronic books is contrary to neither the objective nor the wording of the directive. Moreover, such an interpretation is in no way incompatible or inconsistent with the various provisions of EU law in the field of copyright or with the EU’s international obligations.

Lastly, the Advocate General expresses the view that, when introducing the exception for the public lending of electronic books, Member States may require that those books should first have been made available to the public by the rightholder or with his consent and that they are obtained from lawful sources. By contrast, according to the Advocate General, the mechanism of exhaustion of the distribution right bears no relation to the lending right.

Source: Court of Justice of the European Union Press Release, No 64/16, 16 June 2016

The EU trade mark representing the shape of a Rubik’s Cube should be declared invalid?

25 May 2016
Advocate General Szpunar considers that the EU trade mark representing the shape of a Rubik’s Cube must be declared invalid.
At the request of Seven Towns, a UK company which manages, in particular, intellectual-property rights relating to the ‘Rubik’s Cube’, the European Union Intellectual Property Office (EUIPO) registered, in 1999, the shape of that cube as a three-dimensional Community trade mark in respect of ‘three-dimensional puzzles’.
http://curia.europa.eu/juris/html/images/en/C-30-15-1.png
In 2006, Simba Toys, a German toy-manufacturing company, applied to EUIPO to have the three-dimensional mark cancelled, in particular on the ground that it involves a technical solution consisting of a rotating capability, whereas such a solution may be protected only by patent and not as a trade mark. As EUIPO dismissed that application, Simba Toys brought an action before the General Court in which it sought annulment of EUIPO’s decision.
By judgment of 25 November 2014,1 the General Court dismissed the action brought by Simba Toys. In particular, it held that the graphic representation of the shape of a Rubik’s Cube did not involve any technical function such as to preclude it from being protected as a trade mark, and that it could therefore be registered as an EU trade mark. Simba Toys has appealed against that judgment to the Court of Justice.
In today’s Opinion, Advocate General Maciej Szpunar proposes that the Court of Justice should set aside the judgment of the General Court and annul the decision of EUIPO.
The Advocate General stresses in particular that, in accordance with the EU trade mark regulation,2 shapes with essential characteristics which are inherent in the generic function or functions of the goods concerned must be denied registration. Reserving such characteristics to a single economic operator would, he points out, make it difficult for competing undertakings to give their goods a shape which would be suited for the use for which those goods are intended.
The Advocate General then goes on to address the ground of appeal based on the provision in that regulation which states that signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result cannot be registered.3 He points out that a sign consisting of the shape of a product that, without the inclusion of significant non-functional elements, merely performs a technical function cannot be registered as a trade mark, since such a registration would unduly impair the opportunity for competitors to place on the market goods the shapes of which incorporate the same technical solution.
The Advocate General notes that, when analysing the functional elements of a given shape, the competent authority is not required to restrict itself to information arising from the graphic representation but must, where necessary, also take account of other essential information.
In the view of the Advocate General, the General Court, while it identified the essential characteristics of the sign, failed to assess those characteristics in the light of the technical function inherent in the product concerned. Although the General Court, in the judgment under appeal, emphasised that it is necessary to assess whether the characteristics of the shape ‘perform the technical function of the goods concerned’, none of the further grounds of that judgment defines what technical function the goods concerned perform or analyses the relationship between that function and the characteristics of the shape represented. That assumption leads to the paradoxical conclusion that the graphic representations of the contested mark do not make it possible to determine whether the shape in question involves any technical function or, if so, what that technical function might be.
The Advocate General finds that, in order to carry out a proper analysis of the functional features of the shape, the General Court ought first to have taken account of the function of the product concerned, namely the three-dimensional puzzle, that is to say, a brain-teaser consisting of a logical arrangement of movable elements. The General Court, in his view, also erred in concluding that the analysis of the shape concerned from the point of view of its functional features ought to be based solely on an examination of the graphic representation in respect of which registration had been applied for.
In the Advocate General’s view, the line of reasoning according to which the scope of protection resulting from registration of a mark covers every type of puzzle with a similar shape, regardless of the principles by which it functions, and thus, in regard to the shape at issue in the present case, may potentially cover every three-dimensional puzzle the elements of which make up the shape of a ‘3x3x3’ cube, is contrary to the public interest because it makes it possible for the proprietor to extend its monopoly to the characteristics of goods which perform not only the function of the shape in question but also other, similar functions.
Source: Court of Justice of the European Union PRESS RELEASE No 52/16 Luxembourg, 25 May 2016

The posting of a hyperlink does not constitute a copyright infringement

9 April 2016

According to Advocate General Wathelet, the posting of a hyperlink to a website which published photos without authorisation does not in itself constitute a copyright infringement.

