Like it or not at all – a General Court decision

The General Court ruled in case T-21/16; Karl Conzelmann GmbH + Co. KG  v EUIPO, where there was an attempt for registration of an EU trademark LIKE IT for Classes 18, 24, 25.

EUIPO refused this application on absolute grounds – lack of distinctive character.

The Court upheld this finding taking into account the fact that the words LIKE IT can be perceived as a request for purchasing the goods applied for. The other meanings of LIKE IT such as “Similar to” or “The same as” don’t contribute in any way to the creation of distinctiveness of the sign as a whole.

Source: Alicante News.

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A new broadcast of TV programmes – a decision by the EU Court

The European court ruled in case C‑138/16 which refers to:

AKM is a copyright collecting society. Zürs.net operates a cable network installation in Zürs (Austria), by means of which it transmits television and radio broadcasts, some of which are broadcast initially by the national broadcasting corporation (ORF) and others are initially broadcast by other broadcasters. The referring court states that, at the time when the order for reference was made, approximately 130 subscribers were connected to Zürs.net’s cable network.

AKM requires Zürs.net to provide it with information as to the number of subscribers connected, at several reference dates, to the cable network that it operates and as to the content broadcast. It also requests that, after the information to be provided has been checked, Zürs.net should pay the appropriate fee.

Zürs.net takes the view that, under Paragraph 17(3)(2)(b) of the Austrian Law on copyright, in the version in BGBl. I 99/2015, concerning small installations for a maximum of 500 subscribers, the broadcasts which it distributes cannot be regarded as new broadcasts and that it is therefore under no obligation to provide the information required by AKM.

AKM considers that provision to be incompatible both with EU law and with the Berne Convention.

In those circumstances, the Handelsgericht Wien (Commercial Court, Vienna, Austria), seised of the dispute between AKM and Zürs.net, decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling.

‘Are Article 3(1) or Article 5 of Directive [2001/29] and Article 11bis(1)(ii) of the Berne Convention to be interpreted as meaning that a rule which provides that the transmission of broadcasts by “communal antenna installations”, such as those of the defendant in the main proceedings,

(a)  does not constitute a new broadcast when no more than 500 subscribers are connected to the installation, and/or

(b) constitutes part of the original broadcast when it involves the simultaneous, full and unaltered transmission of broadcasts of the Österreichischer Rundfunk using cable services within the country (Austria),and these uses are also not covered by any other exclusive right of communication to the public at a distance within the meaning of Article 3(1) of Directive 2001/29, and are therefore not subject to authorisation by the author and are also not subject to the obligation to pay a fee, is contrary to EU law or to the law of the Berne Convention as an international agreement which forms part of EU law?’

The Court decision:

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 and Article 11bis of the Berne Convention for the Protection of Literary and Artistic Works, in the version resulting from the Paris Act of 24 July 1971, as amended on 28 September 1979, must be interpreted as not precluding national legislation, such as that at issue in the main proceedings, which provides that the simultaneous, full and unaltered transmission of programmes broadcast by the national broadcasting corporation, by means of cables on national territory, is not subject, under the exclusive right of communication to the public, to the requirement that authorisation be obtained from the author, provided that it is merely a technical means of communication and was taken into account by the author of the work when the latter authorised the original communication, this being a matter for the national court to ascertain.

Article 5 of Directive 2001/29, in particular paragraph 3(o) thereof, must be interpreted as precluding national legislation, such as that at issue in the main proceedings, which provides that a broadcast made by means of a communal antenna installation, when the number of subscribers connected to the antenna is no more than 500, is not subject, under the exclusive right of communication to the public, to the requirement that authorisation be obtained from the author, and as meaning that that legislation must, therefore, be applied consistently with Article 3(1) of that directive, this being a matter for the national court to ascertain.

Companies are concerned about the role of intellectual property

The Telegraph published an interesting article on various worries expressed by some of the most innovative companies in the world such as BAE Systems, Siemens, Philips and Bayer regarding the role of intellectual property in the contemporary business world.

Intellectual property management as part of the entire business management is not always on the necessary level. Many problems are cited, for example a lack of clear valuation of intellectual property which in turn reflects on unclear knowledge about the real company’s market value. In addition, there is a problem with the information on intellectual property protection  which is a threat to the innovation process as a whole. Some companies are concerned about the IP risks which go hand in hand with innovations and how to overcome them so as to escape any lawsuits for instance.

