Copyrights may be for losers but trademarks are not – Banksy won a trademark dispute

The well-known graffiti artist Banksy has received some positive news recently regarding his attempt to take advantage of the IP system while not liking it or at least the copyright in particular.

The case concerns the following registered EU trademark, representing graffiti art painted by Banksy, in classes 9, 16, 25, 28 и 41:

The mark was registered by Pest Control Office Limited, a company managing artists’ legal rights, taking into account that he is anonymous and is famous with that status apart from his exciting artworks.

Against this mark, a request for invalidation was filed by Full Colour Black Limited on the ground of lack of distinctive character and bad faith.

The EUIPO Cancelation division invalidated the mark finding that it was made in bad faith. The reason for this was the fact that because of his anonymity the artist was unable to rely on copyright protection. What’s more, he is famous for his statement that copyright is for losers.

In another article, Banksy says “Sometimes you go to work and it’s hard to know what to paint, but for the past few months I’ve been making stuff for the sole purpose of fulfilling trademark categories under EU law”.

The Office considered all of this as the only reason why the artist wanted to register a trademark for his art, which will give him a tool to control its commercial use.

According to the Office:

From an examination of the evidence filed by both parties, it would appear that, at the time of filing of the application for invalidity, the EUTM proprietor (or Banksy) had never actually marketed or sold any goods or services under the contested EUTM. Moreover, some of the EUTM proprietor’s webpage extracts dated in 2010-2011 state that ‘All images are made available to download for personal amusement only, thanks. Banksy does not endorse or profit from the sale of greeting cards, mugs, t-shirts, photo canvases etc. …’, ‘Banksy does not produce greeting cards or print photo-canvases….Please take anything from this site and make your own (non-commercial use only thanks)’ and ‘Banksy has never produced greeting cards, mugs or photo canvases of his work’. Therefore, there is no evidence that Banksy was actually producing, selling or providing any goods or services under the contested sign prior to the date of filing of the contested EUTM.

The first evidence of sales appears to have happened just before the date of filing of the present application for a declaration of invalidity.

Taking all of that the Office considered that the mark was filed in bad faith.

The Board of Appealed, however, disagreed. According to the Board, the conclusion of the Consolation division was subjective. Bad faith cannot be assumed only based on single statements that do not show the entire position of the artist.

The Board cannot follow this view. Although the protection under copyright law is definite and ends 70 years after the death of the author whereas trade mark protection can in principle be indefinite, this circumstance does not mean that the
filing of a trademark consisting of a creation protected under copyright law is automatically unlawful and circumvents the copyright law. As stated above under paragraph 27, the same artwork can be protected by copyright as well as by trademark law.

The assumption that the need of staying anonymous was the reason to opt out from copyright protection and go for trademark protection, as submitted by the Cancellation applicant, even if it would be correct, cannot justify a finding that the
EUTM proprietor had no intention to use the contested mark.

Finally, the statement ‘Copyright is for losers’ has no bearing at all on the case at hand. The contested decision does not reason sufficiently about its finding of bad faith. It mainly bases its final findings on the supposition that the EUTM proprietor could
only with difficulties preventing its artwork under copyright and on the fact that it started only on October 2019 to use its mark and with the purpose to maintain the contested mark but not to use it according to the essential functions of a trademark.

The contested decision bases its finding on wrong facts because it has not been shown that on October 2019 the EUTM proprietor stated to use the contested mark. In any event, the reasons furnished in the contested decision cannot explain nor indicate that at the relevant filing date the EUTM proprietor had not intended to use its mark

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Proving ownership of intellectual property rights in case of infringements in the EU

The Advocate General of the European Union A. RANTOS has issued an opinion in the case C-628/21 TB, Castorama Polska Sp. z o.o., „Knor“ Sp. z o.o.

