Posts tagged " CJEU "

Open Wi-Fi providers are not liable for copyright infringements committed by users

29 March 2016

Advocate General Szpunar: the operator of a shop, hotel or bar who offers a Wi-Fi network free of charge to the public is not liable for copyright infringements committed by users of that network.

Although an injunction may be issued against that operator in order to bring the infringement to an end, it is not possible to require termination or password protection of the Internet connection or the examination of all communications transmitted through it.

In the present case the Court of Justice is called on to clarify whether and to what extent a professional who, in the course of business, operates a Wi-Fi network that is accessible to the public free of charge may be held liable for copyright infringements committed by users of that network.

Tobias Mc Fadden operates a business selling and renting lighting and sound systems near Munich, in which he offers a Wi-Fi network accessible to the public. 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 commerce1 precludes such indirect liability, the Landgericht has referred a series of questions to the Court.

The Directive limits the liability of intermediate providers of mere conduit services for unlawful acts committed by a third party with respect to the information transmitted. That limitation of liability takes effect provided that three cumulative conditions are fulfilled: (i) the provider of the mere conduit service must not have initiated the transmission; (ii) he must not have selected the recipient of the transmission; and (iii) he must not have selected or modified the information contained in the transmission. The Landgericht München I believes these three exhaustive conditions are met in the present case, but is uncertain as to whether Mr Mc Fadden really is a provider for the purposes of the Directive.

In today’s Opinion, Advocate General Maciej Szpunar takes the view that that limitation of liability also applies to a person such as Mr Mc Fadden who, as an adjunct to his principal economic activity, operates a Wi-Fi network with an Internet connection that is accessible to the public free of charge.2 In his view, it is not necessary for the person in question to present himself to the public as a service provider or that he should expressly promote his activity to potential customers.

The Advocate General goes on to state that that limitation precludes the making of orders against intermediary service providers not only for the payment of damages, but also for the payment of the costs of giving formal notice or other costs relating to copyright infringements committed by third parties. The Advocate General nevertheless adds that, whilst the Directive does so limit the liability of a provider of mere conduit services, it does not shield him from injunctions, non-compliance with which is punishable by a fine.

National courts must, when issuing such an injunction, ensure: (i) that the measures are, in particular, effective, proportionate and dissuasive; (ii) that they are aimed at bringing a specific infringement to an end or preventing a specific infringement and do not entail a general obligation to monitor; and (iii) that a fair balance is achieved between the applicable fundamental rights, in particular, freedom of expression and information and the freedom to conduct business, as well as the right to the protection of intellectual property.

The Advocate General further states that the Directive does not, in principle, preclude the issuing of an injunction which leaves it to the addressee to decide what specific measures should be taken. It nevertheless falls to the national court hearing an application for an injunction to ensure that appropriate measures do indeed exist that are consistent with the restrictions imposed by EU law.

The Advocate General adds, however, that the Directive precludes the issuing of an injunction against a person who operates a Wi-Fi network with Internet access that is accessible to the public, as an adjunct to his principal economic activity, where the addressee of the injunction is able to comply with it only by: (i) terminating the Internet connection; or (ii) password-protecting the Internet connection; or (iii) examining all communications transmitted through it in order to ascertain whether the copyright-protected work in question is unlawfully transmitted again.3

The Advocate General considers that the imposition of an obligation to make access to a Wi-Fi network secure, as a means of protecting copyright on the Internet, would not be consistent with the requirement for a fair balance to be struck between, on the one hand, the protection of the intellectual property rights enjoyed by copyright holders and, on the other, that of the freedom to conduct business enjoyed by providers of the services in question. By restricting access to lawful communications, the measure would also entail a restriction on freedom of expression and information. More generally, any general obligation to make access to a Wi-Fi network secure, as a means of protecting copyright on the Internet, could be a disadvantage for society as a whole and one that could outweigh the potential benefits for rightholders.

Advocate General’s Opinion in Case C-484/14 Tobias Mc Fadden v Sony Music Entertainment Germany GmbH, 16 March 2016

Source: Court of Justice of the European Union PRESS RELEASE No 28/16  Luxembourg, 16 March 2016

CJEU rules on using the trademark “Mercedes-Benz” in online ads

29 March 2016

Former authorised Daimler dealers are not responsible for advertisements which, despite their efforts to have them removed, continue to associate their name with the trade mark ‘Mercedes-Benz’ on the internet.

