Can the Champagne PDO protection covers services?

The Advocate General of the European Court Giovanni Pitruzzella  issued his opinion on the Case C‑783/19 Comité Interprofessionnel du Vin de Champagne v GB. 

In brief, this case targets the question whether protection of a product as a geographical indication can cover related services too. The dispute has the following background:

The CIVC, the appellant in the main proceedings, is a semi-public organisation with legal personality, recognised under French law and responsible for safeguarding the interests of champagne producers. The CIVC brought an action before the Commercial Court, Barcelona, Spain seeking an order requiring GB, the respondent in the main proceedings, to cease use of the sign CHAMPANILLO, including on social media (Instagram and Facebook), to remove any insignia or advertising or commercial document featuring that sign from the market and from the internet, and to cancel the domain name ‘champanillo.es’. GB appeared before the court claiming that the sign CHAMPANILLO is used as a trade name for catering premises (tapas bars situated in the Autonomous Community of Catalonia), and that there was no likelihood of confusion with the products covered by the name ‘Champagne’ and no intention of taking unfair advantage of the reputation of that name.

The Commercial Court, Barcelona rejected all of the CIVC’s claims. It held that the use of the sign CHAMPANILLO did not constitute an evocation in breach of the ‘Champagne’ PDO, since it was intended to designate not an alcoholic beverage but catering premises – where champagne is not sold – and therefore products other than those protected by the PDO and targeting a different market. In the grounds of that judgment, the Commercial Court, Barcelona referred to the guidance provided by the Supreme Court, Spain in a 2016 judgment, in which it was ruled that the use of the term CHAMPÌN to market a non-alcoholic fizzy fruit drink consumed at children’s parties did not infringe the ‘Champagne’ PDO on account of the difference between the products concerned and their target market, despite the phonetic similarity between the two signs. 

The CIVC appealed against the judgment of the Commercial Court, Barcelona before the Provincial Court, Barcelona, Spain. The Provincial Court explains that: (i) GB has twice attempted to register the sign CHAMPANILLO as a trade mark with the Spanish patent office and that those applications were rejected, by decisions of 8 February 2011 and of 14 April 2015, following opposition from the CIVC; (ii) GB uses the image of two champagne coupes containing a sparkling beverage as a graphic medium to advertise its premises; (iii) the CIVC produced documents certifying that, until 2015, GB solda sparkling wine called ‘Champanillo’ on its premises and that sales ceased only following action taken by the CIVC.

The referring court notes that both Article 13 of Regulation No 510/2006 and Article 103 of Regulation No 1308/2013 protect PDOs in relation to products, with the sole exception of Article 103(2)(b) which also mentions services. The referring court states that it has doubts as to the scope and correct interpretation of the provisions of EU law on the protection of a PDO in a situation where the sign allegedly in conflict with that name is used in the course of trade to designate not goods but services.

In those circumstances, the Provincial Court, Barcelona decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does the scope of protection of [a] designation of origin make it possible to protect that designation of origin not only as against similar products but also as against any services which may be associated with the direct or indirect distribution of those products?

(2) Does the risk of infringement by evocation, to which the articles in question of the Community regulations refer, necessitate in the first instance a nominal analysis[,] to determine the effect that this has on the average consumer, or[,] in order to examine that risk of infringement by evocation[,] is it necessary to establish first of all that the products at issue are the same or similar or are complex products whose components include a product protected by a designation of origin?

(3) Must the risk of infringement by evocation be defined using objective criteria when the names are exactly the same or highly similar or must that risk be calibrated by reference to the products and services which evoke and are evoked in order to conclude that the risk of evocation is tenuous or irrelevant?

(4) In cases where there is a risk of evocation or exploitation, is the protection provided for in the legislation referred to specific protection related to the special features of the products concerned or must the protection be connected to the provisions on unfair competition?’

The Advocate’s opinion:

Article 103(2)(b) of Regulation No 1308/2013 of the European Parliament and of the Council of 17 December 2013 establishing a common organisation of the markets in agricultural products must be interpreted as meaning that acts of misuse, imitation or evocation of a PDO in relation to services may also come within the scope of that provision.

In order to determine whether there is an evocation of a protected designation of origin within the meaning of Article 103(2) of Regulation No 1308/2013, it is not necessary to establish, first of all, that the product covered by that designation and the product or service covered by the disputed sign are identical or comparable or that the latter product includes among its ingredients the product covered by the protected designation of origin. However, whether or not the products are identical or comparable is a factor that the national court is required to take into consideration, together with any other relevant factor, when assessing whether there is an evocation within the meaning of that provision.

The protection against evocation provided for in Article 103(2)(b) of Regulation No 1308/2013 is not limited to cases where the practice giving rise to evocation satisfies the conditions for an act of unfair competition within the meaning of the relevant provisions of the applicable national law.

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YouTube and Uploaded succeeded before the European Court but under some conditions

The European Court has issued a decision on the joined cases C‑682/18 и C‑683/18 Frank Peterson v Google LLC and Elsevier Inc. v Cyando AG.

In a nutshell these disputes target the question to what extent platform operators violate copyrights over uploaded works by their users. This blog reported about the Advocate General of the EU Court opinion on these cases last year.

Case C‑682/18 has the following background:

Mr Peterson is a music producer and claims to be the owner of the company Nemo Studios.

