There is no communication to the public in case of photo disclosed to a court as evidence

The Advocate General of the European Court G. HOGAN has given an opinion in case  C‑637/19 BY v CX. This case concerns the following background:

BY and CX are both natural persons each of whom operates a website. In the course of a prior dispute before the civil courts, CX sent a copy of a page of text, including a photograph, from BY’s website as evidence in the underlying court proceedings. The photograph accordingly forms part of the documentary record in the proceedings.

BY claims to hold the copyright to that photograph and asks that CX be ordered to pay damages, first, for infringement of copyright and, second, for infringement of the special protection conferred on photographs by Article 49a of the Law on Copyright. CX contests any obligation to pay damages and maintains that the disclosure of the material for the purposes of the court proceedings did not amount to a copyright violation.

At first instance, the Patent- och Patent and Commercial Court, Sweden held that the photograph was protected by rights related to copyright, that is to say, by the special protection conferred on photographs. That court found, however, that because the photograph was transmitted to it as a procedural document, any third party may request communication of the photograph in accordance with the applicable provisions of Swedish constitutional law on access to documents. Although the Patent- och Patent and Commercial Court concluded that CX had distributed that photograph to the public within the meaning of the Law on Copyright, it considered that it had not been established that BY had suffered damage and, accordingly, dismissed its application.

BY appealed that judgment to the referring court.

The referring court considers that it must rule in particular on the question of whether the forwarding of a copy of that photograph to a court as a procedural step constitutes an unlawful making available of the work within the meaning of the relevant national copyright legislation, either as a distribution to the public or as a communication to the public.

It is not in dispute that the photograph was sent electronically (by email) to the court hearing the dispute between the parties in the form of an electronic copy. The national court is also seeking to ascertain whether a court may be regarded as falling within the concept of ‘public’ for these purposes.

The referring court points out that there is uncertainty as to the interpretation in Union law of the concepts of ‘communication to the public’ and ‘distribution to the public’ in the case of a transmission to a court in the course of civil proceedings of a copyright-protected work. This raises the question of, first, whether a court may be regarded as falling within the concept of ‘the public’ within the meaning of Directive 2001/29 and, second, whether the term ‘public’ must be given the same meaning in the context of the application of Articles 3(1) and 4(1) of Directive 2001/29.

In that regard, the referring court notes that the Court has held that the concept of ‘public’ refers to an indeterminate number of potential addressees and involves, moreover, a fairly large number of persons. It further emphasised that the aim is to make a work perceptible in any manner appropriate to ‘persons in general’, as opposed to specific persons belonging to a private group. (5)

It is also apparent from the case-law of the Court that the concept of ‘distribution’, within the meaning of Article 4(1) of Directive 2001/29, has the same meaning as the expression ‘making available to the public … by sale’ within the meaning of Article 6(1) of the WCT. It would appear, however, from the judgment of 13 May 2015, Dimensione Direct Sales and Labianca (C‑516/13, EU:C:2015:315), that for there to be ‘distribution to the public’ it is sufficient that the protected work has been delivered to a member of the public.

It is also necessary to ascertain whether, where a procedural document is transmitted to a court, either in the form of a physical (paper) document or as an attachment to an electronic mail, it is a ‘communication to the public’ or a ‘distribution to the public’, since such transmission produces the same effects and has the same purpose in both cases.

The referring court considers that neither that court itself nor the members of its staff could be regarded as constituting the ‘public’ in the general sense of the term. They could not, however, be regarded as belonging to a private group.

Moreover, according to the referring court, while the number of persons who, following transmission, have access to the work is certainly limited to the court’s staff alone, that number would necessarily be variable and should be regarded from the outset as high. Finally, national law provides that anyone has a right of access to documents received by a court.

In those circumstances, the referring court stayed proceedings and referred the following questions to the Court for a preliminary ruling:

‘(1)  Does the term “public” in Articles 3(1) and 4(1) of Directive [2001/29] have a uniform meaning?

(2) If question 1 is answered in the affirmative, is a court to be regarded as falling within the scope of the term “public” within the meaning of those provisions?

(3) If question 1 is answered in the negative:

(a) in the event of communication of a protected work to a court, can that court fall within the scope of the term “public”?

(b)  in the event of distribution of a protected work to a court, can that court fall within the scope of the term “public”?

(4) Does the fact that national legislation lays down a general principle of access to public documents in accordance with which any person who makes a request can access procedural documents transmitted to a court, except where they contain confidential information, affect the assessment of whether transmission to a court of a protected work amounts to a “communication to the public” or a “distribution to the public”?’

