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

The German Constitutional Court blocked the Unified Patent Court

pexels-photo-109629The German Federal Constitutional Court  has ruled that the legislation for introducing of the Unified Patent Court (UPC) is not constitutional.

According to the Court, in this case there is a transfer of adjudication authorities from national to international level. This requires the law to be accepted with two-thirds majority in the Bundestag, which wasn’t happened.

It is possible this decision to put a spanner in the works for the UPC as a whole. Although the German Parliament can pass the legislation again, this will take time, time which can allow other countries to express their reluctance toward the UPC concept.

Source: WIPR.

 

The General Court of the EU found similarity between trademarks for wine

wine-1761613_1920The General Court of the European Union has ruled in case Case T‑239/19 Vinos de Arganza v Nordbrand Nordhausen GmbH. It concerns an attempt for registration of the following combined EU trademark for class 33 – wine:

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Against this application, an opposition was filed based on an earlier German trademark BELCANTO for class 33 – Alcoholic beverages.

EUIPO upheld the opposition entirely. According to the Office, the goods for both marks were identical. From a visual point of view, both signs were similar to a low degree. Phonetically they were similar because of their end sounds. Conceptually both trademarks were neutral because they had no meaning for the German-speaking public.

The Court confirmed this decision.

What is interesting here is the fact that although the beginning of the marks has a bigger impact on such comparisons in the case at hand the different letters, in the beginning, weren’t able to overcome the entire possibility for consumer confusion between the signs.

The European Patent Office is ready to issue Unitary EU patents

european-union-1328255_1280The European Patent Office expressed its readiness to issue the so-called  Unitary EU patents.

The Unitary Patent is a patent granted by the EPO for which unitary effect can be registered with the EPO for the territory of the participating EU Member States.  This patent is crucial for competitiveness, growth, and innovation in Europe.

For the time being, the Unitary Patent is not officially in action because of a lawsuit before the German Supreme Court, which has to decide whether this patent protection is in line with the German constitution.

Another uncertainty is what will happen with the UK after Brexit. The problem arises from the fact that the British government is against any possibilities where the European Court can have jurisdiction over the UK even in the case of the Unitary Patent.

For more information here.

The Deutsche Telekom pink color trademark is under attack

pexels-photo-1111367The insurance company Lemonade initiated a legal proceeding against Deutsche Telekom. The reason for this is a claim by the German telecom that Lemonade uses the pink color for its marketing which infringes the Deutsche Telekom registered EU trademarks for that color.

As it is well-known, Deutsche Telekom has used pink and its different shades for its brands for many years.

According to Lemonade, this accusation is unacceptable because it tries to monopolize one of the main colors in the spectrum.  What’s more, the German telecom is not even in the same industry as Lemonade.

For the time being, Lemonade stoped to use this color for its activities.

Of course, when you have a well-known brand, especially in the case of colors, where the protection is not so stable and clear, every trademark owner tries to safeguard its brand value. The subtle moment in this approach is to what extent this can happen in reality.

Source: WIPR.

Google prevailed in a dispute against press publishers in the EU

pexels-photo-1931441The European court has rules in the case C‑299/17 VG Media Gesellschaft zur Verwertung der Urheber- und Leistungsschutzrechte von Medienunternehmen mbH v Google LLC.

The case concerns the following:

VG Media is a collective management organisation, authorised in Germany, that defends copyright and rights related to copyright of television channels and private radio stations, as well as rights to digital editorial content. Against this background, VG Media concludes with rights holders the ‘administration agreement for television, radio and publishers’, in which those rights holders grant it, for exclusive administration, their current rights as well as those accruing to them during the term of the agreement, in respect of the newspapers or magazines produced by them.

