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The Advocate General of the EU Court gave an opinion on a case regarding Kraftwerk’s music and free(fair) use of works

The Advocate General of the European court issued an opinion on Case C‑476/17 Pelham GmbH, Moses Pelham, Martin Haasm срещу Ralf Hütter, Florian Schneider-Esleben. This case concerns the following:

Mr Ralf Hütter and Mr Florian Schneider-Esleben, claimants at first instance and respondents in the appeal on a point of law in the main proceedings (‘the respondents’), are members of the music group Kraftwerk. In 1977, the group published a phonogram which features the song Metall auf Metall. The respondents are the producers of that phonogram, but also the performers of the work in question and Mr Hütter is also the author (composer).

Pelham GmbH, a company governed by German law, defendant at first instance and appellant on a point of law in the main proceedings, is the producer of a phonogram which features the song Nur mir, performed, inter alia, by the singer Sabrina Setlur. Mr Moses Pelham and Mr Martin Haas, also defendants at first instance and appellants on a point of law in the main proceedings, are the authors of that work.

The respondents claim that Pelham, Mr Pelham and Mr Haas (‘the appellants’) copied — electronically sampled — approximately two seconds of a rhythm sequence from the song Metall auf Metall and incorporated it, as a continuous loop, in the song Nur mir. They submit that the appellants thus infringed the related right they hold as producers of the phonogram in question. In the alternative, the respondents invoke the intellectual property rights they hold as performers and allege an infringement of Mr Hütter’s copyright in the musical work. In the further alternative, the respondents allege an infringement of competition law. However, the proceedings before the referring court concern only the rights of the respondents as producers of the phonogram.

The respondents requested the termination of the infringement, the award of damages, the provision of information and the surrender of the phonograms for the purposes of destruction. The court of first instance upheld the action and the appeal brought by the appellants in the main proceedings was unsuccessful. By judgment of 20 November 2008, the referring court, in response to an appeal on a point of law brought by the appellants, upheld the judgment of the appeal court and the case was referred back to the appeal court for further examination. The appeal court again dismissed the appeal brought by the appellants. By judgment of 13 December 2012, the referring court, in response to a second appeal on a point of law brought by the appellants, dismissed that appeal. That judgment was annulled by the Bundesverfassungsgericht (Federal Constitutional Court, Germany), (8) which referred the case back to the referring court.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Is there an infringement of the phonogram producer’s exclusive right under Article 2(c) of Directive [2001/29] to reproduce its phonogram if very short audio snatches are taken from its phonogram and transferred to another phonogram?

(2) Is a phonogram which contains very short audio snatches transferred from another phonogram a copy of the other phonogram within the meaning of Article 9(1)(b) of Directive [2006/115]?

(3)  Can the Member States enact a provision which — in the manner of Paragraph 24(1) of the [UrhG] — inherently limits the scope of protection of the phonogram producer’s exclusive right to reproduce (Article 2(c) of Directive 2001/29) and to distribute (Article 9(1)(b) of Directive 2006/115) its phonogram in such a way that an independent work created in free use of its phonogram may be exploited without the phonogram producer’s consent?

(4)  Can it be said that a work or other subject matter is being used for quotation purposes within the meaning of Article 5(3)(d) of Directive [2001/29] if it is not evident that another person’s work or another person’s subject matter is being used?

(5) Do the provisions of EU law on the reproduction right and the distribution right of the phonogram producer (Article 2(c) of Directive 2001/29 and Article 9(1)(b) of Directive 2006/115) and the exceptions or limitations to those rights (Article 5(2) and (3) of Directive 2001/29 and Article 10(2), first sentence, of Directive 2006/115) allow any latitude in terms of implementation in national law?

(6) In what way are the fundamental rights set out in the Charter of Fundamental Rights of the European Union (‘the Charter’) to be taken into account when ascertaining the scope of protection of the exclusive right of the phonogram producer to reproduce (Article 2(c) of Directive 2001/29) and to distribute (Article 9(1)(b) of Directive 2006/115) its phonogram and the scope of the exceptions or limitations to those rights (Article 5(2) and (3) of Directive 2001/29 and Article 10(2), first sentence, of Directive 2006/115)?’

17. The request for a preliminary ruling was received at the Court on 4 August 2017. Written observations were submitted by the parties in the main proceedings, the German, French and United Kingdom Governments and the European Commission. All the parties concerned were represented at the hearing on 3 July 2018.

The Advocate’s decision:

(1) Article 2(c) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that taking an extract of a phonogram for the purpose of using it in another phonogram (sampling) infringes the exclusive right of the producer of the first phonogram to authorise or prohibit the reproduction of his phonogram within the meaning of that provision where it is taken without the latter’s permission.

