Many good things come in pairs, for example, shoes, ear plugs and twins, but sometimes even the best pairing won't be enough. This is the case even with trademarks, where the use of two terms that name or describe goods will be difficult to register. A recent case in the Canadian Trade-Marks Opposition Board considered this issue, and further highlighted that, even though a very novel argument, the marks themselves might not be as novel.
The case of Molson Canada 2005 v Drummond Brewing Company Ltd concerned a registration for the trademark "BEER BEER" (TM 1619343) for beer by the Drummond Brewing Company. Due to the quite clear descriptive nature of the mark, Molson Canada opposed the registration, even though it has been used for the goods in Canada since 2009.
The mark was opposed under sections2, 16, 12 and 30 of the Canadian Trade-Marks Act.
The Trade-Marks Opposition Board first considered the grounds under section 30(i), which requires a statement by the applicant that they are satisfied that they are entitled to use the mark in Canada in association with the relevant goods and/or services. The courts will only reject an application under the section if it has been applied for in bad faith. What plays a part in this is an earlier rejection for an application in 2009 for "BEER BEER" by Drummond Brewing due to the descriptive nature of the mark, which potentially indicates an element of bad faith for the new registration.
Donald's new beer brand: BEER BEER BEER BEER
Board Member Kathryn Barnett rejected this argument, as the provision only looks for an entitlement to use the mark, rather than any claims on rights to it. The Applicant's witness statements also indicated a clear belief in the entitlement to use the mark in Canada.
The Board then moved onto matters relating to section 12 of the Act, which prohibits the registration of mark if it, among other things, contains the name of the goods or services or that it clearly is descriptive of the quality of the goods or services relating to the mark.
The first ground under section 12(1)(c) for containing the name of the goods, i.e. beer, based on "…the immediate and first impression of the everyday user of the goods and services". This can include composite marks, including both a word and design element, if the portion of the word in the mark is dominant. The Board rejected this argument, as the mark is "BEER BEER", and not simply just 'BEER'. The name of the goods is simply the single use of the word, not double, and therefore escapes the remit of section 12(1)(c).
The Board then moved onto section 12(1)(b), which prevents the registration of clearly descriptive or deceptively misdescriptive marks from the point of view of the average consumer. The mark has to be assessed in its entirety as a matter of immediate impression to the aforementioned consumer. This is to prevent the registration of a common trade term for goods or services, placing legitimate traders at a disadvantage.
What lies at the heart of this decision is Pizza Pizza v The Registrar of Trade-marks, where the mark 'PIZZA PIZZA' was deemed to not be descriptive of the goods, namely pizza. Molson Canada contested that the phrase 'BEER BEER' would indeed be descriptive, which was, as discussed above, deemed so when applied for previously. The phrase would, in their view, describe a "…“real” or “prototypical” beer, or as a generic marking, or both".
The Board ultimately sided with the opponent, Molson Canada, and decided that the mark was indeed descriptive of the character or quality of the goods, and rejected the application. Due to this the Board deemed it unnecessary to consider the rest of the grounds of opposition.
The decision was an interesting one, and something this writer has never thought about; distinctiveness through the use of 'descriptive' terms in a novel way. While the decision makes perfect sense, it still shows that when you're creative with your marks, even the simplest thing could potentially (although not very often) be distinctive.
The rights of animals, whether it is simply to extend human rights to them or even legal rights, are a very contentious and often emotionally charged topic of conversation. A good example of this is the recent monkey selfie legal saga, which grappled with the vesting of intellectual property rights in a monkey (discussed more on this blog here and here). The parties settled the matter out of court late last year, but the Court of Appeals saw to still rule on the matter, irrespective of this settlement (which is within their powers to do). This is very important, since it will set the legal position of animals' rights in IP firmly on one camp; yes or no. This writer has been waiting for the ruling with baited breath, which was published only last week.
By way of a brief primer, the case of Naruto v David Slater concerned a series of photographs taken by a crested macaque in 2011 (named Naruto by its Next Friends in the litigation, PETA). The monkey took the photograph using Mr Slater's camera, which he had configured and left for the monkeys in the area to play with. One such picture became an Internet sensation, leading to Mr Slater asserting his rights in the picture as its author. PETA took the matter to court, claiming the monkey had rights in the picture, and that Mr Slater had infringed its copyrights by publishing it. Even though the parties settled the matter, as discussed above, the Court saw it fit to decide on it anyway due to its importance as a developing area of the law.
Naruto's representatives were aghast at the ruling
Judge Bea, handing down the majority's judgment, started off with determining whether PETA could represent Naruto as its next friends in the case. This is established through showing that "…(1) that the petitioner is unable to litigate his own cause due to mental incapacity, lack of access to court, or other similar disability; and (2) the next friend has some significant relationship with, and is truly dedicated to the best interests of, the petitioner". The Court agreed that Naruto would indeed fulfil the first requirement, but needed to assess whether PETA had a significant relationship with the animal. PETA agreed that it had does not claim to have a relationship with Naruto that is any more significant than its relationship with any other animal, and thus fails the second requirement.