More information can be found here.

‘Punitive’ damages are possible in case of IP infringements according to the European court

The European court ruled in Case C‑367/15, Stowarzyszenie ‘Oławska Telewizja Kablowa’ v Stowarzyszenie Filmowców Polskich. This case concerns the following:

SFP is an organisation collectively managing copyright which is licensed in Poland and entitled to manage and protect copyright in audiovisual works. OTK broadcasts television programmes by means of a cable network in the town of Oława (Poland).

After notice of termination was given on 30 December 1998 of a licensing agreement that set out the rules on payment between the parties to the main proceedings, OTK continued to make use of copyright works and filed an application with the Komisja Prawa Autorskiego (Copyright Commission, Poland) seeking, in essence, that the fee payable for use of the copyright managed by SFP be set. By decision of 6 March 2009, that commission set the fee at 1.6% of the net income, exclusive of value added tax, earned by OTK from its retransmission of works by cable, not including certain charges borne by it. OTK itself calculated the amount due on that basis and paid SFP the sum of PLN 34 312.69 (roughly EUR 7 736.11) in respect of the income received for the period from 2006 to 2008.

On 12 January 2009 SFP brought an action against OTK, by which it sought, on the basis, inter alia, of Article 79(1)(3)(b) of the UPAPP, an order prohibiting OTK from retransmitting the protected audiovisual works until a new licensing agreement had been entered into and requiring OTK to pay it the sum of PLN 390 337.50 (roughly EUR 88 005.17) together with statutory interest.

By judgment of 11 August 2009, the Sąd Okręgowy we Wrocławiu (Regional Court, Wrocław, Poland) ordered OTK to pay SFP the sum of PLN 160 275.69 (roughly EUR 36 135.62) together with statutory interest and, essentially, dismissed the action as to the remainder. After the appeals which both of the parties to the main proceedings brought against that judgment were dismissed, they both brought an appeal on a point of law. By judgment of 15 June 2011, the Sąd Najwyższy (Supreme Court, Poland), however, referred the case back for fresh examination to the Sąd Apelacyjny we Wrocławiu (Court of Appeal, Wrocław, Poland), which, on 19 December 2011, delivered a second judgment. This judgment was also set aside by the Sąd Najwyższy (Supreme Court) in an appeal on a point of law and the case was again referred back to the Sąd Apelacyjny we Wrocławiu (Court of Appeal, Wrocław) for fresh examination. OTK brought an appeal on a point of law against the judgment subsequently delivered by the latter court.

The Sąd Najwyższy (Supreme Court), which is now required, in the context of this most recent appeal, to examine the case for a third time, has doubts as to whether Article 79(1)(3)(b) of the UPAPP is compatible with Article 13 of Directive 2004/48. It states that under that provision of the UPAPP it is possible, at the request of a person whose economic rights of copyright have been infringed, for compensation to consist in payment of a sum of money corresponding to twice or three times the amount of the appropriate fee. That provision therefore entails a form of penalty.

Furthermore, the referring court is uncertain whether, in order for a person holding economic rights of copyright to be compensated pursuant to Directive 2004/48, he must prove the event giving rise to the loss, the loss suffered and its extent, the causal link between that event and the loss and the fact that the acts of the perpetrator of the infringement are culpable.

In those circumstances, the Sąd Najwyższy (Supreme Court) decided to stay proceedings and refer the following question to the Court of Justice for a preliminary ruling:

‘Is Article 13 of Directive 2004/48 to be interpreted as meaning that the rightholder whose economic rights of copyright have been infringed may seek redress for the damage which it has incurred on the basis of general principles, or, without having to prove loss and the causal relationship between the event which infringed its rights and the loss, may seek payment of a sum of money corresponding to twice the amount of the appropriate fee, or, in the event of a culpable infringement, three times the amount of the appropriate fee, whereas Article 13 of Directive 2004/48 states that it is a judicial authority which must decide on damages by taking into account the factors listed in Article 13(1)(a), and only as an alternative in certain cases may set the damages as a lump sum, taking into consideration the elements listed in Article 13(1)(b) of that directive? Is the award, made at the request of a party, of damages as a predetermined lump sum corresponding to twice or three times the amount of the appropriate fee permissible pursuant to Article 13 of the directive, regard being had to the fact that recital 26 thereof states that it is not the aim of the directive to introduce punitive damages?’

