Posts tagged " EU trademark "

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.

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’.
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
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