The Court emphasised that animals do not have authorisation by the courts to be represented by a next friend. In other words "…if animals are to be accorded rights to sue, the provisions involved therefore should state such rights expressly".
Judge Bea then moved onto the matter of whether Naruto itself has standing under Article III of the Constitution. Under a previous Court of Appeals decision in Cetacean Community v Bush, the court rejected standing for "…all of the world's whales, porpoises, and dolphins" under environmental protection laws as animals were not expressly included within the provisions. In short, the court concluded that the test for animal standing as "…if an Act of Congress plainly states that animals have statutory standing, then animals have statutory standing. If the statute does not so plainly state, then animals do not have statutory standing".
Under the Copyright Act there is no express mention of any animal rights for intellectual property. The provisions do, however, imply a requirement of humanity or the possibility of marital relations. The Court did conclude that, based on the statute and the Cetacean decision, "…that Naruto - and, more broadly, animals other than humans - lack statutory standing to sue under the Copyright Act".
The case is a very important one, not only for the unusual nature of judgments being issued after settlement, but it puts the rights of animals under copyright to bed once and for all. Clearly, animals cannot have rights, and this writer considers this to be the most logical outcome, even without an express mention to that effect in the legislation. One can therefore finally see a conclusion to all of this monkey business.
One would've never imagine a chocolate bar could be litigated over for many years, but the Kit Kat saga has proven that even the most seemingly mundane things can be worth a tremendous monetary investment. After the EU General Court decision last year (discussed more here) you could have imagined the matter has been largely concluded. This was clearly not the case, as Mondelez appealed the decision, which has now reached the desk of Advocate General Wathelet. They issued their opinion only last week, which will give direction to the CJEU who will decide the matter once and for all later this year.
Although discussed extensively on this blog, the case still merits a short introduction. The matter Société des produits Nestlé v Mondelez UK Holdings & Services concerns the design of the Kit Kat chocolate bar, which Mondelez has registered as a trademark (EUTM 2632529). Cadbury, now Mondelez, filed for an application of invalidity regarding the mark sometime after, with the matter being decided by the General Court last year. Nestle appealed the decision (which went against them), ending up heading to the CJEU via the Advocate General.
The case on appeal hinges on the extent of the territory that you need to show distinctive character that is acquired through use of the trade mark under Article 7(3) of the CTM Regulations. In the General Court Nestle failed to show use throughout the EU, not just in a substantial part of it, and therefore the mark was invalidated.
A Kit Kat Kounterfeit
Per the decision in August Storck KG v OHIM, the CJEU set the bar for the acquisition of distinctive character through use as requiring "…evidence… that [the mark] has acquired, through the use which has been made of it, distinctive character in the part of the [EU] in which it did not, ab initio, have such character". Adding to this, the CJEU noted that an argument for acquired distinctiveness could be rejected if there is no evidence of use, as detailed above, in a single Member State. Subsequent cases have shown that partial acquisition of distinctive character within the EU is not enough, as there needs to be 'quantitatively sufficient evidence' of acquired distinctiveness.
Looking at the above, the AG did, however, not shut the door entirely on partial acquisition of distinctiveness. They added that a mark could have acquired distinctiveness in the entire EU if evidence is provided for "…a quantitatively and geographically representative sample" of the EU. This means taking into account the various links between the national markets of Member States, and whether those links negate a lack of evidence for acquired distinctiveness in the bigger picture within Europe. Potentially a more regional approach has to be taken and therefore acquired distinctiveness could be extrapolated for any missing countries, i.e. produce evidence for the Nordics and other such 'collectives' of countries if evidence for all Member States is missing for others within those 'collectives'.
Having considered the missing evidence discussed in the General Court's decision, the AG concluded that Nestle's appeal should be dismissed.
While we are still awaiting the CJEU's decision on this matter, things don't look great for Nestle, or 3D marks in general. It will be difficult for many proprietors of such marks to show acquired distinctiveness within the EU, or most of it. It remains to be seen whether the CJEU will go in a different direction, but it seems very unlikely considering the General Court's decision and now the AG's opinion.
Having looked at the legal intricacies of using protected Geographical Indications in a recent case regarding Champagne, this writer has grown to appreciate the complexities of PDOs and the law surrounding them. What amounts to an infringement of GIs rights is very tricky, and any clarification from higher courts is always appreciated. Scotch whisky is one GI that is vehemently defended, and many third-parties would want to benefit from the image that the GI imparts, but to avoid the 'pesky' issues of actually conforming to the classification. In terms of a name for a whisky produced outside of Scotland, what amounts to an infringement of a GI? Ahead of a CJEU decision, Advocate General Øe gave their opinion of this question.