On 20 May 1996 the company Nemo Studio Frank Peterson entered into a worldwide exclusive artist contract with the performer Sarah Brightman covering the use of audio and video recordings of her performances. In 2005 that contract was amended by a further agreement. On 1 September 2000 Mr Peterson concluded a licence agreement, in his own name and on behalf of Nemo Studios, with Capitol Records Inc. covering the exclusive distribution of the recordings and performances of Sarah Brightman by Capitol Records.

The album A Winter Symphony, containing works performed by Sarah Brightman, was released in November 2008. On 4 November 2008 Sarah Brightman began a tour called the ‘Symphony Tour’ in which she performed the works she had recorded for the album.

On 6 and 7 November 2008 works taken from that album and private recordings from concerts on that tour could be accessed on the YouTube online platform, accompanied by still and moving images. By letter of 7 November 2008, Mr Peterson, who produced, in support of his request, screenshots intended to establish the facts alleged, contacted Google Germany and demanded that both Google Germany and Google issue cease-and-desist declarations under threat of penalties. Google Germany then approached YouTube, which used the screenshots sent by Mr Peterson to find the internet addresses (URLs) of the videos in question manually and blocked access to them. The parties disagree as to the extent to which access was blocked.

On 19 November 2008 audio recordings from Sarah Brightman’s performances, accompanied by still and moving images, could once again be accessed on YouTube’s online platform.

Consequently, Mr Peterson brought an action before the Regional Court, Hamburg, Germany against Google and YouTube (‘the defendants in the main proceedings’) seeking an injunction, disclosure of information and a declaration that they were liable to pay damages. In support of that action, he relied on his own rights as the producer of the album A Winter Symphony, as well as his own rights and rights deriving from those of Sarah Brightman associated with the performance of the works on that album, which was created with his artistic participation as both producer and backing vocalist. He also submits, with regard to the recordings of the ‘Symphony Tour’ concerts, that he is the composer of and author of the lyrics of various works on the album. In addition, he holds, as publisher, rights derived from those of the authors in respect of various musical works.

By judgment of 3 September 2010, the court hearing the case upheld the action in so far as it related to three musical works and dismissed the action as to the remainder.

Mr Peterson and the defendants in the main proceedings brought appeals against that decision before the Higher Regional Court, Hamburg, Germany. Mr Peterson requested that the defendants in the main proceedings be prohibited from making available to the public, in the form of versions that are either synchronised or are otherwise linked to third-party content or to advertisements, 12 audio recordings and performances appearing on the album A Winter Symphony by Sarah Brightman, which he produced, and 12 musical works composed by him taken from the ‘Symphony Tour’ concerts or, in the alternative, from allowing third parties to make the relevant works available to the public. He also required that information be provided concerning the illegal activities and the turnover or profits generated through those activities. In addition, he claimed that YouTube should be ordered to pay damages and that Google should be ordered to return sums that constituted unjust enrichment. In the alternative, he requested information on the users of the YouTube online platform who had uploaded the works in question under pseudonyms.

By judgment of 1 July 2015, the Higher Regional Court, Hamburg reversed in part the judgment delivered at first instance and ordered the defendants in the main proceedings to prevent third parties, in respect of seven musical works, from making available to the public versions that are either synchronised or are otherwise linked to third-party content or to advertisements of audio recordings or performances by the artist from the album A Winter Symphony. Further, it ordered the defendants in the main proceedings to provide the names and postal addresses of the users of the platform who had uploaded the musical works to that platform using a pseudonym or, in the absence of a postal address, the email address of those users. The appeal court dismissed the action as to the remainder as being inadmissible in part and unfounded in part.

As regards seven musical works from the album A Winter Symphony, the appeal court found that Mr Peterson’s rights had been infringed by the fact that those works were posted, without his permission, on YouTube’s video-sharing platform and were accompanied by moving images, such as films taken from Sarah Brightman’s promotional video. The appeal court found that YouTube was not liable for those infringements as the perpetrator or as a participant, since it did not play any active role in the creation or posting of the content at issue on the platform and, moreover, did not adopt that third-party content as its own. In addition, it did not demonstrate the intent required in order to be liable as a participant, as it had no knowledge of the specific acts of infringement. The appeal court held that YouTube was nevertheless liable as an ‘interferer, since it had failed to discharge its obligations as to its own conduct. Thus, as regards those works, although it had been notified of illegal activities relating to those works, it had not immediately deleted the content at issue or blocked access to that content.

By contrast, YouTube had not infringed any conduct obligations in respect of the recordings of the ‘Symphony Tour’ concerts. It is true that the videos featuring those musical works were unlawfully posted by third parties on the video-sharing platform. However, YouTube either did not have sufficient information about those infringements, or blocked access to the content in question in good time or, in certain cases, could not be accused of having infringed the obligation to block that content immediately.

The Federal Court of Justice, Germany gave leave for an appeal on a point of law (Revision) against the judgment on appeal, but limited it to the grounds of appeal which had been found to be admissible by the appeal court. Mr Peterson maintains his grounds of appeal in the context of his appeal on a point of law (Revision) despite the fact that the appeal court held that they were unfounded. In their appeal on a point of law (Revision), the defendants in the main proceedings claim that the action should be dismissed in its entirety.