This dispute concerns when and to what extent IP ownership has to be proved in the process of collecting information for IP infringements on the territory of the EU. The case has the following background:

TB is a natural person who, through her online shops, markets decorative articles. In the context of her economic activity, she sells reproductions, produced mechanically by the applicant herself, with simple graphics, consisting of a limited number of colours and geometric figures and short sentences. In that regard, images A, B and C (‘the reproductions at issue’) contain, respectively, the following sentences: ‘Mój dom moje zasady’ (‘In my house, I make the rules’); ‘Nie ma ludzi idealnych a jednak jestem’ (‘Perfect persons do not exist, and yet I am one’) and ‘W naszym domu rano słychać tupot małych stopek. Zawsze pachnie pysznym ciastem. Mamy dużo obowiązków, mnóstwo zabawy i miłości’ (‘In our house, the sound of tiny feet can be heard. There is always the aroma of delicious cake. We have many obligations, much pleasure and much love’). TB claims to be the creator of the images which she reproduces, which in her contention are works for the purposes of the legislation on copyright.

Exact copies of images A and B, supplied by ‘Knor’ Sp. z o.o. (‘Knor’), are sold without TB’s consent in the ‘bricks and mortar’ shops and online shop of Castorama Polska Sp. z o.o. (‘Castorama’). Neither TB’s reproductions of those images nor the reproductions offered by Castorama indicate the author or the origin of those images. Castorama also sells reproductions, supplied by Knor, with identical wording to that of image C, but with certain differences in terms of their graphics and fonts. On 13 October 2020, TB gave notice to Castorama to cease and desist its infringements of the economic and moral copyright in the works created by her which that company was selling without her consent.

On 15 December 2020, TB brought an action before the Regional Court, Warsaw, the referring court, under Article 479113 of the Code of Civil Procedure. In the course of those proceedings, she requested Castorama and Knor to provide her with information, concerning the reproductions at issue, on the distribution networks and the quantity of goods received and ordered, a complete list of suppliers, the date on which the goods were placed on sale in Castorama’s ‘bricks and mortar’ shops and online shop, the quantity involved and the price derived from the sale of the goods, broken down into physical sales and online sales. TB relied on her economic and moral copyright in the reproductions at issue and stated that the information requested was necessary for the purpose of bringing an action for infringement of her copyright and, in the alternative, an action for damages for unfair competition.

Castorama contended that that request for information should be refused and, in the alternative, that the scope of the judicial decision should be as narrow as possible, strictly limited to works classified as such for the purposes of the legislation on copyright, and disputed the very possibility that the reproductions at issue might be classified as ‘works’. It also relied on the protection of business secrets and claimed that TB had not proved that she held the economic copyright in those reproductions. In Castorama’s contention, the intellectual works to which TB’s request refers are not original and TB has not proved that the ‘novelty’ condition was satisfied. Granting her request would amount to affording copyright protection to ideas and concepts, because the reproductions at issue belong to the current fashion for ‘simplified motivational artworks’ with trite sentences. Castorama maintained, moreover, that all the graphic elements of the reproductions at issue are trite and repetitive and are not distinguished in any original manner, as far as concerns composition, colours or the fonts used, from the other images available on the market.

In answer to those arguments, TB did not adduce any evidence to prove the existence of an intellectual property right in the reproductions at issue and calling for special knowledge (with a view to an expert report) in the field of graphics and design. The evidence which she produced in her application of 15 December 2020 consisted of printouts of pages of articles on sale in her online shops and of sales invoices from 2014, and also of printouts of pages from Castorama’s websites and sales invoices of images in the latter’s online shops.

When examining TB’s request, the referring court was uncertain about the interpretation to be given to Article 8(1) of Directive 2004/48, in particular as regards the question whether it is necessary to adduce proof of the legal nature of the asset to which the request for information relates, or merely to lend credence to it, in view of the fact that Articles 6 and 7 of that directive use different formulations and that Article 4 of that directive refers to the ‘holders of intellectual property rights’. The referring court’s doubts also related to the possibility that a different standard of proof might be applied as regards the status of the reproductions at issue, namely whether or not they are works, and consequently on TB’s standing to bring proceedings.