The case of The Scotch Whisky Association v Michael Klotz dealt with the production and sale of a whisky called "Glen Buchenbach" in Germany by Mr Klotz. The SWA objected to the sale of the whisky using the term 'Glen', which, in their view, referred to a geographical location in Scotland and implies the product is a Scotch whisky. The use could potentially therefore infringe on the Geographical Indications Regulation, which protects Scotch whisky as a GI.
The German courts referred three questions to the CJEU on the matter, which were considered by the Advocate General.
The first question, in essence, asked "…what is meant by ‘indirect commercial use [of a] registered geographical indication’ for a spirit drink, within the meaning of Article 16(a) of Regulation No 110/2008".
The first part of the first question then focusses on whether "… in order to establish the existence of such use, prohibited by Article 16(a), it is necessary that the disputed indication be used in identical or phonetically and/or visually similar form to the protected geographical indication, or whether it is sufficient that the disputed indication evokes in the relevant public some kind of association with the indication or the geographical area relating thereto". In brief, this is whether the indication has to be phonetically or visually identical to the GI, or if the public associate the term with the GI without similarity (i.e. 'Glen' would be associated with Scotland, and therefore Scotch whisky).
The Advocate General determined that, under Article 16(a), the expression of 'direct or indirect commercial use' requires that "…the use is made of the disputed indication in the form in which it was registered or at least in a form with such close links to it that the sign at issue is manifestly inseparable from it". This means that the use would have to be in an identical or phonetically and/or visually similar form, and not just associated with the GI.
The Court has firmly established that 'direct' use would amount to the use of the GI, or a corresponding term or translation, in conjunction with goods that don't meet the specification. However, the Advocate General had to consider what amounts to 'indirect' use of a GI. In his view, this requires use where "…the indication… feature[s] in supplementary marketing or information sources, such as an advertisement for that product or documents relating to it". Additionally, broadening the provision would make following provisions, such as Article 16(b), redundant, and has to therefore be kept narrower, and won't cover cases of mere association by the public. This interpretation supports the interpretation of the objectives of the Regulation and the Article, which clearly seek to protect GIs from misuse, and to ensure quality of the goods.
The AG probably needed a drink after the case
In terms of the second part of the first question (additional information in relation to an 'association' with a GI in the minds of the public), the Advocate General swiftly concluded that the Court would not have to rule on the point, in the light of the above, but he did make brief observations on the same. In his view there is no ambiguity under the provision on what amounts to infringement, which differs from Article 16(b) that is not at issue in the matter. The Advocate General added that, in considering any "misuse, imitation or evocation" under Article 16(b), a court could take into account the context where the disputed indicator is used, and the same would apply if the Court would consider 'association' as a possibility under Article 16(a).
The second question, split into two parts as well, asks clarification on "…the concept of ‘evocation’ of a registered geographical indication relating to a spirit drink, within the meaning of Article 16(b)".
As with the first question, the first part of the second question asks whether, in determining the existence of 'evocation' "…the disputed designation must be in an identical or phonetically and/or visually similar form to the protected geographical indication, or whether it is sufficient that the designation evokes in the relevant public some kind of association with that indication or the geographical area relating to it".
Having considered relevant case law, the Advocate General concluded that for the purposes of identifying an ‘evocation’ "…the only determining criterion is whether, ‘when the consumer is confronted with the name of the product, the image triggered in his mind is that of the product whose designation is protected’, which the national court must verify by taking into account, as appropriate, the partial incorporation of a protected name in the disputed designation, a phonetic and visual relationship, or a conceptual proximity". He also outright rejected the concept of evocation in relation to a mere association with the GI in the might of the relevant public.
As above, the second part deals with the existence of 'evocation' and whether it has to be determined looking at the use in isolation, or whether the context of the use can be taken into account. Having briefly discussed the matter, the Advocate General concluded that "…for the purposes of establishing the existence of an ‘evocation’… it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, in particular with regard to its true origin". That is because this information is largely irrelevant in the assessment, and that 'evocation' can exist even in the absence of confusion in the relevant public.
Finally the Advocate General considered the third question, which asked, in essence, "…whether, for the purposes of determining whether there is ‘any false or misleading indication… liable to convey a false impression as to its origin’, within the meaning of Article 16(c)… it is necessary to take account of the context in which the disputed element is used, in particular where the disputed element is accompanied by an indication of the true origin of the product". The question concerns the use of the name 'Glen', whether its use is false or misleading, and if its use in context can be taken into account (i.e. the use of a German location, Buchenbach, after the name).