The referring court notes that the success of Mr Peterson’s appeal depends, in the first place, on whether YouTube’s conduct in the dispute in the main proceedings constitutes a communication to the public within the meaning of Article 3(1) of the Copyright Directive. It takes the view that that could be the case only in respect of the seven musical works from the album A Winter Symphony which YouTube did not expeditiously remove or block despite having been informed of the fact, established by the appeal court, that those works were illegally made available to the public via its platform.

That court goes on to state that, by operating its platform, YouTube does not play a role that is indispensable, within the meaning of the case-law of the Court, which is a prerequisite of its conduct being classified as an act of communication if, after having been made aware that content-infringing copyright is being made available to the public, it deletes that content or immediately blocks access to it. In order for YouTube to be regarded as having such a role, it is necessary for it to be fully aware of the consequences of its conduct and, in particular, of the lack of authorisation from the rightholder. Since videos are uploaded automatically, YouTube has no knowledge that copyright-infringing content is being made available to the public until it is informed of this by the rightholder. The referring court states that YouTube informs users, in its terms of service, and then subsequently during the upload process, that they are prohibited from infringing copyright via its platform and provides rightholders with tools which they can use to take action against such infringements.

The referring court states that, if YouTube’s conduct at issue in the main proceedings cannot be classified as a communication to the public within the meaning of Article 3(1) of the Copyright Directive, it is then necessary to determine, in the second place, whether the activity of the operator of a video‑sharing platform, such as YouTube’s, comes within the scope of Article 14(1) of the Directive on Electronic Commerce, so that that operator may benefit from an exemption from liability in respect of the information stored on its platform. That court notes that, as is apparent from the findings made by the appeal court, YouTube did not associate the videos infringing Mr Peterson’s copyright with advertising. However, the question arises whether YouTube nevertheless played an active role, which would preclude the application of that provision, in view of the other circumstances of the present case, as summarised in paragraph 30 of the present judgment.

In the event that YouTube’s role is to be classified as neutral and, therefore, that its activity falls within the scope of Article 14(1) of the Directive on Electronic Commerce, the question arises, in the third place, as to whether ‘actual knowledge of illegal activity or information’ and ‘[awareness] of facts or circumstances from which the illegal activity or information is apparent’, within the meaning of that provision, must relate to specific illegal activities or information. In the view of the referring court, that question should be answered in the affirmative. It follows from the wording and scheme of that provision that it is not sufficient that the provider was generally aware that its services are used to engage in some illegal activities. An infringement must therefore be notified to the provider in a manner that is clear and precise so as to allow the provider to establish that infringement without conducting a detailed legal or factual examination.

The referring court states that, if YouTube’s conduct at issue in the main proceedings falls within the scope of Article 14(1) of the Directive on Electronic Commerce, the question also arises, in the fourth place, as to whether it is compatible with Article 8(3) of the Copyright Directive that the rightholder should not be in a position to obtain an injunction against the operator of a video-sharing platform, whose services have been used by a third party to infringe copyright or related rights, unless the operator, after having been notified of a clear infringement of such a right, has not acted expeditiously to delete the content in question or to block access to it and to ensure that such infringements do not recur. In the view of that court, that question should be answered in the affirmative, since it follows from Article 14(1) and Article 15(1) of the Directive on Electronic Commerce that an injunction against such an operator may be provided for under the national law of the Member States only where that operator has actual knowledge of the illegal activity or information.

In the event that YouTube’s conduct does not fall within the scope of Article 14(1) of the Directive on Electronic Commerce, the question arises, in the fifth place, as to whether YouTube must, even in the absence of a communication to the public, within the meaning of Article 3(1) of the Copyright Directive, be regarded as an ‘infringer’ who, unlike an ‘intermediary’, may, under Articles 11 and 13 of the Enforcement Directive, be the subject not only of an injunction, but also of an order to pay damages or to recover profits.

Once again, in the situation referred to in the previous paragraph and in the event that the Court were to concur, in that regard, with the referring court’s view that YouTube should be regarded as an infringer, the question arises, in the sixth and last place, whether the obligation of such an infringer to pay damages, under Article 13(1) of the Enforcement Directive, may be made subject to the condition that it acted deliberately with regard both to its own illegal activity and the specific illegal activity of the third party.

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

‘(1)  Does the operator of a video-sharing platform on which videos containing content protected by copyright are made publicly accessible by users without the consent of the rightholders carry out an act of communication within the meaning of Article 3(1) of [the Copyright Directive] if:

– the operator earns advertising revenue by means of the platform,

– the upload process takes place automatically and without material being seen or monitored in advance by the operator,

–  in accordance with the terms of service, the operator receives a worldwide, non-exclusive and royalty-free licence for the videos for the duration for which the videos are posted,

–  in the terms of service and during the upload process, the operator points out that copyright-infringing content may not be posted,

–  the operator provides tools with which rightholders can take steps to block videos that infringe their rights,

–  on the platform, the operator prepares search results in the form of rankings and content categories, and displays to registered users an overview of videos recommended on the basis of videos previously seen by those users,

if the operator is not specifically aware of the availability of copyright-infringing content or, after having become aware, immediately deletes that content or expeditiously disables access thereto?

