Is it possible to use a photo from the internet for your fashion collection?

photo-1558277646-319ce84484bdThe Milan Court has ruled in the case 2539/2020, which concerns not authorized use of a photo for commercial purposes.

In the case at hand, the Italian fashion house Antonio Marras used the following photo, downloaded from the internet, for its Fall/Winter 2014-15 fashion collection:

Screenshot 2020-05-19 at 17.05.01

A lawsuit followed in which the photographer claimed copyright infringement. In Italy, there are two main ways for the protection of photos. The first is the classic one based on the copyright law where, however, the work has to be original, created as a result of the author’s intellectual efforts. The second protection refers to ordinary, simple photos of the real-world without creative efforts in place.

According to the fashion house, there was no copyright infringement because the photo was quite simple and not original, produced without any creative efforts.

The court disagreed. Grounded its position on the European Court decision in the case Painer, C-145/10, the Italian court came to a conclusion the photo was original indeed. The arguments for this were the fact that the author chose carefully the time and the subject to take this photo. What’s more, he used technique and an angle which to invoke specific emotions in the viewers.

The court added that another backing argument for the originality of the picture was the fact that it had been registered in the US Copyright Office, which is possible only if the work is original.

Source: IPKat.

Revealing IP addresses, YouTube and the EU approach

post-letter-2828146_960_720The Advocate General of the European Court H. SAUGMANDSGAARD ØE issued its opinion on case C‑264/19 Constantin Film Verleih GmbH v YouTube LLC.

This dispute regards the main question whether the IP address of a copyright infringer is the same as the meaning of his/her actual address.

The case background is:

Constantin Film Verleih is a film distributor established in Germany.

YouTube, which is owned by Google and established in the United States, operates the internet platform with the same name.

In Germany, Constantin Film Verleih has exclusive exploitation rights in respect of the cinematographic works Parker and Scary Movie 5.

Between the months of June 2013 and September 2014, those two works were posted online on the ‘YouTube’ platform without Constantin Film Verleih’s consent. On 29 June 2013, the cinematographic work Parker was uploaded in its full-length version and in German under the username ‘N1’. It was viewed more than 45 000 times before it was blocked on 14 August 2013. During the month of September 2013, the cinematographic work Scary Movie 5 was uploaded in its full-length version under the username ‘N2’. It was viewed more than 6 000 times before it was blocked on 29 October 2013. On 10 September 2014, another copy of the second work was uploaded under the username ‘N3’. It was viewed more than 4 700 times before it was blocked on 21 September 2014.

Constantin Film Verleih demanded that YouTube and Google provide it with a set of information for each of the users who had uploaded those works.

The referring court found that the conditions for the right to information were satisfied. Consequently, the scope of the dispute in the main proceedings is limited to the content of the information that YouTube and/or Google must provide to Constantin Film Verleih. More specifically, the dispute concerns the following information:

–        the user’s email address,

–        the user’s telephone number,

–        the IP address used by the user to upload the files at issue, together with the precise point in time at which such uploading took place, and

–        the IP address last used by the user to access his or her Google/YouTube account, together with the precise point in time at which that access took place.

Ruling at first instance, the Regional Court, Frankfurt am Main, Germany rejected Constantin Film Verleih’s request that such information be provided.

On appeal, the Higher Regional Court, Frankfurt am Main, Germany ordered YouTube and Google to provide the email addresses of the users concerned, rejecting Constantin Film Verleih’s request as to the remainder.

By its appeal on a point of law, brought before the Federal Court of Justice, Constantin Film Verleih requested that YouTube and Google be ordered to provide it with all of the abovementioned information, including users’ telephone numbers and IP addresses. By their own appeal on a point of law, YouTube and Google requested that Constantin Film Verleih’s request be rejected in its entirety, including in so far as it concerns users’ email addresses.

Taking the view that the outcome of the two appeals on a point of law depended on the interpretation of the concept of ‘addresses’ contained in Article 8(2)(a) of Directive 2004/48, the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Do the addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, mentioned in Article 8(2)(a) of Directive [2004/48] and covered, as appropriate, by the information referred to in Article 8(1) of [that] directive, also include

(a) the email addresses of service users and/or

(b) the telephone numbers of service users and/or

(c) the IP addresses used by service users to upload infringing files, together with the precise point in time at which such uploading took place?