Having considered all parties' arguments extensively, the Advocate General determined that "…for the purposes of establishing the existence of a ‘false or misleading indication’ prohibited by [Article 16(c)], it is not necessary to take account of additional information found alongside the sign at issue in the description, presentation or labelling of the product concerned, in particular with regard to its true origin". He also noted that, in the current case, the use of the name 'Glen' does not have a sufficiently clear and direct link with the protected geographical indication, or with its origin country, in order for it to be a 'false or misleading' indication.
The Advocate General's opinion is very important, particularly in the light of GIs and the assessment of their protection and remit thereof. It clearly narrows down the use of any disputed indication in isolation, avoiding any other contextual indicators as to origin or otherwise; however, the CJEU's ultimate decision will set the scene in a more concrete fashion later in the year. This writer expects them to follow the opinion, but that is by no means a certainty.
The protection of designs is complicated, no less because the design of a particular product can often be tied to the end function it is meant to achieve. A functional element of a design might not attract protection as a design, since the regime only protects (to put very simply) aspects of designs that are of more aesthetic value. What amounts to a feature that won't be protected is difficult to decide, as many aesthetic features can often achieve a technical result as well. This prompts the question, when is a feature like that protectable or not? The CJEU took on this question on a case decided only a few weeks ago.
The case of DOCERAM GmbH v CeramTec GmbH concerned the manufacture and sale of technical ceramic components by DOCERAM, in particular, weld centring pins for the automotive and textile industries. Many of these designs are registered as Community designs (RCD 242730). CeramTec also manufactures and sells similar centring pins in the same variants as DOCERAM's registrations. DOCERAM subsequently took CeramTec to court for design infringement, with the matter ultimately ending on the desk of the CJEU.
The referring court asked two questions, which related to the factors in determining whether a design is one that is solely dictated by its technical function, and therefore not registrable under Article 8(1) of the Community Design Regulation.
The first question, as set out by the Court, asked whether "…Article 8(1)… must be interpreted as meaning that, in order to ascertain whether the features of appearance of a product are solely dictated by its function, the existence of alternative designs is decisive, or whether it must be established that function is the only factor which dictated those characteristics".
Some 'functional' designs are a little less useful
Having considered the legislation and relevant case law, the Court determined that "…Article 8(1)… excludes protection… for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist". In short, even if alternative designs exist, the only relevant consideration is whether the technical function is the only factor which determined the features in question and the applicability of Article 8(1).
With regards to the second question, the referring court asked whether "…Article 8(1)… must be interpreted as meaning that in order to determine whether the relevant features of appearance of a product are exclusively dictated by its technical function, that finding must be based on the perception of the ‘objective observer’".
The Article does not set out any requirements on the perspective of the assessment above, unlike other provisions in the Regulation. That in mind, the objective of the Regulation nonetheless does require national courts to take account of all the objective circumstances relevant to each individual case when determining whether features of a design are covered by the provision.
The Court finally set out that "…in order to determine whether the relevant features of appearance of a product are solely dictated by its technical function… the national court must take account of all the objective circumstances relevant to each individual case. In that regard, there is no need to base those findings on the perception of an ‘objective observer’".
The case sets out clear guidelines on the assessment of features in designs that may or may not be solely dictated by their technical function. Designs are often a pile of uncertainty, being very difficult to protect (as illustrated well by the Trunki case, more on which here). Having a clearer idea as to how the lines are drawn for protection helps both proprietors and others disputing the registrations.
The enforcement of copyright is never easy, particularly in today's world where access to infringing files, streaming websites and other means is almost as easy as simply searching for today's news. As infringers and suppliers of infringing materials become more and more sophisticated and clever, rightsholders have to pursue a wide array of cases of infringement. While direct infringement is often very easily determined, the facilitation of infringement by third-parties is always a tricky question (discussed more on this blog here and here). The Canadian Court of Appeal had to recently discuss this point in a very interesting decision.
The case of Bell Canada v Adam Lackman concerned the sharing of software add-ons on the website "TVAddons", operated by Mr Lackman. The KODI media player is an open source piece of software that enables the play of various types of multimedia. Various types of infringing content can be accessed using the media player when certain add-ons are added to it, which allow it to access and stream content hosted on the Internet; many of which were shared on the TVAddons website. Another piece of software was shared on the site called "FreeTelly", a modified version of KODI that allows a user to access infringing materials, and instructions on the installation and use of add-ons. Bell Canada objected to the potentially infringing materials shared on the website shared on the website and sued Mr Lackman for copyright infringement.
The case concerned an Anton Pillar order (discussed in more depth here), and whether the judge at first instance erred in their judgment on the order's standards' application to the facts at hand. The appellant argued that the court had mischaracterised their activities as infringing (when only a small number of add-ons were infringing), and therefore misapplied section 2.4 of the Canadian Copyright Act that deals with communication to the public.