The Court’s decision:

Article 13 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 not precluding national legislation, such as that at issue in the main proceedings, under which the holder of an intellectual property right that has been infringed may demand from the person who has infringed that right either compensation for the damage that he has suffered, taking account of all the appropriate aspects of the particular case, or, without him having to prove the actual loss, payment of a sum corresponding to twice the appropriate fee which would have been due if permission had been given for the work concerned to be used.

Multimedia players and copyright – an EU Advocate General’s opinion

The Advocate General of ECJ CAMPOS SÁNCHEZ-BORDONA issued his opinion on Case C‑527/15 Stichting Brein v Jack Frederik Wullems, acting under the name of Filmspeler.

This case concerns the following:

Stichting Brein is a foundation involved in the protection of copyright and other related rights. Its patrons include associations of producers and importers of image and sound carriers, film producers, film distributors, multimedia producers and publishers.

Jack Frederik Wullems offered to the public, through various websites (including his own, http://www.filmspeler.nl), various models of a multimedia player under the name ‘filmspeler’. The device acted as an instrument for connecting a source of image and/or sound signals to a television screen. The differences between the models are of a technical nature but their operation is essentially the same: if the multimedia player is connected to the internet, on the one hand, and to a user’s screen (for example, a television screen), on the other, the user is able to stream the image and the sound from a web portal or website.

The hardware for the mediaplayer can be bought from various suppliers. Mr Wullems installed on his devices the open source software XBMC, which makes it possible to open files through a user-friendly graphic user interface via menu structures and which can be used by anyone. He also installed add-ons, separate software files created by third parties and freely available on the internet, which he integrated into the XBMC software user interface.

Those add-ons contain hyperlinks which, if clicked, redirect the user to streaming websites, controlled by third parties, on which films, television series and (live) sporting events can be enjoyed free of charge, with or without the authorisation of the right holders. The digital content starts playing automatically when the relevant hyperlink is clicked.

In fourteen of the add-ons the links led to films, series and (live) sporting events without the authorisation of the holders of the reproduction rights. Others, however, linked to streaming websites whose digital content had been authorised by the right holders.

Mr Wullems had no influence over the add-ons, nor did he alter them, and the user too can install the add-ons on his mediaplayer. On his portal (www.filmspeler.nl) and on other third-party sites, Mr Wullems advertised his products by means of the following promotional slogans:

‘-  Never again pay for films, series, sport, directly available without advertisements and waiting time. (no subscription fees, plug and play) Netflix is now past tense!

–  Want to watch free films, series, sport without having to pay? Who doesn’t?!

–  Never have to go to the cinema again thanks to our optimised XBMC software. Free HD films and series, including films recently shown in cinemas, thanks to XBMC.’

On 22 May 2014, Stichting Brein called on Mr Wullems to stop selling the mediaplayers. On 1 July 2014, Stichting Brein commenced proceedings against Mr Wullems before the referring court, seeking an injunction prohibiting Mr Wullems from selling the devices and from offering the hyperlinks which provided users with unlawful access to copyright-protected works.

The applicant claimed, in support of the form of order sought, that through the sale of the filmspeler player, Mr Wullems was carrying out a ‘communication to the public’ contrary to Articles 1 and 12 of the Auteurswet (Netherlands Law on copyright) and Articles 2, 6, 7a and 8 of the Wet op de Naburige Rechten (Law on related rights).

The Rechtbank Midden-Nederland (District Court, Central Netherlands) takes the view that the provisions of national law relied upon in the proceedings must be interpreted in the light of Article 3 of Directive 2001/29, transposed into Netherlands law by those provisions. Since the parties to the main proceedings disagree about whether the sale of Mr Wullems’ multimedia player is intended to reach a ‘new public’ within the meaning of the case-law of the Court of Justice, the referring court considers that neither the judgment in Svensson and Others nor the order in BestWater International provides criteria sufficient for reaching a decision on that disagreement. Therefore, in the referring court’s view, reasonable doubt remains as to whether or not there is a communication to the public if the work has been previously published but without the right holder’s authorisation.