The referring court observes that Article 479113 of the Code of Civil Procedure constitutes the transposition of Article 8 of Directive 2004/48 and that Article 47989 of that code, which defines the scope of intellectual property cases, refers, in paragraph 2(1), to cases relating to ‘the prevention and combating of unfair competition’. Referring to recital 13 of that directive, (5) the referring court emphasises that, for the purposes of the present case, although the Polish case-law has not yet given an unequivocal answer to that question, that court accepts the interpretation according to which national law extended, for domestic purposes, the application of that directive to acts involving unfair competition which consist in producing exact copies of goods, even if those goods are not the subject of exclusive rights such a those of the copyright holder. In the light of those factors, as regards the part of the request relating to images A and B, no problem of interpretation of EU law arises, since TB has proved that Castorama has sold reproductions consisting of exact copies of those images.

On the other hand, in order to adjudicate on the request relating to image C, it is necessary to interpret EU law, since the reproduction sold by Castorama is not an exact copy of that image, in that the text has been reproduced and its position on the page has been retained, but with the use of other graphic elements and other fonts. According to the Polish case-law, which coincides with the Court’s, (6) it is for the court dealing with the matter to examine the creative characteristics of a work. In that regard, according to the referring court, where the facts of the case are complex and the judge’s experience is insufficient, it is necessary to have recourse to an expert’s opinion, while the burden of proof and responsibility for requesting an expert report are generally borne by the applicant.

Polish legal commentators have expressed two contradictory viewpoints on the interpretation of Article 479113 of the Code of Civil Procedure and have considered either that the applicant must adduce proof that she is the holder of the intellectual property right in question or that she is not required to prove the infringement of the protected right, but is required merely to lend credence to such an infringement, since the request for information may also be addressed to a third party.

The referring court states that in its view Article 8(1) of Directive 2004/48, read in conjunction with Article 4 of that directive, must be interpreted as meaning that it refers to a measure to protect intellectual property rights only when the ownership of the intellectual property right is proved and that credence being lent to the fact that that measure relates to an existing intellectual property right is not sufficient, since it is necessary to adduce proof of that circumstance, in particular where the request for information on the origin and the distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights.

In those circumstances, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Should Article 8(1) read in conjunction with Article 4(1) of [Directive 2004/48] be understood to refer to a measure to protect intellectual property rights only when the rightholder’s intellectual property right has been confirmed in these or other proceedings?

–   if Question (1) is answered in the negative:

(2) Should Article 8(1) …, read in conjunction with Article 4(1) of Directive [2004/48] be interpreted as meaning that it is sufficient to lend credence to the fact that that measure refers to an existing intellectual property right, and not to prove that circumstance, especially in a case where a request for information about the origin and distribution networks of goods or services precedes the assertion of claims for compensation on account of an infringement of intellectual property rights?’

The Advocate’s opinion:

In the light of the foregoing considerations, I propose that the Court of Justice should answer the questions for a preliminary ruling referred by the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) as follows:

Article 8(1) 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 in the context of an action relating to an infringement of an intellectual property right, the applicant must lend credence, by submitting sufficient evidence, to the fact that he or she is the holder of the intellectual property right in question, in particular where the request for information precedes the assertion of claims for compensation on account of the infringement of the intellectual property right. The national court must also assess the merits of that request and take due account of all the objective circumstances of the case, including the conduct of the parties, in order to ascertain, in particular, that the applicant has not abused that request.

The Spanish Supreme Court rules on cases targeting football matches, LaLiga, and IP rights

The Spanish Supreme Court has recently ruled on two lawsuits that concern the broadcasting of sports events and the relation to intellectual property rights.

In the first case, the Spanish Football Federation LaLiga sued two media Atresmedia S.A. and Mediaset S.A. for using images and video clips from football matches without permission in light of the fact that the rights for broadcasting of these matches were granted to another company.

According to the Supreme Court, every media has the right to record images and broadcast short news reports including football matches and this is not against the exclusive broadcasting rights for the same events because it is of public interest.