(2) If Question 1 is answered in the negative:

Does the activity of the operator of a video-sharing platform under the conditions described in Question 1 come within the scope of Article 14(1) of [the Directive on Electronic Commerce]?

(3) If Question 2 is answered in the affirmative:

Must the actual knowledge of the illegal activity or information and the awareness of the facts or circumstances from which the illegal activity or information is apparent relate to specific illegal activities or information pursuant to Article 14(1) of [the Directive on Electronic Commerce]?

(4)  Also if Question 2 is answered in the affirmative:

Is it compatible with Article 8(3) of [the Copyright Directive] if the rightholder is in a position to obtain an injunction against a service provider whose service consisting of the storage of information provided by a recipient of the service has been used by a recipient of the service to infringe copyright or a related right, only if such an infringement has been repeated after notification of a clear infringement has been provided?

(5) If Questions 1 and 2 are answered in the negative:

Is the operator of a video-sharing platform under the conditions described in Question 1 to be regarded as an infringer within the meaning of the first sentence of Article 11 and Article 13 of [the Enforcement Directive]?

(6) If Question 5 is answered in the affirmative:

Can the obligation of such an infringer to pay damages pursuant to Article 13(1) of [the Enforcement Directive] be made subject to the condition that the infringer acted intentionally with regard both to his own illegal activity and to the illegal activity of the third party, and knew, or ought reasonably to have known, that users use the platform for specific acts of infringement?’

 Case C‑683/18 has the following background:

Elsevier is an international specialist publisher, which holds the exclusive rights to use the works at issue in the main proceedings.

Cyando operates the ‘Uploaded’ file-hosting and -sharing platform, which can be accessed via the websites uploaded.net, uploaded.to and ul.to. That platform offers all internet users, free of charge, storage space for uploading files regardless of content. In order to be able to upload files to that platform, it is necessary to create an account, with a user name and password, by providing, inter alia, an email address. The uploading of a file by a user happens automatically without the material being seen or monitored in advance by Cyando. Each time a file is uploaded, Cyando automatically creates a download link which allows direct access to the file concerned and automatically sends that link to the user who uploaded it.

Cyando offers neither a directory nor a search function for the files stored on its platform. Users may nevertheless share on the internet the download links sent to them by Cyando, in particular in blogs, forums or even in ‘link collections’. Those collections, which are provided by third parties, index those links, provide information on the content of the files to which those links refer and thus enable internet users to search for the files that they wish to download. In that way, other internet users can access the files stored on Cyando’s platform.

The downloading of files from Cyando’s platform is free of charge. The quantity of downloads and the download speed are nevertheless limited for unregistered users and for users who have a free subscription. Users with a paid subscription have a daily download volume of 30 GB, up to a cumulative maximum of 500 GB with no restriction on download speed. They can download an unlimited number of files simultaneously with no waiting time between downloads. The price for such a subscription ranges between EUR 4.99 for two days and EUR 99.99 for two years. Cyando pays remuneration to users who have uploaded files according to how many times those files are downloaded. For example, up to EUR 40 is paid for 1 000 downloads.

According to Cyando’s general terms and conditions, users of its platform are prohibited from infringing copyright via that platform.

The referring court states that that platform is used both in ways which are lawful and in ways which infringe copyright. Cyando was informed that more than 9 500 works had been uploaded to its platform, in respect of which, in breach of copyright, download links were shared on the internet on approximately 800 different websites (link collections, blogs, forums).

In particular, on the basis of searches carried out from 11 to 19 December 2013, Elsevier notified Cyando, by two letters dated 10 January 2014 and 17 January 2014, that three works in respect of which it holds exclusive rights of use, namely Gray’s Anatomy for Students, Atlas of Human Anatomy and Campbell-Walsh Urology, may be consulted as a file on the Uploaded platform, via the link collections rehabgate.com, avaxhome.ws and bookarchive.ws.

Elsevier brought an action against Cyando before the Regional Court I, Munich, Germany. Elsevier requested, inter alia, that a prohibitory injunction be issued against Cyando, principally, as the party responsible for the copyright infringements with respect to the works at issue in the main proceedings, in the alternative, as a participant in those infringements and, in the further alternative, as an ‘interferer. Elsevier also requested that Cyando be ordered to provide it with certain information and to pay damages to it in respect of those infringements.

By judgment of 18 March 2016, the Regional Court I, Munich issued a prohibitory injunction ordering Cyando, as a participant, to cease infringing copyright in three of the works at issue in the main proceedings, namely those cited in the letters of 10 January 2014 and 17 January 2014.

Elsevier and Cyando each brought an appeal against that decision before the Higher Regional Court, Munich, Germany.

By judgment of 2 March 2017, the appeal court varied the judgment at first instance. That court issued a prohibitory injunction ordering Cyando, as an ‘interferer’, to cease infringing copyright in the three works referred to in the letters of 10 January 2014 and 17 January 2014 and dismissed the action as to the remainder.

The appeal court held, inter alia, that Elsevier could not pursue a claim against Cyando as the party infringing the rights of copyright in question. Cyando’s contribution was limited to providing the technical means allowing the works at issue to be made available to the public. As it had no knowledge that users of its platform were carrying out such infringements, Cyando could also not be regarded as a participant in those infringements. However, as an interferer, Cyando was required to ensure that the infringements of the copyright in the three works cited in the letters of 10 January 2014 and 17 January 2014 were brought to an end. By contrast, as regards another work, entitled Robbins Basic Pathology, which is also at issue in the main proceedings, Cyando had not infringed its monitoring obligations, since that work was not republished until two and a half years after the first infringement was determined, which triggered those monitoring obligations. Furthermore, as an ‘interferer’, Cyando was not required to pay damages.