Some add-ons are little less useful
The Court agreed that the judge at first instance had mischaracterised the activities of Mr Lackman (and TVAddons), and that they misunderstood the nature of their activities. Only 16 of 22 'Features' add-ons were tested, which doesn't even scratch the surface when over 1,500 add-ons are provided on the site. Similarly, the appellant's website, calling it a 'mini Google', when the provision of add-ons simply facilitated a quicker, more direct form of infringement by avoiding adds and providing easy access to links.
Having misunderstood the above, the judge had therefore also misapplied the law in relation to communication to the public. The Court considered that Mr Lackman, contrary to the decision at first instance, had communicated the works to the public, as "…the respondent’s website is not content neutral as it targets copyrighted content" by providing access to add-ons that are designed to provide unauthorized access to motion pictures and on-demand and/or live television programming. Having these add-ons, according to the Court, is akin to "…providing embedded links or automatically precipitating a path to copyrighted content". The same applies to programs that either aid in the installation of add-ons, or have pre-installed add-ons already to do the same.
In the light of the above the Court determined that the operation of the site clearly would not fall under the mere conduit exemption, but facilitates access to infringing materials. The site's branding also clearly encourages and highlights the site's purpose for the infringement of copyright through the add-ons, which additionally demonstrates clear knowledge by Mr Lackman of the hosted material.
The Court drew a parallel to the sale of pre-loaded set-top boxes in Bell Canada v iTVBox.net that allowed the user to access, for free, copyright protected content online. What is interested is that the ultimate source for the add-ons for the set-top boxes was TVAddons. As with the set-top boxes, the site would not be acting as a mere conduit, but a facilitator for the infringement of Bell Canada's rights.
Ultimately the Court did conclude that the judge at first instance erred in their decision and that Bell Canada would have a strong prima facie case for copyright infringement. Following the determination of likely copyright infringement, the Court also issued an injunction against TVAddons.
While the case's main focus was not the legal argumentation around copyright infringement, it still sets an interesting, a continuing precedent, where the Canadian courts are very likely to prevent the sharing of content online that facilitates infringement. This clearly now includes both hardware and software.
Fair use is a tricky issue, and often a thorn on the side of copyright owners. Overall one can appreciate the opportunities it creates, but also the headaches faced by those wishing to pursue someone hiding behind that particular shield. Rightsholders have been holding out for a life-line to narrow down the reach of fair use, and might've just been rewarded a win in the wider balancing act of fair use versus infringement. The matter was faced by the Court of Appeals recently, who issued their decision on the appeal in late February.
The case of Fox News Network LLC v TVEyes Inc. concerned the sharing of segments from TV programming by TVEyes. This is done through the continuous recording of TV shows, and compiling them into a searchable database. Users of TVEyes could then search for clips from various programmes, and watch up to 10 minutes of the content that interests them (and has been used by journalists and TV producers for some time). Clips can also be archived onto TVEyes' servers, or downloaded onto the user's computer. Fox ultimately took TVEyes to court for copyright infringement through the redistribution of their audiovisual content.
The case turned on whether the use by TVEyes could be classed as 'fair use' under 17 USC section 107. This looks at the usual four factors: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The factors are assessed weighted together in the light of the purpose of copyright.
Under the first factors, the Court focussed on the precedent set by the Google Books case (discussed more here). In the matter, Google's book search service added something new to the rights attached to the written works, and therefore "…communicated something new and different from the original". Similarly to TVEyes' offering, the showing of snippets from each book "…added important value to the basic transformative search function" by allowing for the user to verify the information as being what was looked for.
Some TV clips are simply captivating
The Court concluded that, in the light of the first factor, TVEyes' service "…is similarly transformative insofar as it enables users to isolate, from an ocean of programming, material that is responsive to their interests and needs, and to access that material with targeted precision". The service saves on costs and time spent looking for materials should they be done without a quick search function. Even though the service was for commercial gain, it still was not enough to counter its transformative nature entirely. Ultimately this means that the first factor slightly weighs in favor of fair use.
In terms of the second factor, the Court swiftly concluded that it is inconsequential to this case, even if the subject matter of the works is reporting on factual events.
They then moved onto the third factor, which looks at the amount of the work copied, and whether it was substantial. The Court quickly concluded that, due to the sheer volume of material copied by TVEyes, which amounted to virtually the entirety of Fox's TV programming. When compared to Google Books, TVEyes often created copies of entire segments of programming that might cover all of the relevant material being sought, whereas Google actively blacklisted certain parts of text within search results to prevent this. This amounted to copying all that is important from the protected works, and weighed against fair use.