Google operates several internet search engines including, in particular, the search engine of the same name, together with an automated news site (‘Google News’). On the ‘Google’ search engine, after the search term has been entered and the search function has been initiated, a short text or text excerpt (‘the Snippet’) appears with a thumbnail image that is intended to enable users to gauge the relevance of the displayed website in the light of the information they are looking for. As regards the news site ‘Google News’, it displays news from a limited number of news sources in a format akin to that of a magazine. The information on that site is collected by computers by means of an algorithm using a large number of sources of information. On that site, ‘the Snippet’ appears in the form of a short summary of the article from the website concerned, often containing the introductory sentences of that article.

In addition, Google publishes, by means of its online services, third-party advertisements on its own websites and on third party websites for a fee.

VG Media brought an action for damages against Google before the referring court in which it disputes, in essence, the use by Google, since 1 August 2013, of text excerpts, images and animated images produced by its members, without paying a fee in return for displaying search results and news summaries.

The referring court seeks to ascertain whether Paragraphs 87f and 87g of the UrhG are applicable to the dispute in the main proceedings. That court seeks guidance on whether those provisions, arising from the amendment, with effect from 1 August 2013, to the UrhG, should have been notified to the Commission during their drafting stage as foreseen in the first subparagraph of Article 8(1) of Directive 98/34. In that connection, the referring court relies on the case-law of the Court according to which the provisions adopted in breach of the duty of notification under that provision are inapplicable and are, therefore, unenforceable against individuals.

In those circumstances, the Landgericht Berlin (Regional Court, Berlin, Germany) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Does a national rule which prohibits only commercial operators of search engines and commercial service providers which edit content, but not other users, including commercial users, from making press products or parts thereof (excluding individual words and very short text excerpts) available to the public constitute, under Article 1(2) and (5) of [Directive 98/34], a rule which is not specifically aimed at the services defined in [Article 1(2)],

and, if that is not the case,

(2)  does a national rule which prohibits only commercial operators of search engines and commercial service providers which edit content, but not other users, including commercial users, from making press products or parts thereof (excluding individual words and very short text excerpts) available to the public constitute a technical regulation within the meaning of Article 1(11) of [Directive 98/34], namely a compulsory rule on the provision of a service?’

The Court’s decision:

Article 1(11) of Directive 98/34/EC of the European Parliament and of the Council of 22 June 1998 laying down a procedure for the provision of information in the field of technical standards and regulations and of rules on Information Society services (as amended by Directive 98/48/EC of the European Parliament and of the Council of 20 July 1998), must be interpreted as meaning that a provision of national law, such as that at issue in the main proceedings, which prohibits only commercial operators of search engines and commercial service providers that similarly publish content from making newspapers or magazines or parts thereof (excluding individual words and very short text excerpts) available to the public, constitutes a ‘technical regulation’ within the meaning of that provision, the draft of which is subject to prior notification to the Commission pursuant to the first subparagraph of Article 8(1) of Directive 98/34, as amended by Directive 98/48.

Balsamico and an Italian-German legal conflict

food-3360720_960_720.jpgThe Advocate General of the European Court G. HOGAN has issued his opinion in case C‑432/18 Consorzio Tutela Aceto Balsamico di Modena v BALEMA GmbH. The case concerns the following:

BALEMA GmbH produces vinegar-based products and markets them in the Baden region (Germany). For at least 25 years, it has been selling products under the designations ‘Balsamico’ and ‘Deutscher Balsamico’. The labels on its products bear the legend ‘Theo der Essigbrauer, Holzfassreifung, Deutscher Balsamico traditionell, naturtrüb aus badischen Weinen’ [Theo the vinegar brewer, matured in wooden barrels, German balsamic vinegar, traditional, naturally cloudy, made from Baden wine] or ‘1. Deutsches Essig-Brauhaus, Premium, 1868, Balsamico, Rezeptur No 3’ [first German vinegar brewery, premium, 1868, balsamic, recipe No 3].

It is agreed that BALEMA’s products designated as ‘Balsamico’ are not covered by the registration ‘Aceto Balsamico di Modena (PGI)’ pursuant to Article 1 of and Annex I to Regulation No 583/2009 because they do not fulfill the product specifications contained in Annex II of that regulation.