(2)  If the answer to Question 1(c) is in the affirmative:

Does the information to be provided under Article 8(2)(a) of Directive [2004/48] also cover the IP address that a user, who has previously uploaded infringing files, last used to access his or her Google/YouTube user account, together with the precise point in time at which access took place, irrespective of whether any infringement [of intellectual property rights] was committed when that account was last accessed?’

The Advocate’s opinion:

Article 8(2)(a) 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 the concept of ‘names and addresses’ set out in that provision does not cover, in respect of a user who has uploaded files which infringe intellectual property rights, the email address, the telephone number, the IP address used to upload those files or the IP address used when the user’s account was last accessed.

Accordingly, the Member States are not obliged, under that provision, to provide for the possibility, for the competent judicial authorities, to order that that information be provided in the context of proceedings concerning an infringement of an intellectual property right

NBA, tattoos, video game avatars and copyright issues

photo-1478317370563-0a8fc17e6837The US District Court for the Southern District of New York has ruled in an interesting lawsuit which regards the question to what extent the likeness of people with tattoos can be used for creation of avatars for video games.

In the case at hand, the likenesses of three NBA players, Eric Bledsoe, LeBron James, and Kenyon Martin, were used for avatars in a basketball video game.

The copyright holder of the tattoos Solid Oak considered this as illegal because there was no a license for the use of the tattoos in the video game.

The court disagreed. The main arguments for this conclusion were:

  • Solid Oak acquired the copyrights over the tattoos after they were put on the basketball players not before that.
  • According to the US law, de minimis copyright infringements are not actionable. In this case, the tattoos are visible in the game only up to 11% of their real life size. Moreover, in most of the time they are not recognizable.
  • According to the court, there were implied non-exclusive licences between the tattoo artists and the three basketball players. With these licenses the players were been given the right to use the tattoos as part of their own likenesses in public places, for commercial purposes etc.
  • There were no limitations by the tattoos artist on how the tattoos to be used in the future.

Source: IPKat.

JK Rowling allows teachers from around the world to use the books for Harry Potter for free

photo-1547756536-cde3673fa2e5The well-known author JK Rowling announced her decision to allow all teachers around the world to use her books for Harry Potter for making video lessons for free.

The reason for this exception from the licensing rules for her books is the current COVID-19 pandemic situation which led to many schools being closed.

According to the announcement, the teacher can do that without a license, however, the videos must not be uploaded on YouTube or any other social media or used for commercial purposes.

Source: WIPR.

Can bicycle functional shapes be protected with copyright?

pexels-photo-686230The Advocate General of the European Court Campos Sánchez-Bordona has given his opinion in Case C‑833/18 SI, Brompton Bicycle Ltd. v Chedech / Get2Get. This case concerns the following:

In 1975, Mr SI created a design for a folding bicycle, which he named Brompton.

The following year, Mr SI founded Brompton Ltd. for the purpose of marketing his folding bicycle in collaboration with a larger undertaking which would deal with manufacturing and distributing the bicycle. Mr SI did not find any undertakings that were interested and therefore he continued to work alone.

In 1981, Mr SI received his first order for 30 Brompton bicycles, which he manufactured with an appearance that was slightly different from the original.

After that, Mr SI expanded his company’s activities to increase awareness of his folding bicycle design which, since 1987, has been marketed in the following form:

download

Brompton Ltd. was the holder of a patent for its bicycle’s folding mechanism (the main feature of which is that it has three positions: unfolded, stand-by and folded); that patent later fell into the public domain. (7)

Mr SI also asserts that he holds the economic rights arising from the copyright in the appearance of the Brompton bicycle.

The Korean company Get2Get, which specialises in the production of sports equipment, produces and markets a bicycle which also folds into three different positions (Chedech) and is similar in appearance to the Brompton bicycle:

download (1)

Brompton Ltd. and Mr SI took the view that Get2Get had infringed their copyright in the Brompton bicycle and, therefore, they brought an action against that company before the referring court, from which they sought, in essence: (a) a ruling that Chedech bicycles, irrespective of the distinctive signs affixed to those bicycles, infringe Brompton Ltd.’s copyright and Mr SI’s non-pecuniary rights in the Brompton bicycle, and (b) an order to cease the activities which breach their copyright and to withdraw the product from the market. (8)

Get2Get submitted that the appearance of its bicycle was dictated by the technical solution sought and that it deliberately adopted the folding technique (previously covered by Brompton Ltd.’s patent, which subsequently expired) because that was the most functional method. Get2Get maintains that that technical constraint dictates the appearance of the Chedech bicycle.