Finally, the Court looked at the service's effect on the potential market for or value of the works, particularly whether it competes with the original service. Due to the popularity of the service, there clearly was a marketplace for such services that was exploitable by Fox. This would have impacted any hypothetical monies made by Fox should they have offered the service, particularly in the light of unauthorized, unlicensed copying by TVEyes. This means that "…by selling access to Fox's audiovisual content without a license, TVEyes deprives Fox of revenues to which Fox is entitled as the copyright holder", which meant that the fourth factor also favored Fox.
Having considered the above, the Court had to determine whether, all factors considered, the use was fair use or not. The conclusion of this was that TVEyes' service was not justifiable under fair use, due to the sheer amount of works copied and the usurping of a function for which Fox was entitled to demand compensation for, even though the service was slightly transformative.
TVEyes was deemed to be liable for direct infringement of Fox's rights, and the Court imposed a permanent injunction on their services on allowing the viewing, downloading and sharing of clips from the site. The search function, however, was allowed to continue.
The case is a very interesting one, and sets clear boundaries for services similar to the one offered by TVEyes. Should the clips have been restricted to much shorter segments, and not allowed to be downloaded or shared, the company might have escaped liability. Other video service providers will undoubtedly heed this as a warning against any significant sharing of content.
The arrangement of a picture can hugely affect its effect on the viewer, and potentially its artistic merit. This includes the various poses that any subjects in the picture have, which often are intended to convey certain emotions, thoughts and commentary the artist had in mind. We discussed the potential rights that one might have in yoga poses some time ago, and after a recent action in the US courts, a similar case has pushed its way into the Court of Appeal. In the light of this, can you have copyright in poses?
The case of Folkens v Wyland Worldwide LLC concerned an illustration created by Mr Folkens titled "Two Tursiops Truncatus" or otherwise known as "Two Dolphins", in the late 1970s. In the illustration two dolphins cross each other in an underwater scene, one swimming vertically and the other horizontally. No other marine animals are in the illustration. Mr Wyland created his own work in 2011 titled "Life in the Living Sea", which consisted of an underwater scene, including three dolphins, two of which cross each other similarly to Mr Folken's work, and other marine animals and flora. Having learned of Mr Wyland's work sometime after its creation, Mr Folkens took him to court for copyright infringement.
The matter hinged on whether the pose exhibited by the two dolphins could be protected by copyright.
As set out in Feist (discussed more here), to prove infringement the claimant has to show "…ownership of a valid copyright and the copying of constituent elements of the work that are original". Should no evidence exist as to copying, a claimant can prove this by showing "…that the defendant had access to the plaintiff's work and that the two works are substantially similar". The defendant agreed that they had access to the work, but contended that they were not substantially similar.
Tom's poses were always on point
For there to be copying, the Court did first have to assess whether the two dolphins crossing element would be one that can be protected. What also plays an element in this is whether the pose struck by the dolphins is one that could occur in nature.
Judge Gould, handing down the Court's judgment, set out that "…ideas, first expressed in nature, are the common heritage of humankind, and no artist may use copyright law to prevent others from depicting them". This would arguably include the natural movements of dolphins. They did, however, emphasise that, as was set in Satava v Lowry, "…an artist may obtain a copyright by varying the background, lighting, perspective, animal pose, animal attitude, and animal coat and texture, but that will earn the artist only a narrow degree of copyright protection". This generally would exclude depictions of ideas first expressed by nature, but any original expression contributed to these ideas could potentially be protected, albeit narrowly.
The Court concluded that, following the above, a depiction of two dolphins crossing under sea, one in a vertical posture and the other in a horizontal posture, is an idea first expressed in nature and as such is within the common heritage of humankind. The behavior exhibited in the image is something that social animals such as dolphins would normally do. Other examples would be ants marching in a straight line or birds flying in a V-shape.
The rights held by Folkens are much narrower than what is sought, i.e. in a very specific expression of the natural behavior. In his image this includes "…the [dolphins'] exact positioning, the stippled light, the black and white depiction, and other specific and unique elements of expression". His rights were not infringed by Wyland by exhibiting the same behavior in a different setting.
The Court therefore dismissed the appeal, and upheld the District Court's summary judgment on the matter.
The case is by no means ground-breaking, but does illustrate the difficulty in protecting common, natural elements, such as poses and animal behavior. The more common the pose, the harder it is to protect it, albeit it is possible via the unique expression of that idea.
After discussing the Louboutin shoe sole case some time ago, one envisioned the matter going ahead to the CJEU without a hitch. Unbeknownst to this writer, the CJEU decided to assess the case in the Grand Chamber (essentially en banc), and therefore the matter went into further hearings. Having concluded, the case was then passed onto Advocate General Szpunar for his opinion, which he handed down very recently. Even though the AG had given their opinion before, this is still an important consideration ahead of the Grand Chamber decision in the future.