(2) Article 9(1)(b) of Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property must be interpreted as meaning that a phonogram which contains extracts transferred from another phonogram (samples) is not a copy of the other phonogram within the meaning of that provision.

(3) Article 2(c) of Directive 2001/29 must be interpreted as precluding the application of a provision of the national law of a Member State, such as Paragraph 24(1) of the Gesetz über Urheberrecht und verwandte Schutzrechte — Urheberrechtsgesetz (German Law on Copyright and Related Rights) of 9 September 1965, according to which an independent work may be created in the free use of another work without the consent of the author of the work used, to phonograms, in so far as it exceeds the scope of the exceptions and limitations to exclusive rights provided for in Article 5(2) and (3) of that directive.

(4) The quotation exception provided for in Article 5(3)(d) of Directive 2001/29 does not apply where an extract of a phonogram has been incorporated into another phonogram without any intention of interacting with the first phonogram and in such a way that it forms an indistinguishable part of the second phonogram.

(5) Member States are required to ensure the protection, in their domestic law, of the exclusive rights set out in Articles 2 to 4 of Directive 2001/29, in so far as those rights can be limited only in the application of the exceptions and limitations listed exhaustively in Article 5 of that directive. Member States are nevertheless free as to the choice of form and methods they consider appropriate to implement in order to comply with that obligation.

(6) The exclusive right of phonogram producers under Article 2(c) of Directive 2001/29 to authorise or prohibit reproduction, in part, of their phonogram in the event of its use for sampling purposes is not contrary to the freedom of the arts as enshrined in Article 13 of the Charter of Fundamental Rights of the European Union.

Heineken Italy lost a beer lawsuit in the EU

Heineken Italy lost a trademark case T‑378/17 before the General Court of the EU, which concerns a company’s attempt to register the following EU trademark for classes 32 and 33:Against this application, an opposition was filed by the Spanish company La Zaragozana, SA based on an earlier Spanish trademark CERVISIA AMBAR for class 32 – beer.

Initially, the EUIPO upheld the opposition due to the similarity between the word parts of the marks in the presence of similar and identical goods.

The Board of Appeal, however, annulled this decision stating that the signs are not similar because the visual elements in the later mark create a difference. What’s more the word part in the mark applied for was barely legible.

The General Court revoked this decision accepting that both trademarks are confusingly similar. The reasons for this is that the word part in the later mark can be read by the consumers and the fact that visual elements cannot outweigh the word once in such an assessment.

Source: WIPR.

Ordering trademark damages in Argentina – new moments

Carlos Castrillo published an interesting article for Marques Class 46 regarding the practice for awarding damages for trademark infringements in Argentina.

In order such damages to be given, the law in the country requires:

• The existence of an infringement.
• Made with fraud or fault.
• Causing proved loss or damage.

Damage cannot be inferred; it has to be proved. The local court’s practice has refused such damages until now.  This gave relative peace of trademark infringers in the country because they only risk a cease-and-desist order together with the payment of professional fees.

In a new lawsuit between Adidas and Juan Carlos Chilemi SRL, however, the Court of Appeal ordered damages in the amount of 55 000 dollars despite the fact that Adidas failed to prove any loses.

The court based its decision on an exception in the Civil Procedure Code which gives the authorizes to grant damages if the damages are proven to have occurred but are difficult to determine.

The full article can be found here.

The successful Lego’s IP strategy

Rosie Burbidge published an interesting article about the Lego’s IP strategy, discussed through the Second Brand Protection Conference in Frankfurt.

The article goes through the different stages of intellectual property protection adopted by Lego and the different approaches used by the company in order to prolong this protection and to strengthened it. For example, the company has not only a trademark portfolio but domain names one too, which serves to enhances the brand protection on the internet.

It is quite fascinating how the Duch company uses social media to interact with its consumers and to explain gently the need for its IP protection or the fact that a special video was created which was given to customs authorities around the world to help them to distinguish original Lego product from fake ones

The full article can be found here.

BMW won a lawsuit regarding its Mini Cooper brand

BMW won a lawsuit in Germany against the Chinese company Ninebot which offer electric scooters.

The case concerns an advertisement spot for the Ninebot’s scooter which includes among other a Mini Cooper car producing by BMW.

According to the German company, this was unfair trade practice because, first of all, Ninebot had no permission to include the Mini Cooper brand in the spot, and secondly, by doing that the company took unfair advantages from the longstanding Mini Cooper’s reputation on the market.

The court went along with BMW, accepting that the Mini Cooper brand was exposed clearly and in a non-descriptive manner in the advertisement.

Source: WIPR.

Samoa joins the Madrid Protocol

WIPO informs about the accession of Samoa to the Madrid Protocol for international registration of trademarks. The Protocol will enter into force for the country on 04.03.2019. After this date, the country can be designated into applications for international marks.

For more information here.