Pursuant to an EU Directive, each act of communication of a work to the public has to be authorised by the copyright holder.

Sanoma, the editor of the monthly magazine Playboy, commissioned a photoshoot of Britt Dekker, who regularly appears on television programmes in the Netherlands. GS Media, operator of the internet site GeenStijl, published advertisements and a hyperlink directing viewers to an Australian website where the photos in question were made available without the consent of Sanoma. Despite demands from Sanoma, GS Media refused to remove the hyperlink in question. When the Australian website removed the photos upon Sanoma’s request, GeenStijl published a new advertisement which also contained a hyperlink to another website on which the photos in question could be seen. That site also complied with Sanoma’s request to remove the photos. Finally, internet users who frequent the GeenStijl forum posted new links to other websites where the photos could be viewed.
According to Sanoma, GS Media infringed copyright. Hearing the appeal in cassation, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) seeks a preliminary ruling by the Court of Justice on this subject. The Hoge Raad notes in particular that, whilst the photos were possible to find before GS Media placed the hyperlink, this was not necessarily easy, with the result that the placement of the hyperlink made it easier to locate them.

In today’s Opinion, Advocate General Melchior Wathelet stresses, first of all, that the request for a preliminary ruling only concerns the hyperlinks on GeenStijl’s website. Copyright infringements arising from the photos being made available on other internet sites are not at issue.

The Advocate General acknowledges that hyperlinks placed on a website greatly facilitate the discovery of other websites, and protected works available on those sites, and as a result offer users of the first website faster and more direct access to those works. However, hyperlinks which lead, even directly, to protected works are not ‘making them available’ to the public when they are already freely accessible on another website, and only serve to facilitate their discovery. The actual act of ‘making available’ is the action of the person who effected the initial communication.
Consequently, hyperlinks which are placed on a website and which link to protected works that are freely accessible on another site cannot be classified as an ‘act of communication’ within the meaning of the Directive. In fact, the intervention of the owner of the site which places the hyperlink, in this case GS Media, is not indispensable to the photos in question being made available to internet users, including those who visit GeenStijl’s website.

In this context, GS Media’s motivation and the fact that it knew or should have known that the initial communication of the photos on other websites had not been authorised by Sanoma or that the photos had not previously been made available to the public with Sanoma’s consent are not relevant.

However, the Advocate General explains that his Opinion is based on the premiss that the photos were ‘freely accessible’ to all internet users on third-party sites. The factual question of whether the intervention of GS Media was indispensable to making the photos available to visitors of GeenStijl’s site is a matter for the Hoge Raad.
For the Advocate General, any other interpretation of the notion of ‘communication to the public’ would considerably impede the functioning of the internet and would infringe one of the principal objectives of the Directive, namely the development of the information society in Europe.

Although the circumstances at issue are particularly flagrant, the Advocate General considers that, as a general rule, internet users lack the knowledge and the means to verify whether the initial communication to the public of a protected work freely available on the internet was done with or without the consent of the holder of the copyright. If internet users risk liability for copyright infringement every time they place a hyperlink to works which are freely accessible on another internet site, they would be much more hesitant to post those links, to the detriment of the proper functioning and very architecture of the internet as well as the development of the information society.

Advocate General’s Opinion in Case C-160/15 GS Media BV v Sanoma Media Netherlands BV and Playboy Enterprises International Inc. and Britt Geertruida Dekker

Source: Court of Justice of the European Union PRESS RELEASE No 37/16 Luxembourg, 7 April 2016

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