Brompton Ltd. and Mr SI countered that there are other bicycles on the market which fold into three positions and are different in appearance from their own, from which it follows that they have copyright over their bicycle. The appearance of the bicycle demonstrates the existence of creative choices on their part and, therefore, originality.

In those circumstances, the referring court has referred the following questions to the Court of Justice for a preliminary ruling:

‘(1)  Must EU law, in particular 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, which determines, inter alia, the various exclusive rights conferred on copyright holders, in Articles 2 to 5 thereof, be interpreted as excluding from copyright protection works whose shape is necessary to achieve a technical result?

(2)  In order to assess whether a shape is necessary to achieve a technical result, must account be taken of the following criteria:

–   The existence of other possible shapes which allow the same technical result to be achieved?

–   The effectiveness of the shape in achieving that result?

–   The intention of the alleged infringer to achieve that result?

–    The existence of an earlier, now expired, patent on the process for achieving the technical result sought?’

The Advocate’s opinion:

‘(1) Articles 2 to 5 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 do not provide for copyright protection of creations of products with an industrial application whose shape is exclusively dictated by their technical function.

(2) In order to determine whether the specific features of the shape of a product are exclusively dictated by its technical function, the competent court must take into account all the relevant objective factors in each case, including the existence of an earlier patent or design right in the same product, the effectiveness of the shape in achieving the technical result and the intention to achieve that result.

(3) Where the technical function is the only factor which determines the appearance of the product, the fact that other alternative shapes exist is not relevant. On the other hand, the fact that the shape chosen incorporates important non-functional elements which were freely chosen by its creator may be relevant.’

Contracts and intellectual property – a decision by the European court

pexels-photo-169573The European court has ruled in case C‑666/18 IT Development SAS срещу Free Mobile SAS. The case concerns the following:

By a contract of 25 August 2010, amended by an addendum of 1 April 2012, IT Development granted a licence to and concluded a maintenance agreement with the company Free Mobile, a mobile phone operator offering mobile phone packages on the French market, for the ‘ClickOnSite’ software package, centralised project management software designed to enable Free Mobile to organise and monitor in real time the progress made by its teams and external technical service providers in deploying all its radiotelephone antennae.

By document of 18 June 2015, IT Development brought proceedings against Free Mobile before the tribunal de grande instance de Paris (Regional Court, Paris, France) for infringement of the copyright of the ClickOnSite software package and seeking compensation for its loss. IT Development alleged that Free Mobile had modified the software, in particular by creating new forms. In addition to the substantive nature, in IT Development’s opinion, of those modifications, it argued, in particular, that Free Mobile did not have the right to make such modifications because the provisions of Article 6 of the licence agreement, entitled ‘Scope of the licence’, stated, in essence, that the customer expressly undertakes not to reproduce, directly or indirectly, the software package, to decompile and/or carry out retro-engineering operations on it, as well as to modify, correct, adapt, create second works and add, directly or indirectly, to that software.

Free Mobile brought a counterclaim for abuse of process and argued that IT Development’s claims were inadmissible and unfounded.

By judgment of 6 January 2017, the Tribunal de grande instance de Paris (Regional Court, Paris) declared the claims brought by IT Development based on Free Mobile’s tortious liability inadmissible, dismissed Free Mobile’s claim for damages and interest for abuse of process and ordered IT Development to pay the costs. That court held that there are two separate sets of rules relating to liability in intellectual property matters, one being tortious liability in the event of infringement of the exploitation rights of the author of the software, as determined by law, the other being contractual liability in the event of infringement of a copyright reserved by contract, and that, in the present case, Free Mobile was clearly alleged to have failed to perform its contractual obligations, providing a basis for an action for contractual liability, and not for the tortious act of infringement of software copyright.