As a quick primer, the case of Christian Louboutin v Van Haren Schoenen BV dealt with a registered Benelux trademark owned by Louboutin (TM No. 0874489) for a high-heeled shoe with a red sole. The mark only encompassed the sole, not the entire shape of the shoe. Van Haren had been selling a similar shoe since 2012, and was sued for trademark infringement by Louboutin. Van Haren then counterclaimed for invalidity.
The crux of the case falls on whether the red sole is a registrable trademark, and therefore enforceable.
In his initial opinion last year the AG considered that a sign combining colour and shape, like the Louboutin red sole, is potentially caught by the prohibition contained in Article 3(1)(e)(iii) of Directive 2008/95. This meant that the Article should be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. Even so, he did determine that the mark in question should be "…equated with a sign consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than one consisting of a colour per se". The ultimate classification of the mark, however, should be made by the referring court, and not the CJEU.
Similarly, the decision on whether the mark exclusively 'gives substantial value' to the goods, which is prevented from being registered under Article 3 above, is for the referring court. The AG did clarify this and considered that the matter "…relates exclusively to the intrinsic value of the shape and must take no account of the attractiveness of the goods… and does not permit the reputation of the mark or its proprietor to be taken into account".
The AG wanted to expand on his considerations on a number of points, including the classification of the mark, applicability of Article 3 and classification of the mark with reference to Article 3.
In his view the shape is not "…wholly abstract or of negligible importance, which could justify the finding that the mark at issue seeks protection for a certain colour per se, without any spatial delimitation". The focus is on the shape of the sole. The AG doubts that the color red can perform the essential function of a trade mark and identify its proprietor where that colour is used out of context, i.e. the shape of the sole. He concluded that, following his earlier opinion, that "…the mark… should be equated with a sign consisting of the shape of the goods and seeking protection for a colour in relation to that shape, rather than as a trade mark consisting of a colour per se".
The AG then moved onto his additional considerations in relation to the applicability of Article 3(1) of the Directive to signs consisting of the shape of the goods and a certain colour.
Dave's shoe innovations definitely skirted the line of registrability
The point revolved around whether the mark can be classified as a 'position mark' under the Implementing Regulation 2017/1431, and whether this prevents the mark from falling under Article 3(1) of the Directive. As the Article does not define what 'shapes' fall in its remit, position marks would not be excluded from being invalid under the provision. The AG considered that this had no bearing on his earlier opinion.
The second main point dealt with by the AG related to the scope of Article 3(1) when compared to Article 4(1)(e)(iii) of Directive 2015/2436.
The 2015 Directive replaced the 2008 Directive, and with no transitional provisions over both, the AG considered that they would cover the same marks (although the former did make changes e.g. to the provisions around the 'own name' defence). The AG determined that any changes would not interfere with the mark's registrability under the 2008 Directive, with Article 3(1) still "…being interpreted to the effect that that provision applies to signs consisting of the shape of the goods which seek protection for a certain colour".
The AG had to then expand on the rationale underlying the ground for refusal or invalidity in Article 3(1).
Following new arguments from both sides, while sympathetic to the pro-registrant argument, the AG set out that, as per the decision in Hauck GmbH & Co KG v Stokke A/S, the assessment to determine whether a shape 'gives substantial value to the goods "…involves account being taken of the average consumer’s perspective [of the aesthetic characteristics]". This perception isn't, however, the decisive element in the assessment, but "…account must be taken both of the perception of the sign at issue by the relevant public and the economic effects which will result from reserving that sign to a single undertaking".
It is important, in the AG's mind, for "…a characteristic to remain available for all market participants over the period during which that characteristic has a particular effect on the value of the goods". Once interest has weaned, it is possible for that characteristic to be registrable as a trademark and not fall under Article 3(1). Unlike the two other prohibitions in Article 3(1), this prohibition is dependent on external factors, e.g. interest and the public's perception of value in the shape, and could catch even a registration of a shape for a certain color. This would, however, "…exclude the characteristics linked to the reputation of the trade mark or its proprietor" as a part of the assessment. This would shift the assessment from one that includes reputation, to one where the value of the shape of the mark is the only factor that matters, i.e. a more notable brand could still register marks like the sole in question.
In summary: "…the reference to the public’s perception as a factor which, among others, determines the characteristics giving substantial value to the goods argues in favour of Article 3(1)… being interpreted as meaning that that provision applies to signs consisting of the shape of the goods and seeking protection for a colour in relation to that shape".
Finally, the AG moved onto the classification of the mark with reference to Article 3(1)(b) of the 2008 Directive.