In its examination, the appeal court found, inter alia, that, by virtue of the way in which Cyando’s remuneration system is structured, the fact that it provides download links which allow direct access to uploaded files and the fact that it is possible to use its platform anonymously, Cyando gives significant encouragement to the use of its platform for illegal purposes. Users interested in downloading files are more likely to take out a paid subscription, which gives them the right to a preferential account, where they can, via that platform, download desirable works protected by copyright. Cyando encourages its users to upload files which, it can be assumed, will often be downloaded, by remunerating them according to how frequently the files they have uploaded are downloaded and by allowing them to benefit from the revenue generated when new users are acquired. Since that remuneration is dependent on the number of times a file is downloaded and, therefore, on how attractive that file is to the public, users are encouraged to upload copyright-protected content, access to which would otherwise have to be paid for. Furthermore, the fact that download links give direct access to uploaded files allows users who have uploaded the files easily to share those files with users who are interested in downloading, in particular by way of link collections. Last, the fact that the platform can be used anonymously reduces users’ risk of being subject to legal proceedings for copyright infringements.

On the other hand, although Elsevier had claimed at the appeal stage that copyright-infringing content represented between 90 and 96% of the files that could be consulted on Cyando’s platform, which is disputed by Cyando, the appeal court made no finding as to the proportion of the files on that platform which had been uploaded legally as compared with the proportion of the files there which had been uploaded illegally.

By its appeal on a point of law (Revision), in respect of which leave was given by the Federal Court of Justice and which Cyando seeks to have dismissed, Elsevier maintains its claims.

The referring court states that the question of whether the appeal is well founded turns, in the first place, on whether the conduct of the operator of a file-hosting and -sharing platform, such as Cyando, constitutes a communication to the public within the meaning of Article 3(1) of the Copyright Directive. It takes the view that Cyando could be regarded as playing a role that is indispensable, within the meaning of the Court’s case-law, which is a prerequisite of its conduct’s being classified as an act of communication. In that regard, the referring court notes that it is true that Cyando does not know that protected content is illegally being made available until the rightholder informs it of what is happening, since that content is uploaded by third parties. Furthermore, Cyando informs its users in the conditions of use of its platform that they are prohibited from infringing copyright via that platform. However, Cyando does know that a large volume of protected content is illegally communicated to the public via its platform. Moreover, Cyando significantly increases the risk that its platform is used for illegal purposes by virtue of its remuneration system, the fact that it provides download links which allow direct access to uploaded files and the fact that it is possible to use its platform anonymously.

Should the Court find that the conduct of the operator of a file-hosting and ‑sharing platform, such as Cyando’s, does not constitute a communication to the public within the meaning of Article 3(1) of the Copyright Directive, the referring court asks, in essence, questions that are the same as the second to sixth questions referred in Case C‑682/18.

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

‘(1)  (a) Does the operator of a [file-hosting and -sharing platform] via which files containing content protected by copyright are made publicly accessible by users without the consent of the rightholders carry out an act of communication within the meaning of Article 3(1) of [the Copyright Directive] if:

–  the upload process takes place automatically and without being seen or monitored in advance by the operator,

–  in the conditions of use, the operator indicates that copyright‑infringing content may not be posted on the platform,

–  it earns revenue through the operation of the service,

–  the [platform] is used for lawful applications, but the operator is aware that a considerable amount of copyright-infringing content (over 9 500 works) is also available,

–  the operator does not offer a directory of the content or a search function, but the unlimited download links provided by it are posted by third parties on the internet in link collections that contain information regarding the content of the files and make it possible to search for specific content,

–  via the structure of the remuneration for downloads that are paid by it in accordance with demand, the operator creates an incentive to upload content protected by copyright that users could otherwise only obtain by payment therefor

and

–  by providing the possibility of uploading files anonymously, it increases the probability that users that will not be held legally accountable for copyright infringements?

(b) Does this assessment change if the copyright-infringing content provided by the [file-hosting and -sharing platform] accounts for 90% to 96% of the overall use?

(2) If Question 1 referred is answered in the negative:

Does the activity of the operator of a [file-hosting and -sharing platform] under the conditions described in Question 1 come within the scope of Article 14(1) of [the Directive on Electronic Commerce]?

(3) If Question 2 referred is answered in the affirmative:

Must the actual knowledge of the unlawful activity or information and the awareness of the facts or circumstances from which the unlawful activity or information is apparent relate to specific unlawful activities or information pursuant to Article 14(1) of [the Directive on Electronic Commerce]?

(4) Also if Question 2 is answered in the affirmative:

Is it compatible with Article 8(3) of [the Copyright Directive] if the rightholder is in a position to obtain an injunction against a service provider whose service consisting of the storage of information provided by a recipient of the service has been used by a recipient of the service to infringe copyright or related rights, only if such an infringement has recurred after notification of a clear infringement has been provided?