IT Development brought an appeal against that judgment before the cour d’appel de Paris (Court of Appeal, Paris, France), requesting the latter to refer a question to the Court of Justice for a preliminary ruling, to set aside the judgment at first instance and to declare the infringement proceedings which it had brought to be admissible. IT Development also seeks a declaration that the modifications to the software made by Free Mobile constitute copyright infringements, that Free Mobile be ordered to pay IT Development the sum of EUR 1 440 000 as compensation for the damage suffered and, in the alternative, that Free Mobile be ordered, on a contractual basis, to pay IT Development the sum of EUR 840 000 as compensation for that damage. It also requests, in any event, that Free Mobile and its subcontractor, Coraso, be prohibited from using the software and from extracting and reusing the data from it.

Free Mobile requests the cour d’appel de Paris (Court of Appeal, Paris) in particular, to uphold the provisions of the judgment at first instance, to order IT Development to pay it the sum of EUR 50 000 euros by way of damages and interest for abuse of process and to declare all IT Development’s claims inadmissible and in any event unfounded.

The referring court states that French civil liability law is based on the principle of non-cumulation, which means that, first, one person cannot hold another person liable in contract and tort for the same acts, and that, second, tortious liability is excluded in favour of contractual liability where those persons are bound by a valid contract and the damage suffered by one of them results from non-performance or improper performance of a contractual obligation. In addition, the referring court states that, under French law, copyright infringement, originally a criminal offence, is based on tortious liability but that, under that law, there is no provision under which such an infringement cannot exist where there is a contract binding the parties. In that respect, for example, infringement proceedings could be brought against a licensee who has infringed the limits of his contract in patent and trade mark matters.

However, the referring court points out that Article 2 of Directive 2004/48, which defines the scope of that directive, provides in general terms that the measures, procedures and remedies which it provides for are to apply to any infringement of intellectual property rights, without distinguishing between whether or not such infringement results from the non-performance of a contract.

In those circumstances, the cour d’appel de Paris (Court of Appeal, Paris) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does a software licensee’s non-compliance with the terms of a software licence agreement (by expiry of a trial period, by exceeding the number of authorised users or some other limit, such as the number of processors which may be used to execute the software instructions, or by modifying the source code of the software where the licence reserves that right to the initial rightholder) constitute:

–   an infringement (for the purposes of Directive [2004/48]) of a right of the author of the software that is reserved by Article 4 of Directive [2009/24] on the legal protection of computer programs,

–  or may it comply with a separate system of legal rules, such as the system of rules on contractual liability under ordinary law?’

The Court’s decision:

Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs must be interpreted as meaning that the breach of a clause in a licence agreement for a computer program relating to the intellectual property rights of the owner of the copyright of that program falls within the concept of ‘infringement of intellectual property rights’, within the meaning of Directive 2004/48, and that, therefore, that owner must be able to benefit from the guarantees provided for by that directive, regardless of the liability regime applicable under national law.

An important decision by the European Court regarding e-books resales

pexels-photo-1329571The European Court has ruled recently in the case C‑263/18 Nederlands Uitgeversverbond, Groep Algemene Uitgevers v Tom Kabinet Internet BV. This case concerns the following:

NUV and GAU, associations whose purpose it is to defend the interests of Netherlands publishers, were mandated by several publishers to ensure that the copyright granted to them by copyright holders by means of exclusive licences is protected and observed.

Tom Kabinet Holding is the sole shareholder of Tom Kabinet Uitgeverij, a publisher of books, e-books and databases, and also of Tom Kabinet. Tom Kabinet operates a website on which, on 24 June 2014, it launched an online service consisting in a virtual market for ‘second-hand’ e-books.

On 1 July 2014, NUV and GAU brought an action under the Law on copyright against Tom Kabinet, Tom Kabinet Holding and Tom Kabinet Uitgeverij before the urgent applications judge at theDistrict Court, Amsterdam, Netherlands in respect of that online service. The District Court, Amsterdam dismissed their application on the ground that, according to that court, there was no prima facie breach of copyright.

NUV and GAU appealed against that decision before the Court of Appeal, Amsterdam, Netherlands, which, by judgment of 20 January 2015, upheld the decision but prohibited Tom Kabinet from offering an online service that allowed the sale of unlawfully downloaded e-books. No appeal on a point of law was lodged against that judgment.