Consorzio Tutela Aceto Balsamico di Modena (‘the Consorzio’) is a consortium of producers of the products designated by the name ‘Aceto Balsamico di Modena’. It considers that BALEMA’s use of the designation ‘Balsamico’ infringes the protected geographical indication ‘Aceto Balsamico di Modena’. The Consorzio thus served a warning notice on BALEMA. BALEMA, in turn, brought an action in the German courts against the Consorzio seeking a negative declaration to the effect that there had been no trade mark infringement. That action was unsuccessful.

In the appeal on the merits, BALEMA sought a declaration that it is not obliged to refrain from using the designation ‘Balsamico’ for vinegar-based products produced in Germany. The appeal on the merits was upheld as the court considered that the use of the name ‘Balsamico’ in respect of vinegar did not infringe Article 13(1)(b) of Regulation No 1151/2012. According to that court, the protection for the name ‘Aceto Balsamico di Modena’ granted by Regulation No 583/2009 was conferred only on the entire name and not on the non-geographical components of the term as a whole, even if used jointly.

The case was appealed to the referring court.

The referring court considers that the appeal on a point of law will succeed if the names ‘Balsamico’ and ‘Deutscher Balsamico’ used by BALEMA infringe Article 13(1)(a) or (b) of Regulation No 1151/2012. According to that court such a finding would require that the protection of the entire name ‘Aceto Balsamico di Modena’ granted by Article 1 of Regulation No 583/2009 also covers the use of the individual non-geographical components of the term as a whole (‘Aceto’, ‘Balsamico’, ‘Aceto Balsamico’).

The Federal Court of Justice notes that it is clear from the second subparagraph of Article 13(1) of Regulation No 1151/2012 and the case-law of the Court that, pursuant to Article 13(1)(a) or (b) of that regulation, a protected geographical indication that consists of several terms can be protected against not only the use of the entire indication, but also against the use of individual terms of that indication. The second subparagraph of Article 13(1) of Regulation No 1151/2012 governs the specific case in which a protected geographical indication contains within it the name of a product which is considered to be generic. That provision stipulates that the use of that generic name is not to be considered to be contrary to Article 13(1)(a) or (b) of that regulation. The Federal Court of Justice also refers to the fact that the Commission regulation registering the name may restrict the scope of the protection of a protected geographical indication that consists of several terms so that it does not cover the use of individual terms of that indication. In that regard, the fact that an applicant may state that it does not seek protection for all elements of a name shows that the protection granted by its registration can be restricted.

The Federal Court of Justice considers that recitals 3, 5 and 10 of Regulation No 583/2009 militate in favor of a restriction of the scope of protection to the name ‘Aceto Balsamico di Modena’ as a whole, to the exclusion of individual non-geographical components. It also considers that, contrary to the view taken in the appeal on a point of law, the assumption that protection is granted to the name ‘Aceto Balsamico di Modena’ as a whole did not give rise to an inconsistency with the registration of the protected designations of origin ‘Aceto balsamico tradizionale di Modena’ and ‘Aceto balsamico tradizionale di Reggio Emilia’. Contrary to Regulation No 583/2009, the references to a restricted scope of protection in Regulation No 813/2000, which may be attributable to the fact that there was no opposition by Member States pursuant to Article 7 of Council Regulation (EEC) No 2081/92 (now Articles 51 and 52 of Regulation No 1151/2012) in the preceding registration procedure, does not preclude a restriction of the protective effect of the name ‘Aceto Balsamico di Modena’ as a whole.

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

‘Does the protection of the entire name “Aceto Balsamico di Modena” extend to the use of the individual non-geographical components of the term as a whole (“Aceto”, “Balsamico”, “Aceto Balsamico”)?’

The Advocate’s position is:

The protection of the entire name ‘Aceto Balsamico di Modena’ under Commission Regulation (EC) No 583/2009 of 3 July 2009 does not extend to the use of the individual common words or non-geographical components, namely, ‘Aceto’, ‘Balsamico’ and ‘Aceto Balsamico’.