In the second case, The Supreme Court has ruled that broadcasting football matches in bars or restaurants without paying the corresponding fee to LaLiga is not an intellectual property crime. The reason is that football matches do not fit into the definition of copyrightable work, that is to say, they are not literary, artistic, or scientific works. The Court did not consider matches as a performance of creative works. Because of this, every possible infringement of football match broadcasting should be regarded as a market and consumer crime under Spanish legislation.

Source: EUIPO.

What should social media influencers know about intellectual property rights?

Nowadays one of the most popular ways to attract consumers’ attention in order to convince them to purchase your product or service is to use the so-called social media influencers.

The reason is that consumers pay less and less heed to the classic advertisement, finding it too boring or not trustworthy enough. After all, every ad tells you that the promoted subject matter is the best one.

On the other side, social media influencers in the first place are just normal people expressing their thoughts which in many cases attract like-minded people who start to follow and believe them with time.

Based on this a new marketing channel has emerged offering great potential for marketing and sales activities.

In most cases influence marketing starts without planning, the relevant influence suddenly discovers options for monetarization and if done properly it could be a successful business model.

However, every business needs to be well organized and manage its assets including the intangible ones such as all sorts of intellectual property rights.

Because I’m passionate about this I’ve created a new Skillshare class that will teach every new or established influencer how to deal with intellectual property rights, including copyrights, trademarks, designs, domain names, etc.

All of this is really important because if done right it can boost the influencer’s business while if done badly it can jeopardize it.

Just for example, if one influencer does not know how to secure copyrights over the materials used on his or her channel this can lead to legal conflicts with the copyright holders.

If a popular influencer missed the point to register a trademark, someone else can start using hir or her distinguishing name or sign for unfair competition, similar social media channels, etc.

Social media influencers generate value with their work, value that has to be managed properly in order to become a sustainable business model.

In this class you will learn:

  • What types of social media influencers exist?
  • Why do Influencers need to understand intellectual property?
  • What intellectual property rights can belong to influencers?
  • What copyrights belong to influencers and how can they be managed?
  • What are the copyright rules of social media platforms for every uploaded content?
  • What influencers can protect as trademarks?
  • How can influencers protect internet domain names and what do they need to bear in mind?
  • How design rights can be beneficial for influencers?
  • What role do trade secrets play for influencers?
  • How publicity rights can help influencers?

This class will give you the knowledge of how one social media influencer can organize and manage his or her intellectual property rights building a strong and sustainable business project.

In case you are interested, you can use this link to my Skillshare class: https://skl.sh/3FOUiuk 

Thanks for your interest!

Is there copyright infringement of a work used for educational purposes?

Copyright law protects original creative works, a result of intellectual efforts, giving authors control over who and how can use the works.

Although this monopoly right provides authors with a tool to permit or prohibit the use of their works it is not unlimited. There are some exceptions or the so-called fair use which allows free use of works in case of teaching, criticism, commentary, news report, etc.

The lawsuit between Bell v. Eagle Mountain Saginaw Independent School District reminds us of the practical side of these exceptions.

A US school published on its Twitter account apart from one author’s work as a motivational act for its students. The author being not happy with the lack of request for such use filed a lawsuit for copyright infringement.

The court dismissed the claim stating that the use in the case at hand is fair. There is no evidence for any commercial purposes out of this use as well as no harm to the author’s business or reputation.

Source: Deirdre Kennedy for Kluwer Copyright Blog.

Lego was accused of copyright infringement over a jacket design

As it is well-known copyright is one of the main intellectual property rights that every creator can rely on in order to benefit from his or her created works. The problem with copyright is that it can invoke really complex disputes out of nowhere.

One example of this possibility is a recent lawsuit against LEGO, a toymaker company whose practice is to use characters and stories from famous movies or series for kids constructors.

In the case at hand, the company uses a design of a jacket, known as the “Concannon Jacket”, worn by Antoni Porowski part of Netflix’s Queer Eye reality show.

James Concannon is the artist who created this design, giving Netflix permission to use it for the show.