The Advocate’s opinion:

‘The electronic transmission by a litigant or a party to proceedings of copyrighted material as evidence to a court does not constitute a “communication to the public” or a “distribution to the public” in accordance with Article 3(1) and Article 4(1) of Directive 2001/29/EC of 22 May 2001. The mere fact that such evidence is considered a public document and that the public may thus, in principle, have access to the copyrighted material in question in accordance with national freedom of information or transparency rules does not entail that it enters the public domain and is free from copyright protection.’

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How producers of face coverings can fight against counterfeit products?

In one of its recent articles the intellectual property blog IPKat arose the question about the protection of face coverings.

As it is well-known, in the beginning of the Covid-19 pandemic many famous fashion houses started to produce face coverings in an attempt to cover the shortage of these products.

These face coverings use specific design decisions and are branded with famous trademarks such as Hermes, Versace and Louis Vuitton.

Unfortunately, because of the fact that the fashion face coverings were in demand, a lot of counterfeit similar copycat products flooded the market.

This is not something unusual but in the case at hand it can be dangerous because the counterfeits are made of cheap materials which means that their protective function is not so strong. This in turn can be a safety risk to the consumer.

So in that regard what are the ways the producers of original face coverings to protect their intellectual property and to prevent the sale of such counterfeits?

1. Trademarks – every trademark owner can prevent sales of products bearing identical or similar marks. In addition, the trademark owner can ask from a court this products to be seized and destroyed.
2. Industrial designs – in case that the design of the face coverings is new and original it can be registered as an industrial design. Based on this registration the design owner can stop every illegal product in the market.
3. Copyright – if the face covering’s design is original art work, it can be protected by the copyright law too. Bear in mind, however, that the enforcement of copyright rights can be more complex than in the case of trademarks and designs.
4. Border measures – every owner of intellectual property ( such as trademarks, designs, copyright, patents), can require from the Border Authorities of every country to seize importation of products that violate its intellectual property rights.

All of these measures can be used not only from the producers of face coverings but of another protective clothing too.

A pizza war between US and UK based companies rose the issue of the international IP strategy

One interesting dispute between pizza restaurants from the US and the UK brings to us the importance of intellectual property strategy for business development on international level.

Imapizza LLC  is a US based company owner of &pizza restaurants which main differentiating character is the oval form of their pizzas. The company has plans to start business in the UK but without taking further steps.

Meanwhile, the UK based company @pizza opened restaurants in Glasgow and Birmingham offering oval pizzas too.

Imapizza LLC initiated a lawsuit in the US alleging copyright infringement, trademark infringement and trespass.

According to the company, employees of @pizza visited their restaurants taking photographs in order to copy their business model and intellectual property. What’s more @pizza downloaded and used photos from the Imapizza’s website.

The court dismissed all claims as groundless. In the appeal the Court of Appeals for the D.C. Circuit upheld this decision.

According to the court there was no copyright infringement. Uploading and downloading of content by itself cannot constitute copyright breach under the US law. Probably the use of these photos could be an infringement but this happened in the UK and local court can decided on this issue.

Regarding the photos that were been taken in the Imapizza’s restaurants, they cannot infringe copyrights of the company because its restaurants are public places and copyright protection doesn’t cover such cases.

When it comes to both trademarks, although they are similar their was no infringement too. The US trademark law can be invoked in case of unauthorized trademark use in another country only if this can effect upon US commerce.

The Court dismissed the Imapizza’s arguments that this effect is connected with the US students and tourists in the UK which can be mislead by the UK trademark.

With regard to the trespass allegation, the Court found it groundless too because all photos took by the employees of the UK company happened on public places. Every costumer is allowed to take photos when going to a restaurant. If this activities happened in restricted premises probably the conclusion would be different but in the case at hand there was no illegal acts.

This dispute shows clearly how important an intellectual property strategy could be for every company. Some steps have to be implemented in that regard in order the business development of every company to be safeguard in the future on all markets of interest.

Whether Tiffany is a generic term – a question for $21 million

One interesting recent lawsuit from the US where Tiffany & Co. initiated legal proceeding against Costco Wholesale.

The dispute at hand concerns unbranded diamond engagement rings labeled “Tiffany” on point-of-sale signage.

According to Tiffany & Co. this trade practice was a trademark infringement.

According to Costco there was no infringement because the term Tiffany has become generic for those sort of products. It merely indicated the setting not the source of trade origin. Because of that the use of the word was fair.

The New York court dismissed the Costco’s arguments as groundless stating that the trademark infringement was completely clear. The court awarded $21 million in damages.

In the appeal, however, the U.S. Court of Appeals disagreed with this decision. According to the court, the Costco’s argumentation for possible generic character of Tiffany wasn’t scrutinize enough. Because of that the court returned the case to the district court for a new trial.

It would be interesting whether Costco will be able to prove that Tiffany is a generic term which sounds a bit unlikely at that point.

Source: John M. Bowler and Shaleen J. Patel – Troutman Pepper за Lexology.