The AG considered that this would be useful for the CJEU in case they find that Article 3(1)(e) cannot be applied in this case. In summary, the AG determined that "…when analysing the distinctive character of a sign which is indissociable from the appearance of the goods in question, it is necessary to assess whether the registration of that sign would run counter to the general interest that the availability of the characteristics represented by that sign should not be unduly restricted for other operators offering for sale goods or services of the same type. However, Article 3(1)(b)… cannot fully assume the role of Article 3(1)(e)(iii) of that directive, since it is possible to derogate from that first provision in accordance with the detailed rules laid down in Article 3(3) of that directive". This means that, when assessing a mark's distinctiveness under Article 3(1)(b) that cannot be separated from the goods it is used on (like the bottom sole of a shoe), one has to keep in mind whether it could be an anti-competitive registration of goods of a similar type.
The opinion lays down the foundation for the CJEU's decision later this year, but doesn't by any means close the door on Louboutin's registration. Ultimately this will be determined by the guidelines set by the CJEU, and should the proprietor's reputation be separated from the assessment of value, it is possible for the mark to not be invalid under Article 3(1). This writer keenly awaits the CJEU's decision, as it will undoubtedly have a big impact on similar registrations in the future.
Safe harbor provisions for intermediaries on the Internet are the cornerstone of keeping it functional, open and above all fair. Without protection for intermediaries, including ISPs, many entities could create an environment of monitoring and control by service providers, which would undoubtedly hinder the functionality of the Internet as we know it. Even so, safe harbor provisions should be a shield, and not deflect all responsibility from providers where they could be, arguably, deemed as complicit with illegal activities. With that in mind, when could an ISP be deemed liable for the copyright infringement of its users? The US Court of Appeals took on this question earlier this month.
The case of BMG Rights Management (US) LLC v Cox Communications dealt with Cox who are an internet service provider for roughly 4.5 million users. Some of these users shared copyright protected files on Cox's service, including music, using the BitTorrent protocol. Cox's service agreement with their users prevents, among other things, the sharing of infringing content using their service, but has very little by way of automated infringement prevention systems (e.g. through automated notifications and a thirteen-strike policy to suspend a repeat offender's service temporarily). BMG identified that several of their copyright protected works were shared using Cox's service, and used a third-party service provider to send notices to Cox (who had, before this, blocked the third-party provider), with the ISP never receiving those notices. BMG then took Cox to court for copyright infringement via its users.
The Court first dealt with the matter of safe harbor protection for Cox under 17 USC section 512. For an ISP to be covered under the provision, it has to show it "…adopted and reasonably implemented… a policy that provides for the termination in appropriate circumstances of subscribers… who are repeat infringers". This would mean any user who, in short, repeatedly infringes copyrights. Even if those infringements would be mere alleged infringements (i.e. they have not gone to court or been admitted to), the provision would still apply as a requirement.
Timmy's ISP knew about the evil inside of him
The need to have a reasonably implemented policy on termination also necessitates the meaningful enforcement of that policy. Cox, through their thirteen-strike policy, never terminated users' accounts even after repeat offenses. Through this they avoided the policy's reasonable implementation. In internal correspondence representatives in the Abuse division at Cox would dismiss the termination of users' accounts, and reinforced their reactivation for DMCA notices.
Even in the light of this, Cox contested that they had no "actual knowledge" of their users' infringing activities. The evidence discussed above contradicted this point, and even though the stance was changed internally later on, the Court still deemed them to have clear knowledge of users' infringements and that they actively ignored correspondence on the same by rightsholders. This also contradicted their stance on active implementation of the policy, as almost no users were terminated. Cox therefore failed to qualify for safe harbor protection.
The matter then turned to jury instructions on contributory infringement, particularly what the jury were instructed to consider. Cox contended that, as the product they sold (Internet service) is "…capable of substantial non-infringing use", it cannot be deemed to be infringing. The Court quickly rejected this, and determined that even if the technology can be substantially used for non-infringing purposes, it doesn't give them immunity from contributory infringement.
Secondly, Cox argued that the instructions issued, to consider the intent necessary for contributory infringement, were wrong. The jury were instructed to impose liability if "…Cox knew or should have known of such infringing activity". The Court agreed with Cox on this point, considering that the instructions were incorrect and the court erred in giving them. To prove contributory infringement one has to, according to the Court, provide proof of "…at least willful blindness [and that] negligence is insufficient". Saying the party 'should have known' is too low of a standard. A note the Court makes is that the wilful blindness has to relate to specific instances of infringement, e.g. where they have been notified of infringement and choose to ignore the notices.
Cox's appeal was dismissed, but due to errors in jury instructions the matter was remanded and sent for a new trial.
The case is very interesting, and amends the standard that juries will have to assess contributory infringement against. Clearly, had Cox responded to notices sent to them, most likely they would have been protected by safe harbour provisions. They wilful ignorance of the notices and issues, in addition to their lack of enforcing their own policy on termination, was their undoing. The case does raise a red flag for all ISPs to ensure that they indeed do implement a policy against infringers and enforce it to enjoy safe harbor protection. While the case is still going to be decided on in the future after remittance, it still is an important consideration ahead of the forthcoming decision.