From 8 June 2015 onwards, Tom Kabinet modified the services offered up to that point and replaced them with the ‘Tom Leesclub’ (Tom reading club, ‘the reading club’), within which Tom Kabinet is an e-book trader. In return for payment of a sum of money, the reading club offers its members ‘second-hand’ e-books which have been either purchased by Tom Kabinet or donated to Tom Kabinet free of charge by members of the club. In the latter case, those members must provide the download link in respect of the book in question and declare that they have not kept a copy of the book. Tom Kabinet then uploads the e-book from the retailer’s website and places its own digital watermark on it, which serves as confirmation that it is a legally acquired copy.

Initially, e-books available through the reading club could be purchased for a fixed price of EUR 1.75 per e-book. Once payment had been made, the member could download the e-book from Tom Kabinet’s website and subsequently resell it to Tom Kabinet. Membership of the reading club was subject to payment by members of a monthly subscription of EUR 3.99. Any e-book provided free of charge by a member resulted in that member being entitled to a discount of EUR 0.99 on the following month’s subscription.

Since 18 November 2015, payment of a monthly subscription has ceased to be a requirement of membership of the reading club. On the one hand, the price of every e-book is now set at EUR 2. On the other hand, the members of the reading club also need ‘credits’ in order to be able to acquire an e-book through the reading club; credits can be obtained by providing the club with an e-book, either for consideration or free of charge. Such credits can also be purchased when making an order.

NUV and GAU applied to the District Court, The Hague, Netherlands for an injunction prohibiting Tom Kabinet on pain of a periodic penalty payment, from infringing the copyright of NUV’s and GAU’s affiliates by the making available or the reproduction of e-books. In particular, in their view Tom Kabinet is, in the context of the reading club, making an unauthorised communication of e-books to the public.

In an interim judgment of 12 July 2017, the referring court found that the e-books at issue were to be classified as works, within the meaning of Directive 2001/29, and that Tom Kabinet’s offer, in circumstances such as those at issue in the main proceedings, did not constitute a communication to the public of those works, within the meaning of Article 3(1) of that directive.

The referring court observes, however, that the answers to the questions as to whether the making available remotely by the downloading, for payment, of an e-book for use for an unlimited period may constitute an act of distribution for the purposes of Article 4(1) of Directive 2001/29, and as to whether the right of distribution may thus be exhausted, within the meaning of Article 4(2) of that directive, are unclear. It also wonders whether the copyright holder may, in the event of a resale, object, on the basis of Article 2 of that directive, to the acts of reproduction necessary for the lawful transmission between subsequent purchasers of the copy for which the distribution right is, if such be the case, exhausted. Nor is the answer to be given to that question apparent from the case-law of the Court of Justice, according to the referring court.

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

‘(1)  Is Article 4(1) of [Directive 2001/29] to be interpreted as meaning that “any form of distribution to the public by sale or otherwise of the original of their works or copies thereof” as referred to therein includes the making available remotely by downloading, for use for an unlimited period, of e-books (being digital copies of books protected by copyright) at a price by means of which the copyright holder receives remuneration equivalent to the economic value of the work belonging to him?

(2) If question 1 is to be answered in the affirmative, is the distribution right with regard to the original or copies of a work as referred to in Article 4(2) of [Directive 2001/29] exhausted in the European Union, when the first sale or other transfer of that material, which includes the making available remotely by downloading, for use for an unlimited period, of e-books (being digital copies of books protected by copyright) at a price by means of which the copyright holder receives remuneration equivalent to the economic value of the work belonging to him, takes place in the European Union through the rightholder or with his consent?

(3) Is Article 2 of [Directive 2001/29] to be interpreted as meaning that a transfer between successive acquirers of a lawfully acquired copy in respect of which the distribution right has been exhausted constitutes consent to the acts of reproduction referred to therein, in so far as those acts of reproduction are necessary for the lawful use of that copy and, if so, which conditions apply?

(4) Is Article 5 of [Directive 2001/29] to be interpreted as meaning that the copyright holder may no longer oppose the acts of reproduction necessary for a transfer between successive acquirers of the lawfully acquired copy in respect of which the distribution right has been exhausted and, if so, which conditions apply?’

The Court’s decision:

The supply to the public by downloading, for permanent use, of an e-book is covered by the concept of ‘communication to the public’ and, more specifically, by that of ‘making available to the public of [authors’] works in such a way that members of the public may access them from a place and at a time individually chosen by them’, within the meaning of 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.