(5) If Questions 1 and 2 are answered in the negative:

Is the operator of a [file-hosting and -sharing platform] under the conditions described in Question 1 to be regarded as an infringer within the meaning of the first sentence of Article 11 and Article 13 of [the Enforcement Directive]?

(6) If Question 5 is answered in the affirmative:

Can the obligation of such an infringer to pay damages pursuant to Article 13(1) of [the Enforcement Directive] be made subject to the condition that the infringer must have acted intentionally with regard both to his or her own unlawful activity and to the unlawful activity of the third party, and knew, or ought reasonably to have known, that users use the platform for specific acts of infringement?’

The Court’s decision:

1. Article 3(1) 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 the operator of a video-sharing platform or a file-hosting and ‑sharing platform, on which users can illegally make protected content available to the public, does not make a ‘communication to the public’ of that content, within the meaning of that provision, unless it contributes, beyond merely making that platform available, to giving access to such content to the public in breach of copyright. That is the case, inter alia, where that operator has specific knowledge that protected content is available illegally on its platform and refrains from expeditiously deleting it or blocking access to it, or where that operator, despite the fact that it knows or ought to know, in a general sense, that users of its platform are making protected content available to the public illegally via its platform, refrains from putting in place the appropriate technological measures that can be expected from a reasonably diligent operator in its situation in order to counter credibly and effectively copyright infringements on that platform, or where that operator participates in selecting protected content illegally communicated to the public, provides tools on its platform specifically intended for the illegal sharing of such content or knowingly promotes such sharing, which may be attested by the fact that that operator has adopted a financial model that encourages users of its platform illegally to communicate protected content to the public via that platform.

2. Article 14(1) of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the activity of the operator of a video-sharing platform or a file-hosting and -sharing platform falls within the scope of that provision, provided that that operator does not play an active role of such a kind as to give it knowledge of or control over the content uploaded to its platform.

Article 14(1)(a) of Directive 2000/31 must be interpreted as meaning that, for such an operator to be excluded, under that provision, from the exemption from liability provided for in Article 14(1), it must have knowledge of or awareness of specific illegal acts committed by its users relating to protected content that was uploaded to its platform.

3. Article 8(3) of Directive 2001/29 must be interpreted as not precluding a situation under national law whereby a copyright holder or the holder of a related right may not obtain an injunction against an intermediary whose service has been used by a third party to infringe his or her right, that intermediary having had no knowledge or awareness of that infringement, within the meaning of Article 14(1)(a) of Directive 2000/31, unless, before court proceedings are commenced, that infringement has first been notified to that intermediary and the latter has failed to intervene expeditiously in order to remove the content in question or to block access to it and to ensure that such infringements do not recur. It is, however, for the national courts to satisfy themselves, when applying such a condition, that that condition does not result in the actual cessation of the infringement being delayed in such a way as to cause disproportionate damage to the rightholder.

Can peer-to-peer files seeding to be regarded as a communication to the public?

The European Court has ruled in Case C‑597/19 Mircom International Content Management & Consulting (M.I.C.M.) Limited v Telenet BVBA. This case concerns the following:

Mircom International Content Management & Consulting (M.I.C.M.) Limited (‘Mircom’) is a company incorporated under Cypriot law. Under contracts concluded with several producers of erotic films established in the United States and Canada, it holds licences for the communication to the public of their films on peer-to-peer networks and internet file-sharing networks, in particular in the territory of ‘Europe’. Moreover, under those contracts, Mircom is required to investigate acts of infringement of those producers’ exclusive rights committed on peer-to-peer networks and file-sharing networks and, in its own name, to take legal action against the perpetrators of those infringements in order to obtain compensation, 50% of which it must pass on to the producers.

Telenet BVBA, Proximus NV and Scarlet Belgium NV are internet service providers in Belgium.

On 6 June 2019, Mircom brought an action before the Ondernemingsrechtbank Antwerpen (Companies Court, Antwerp, Belgium) seeking, inter alia, that Telenet be ordered to produce the identification data for its customers whose internet connections had been used to share, on a peer-to-peer network by means of the BitTorrent protocol, films from the Mircom catalogue. The IP addresses of those connections were collected on behalf of Mircom by Media Protector GmbH, a company incorporated under German law, using specialised software. Telenet challenges that claim.

Proximus and Scarlet Belgium, which are also the subject of similar actions brought by Mircom, have been granted leave by the referring court to intervene in the main proceedings in support of the form of order sought by Telenet.

The ondernemingsrechtbank Antwerpen (Companies Court, Antwerp) has doubts as to the merits of Mircom’s application. In the first place, it is unsure whether, in view of the specific nature of peer-to-peer networks, users carry out acts of communication to the public of the works they share on those networks. In the second place, that court has doubts whether a company such as Mircom is able to benefit from the protection conferred by EU law in respect of the enforcement of intellectual property rights, since Mircom does not actually exploit the rights acquired by the film producers, but is merely claiming damages from alleged infringers. Such conduct corresponds almost precisely to the definition in legal literature of a ‘copyright troll’. Finally, in the third place, that court has doubts as to the lawfulness of collecting the IP addresses of internet users who have allegedly shared protected works on peer-to-peer networks.