In the second place, the referring court is faced with the argument put forward by Mr Wullems, who contends that the streaming of copyright-protected works from an unlawful source comes within the exception in Article 13(a) of the Netherlands Law on copyright. As that provision must be interpreted in accordance with Article 5(1) of Directive 2001/29, the referring court observes that the Court has yet to rule on the meaning of the requirement of ‘lawful use’ laid down in Article 5 of the directive.

In those circumstances, the Rechtbank Midden-Nederland (District Court, Central Netherlands) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘1)  Must Article 3(1) of the Copyright Directive be interpreted as meaning that there is “a communication to the public” within the meaning of that provision, when someone sells a product (mediaplayer) in which he has installed add-ons containing hyperlinks to websites on which copyright-protected works, such as films, series and live broadcasts are made directly accessible, without the authorisation of the right holders?

2)  Does it make any difference:

–  whether the copyright-protected works as a whole have not previously been published on the internet or have been published only through subscriptions with the authorisation of the right holder?

– whether the add-ons containing hyperlinks to websites on which copyright-protected works are made directly accessible without the authorisation of the right holders are freely available and can also be installed in the mediaplayer by the users themselves?

–  whether the websites and thus the copyright-protected works made accessible thereon — without the authorisation of the right holders — can also be accessed by the public without the mediaplayer?

3) Should Article 5 of the Copyright Directive (Directive 2001/29/EC) be interpreted as meaning that there is no “lawful use” within the meaning of Article 5(1)(b) of that Directive if a temporary reproduction is made by an end user during the streaming of a copyright-protected work from a third-party website where that copyright-protected work is offered without the authorisation of the right holder(s)?

4) If the answer to the third question is in the negative, is the making of a temporary reproduction by an end user during the streaming of a copyright-protected work from a website where that copyright-protected work is offered without the authorisation of the right holder(s) then contrary to the “three-step test” referred to in Article 5(5) of the Copyright Directive (Directive 2001/29/EC)?’

The Advocate General’s opinion:

‘The sale of a multimedia player of the kind at issue in the main proceedings, in which the seller has installed hyperlinks to websites that, without the authorisation of the copyright holder, offer unrestricted access to copyright-protected works, such as films, series and live programmes,

–   constitutes “communication to the public” 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; and

–  cannot be covered by the exception laid down in Article 5(1) of Directive 2001/29, inasmuch as it does not fall within the definition of “lawful use” in subparagraph b) of that provision and, in any case, does not fulfil the conditions for application of Article 5(5) of that directive.’

EU trademarks for solar panels – not in every case

The General Court ruled in cases T‑578/15 and Case T‑614/15 where Azur Space Solar Power GmbH tried to register the following EU trademarks for classes Class 7: Electronic generators using solar cells и Class 9: Semiconductors, semiconductor devices, semiconductor devices for solar cells and solar modules, solar cells, solar cells made of III-V material, solar cells having a plurality of band gaps; solar cell modules, solar cell modules with an array of solar cells’:

and

The EUIPO refused the registration of both marks based on their lack of distinctiveness, the signs could be perceived by the professional consumers  as representation of an array of solar panels.

The court upheld this decision, stressing the fact that there is no distinctive element in both marks which can help mark to be accepted as a source of origin.

Source: Marques Class 46.

Nero coffee or not – a General court’s decision

The General Court ruled in cases T-37/10 and T-29/16 where an Italian company Caffe Nero Group ltd tried to register the following EU trademark in Class 30 ‘tea, coffee, cocoa; biscuits; cookies; bread, pastry and confectionery, chocolate bars, chocolate covered coffee beans, etc’ and related retails services in Class 35:

The EUIPO refused to register this mark on absolute grounds, the consumer in Italy can perceive this expression as descriptive, namely that the coffee is without any additions such as sugar, milk or so on.

The decision was appealed by the company with the argument that nobody in Italy uses this term for such kind of coffee in practice.

According to the court, however, even in case that this is not typical expression for ordering such drink, it clearly evokes a direct meaning in consumer mind about the goods characteristics.

Moreover, for some of the goods such as ‘tea, cocoa, coffee substitutes; herb tea; tea beverages; cocoa and cocoa-based preparations; cocoa beverages; preparations and mixes for making the aforesaid goods; powdered chocolate’, the consumers can be mislead to think that they content coffee.

Source: Marques Class 46.