Performers explicit consent – an EU Court decision

ballerina-1873265_1920.jpgThe European Court has ruled in case C‑484/18 Société de perception et de distribution des droits des artistes-interprètes de la musique et de la danse (Spedidam), PG, GF

v Institut national de l’audiovisuel. The dispute concerns the following:

The INA is a publicly owned industrial and commercial body of the French State which is responsible for conserving and promoting the national audiovisual heritage. In that capacity, it keeps, inter alia, the audiovisual archives of audiovisual producers, namely national broadcasting companies, and helps with the exploitation of those archives.

PG and GF are the successors in title of ZV, a musician who died in 1985.

During 2009, PG and GF became aware that INA was marketing, in its online shop, without their authorisation, video recordings and phonograms reproducing ZV’s performances during the years 1959 to 1978. It is apparent from the file before the Court that those video recordings and phonograms had been produced and then broadcast by national broadcasting companies.

On 28 December 2009, PG and GF, on the basis of Article L. 212-3 of the Intellectual Property Code, brought an action against the INA in order to obtain compensation for the alleged infringement of the performer’s rights which they hold.

By judgment of 24 January 2013, the Regional Court, Paris, France upheld that action. That court considered, in particular, that the application of Article 49 as amended did not exempt the INA from the requirement to obtain the performer’s prior authorisation for the use of the fixation of his performances. Thus, the sole purpose of the collective agreements provided for in the latter provision is to determine the remuneration due for new exploitations, provided that an initial exploitation has been authorised by the performers concerned. In the present case, proof of such authorisation has not been adduced by the INA. By judgment of 11 June 2014, the Court of Appeal, Paris, France, before which the INA brought its appeal, essentially upheld the judgment given at first instance.

By judgment of 14 October 2015, the Court of Cassation, France set aside in part the judgment of the Court of Appeal, Paris. The Court of Cassation found that that Court of Appeal had erred in holding that the application of the derogating rules at issue was subject to proof that the performer had authorised the initial exploitation of his performance, thus adding to the law a condition that it did not impose.

17      By judgment of 10 March 2017, the Court of Appeal, Versailles, France, before which the case was brought back, dismissed PG’s and GF’s claims. That court considered, in essence, that Article 49 as amended establishes, for the sole benefit of the INA, a simple presumption of the performer’s prior consent, which can be challenged, and thus does not call into question the performer’s exclusive right. The agreements with the trade union organisations referred to in that article do not confer on them the right to ‘authorise and prohibit’, which is vested in the performer, but have the sole purpose of fixing the performer’s remuneration.

18      PG, GF and Spedidam, which had intervened voluntarily before the Court of Appeal, Versailles, brought an appeal against the latter’s judgment before the referring court. The referring court indicates that it has doubts as to the compatibility of the legal rules set out in Article 49 as amended with Articles 2, 3 and 5 of Directive 2001/29.

19      In those circumstances, the Court of Cassation decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Must Article 2(b), Article 3(2)(a) and Article 5 of Directive [2001/29] be interpreted as not precluding national rules, such as those laid down in Article 49 [as amended] [of the Law on freedom of communication], from establishing, for the benefit of the [INA], the beneficiary of the exploitation rights of national broadcasting companies in the audiovisual archives, derogating provisions under which the terms on which performers’ works can be exploited and the remuneration for that exploitation are governed by agreements concluded between the performers themselves or the employee organisations representing performers and that institute, which must specify, inter alia, the scale of remuneration and the arrangements for payment of that remuneration?’

The Court’s decision:

Article 2(b) and Article 3(2)(a) 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 not precluding national legislation which establishes, as regards the exploitation of audiovisual archives by a body set up for that purpose, a rebuttable presumption that the performer has authorised the fixation and exploitation of his performances, where that performer is involved in the recording of an audiovisual work so that it may be broadcast.


The brand new version of Espacenet is available

The European Patent Office announced the brand new version of its patent database Espacenet.

The new version is more modern and dynamic and at the same time allows searching for patent documentation based on different combinations of terms and filters.

In addition, the database will provide its users with better translations of the patent documentation in more languages.

For more information here.

New types of trademarks on the horizon

laptop-2411303_1280.jpgAs it is well-known the current changes in the European legislation eliminated the need for graphical representation of trademark in its application form.

This by itself opens widely the door for new types of trademarks unseen so far especially when we take into consideration all new technologies available.

Of course, these potential trademarks will have to fulfill all general requirements for trademark protection. Nevertheless, many companies and individuals will be happy when it comes to this possibility because they will be able to protect more innovative signs for trade origin which has been impossible so far.

Some examples that have started to appear in different countries are:

  • A UK motion trademark by Toshiba – here or
  • A Google EU hologram trademark –  here.

It is highly likely that we will see even more creative trademark forms in the foreseeable future.

Brief IP news

news-in-brief1. Intellectual Property Licensing. For more information here.

2. Copyright and Cultural Heritage. For more information here.

3.World Intellectual Property Report 2019 – Local Hotspots, Global Networks: Innovative Activity Is Increasingly Collaborative and International. For more information here

Ecuador joins the DesignView database

basin-4067637_960_720.jpgThe EUIPO reports about the accession of Ecuador to the global database for protected industrial designs DesignView. In that way, the participating Patent Offices become 70 and the database gives access to more than 14 million designs around the world.

For more information here.

Ferrero defended successfully its Tic Tac container again

8000500166697_PHOTOSITE_20191002_055423_0.jpgOne of the biggest foodstuff producers in the world Ferrero successfully defended its 3D trademarks for the famous Tic Tac container.

The case at hand concerns a Czech producer which sells identical products using very similar container but with different brand BLIKI.

According to this producer, Ferroro’s container cannot function as a trademark because it has a technical function and adds substantial value. In addition, the BLIKI brand makes a difference.

The court in Turin disagreed. In regard to the brands, this was irrelevant for the case because the earlier mark was only 3D.

The court considered that the Ferrero’s mark has no technical function. Apart from this, there was no evidence that consumers buy Tic Tac because of the substantial value given by the container.

This case is a good example of the significant role that trademark protection has in every company IP strategy. While design protection can last up to 25 years, trademarks can exist forever in they are maintained properly.

North Korea joins the Lissabon Agreement

431732-north-korea-flag.jpgWIPO reports about the accession of the Democratic People’s Republic of Korea to the Lissabon Agreement for international registration of geographical indications.

As it is known, based on this Agreement every owner of such geographical indication can apply for its protection if different Member States using one application. This is turn saves time and money.

For more information here.