According to him, however, LEGO has no authorization to use the jacket design for their toys “Queer Eye – The Fab 5 Loft”, which are based on the reality show’s characters.

LEGO dismissed this accusation claiming that they use legally the jacket at least because they had a license from Netflix which in turn had permission from the artist for the same jacket.

Obviously one of the center moments here is what was the scope of the initial license and whether it includes such merchandising use.

According to the US Copyright law, apparel is not copyrightable as a whole. Only separable creative elements of it can be protected.

So the issue here is to what extent the original jacket’s elements are subject to copyright protection alone and to what extent those used by LEGO are similar enough in order for infringement to be found.

Source: SS Rana & Co – Ananyaa Banerjee and Nitika Sinha for Lexology.

CJEU confirmed that private copying compensations include cloud storage too

The European Court has ruled recently in the Case C‑433/20 Austro-Mechana Gesellschaft zur Wahrnehmung mechanisch-musikalischer Urheberrechte Gesellschaft mbH v Strato AG.

This case has the following background:

Austro-Mechana is a copyright collecting society which, acting in its own name but in a fiduciary capacity in the interest and on behalf of the rightholders, exercises, inter alia, the statutory rights to the remuneration that is due under Paragraph 42b(1) of the Law on Copyright, in the version applicable to the dispute in the main proceedings.

Austro-Mechana applied to the Commercial Court, Vienna, Austria for an order to allow it to invoice for, and take payment of remuneration in respect of, ‘storage media of any kind’, on the ground that Strato provides its business and private customers with a service known as ‘HiDrive’, by which it makes cloud computing storage space available to them.

Strato contested the application on the ground that no remuneration was due in respect of cloud computing services. That company stated that it had already paid the required copyright fee in Germany, the Member State in which its servers are hosted, that fee having been incorporated in the price of the servers by their manufacturer or importer. It added that users in Austria had also already paid a levy for the making of private copies (‘the private copying levy’) on the terminal equipment necessary to upload content to the cloud.

By judgment of 25 February 2020, the Commercial Court, Vienna dismissed Austro-Mechana’s application, holding that Strato does not make storage media available to its customers, but provides them with an online storage service.

Austro-Mechana appealed against that judgment to the Higher Regional Court, Vienna, Austria, which observes, referring to the judgment of 29 November 2017, VCAST (C‑265/16, EU:C:2017:913), that it is not entirely clear whether the storage of content in the context of cloud computing comes within the scope of Article 5(2)(b) of Directive 2001/29.

In those circumstances, the Higher Regional Court, Vienna decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is the expression “on any medium” in Article 5(2)(b) of Directive [2001/29] to be interpreted as meaning that it also includes servers owned by third parties which make available to natural persons (customers) for private use (and for ends that are neither directly nor indirectly commercial) storage space on those servers which those customers use for reproduction by storage (“cloud computing”)?

(2) If so: is the provision cited in Question 1 to be interpreted as meaning that it is applicable to national legislation under which the author is entitled to equitable remuneration (remuneration for exploitation of the right of reproduction on storage media), in the case:

–   where a work (which has been broadcast, made available to the public or recorded on a storage medium produced for commercial purposes) is by its nature likely to be reproduced for personal or private use by being stored “on a storage medium of any kind which is suitable for such reproduction and, in the course of a commercial activity, is placed on the market in national territory”,

–    and where the storage method used in that context is that described in Question 1?’

The Court’s decision:

1.  Article 5(2)(b) 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 expression ‘reproductions on any medium’, referred to in that provision, covers the saving, for private purposes, of copies of works protected by copyright on a server in which storage space is made available to a user by the provider of a cloud computing service.

2.  Article 5(2)(b) of Directive 2001/29 must be interpreted as not precluding national legislation that has transposed the exception referred to in that provision and that does not make the providers of storage services in the context of cloud computing subject to the payment of fair compensation in respect of the unauthorised saving of copies of copyright-protected works by natural persons, who are users of those services, for private use and for ends that are neither directly nor indirectly commercial, in so far as that legislation provides for the payment of fair compensation to the rightholders.