It was in those circumstances that the ondernemingsrechtbank Antwerpen (Companies Court, Antwerp) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘1.  (a) Can the downloading of a file via a peer-to-peer network and the simultaneous provision for uploading of parts (“pieces”) thereof (which may be very fragmentary as compared to the whole) (“seeding”) be regarded as a communication to the public within the meaning of Article 3(1) of Directive 2001/29, even if the individual pieces as such are unusable?

If so,

(b)  is there a de minimis threshold above which the seeding of those pieces would constitute a communication to the public?

(c)  is the fact that seeding can take place automatically (as a result of the torrent client’s settings), and thus without the user’s knowledge, relevant?

2.  (a)  Can a person who is the contractual holder of the copyright (or related rights), but does not himself exploit those rights and merely claims damages from alleged infringers – and whose economic business model thus depends on the existence of piracy, not on combating it – enjoy the same rights as those conferred by Chapter II of Directive 2004/48 on authors or licence holders who do exploit copyright in the normal way?

(b)  How can the licence holder in that case have suffered “prejudice” (within the meaning of Article 13 of Directive 2004/48) as a result of the infringement?

3.  Are the specific circumstances set out in questions 1 and 2 relevant when assessing the correct balance to be struck between, on the one hand, the enforcement of intellectual property rights and, on the other, the rights and freedoms safeguarded by the [Charter of Fundamental Rights of the European Union (“the Charter”)], such as respect for private life and protection of personal data, in particular in the context of the assessment of proportionality?

4.   Is, in all those circumstances, the systematic registration and general further processing of the IP-addresses of a “swarm” of “seeders” (by the licence holder himself, and by a third party on his behalf) legitimate under Regulation [2016/679], and specifically under Article 6(1)(f) thereof?’

The Court’s decision:

(1) Article 3 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 the act of making pieces of a file containing a protected work available for download within the context of a peer-to-peer network, even before the user concerned has himself downloaded that file in its entirety, falls within the scope of the right to make works available to the public, in accordance with that article, and that user’s full knowledge of the facts is not decisive.

(2) Article 4(b) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that a body which, although it has acquired certain rights over protected works, does not exploit them, but merely claims damages from individuals who infringe those rights, does not have the status to benefit from the measures, procedures and remedies provided for in Chapter II of that directive, in so far as the national court finds that the acquisition of rights by that body was solely for the purpose of obtaining that status. Directive 2004/48 neither requires nor precludes the Member State from attributing that status, in its national legislation, to an assignee of claims relating to infringements of intellectual property rights.

(3)  Article 8(1) of Directive 2004/48, read in conjunction with Article 3(2) thereof, must be interpreted as meaning that the national court must refuse to grant entitlement to the right of information provided for in Article 8 of that directive if, in the light of the circumstances of the dispute, it finds that the request for information is unjustified or unlawful.

(4) Article 6(1)(f) of Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC must be interpreted as meaning that the recording of the IP addresses of persons whose internet connections have been used to share protected works on peer-to-peer networks constitutes the lawful processing of personal data where that recording is carried out in the pursuit of a legitimate interest of the controller or a third party, in particular in order to file a justified request for the disclosure of the names of the owners of the internet connections identified by the IP addresses pursuant to Article 8(1)(c) of Directive 2004/48.

When is there an infringement of database rights?

The European Court has ruled in case C‑762/19 „CV-Online Latvia“ SIA v „Melons“ SIA. This dispute concerns potential infringements of sui generis rights over databases and has the following background:

CV-Online, a company incorporated under Latvian law, operates the website http://www.cv.lv. That website includes a database, developed and regularly updated by CV-Online, containing job advertisements published by employers.

The website http://www.cv.lv is also equipped with meta tags of the ‘microdata’ type. Those tags, which are not visible when the CV-Online web page is opened, allow internet search engines to better identify the content of each page in order to index it correctly. In the case of CV-Online’s website, those meta tags contain, for each job advertisement in the database, the following key words: ‘job title’, ‘name of the undertaking’, ‘place of employment’ and ‘date of publication of the notice’.

Melons, also a company incorporated under Latvian law, operates the website http://www.kurdarbs.lv, which is a search engine specialising in job advertisements. That search engine makes it possible to carry out a search on several websites containing job advertisements, according to various criteria, including the type of job and the place of employment. By means of hyperlinks, the website http://www.kurdarbs.lv refers users to the websites on which the information sought was initially published, including CV-Online’s website. By clicking on such a link, the user can, inter alia, access the website http://www.cv.lv, in order to become acquainted with that site and the entirety of its contents. The information contained in the meta tags inserted by CV-Online in the programming of its website is also displayed in the list of results obtained when using the specialised search engine of Melons.

Taking the view that there is a breach of its sui generis right under Article 7 of Directive 96/9, CV-Online brought an action against Melons. It maintains that Melons ‘extracts’ and ‘re-utilises’ a substantial part of the contents of the database on the website http://www.cv.lv.

The court of first instance found that there had been a breach of that right, on the ground that there was a ‘re-utilisation’ of the database.

Melons brought an appeal against the judgment at first instance before the Regional Court, Riga (Civil Law Division), Latvia. It maintains that its website does not provide online transmission, namely, that it does not operate ‘in real time’. Melons also claims that a distinction must be drawn between the website http://www.cv.lv and the database which it contains. It submits, in that regard, that it is the meta tags used by CV-Online that cause the information relating to the job advertisements to appear in the results obtained by means of the http://www.kurdarbs.lv search engine and that those meta tags are not part of the database. Melons claims that it was precisely because CV-Online wanted the search engines to show that information that CV-Online inserted those meta tags in the programming of its site.