Furthermore, Daimler cannot require those dealers to take steps to remove such advertisements from the internet where they have not been ordered.

Együd Garage is a Hungarian company specialised in the sale and repair of Mercedes cars. For over five years, it was a party to a contract for the supply of after-sales services with Daimler, the German manufacturer of Mercedes cars and proprietor of the international trade mark ‘Mercedes-Benz’ which is also protected in Hungary. Under that contract Együd Garage was entitled to use that trade mark and to describe itself as an ‘authorised Mercedes-Benz dealer’ in its own advertisements.

Following the termination of that contract, Együd Garage tried to remove any online advertisement that might lead the public to assume that it was still in a contractual relationship with Daimler. Despite the steps taken, advertisements indicating such an association continued to be distributed online and identified by search engines.

Daimler then brought an action before the Fővárosi Törvényszék (Budapest Municipal Court, Hungary) seeking an order that Együd Garage remove the advertisements at issue from the internet and refrain from further infringement of the rights connected with its trade mark. That court asks the Court of Justice whether the Trade Marks Directive1 allows Daimler to require a former contractual partner to take extensive measures to prevent it from causing harm to its trade mark.

By today’s judgment, the Court finds that the publication on a website of an advertisement referring to a trade mark constitutes a use of that trade mark by an advertiser who has ordered it. However, the appearance of the trade mark on the site in question no longer constitutes a use by the advertiser where he has expressly requested the operator of the site, from whom he had ordered the advertisement, to remove it and the operator has disregarded that request. Thus, the omissions of such an operator cannot be attributed to an advertiser who specifically seeks to prevent unauthorised use of the trade mark in question.

By the same logic, the advertiser cannot be held liable for the acts and omissions of operators of other websites who, without his consent, have put the advertisement on their own site.

In so far as Együd Garage is in just such a situation, Daimler is not entitled to require, by means of legal action, that publication of the advertisement online be terminated.

However, the Court states that the proprietor of the mark may, first, claim reimbursement from the advertiser for any financial benefit that he may obtain from advertisements still online and, secondly, bring proceedings against operators of websites that infringe the rights connected with its trade mark.

Judgment in Case C-179/15 Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft, 3 March 2016

Source: Court of Justice of the European Union PRESS RELEASE No 23/16 Luxembourg, 3 March 2016

CJEU decision in Adidas case

29 March 2016

Adidas may oppose the registration, as a Community mark, of parallel stripes placed on the side of sports shoes.

In 2009, Shoe Branding Europe, a Belgian company, filed an application for registration of the mark reproduced below on the left with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) for shoes. Sports company adidas opposed registration of that mark, relying among other things on one of the marks reproduced below on the right:              

After OHIM dismissed the opposition, adidas instituted proceedings before the General Court seeking annulment of OHIM’s decision. By judgment of 21 May 2015,1 the General Court upheld the action brought by adidas, taking the view that OHIM had been incorrect in finding that the marks were visually dissimilar when the overall impression produced by the marks was, to a certain extent, similar given that there were elements clearly common to the two marks (parallel sloping stripes, equidistant, of the same width, contrasting with the base colour of the shoe, placed on the outside of the shoe). Not satisfied with the General Court’s judgment, Shoe Branding Europe lodged an appeal before the Court of Justice.

In its order of 17 February 2016,2 the Court of Justice upholds the General Court’s judgment.

The Court notes, among other things, that the General Court did not contradict itself in finding that OHIM had not provided a proper statement of reasons for its findings on the similarity of the signs at issue, since the minor differences existing between them (i.e., the different length of the stripes resulting from the difference in angle) would not influence the overall impression produced by them on account of the presence of wide sloping stripes on the side of the shoe.

The Court further holds that since the General Court held that the differences between two and three stripes and in the length of the stripes were not sufficient to affect the similarities arising from the configuration of the signs at issue, it did conduct an overall assessment and, therefore, did not err in law.

Order of the Court of 17 February 2016 in Case C-396/15 P Shoe Branding Europe BVBA v adidas AG, 24 February 2016.

Source: Court of Justice of the European Union PRESS RELEASE No 17/16 Luxembourg, 24 February 2016

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