In those circumstances, the Regional Court, Riga (Civil Law Division), Latvia decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Should the defendant’s activities, which consist in using a hyperlink to redirect end users to the applicant’s website, where they can consult a database of job advertisements, be interpreted as falling within the definition of ‘re-utilisation’ in Article 7(2)(b) of [Directive 96/9], more specifically, as the re-utilisation of the database by another form of transmission?

(2)  Should the information containing the meta tags that is shown in the defendant’s search engine be interpreted as falling within the definition of ‘extraction’ in Article 7(2)(a) of [Directive 96/9], more specifically, as the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form?’

The Court’s decision:

Article 7(1) and (2) of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases must be interpreted as meaning that an internet search engine specialising in searching the contents of databases, which copies and indexes the whole or a substantial part of a database freely accessible on the internet and then allows its users to search that database on its own website according to criteria relevant to its content, is ‘extracting’ and ‘re-utilising’ that content within the meaning of that provision, which may be prohibited by the maker of such a database where those acts adversely affect its investment in the obtaining, verification or presentation of that content, namely that they constitute a risk to the possibility of redeeming that investment through the normal operation of the database in question, which it is for the referring court to verify.

Nestle lost another battle against IMPOSSIBLE BURGER

Nestlé’s battle against IMPOSSIBLE BURGER has faced another fail recently. As this blog informed last year, the District Court in The Hague imposed a ban on Nestle to use its brand INCREDIBLE BURGER finding it similar to the early registered EU mark IMPOSSIBLE BYRGER. This mark is used by the US company Impossible Foods for burgers made of meat substitutes.

As part of its defense strategy Nestle initiated an invalidation proceeding against the earlier mark before the EUIPO. According to the company, this mark is not distinctive for the relevant goods that it covers. For Nestle, this marks means a burger that one thought could not possibly exist. What’s more the sign can be perceived as a promotional, laudatory message.

The EUIPO disagreed and dismissed the invalidation in its entirety. According to the Office the phrase IMPOSSIBLE BURGER is not directly descriptive for burgers, on the contrary it posses some negative connotations. It is suggestive trademark and from this point of view can be protected.

The Office considered that Impossible would not related to an impossible product as a quality or other characteristics but as a qualifier of a specific noun. The consumers can perceive this phrase as an amusing  catchwords or pun. Form that perspective the mark is not either a promotional or laudatory  slogan.

This case is a good example for the so-called suggestive trademarks. They have a meaning but it can be found out by consumers only as a result of mental process, not directly. These trademarks can be registered although sometimes this can be tricky.

Source: Loretta Dashorst – Novagraaf за Lexology.

Can PANDEMIA be a trademark in Portugal?

To what extent Pandemia can be contrary to morals, public policy and accepted principles of morality?

This is the question the Portuguese Patent Office has given answer to in a recent decision. The case concerns a trademark application for PANDEMIA for the following classes:

• Class 32 – “barley wine [beer], fruit juice beverages, mineral water, seltzer water”; and
• Class 33 – “white wine, grape wine, sparkling grape wine, red wine, alcoholic wines, table wines, sparkling wines, fortified wines, rose wines, cereal-based distilled alcoholic beverages, grain-based distilled alcoholic beverages, distilled beverages and spirits”.

The Patent Office refused to register this mark based on absolute grounds – contrary to morals, public policy and accepted principles of morality. The decision was appealed and upheld.

According to the Office the assessment whether the sign is contrary to this absolute ground depends on three elements: the meaning of the mark, the goods and services and their target consumers and the impact on the society as a result of the trademark use.

The Office considered that the meaning of PANDEMIA would be inevitably related to the current COVID-19 pandemic. The goods mentioned in the applications are consumed by a large number of people.

When it comes to consumption of alcoholic beverages, in general, they are associated with entertainment, fun and relaxation. However, because of the association of the mark with the current pandemic, the meaning of the mark can be shocking for many people, especially those of them suffered the pandemic aftermath. From that point of vew the mark can be against the accepted principles of morality.

Source: BMA – Paulo Monteverde, Inês Rodrigues for Lexology.

The well-known GLENFIDDICH stag prevailed in a trademark dispute in Japan

The producer of the world well-known whisky GLENFIDDICH William Grant & Sons won a trademark dispute in Japan.

The German company Badischer Winzerkeller AG filed an international trademark application (Japan was a designated country) for the following combined mark in class 33 – Wines and sparkling wines; all the above goods made in Germany:

The way how the mark is used:

Against this application an opposition was filed by William Grant & Sons based on earlier mark for GLENFIDDICH in class 33 – whiskey:

The way how the mark is used:

The Japan Patent Office upheld the opposition in its entirety. Although the word parts of the signs were different, the graphic representation of a stylized stag was almost identical. Because of that, according to the Office, consumers can confuse the origin of the goods in question. Of course, one of the reasons for this conclusion was the fact that GLENFIDDICH stag was one of the most famous whisky trademark logo in the world.

Source: Masaki MIKAMI, Marks IP Law Firm.